Ex Parte Gaebelein et alDownload PDFPatent Trial and Appeal BoardAug 21, 201814535341 (P.T.A.B. Aug. 21, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/535,341 11/07/2014 146918 7590 patent2ip LLC 7901 Stoneridge Drive Suite 320 Pleasanton, CA 94588 08/23/2018 FIRST NAMED INVENTOR Jens Guenter Gaebelein 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 ATTORNEY DOCKET NO. CONFIRMATION NO. AVSY-0001 8859 EXAMINER HOANG,TUBA ART UNIT PAPER NUMBER 3742 NOTIFICATION DATE DELIVERY MODE 08/23/2018 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): docketing@patent2ip.com vnguyen@patent2ip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JENS GUENTER GAEBELEIN and JEROEN HRIBAR Appeal 2017-010131 1 Application 14/535,341 2 Technology Center 3700 Before ANTON W. PETTING, KENNETH G. SCHOPPER, and SHEILA F. McSHANE, Administrative Patent Judges. SCHOPPER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 from the rejection of claims 1-16 and 21-25. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. 1 Our decision references the Appeal Brief ("Appeal Br.," filed Dec. 13, 2016), the Reply Brief ("Reply Br.," filed July 7, 2017), the Examiner's Answer ("Ans.," mailed May 10, 2017), and the Final Office Action ("Final Act.," mailed May 20, 2016). 2 According to Appellants, the real party in interest is A vonisys AG. Appeal Br. 3. Appeal2017-010131 Application 14/535,341 BACKGROUND According to Appellants, "the present invention discloses methods and systems for keeping a surface dry when being processed with a liquid jet guided laser beam." Spec. 2. CLAIMS Claims 1 and 12 are the independent claims on appeal. Claim 1 is illustrative of the appealed claims and recites: 1. A liquid jet guided laser system comprising a laser for emitting a laser beam; a nozzle module, wherein the nozzle module is configured to be connected to a liquid supply line for forming a liquid jet; an optical element for coupling the laser beam into the liquid jet; an air jet module, wherein the air jet module is coupled to the nozzle module, wherein the air jet module comprises an inner wall and an outer wall, wherein the inner wall forms a first conduit for accepting the liquid jet to pass through, wherein the inner wall and outer wall form a second conduit completely surrounding the first conduit, wherein the outer wall comprises a gas inlet for connecting to a gas supply line for forming a gas flow through the second conduit, wherein the gas flow passing through the air jet module surrounds the liquid jet, 2 Appeal2017-010131 Application 14/535,341 wherein the air jet and the liquid jet are configured to be guided toward a workpiece. Appeal Br. 3 7. REJECTIONS 1. The Examiner rejects claims 1-9 and 21-23 under 35 U.S.C. § I03(a) as unpatentable over Kray3 in view of Maehara. 4 2. The Examiner rejects claims 10 and 11 under 35 U.S.C. § I03(a) as unpatentable over Kray in view ofMaehara and Foltz. 5 3. The Examiner rejects claims 12-16 under 35 U.S.C. § I03(a) as unpatentable over Kray in view of Mueller. 6 4. The Examiner rejects claims 24 and 25 under 35 U.S.C. § I03(a) as unpatentable over Kray in view of Mueller and Maehara. DISCUSSION Obviousness over Kray and Maehara Claims 1, 2, 4, 6, 7, and 21-23 Appellants do not raise arguments with respect to the rejection of claims 1, 2, 4, 6, 7, and 21-23. See Appeal Br. 6-22. Accordingly, we summarily sustain the rejection of these claims. Claim 3 As discussed below, we are persuaded of reversible error by Appellants' arguments with respect to the rejection of claim 3. 3 Kray et al., US 2010/0213166 Al, pub. Aug. 26, 2010. 4 Maehara et al., JP 2009291807 A, pub. Dec. 17, 2009. 5 Foltz et al., US 5,496,985, iss. Mar. 5, 1996. 6 Mueller et al., US 2001/0004480 Al, pub. June 21, 2001. 