Ex Parte Denney et al

Board of Patent Appeals and Interferences

Jun 28, 2010

11401114 (B.P.A.I. Jun. 28, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PAUL E. DENNEY, JAY R. EASTMAN, PAUL M. FALLARA,
ANDREW P. JOSEPH, JOHN S. PHILLIPS, TA-CHIEH HUANG,
MICHAEL N. PATENA, TIM BURNHAM, and PAUL COLEMAN
____________

Appeal 2010-002070
Application 11/401,114
Technology Center 3700
____________

Decided: June 28, 2010
____________

Before: LINDA E. HORNER, JENNIFER D. BAHR, and KEN B.
BARRETT, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Paul E. Denney et al. (Appellants) appeal under 35 U.S.C. § 134
(2002) from the Examiner’s decision rejecting claims 1-18 under 35 U.S.C.
§ 103(a) as being unpatentable over Uraki (US 5,977,515, issued Nov. 2,
1999), Otsubo (US 6,507,000 B2, issued Jan. 14, 2003), Freiwald (US
6,693,255 B2, issued Feb. 17, 2004), and Di Curcio (US 3,369,101, issued
Feb. 13, 1968). We have jurisdiction over this appeal under 35 U.S.C. § 6
(2002).
The Invention
Appellants’ claimed invention is directed to an apparatus for drilling,
cutting, and surface processing of materials using energy waves. Spec.,
para. 3.
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. An apparatus for processing a surface of an inhabitable
structure, the apparatus comprising:
a base unit adapted to provide energy waves to an
interaction region, the energy waves removing material from
the structure, the base unit comprising an energy wave
generator and a head coupled to the energy wave generator, the
head adapted to remove the material from the interaction
region, thereby providing reduced disruption to activities within
the structure;
a manipulation system comprising:
an anchoring mechanism adapted to be releasably
coupled to the structure, and
a positioning mechanism coupled to the anchoring
mechanism and coupled to the head, the manipulation system
adapted to controllably adjust the position of the head relative
to the structure; and
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a controller electrically coupled to the base unit, the
controller adapted to transmit control signals to the base unit in
response to user input.

SUMMARY OF DECISION
We AFFIRM-IN-PART.

