Ex Parte Dugan et al

Board of Patent Appeals and Interferences

Jun 26, 2010

10914274 (B.P.A.I. Jun. 26, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte MARK A. DUGAN, ALI A. SAID, and PHILIPPE BADO
____________

Appeal 2009-007165
Application 10/914,274
Technology Center 3700
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Decided: June 28, 2010
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Before: JENNIFER D. BAHR, STEVEN D.A. McCARTHY, and STEFAN
STAICOVICI, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Mark A. Dugan et al. (Appellants) appeal under 35 U.S.C. § 134
(2002) from the Examiner’s decision rejecting claims 1-5, 8-11, 31-34, and
36-46 under 35 U.S.C. § 103(a) as being unpatentable over Vetter (US
5,779,753, issued Jul. 14, 1998), Morita (JP 7-323385, published Dec. 12,
1995)1, Inagawa (US 5,126,532, issued Jun. 30, 1992), Saadatmanesh (US
5,387,211, issued Feb. 7, 1995), Smeggil (US 4,451,299, issued May 29,
1984), and Neev (US 5,720,894, issued Feb. 24, 1998). We have
jurisdiction over this appeal under 35 U.S.C. § 6 (2002).
The Invention
Appellants’ claimed invention is directed to machining of a workpiece
using multiple laser sources. Spec., para. 2.
Claim 1, reproduced below, is illustrative of Appellants’ claimed
subject matter.
1. A method of machining a workpiece comprising a brittle
material, the method comprising the steps of:
directing a first light beam from a femtosecond laser to
the workpiece wherein the first light beam has an intensity
sufficient for ablation of a portion of the brittle material from
the workpiece;
directing a second light beam to the workpiece from a
heating light source;
removing the portion of the brittle material via the first
light beam;

1 We derive our understanding of this reference from the translation
contained in the image file wrapper of this application. All references to the
text of this document are to portions of the translation.
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facilitating the ablation of the portion of the brittle
material in the removing step by heating the portion of the
brittle material to a ductile state via the second light beam.

SUMMARY OF DECISION
We AFFIRM.

OPINION
Each of Appellants’ independent claims 1, 31, and 43 calls for
directing a first beam to a workpiece comprising a brittle material for
ablating or removing a portion of the brittle material and directing a second
beam to the workpiece to heat a portion of the brittle material to a ductile
state, or to create a ductile region, or to a temperature above a transformation
temperature.2
The Examiner correctly found that Vetter describes a method
comprising directing a first laser beam at a workpiece to remove material
and directing a second laser beam at the workpiece to preheat a portion of
the workpiece material. Ans. 4; see also Vetter, col. 1, ll. 49-63, col. 2, ll.
20-33.
The Examiner also found that Smeggil describes preheating to a
temperature above a brittle to ductile transformation temperature. Ans. 4;
see also Smeggil, col. 2, ll. 55-57.
The Examiner relied on Inagawa and Saadatmanesh for their
teachings regarding the application of laser beams from different sources to
both sides of a workpiece (Ans. 4) and on Neev as evidence that

