Ex Parte Dane et al

Patent Trial and Appeal Board

Jan 31, 2018

12945713 (P.T.A.B. Jan. 31, 2018)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/945,713 11/12/2010 C. BRENT DANE MICI 1011-2 8385
22470 7590 02/02/2018
HAYNES BEFFEL & WOLFELD LLP
P O BOX 366
HALF MOON BAY, CA 94019
EXAMINER
PAIK, SANG YEOP
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
02/02/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
docket @ hmbay .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte C. BRENT DANE, EDWARD W.H. LAO, FRITZ B. HARRIS
JR., RANDALL L. HURD, JON RANKIN, and SCOTT N. FOCHS
Appeal 2016-001793
Application 12/945,7131
Technology Center 3700
Before JENNIFER D. BAHR, FREDERICK C. LANEY, and
ARTHUR M. PESLAK, Administrative Patent Judges.
LANEY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
C. Brent Dane et al. (Appellants) appeal under 35 U.S.C. § 134(a)
from the Examiner’s decision (entered Dec. 26, 2014, hereinafter “Final
Act.”) rejecting claims 1-28 under 35 U.S.C. § 103(a). We have jurisdiction
over this appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellants, the real party in interest is Metal Improvement
Company, LLC. Appeal Br. 2 (entered June 23, 2015).
Appeal 2016-001793
Application 12/945,713
INVENTION
Appellants’ invention “relates to high energy laser systems, to beam
delivery systems, and to laser peening systems suitable for use with
stationary targets.” Spec. ^ 2.
Claims 1,16, and 27 are independent claims. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A method for delivering laser energy to a process area on
a target surface of a work piece, the target surface including an
array of impact areas characterized by variant nominal surface
normal vectors, comprising:
placing an optical assembly including a receiving optic,
beam formatting optics and a scanner, in a position to receive
laser energy from a laser source; and
directing laser energy to the receiving optic while the
position of the optical assembly remains unchanged, and
directing the laser energy using the scanner to a sequence of
impact areas having nominal shapes, nominal surface normal
vectors and locations in the process area according to a pattern;
and
when moving from one impact area to another impact
area in the sequence while the position of the optical assembly
remains unchanged, changing settings including a combination
of direction, divergence, polarization, rotation and aspect ratio
of the laser energy output from the scanner, to change the
polarization and control the shape of the laser energy at the
respective impact areas in the process area according to changes
in the nominal surface normal vectors and the locations of the
impact areas in the sequence.
Appeal Br. 42 (Claims App.).
REJECTIONS
I. The Examiner rejected claims 1-3, 6, and 8-16 under 35 U.S.C.
§ 103(a) as unpatentable over Dane (US 2006/0102609 Al,
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Application 12/945,713
pub. May 18, 2006), Bruland (US 7,435,927 B2, iss. Oct. 14,
2008), Chen (US 2008/0110869 Al, pub. May 15, 2008), and
AAPA (Appellants’ admitted prior art illustrated in Figures la-
le and described in paragraphs 9-12 of the Specification).
II. The Examiner rejected claim 4 under 35 U.S.C. § 103(a) as
unpatentable over Dane, Bruland, Chen, AAPA, and Li (US
7,880,117 B2, iss. Feb. 1,2011).
III. The Examiner rejected claims 5, 7, 18-25, 27, and 28 under
35 U.S.C. § 103(a) as unpatentable over Dane, Bruland, Chen,
AAPA, and Guyton (US 3,841,760, iss. Oct. 15, 1974).
IV. The Examiner rejected claim 17 under 35 U.S.C. § 103(a) as
unpatentable over Dane, Bruland, Chen, AAPA, Guyton, and
Li.
V. The Examiner rejected claim 26 under 35 U.S.C. § 103(a) as
unpatentable over Dane, Bruland, Chen, AAPA, Guyton, and
Lymer (US 4,936,649, iss. June 26, 1990).
ANALYSIS
Rejection I
Claim 1 recites, “chang [ing] the polarization and control [ling] the
shape of the laser energy at the respective impact areas in the process area
according to changes in the nominal surface normal vectors and the
locations of the impact areas in the sequence.” Appeal Br. 42 (Claims
App.)(emphasis added). Claims 2, 3, 6, and 8-16 includes a similar
limitation, either directly or indirectly. See id. at 42 46. The Examiner
determines the combined teachings of Bruland, Chen, and AAPA disclose
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Appeal 2016-001793
Application 12/945,713
changing the polarization and control of the shape of the laser energy
according to changes in the nominal surface normal vectors, as claim 1