OPINION
Claims 1, 3-5, 7, 8, and 10-18
Appellants argued that the combination of Uraki, Otsubo, Freiwald,
and Di Curcio does not disclose or suggest “an anchoring mechanism
adapted to be releasably coupled to the structure,” as called for in claim 1.
App. Br. 7. In response to that argument, the Examiner pointed to the close-
contact mechanism shown in figures 3 and 6 of Uraki. Ans. 7-8. See Uraki,
col. 18, ll. 23-25 and col. 19, ll. 57-58, describing a vacuum mechanism for
anchoring chambers 36 and 38 to one another and to the surface of the
structure 1. Appellants have not presented any argument as to why that
structure does not satisfy the anchoring mechanism limitation of claim 1.
Appellants also argued that the Examiner’s combination of Uraki and
Otsubo (Ans. 5) is improper, because modification of Uraki as taught by
Otsubo to remove debris would cause water from the surrounding
environment to flood the chamber through the required gap, thereby
preventing operation of the modified system. App. Br. 10. We do not agree.
Uraki’s explicit teaching that evaporated material or fine particles generated
from the surface of the structure during laser processing can be discharged
by the gas/duct exhausting mechanism 17 (col. 19, ll. 36-41) belies
Appellants’ argument that adapting the laser head of Otsubo to remove
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material from the interaction region would render the system inoperable.
The gap E discussed in Otsubo (col. 2, ll. 56-58) is required for the particular
arrangement of Otsubo’s system. Uraki’s system does not utilize such a gap,
but, rather, utilizes a close-contact mechanism, as discussed above, to anchor
the chambers 36, 38 to the surface of the structure. The relevant inquiry is
whether the claimed subject matter would have been obvious to those of
ordinary skill in the art in light of the combined teachings of the references.
See In re Keller, 642 F.2d 413, 425 (CCPA 1981). “Combining the
teachings of references does not involve an ability to combine their specific
structures.” In re Nievelt, 482 F.2d 965, 968 (CCPA 1973).
For the above reasons, Appellants’ arguments do not convince us that
the Examiner erred in rejecting claim 1, or claims 3-5, 7, 8, and 10-18,
which fall with claim 1.
Claim 2
Appellants argued that the combination of Uraki, Otsubo, Freiwald,
and DiCurcio does not disclose or suggest a positioning mechanism
releasably coupled to both the head and the anchoring mechanism, or the
head being releasably coupled to the energy wave generator, as called for in
claim 2. App. Br. 8-9. In response, the Examiner asserted that the limitation
of a head releasably coupled to the positioning mechanism is taught by
Freiwald. Ans. 8-9, pointing to figs. 11A, 11B and the inner portions 76 of
lazy susan assemblies 74 being releasable for rotation. As pointed out by
Appellants (Reply Br. 6), however, the Examiner has not pointed out what
structure in Freiwald the Examiner considers to correspond to the head and
positioning mechanism of claim 2. The Examiner’s bald assertion that “one
cannot show nonobviousness by attacking references individually where the
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rejections are based on combinations of references” (Ans. 8, 9) to account
for the features argued by Appellants to be lacking in the combination does
not satisfy the Examiner’s burden to establish that the combination of Uraki,
Otsubo, Freiwald, and DiCurcio renders obvious the claimed subject matter
as a whole. The Examiner has not explained how the lazy susan assemblies
of Freiwald are to be combined with Uraki to arrive at the claimed invention,
much less articulated an apparent reason to do so.
We do not sustain the rejection of claim 2.
Claims 6 and 9
Claim 6 calls for the head to be coupled to a cooling subsystem
adapted to remove heat from the head, and claim 9 requires that the head
comprise a containment plenum to confine the material and remove the
material from the interaction region, wherein the containment plenum is
coupled to a cooling subsystem adapted to remove heat from the
containment plenum. Appellants have argued that the combination of Uraki,
Otsubo, Freiwald, and DiCurcio would not have rendered obvious provision
of such features in Uraki. App. Br. 10-12; Reply Br. 8-10.
The Examiner’s position as to how the teachings of the applied
references are to be combined so as to provide the cooling subsystems
required by claims 6 and 9 is not entirely clear. The Examiner stated that it
would have been obvious “to use air cooling or water cooling as taught by
Freiwald et al. in the Otsubo et al. and Uraki et al. system because cooling of
the machining debris negates contamination effects on the optics and
potential redeposition of debris on the workplace surface.” Ans. 6. Freiwald
describes a cleaning head arrangement wherein some ambient air is
permitted to enter the nozzle to cool the ablated material and dilute and
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entrain the material for easier filtration. Freiwald, col. 8, ll. 4-7. Freiwald
uses a vacuum filter unit 40 to provide the suction to induce the described
entraining and cooling stream. Freiwald, col. 6, ll. 62-66. In response to
Appellants’ argument that cooling is not taught, the Examiner asserted that
“the containment plenum (chamber 2, 36, or A) is cooled by the water
surrounding the chamber and the gas injection mechanism (15).” Ans. 12.
Thus, it appears that the Examiner’s rejection is grounded in part on a
finding that the water surrounding the underground laser processing system
and/or the gas injection mechanism 15 of Uraki will inherently cool the
chamber (2, 36, or A) of Uraki. As correctly pointed out by Appellants on
pages 8-10 of their Reply Brief, however, the Examiner has not provided
adequate evidence or technical reasoning to establish that the relative
temperatures of either the surrounding water or the injection gas and the
chamber 2, 36, or A necessarily will be such that the water or injection gas
could or would remove heat from the chamber, so as to reasonably support a
theory of inherency.
For the above, reasons, we are constrained to reverse the Examiner’s
rejection of claims 6 and 9.
DECISION
The Examiner’s decision is affirmed as to claims 1, 3-5, 7, 8, and 10-
18, and reversed as to claims 2, 6, and 9.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED-IN-PART

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