2 As used in Appellants’ Specification, the “transformation temperature” is
the setting temperature (Tg). Spec., para. 34.
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femtosecond ultrashort pulse laser machining was known in the art at the
time of Appellants’ invention (Ans. 5).
The Examiner concluded that, in view of the combined teachings of
the applied references, it would have been obvious to a person of ordinary
skill in the art to use a first beam to perform material ablation and to use a
second beam to preheat the material above a transformation temperature,
because the use of such plural energy applications would “provide suitable
heat input for preheat and postheat, provide efficient ablation, and provide
desired physical workpiece properties such as surface finish and strength.”
Ans. 4-5.
Appellants do not challenge either the findings of the Examiner or the
Examiner’s combination of the relied-upon features of Inagawa,
Saadatmanesh, and Neev with Vetter. Instead, Appellants assert that
Smeggil is improperly combined with Vetter and the other references
applied by the Examiner in the rejection. App. Br. 11. Specifically,
Appellants argue that Smeggil has nothing to do with ablation, much less
ablation of a brittle material using a femtosecond laser, and that the
Examiner has not provided a reason that would have led one skilled in the
art to have expected that preheating to a ductile state would provide benefits
beyond preheating generally, and that ablation would be more efficient at a
ductile state than at some other temperature. Id. Appellants further assert
that heating to a ductile state provides unexpected benefits – a change in
viscosity that makes cracking and stress formation less likely, and safe
achievement of a ductile state without unwanted modification or damage,
due to the wide fluctuation in viscosity over a given temperature range. Id.
Appellants do not present any separate arguments directed to the dependent
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claims, but, rather, group the dependent claims with the independent claim
from which they depend. Thus, the dependent claims stand or fall with the
independent claim from which they depend. 37 C.F.R. § 41.37(c)(1)(vii)
(2007).
Accordingly, the issue raised in this appeal is whether the Examiner
erred in concluding it would have been obvious to modify the method of
Vetter by performing the laser preheating step by preheating the material to
a ductile state (i.e., to a temperature above a brittle to ductile transformation
temperature).
We find that Vetter describes using a first laser beam to cut or remove
material and using a second beam to preheat the region of the cut line “to
reduce stresses.” Vetter, col. 2, ll. 20-24, 30-33. Vetter does not explicitly
specify that the preheating is to a temperature above the brittle to ductile
transformation temperature.
We further find that Smeggil evidences that it was known in the art
that pre-heating a material to a temperature in excess of its brittle to ductile
transformation temperature prior to a laser treatment to cause rapid melting
(i.e., ablation) of that material reduces the likelihood of formation of cracks.
Smeggil, col. 2, ll. 5-12, 50-59. We recognize that Smeggil is directed
specifically to a process for improving performance of high temperature
protective coatings by rapid surface melting and rapid solidification of the
melted portion of the coating (see Smeggil, col. 2, ll. 5-12), and not to
cutting or removal of material. This does not, however, render Smeggil’s
teachings with respect to the significance of the brittle to ductile
transformation temperature of a material irrelevant to a laser machining
process which involves cutting or material removal. After all,
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[c]ommon sense teaches . . . that familiar items may have
obvious uses beyond their primary purposes, and in many cases
a person of ordinary skill will be able to fit the teachings of
multiple patents together like pieces of a puzzle . . . . A person
of ordinary skill is also a person of ordinary creativity, not an
automaton.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007). “The use of patents
as references is not limited to what the patentees describe as their own
invention or to the problems with which they are concerned. They are part
of the literature of the art, relevant for all they contain.” In re Lemelson, 397
F.2d 1006, 1009 (CCPA 1968).
It is elementary that localized stresses tend to result in crack formation
and crack propagation, and that preventing such localized stresses helps
reduce cracking. We find that a person of ordinary skill in the art at the time
of Appellants’ invention was a person having at least a basic understanding
of the association between localized stresses and crack formation and
propagation. That this association was well understood in the art at the time
of Appellants’ invention is evidenced, for example, by Morita (claims 1 and
2). Accordingly, the combination of the teaching of Vetter to preheat the
material to reduce stresses and the teaching of Smeggil to preheat a material
to a temperature in excess of the brittle to ductile transformation temperature
to reduce cracking would have prompted a person of ordinary skill in the art
to preheat the material in the region of the cut line to a ductile state (i.e., to a
temperature in excess of the brittle to ductile transformation temperature) in
Vetter’s method in order to reduce cracking from stresses. The combined
teachings of Vetter and Smeggil suggest that the benefits of heating to a
ductile state alluded to on page 12 of Appellants’ Appeal Brief would have
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been expected and predictable to a person of ordinary skill in the art, not
unexpected, as urged by Appellants.
The record before us as a whole supports the legal conclusion that the
subject matter of independent claims 1, 31, and 43 would have been obvious
to a person of ordinary skill in the art at the time of the invention. The
Examiner did not err in concluding it would have been obvious to modify
the method of Vetter by performing the laser preheating step by preheating
the material to a ductile state (i.e., to a temperature above a brittle to ductile
transformation temperature).

DECISION
The Examiner’s decision is affirmed.
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

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