requires. Final Act. 3—4. Appellants challenge this determination by
arguing the Examiner fails to show a skilled artisan knew to make changes
to the laser polarization using the nominal surface normal vectors of the
impact areas. Appeal Br. 15-18. Appellants’argument is persuasive.
To show skilled artisans knew to change the laser settings according
the “nominal surface normal vectors,” the Examiner relies solely on AAPA.
See Final Act. 3-4. The Examiner does not make any factual findings
regarding Dane, Chen, or Bruland disclosing the use of a nominal surface
normal vector to change polarization settings. See id. at 3. “[T]he AAPA is
deemed to show the laser settings that change according to different
locations of the impact areas having different normal vectors as the different
impact areas are processed.” Ans. 7. In addition, the Examiner finds
“AAPA shows it is known to provide laser spot locations/impact areas
according to changes or distortions in the nominal surface wherein the
impact areas to different locations having distortions are changed and
adjusted via adjusting beam divergence and aspect ratio to form uniform
pattern.” Final Act. 3—4 (citing Spec, paras. 9-12).
Appellants argue whether AAPA shows changing laser settings
“according to different locations of the impact areas having different normal
vectors” or “according to changes or distortion in the nominal surface” is
irrelevant and “skirts the issue” because claim 1 recites, “changing] the
polarization . . . according to changes in the nominal surface normal
vectors.” Reply Br. 7, Appeal Br. 16, 42. Although a nominal surface has a
normal vector, Appellants assert this fact does not demonstrate a laser
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Application 12/945,713
system changes laser polarization according to the changes in the nominal
surface normal vector. See Reply Brief. 4-7. Additionally, Appellants
contend, “AAPA does not ‘provide laser spot locations/impact areas
according to changes or distortions in the nominal surface.’” Appeal Br. 16.
Appellants note AAPA specifically states the laser disclosed is “suitable for
delivering pulses across a large essentially flat process area, with relatively
small range of angles of incidence on the panel,” but has problems with laser
peening complex surface geometries. Id. at 16-17 (citing Spec. para. 12).
Because the AAPA laser system is designed for relatively flat panels, the
system would not be understood by skilled artisans as changing polarization
of the laser according to changes in the nominal normal vector of a surface
because, Appellants assert, those vectors are the same or substantially the
same in all of the impact areas, even though the vector location changes.
See Reply Br. 7-8.
Having weighed the evidence presented, we are persuaded AAPA
does not support, by a preponderance of the evidence, a skilled artisan would
have known to “change the polarization and control the shape of the laser
energy at the respective impact areas in the process area according to
changes in the nominal surface normal vectors.” AAPA does not make any
reference to a “nominal surface normal vector[]” and we agree with
Appellants that AAPA’s description of the prior art laser system as being
suitable with only an “essentially flat process area” is persuasive evidence
that the laser system does not necessarily account for changing nominal
surface normal vectors. Appeal Br. 16. As such, AAPA cannot be properly
relied upon to evidence knowledge of changing the polarization of the laser
energy according to changes in the nominal surface normal vectors. As a
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Application 12/945,713
result, the Examiner’s obviousness determination lacks a rational
underpinning. Therefore, we do not sustain the Examiner’s rejection of
claims 1-3, 6, and 8-16.
Rejections II V
Like claim 1, claims 4, 5, 7, and 17-28 each require changing laser
settings “to change the polarization . . . according to changes in the nominal
surface normal vectors,” either directly or indirectly. See Appeal Br. 43 44,
47-50. To show prior knowledge, the Examiner relies on the same evidence
and reasoning offered for the same limitation in claim 1. See Final Act. 4-6.
Therefore, because none of the additional references (Li, Lymer, and
Guyton) is relied upon to cure the deficiencies discussed above (see supra
Rejection I), we do not sustain the Examiner’s rejections of claims 4, 5, 7,
and 17-28.
DECISION
We reverse the Examiner’s decision to reject claims 1-28.
REVERSED
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