3 Appeal2017-010131 Application 14/535,341 Claim 3 depends from claim 1 and further recites "wherein the inner wall is configured so that the gas flow is diverged from the liquid jet." Appeal Br. 37. The Examiner finds that Maehara teaches an air jet module as required by claim 1 and also teaches an inner wall as required by claim 3 because "Maehara teaches that the tubular gas curtain 79 diverges from the liquid column 70 as it reaches the wafer W (FIG. 2)." Final Act. 4. Thus, the Examiner indicates that the claim reads on Maehara's air jet module because the gas stream expands, in part, away from the liquid stream as it approaches the wafer W. Appellants argue that the claims require a narrower interpretation than that proposed by the Examiner, and more specifically, Appellants indicate that the air jet nozzle must be configured to generate the divergence in the air jet with respect to the liquid jet. See Appeal Br. 8-10. We agree. As an initial matter, we note that the claim requires that the inner wall is "configured" to provide gas flow that is diverged from the liquid jet, rather than merely reciting an inner wall that is capable of providing such a gas flow. Thus, the claims require that the air controller include an inner wall that is designed to accomplish the function claimed. See Aspex Eyewear, Inc. v. Marchan Eyewear, Inc., 672 F.3d 1335, 1349 (Fed. Cir. 2012) (noting that claim language "configured to" is construed more narrowly than "capable of' and holding that where claim language including the phrase "adapted to" is to be construed consistent with "configured to" language it requires that the structure must be "designed or configured to accomplish the specified objective, not simply that [it] can be made to serve that purpose"). Thus, to the extent the Examiner simply relies on Maehara's Figure 2 as showing that Maehara's air module is capable of producing a gas 4 Appeal2017-010131 Application 14/535,341 flow that diverges from the liquid flow, the Examiner has not set forth a sufficient showing that Maehara teaches an inner wall with the configuration claimed. Additionally, we agree with Appellants that the claim requires a narrower interpretation of the term "diverge" based not only on the requirement that the inner wall is "configured" to create a diverging gas flow, but also on the way the term is used in the Specification. In particular, we agree with Appellants' proposed interpretation of the claim which requires a "divergence of the air jet and the liquid jet" such "that the distance between the air jet and the liquid jet increases when the air jet and the liquid jet move away from the nozzle." Appeal Br. 10. First, we note that this interpretation is consistent with the plain meaning of the term "diverge" as used in this context: "to move or extend in different directions from a common point." Merriam-Webster.com, https://www.merriam- webster.com/dictionary/diverge (last visited Aug. 9, 2018). Second, the Specification provides a distinction between air jet nozzles that provide "parallel gas direction, diverged gas direction away from the liquid jet, or converged gas direction toward the liquid jet." Spec. 11-12. Thus, we find that one of ordinary skill in the art would understand that the claim requires an air jet module that produces a gas flow that moves away from the liquid jet, which is caused by the configuration of the inner wall of the air jet module. Under this understanding of the claim, we agree with Appellants that Maehara does not disclose an inner wall configured as required by the claims. Rather, Maehara's Figure 2 plainly shows that the gas and liquid flow in parallel from the nozzle, and the Examiner has not pointed us to any 5 Appeal2017-010131 Application 14/535,341 disclosure that otherwise suggests that the nozzle or inner wall of the nozzle may be configured as required by the claim. Based on the foregoing, we are persuaded of reversible error with respect to the rejection of claim 3. Accordingly, we do not sustain this rejection. Claim 5 As discussed below, we are persuaded of reversible error by Appellants' arguments with respect to the rejection of claim 5. Claim 5 depends from claim 1 and further recites "wherein the inner wall comprises at least a hole to provide fluid communication between the first conduit and the second conduit for vacuum compensation." Appeal Br. 3 8. The Examiner finds that Maehara teaches this limitation because "Maehara teaches outside air introduction chamber 750, FIG. 2 and outside air introduction passage 751d, FIG. 4." Final Act. 4--5. Without further explanation from the Examiner, we agree with Appellants that the Examiner has failed to show that Maehara teaches a hole in the inner wall as required by the claim. See Appeal Br. 14. At best, the rejection identifies that Maehara's conduit for the liquid jet is in fluid communication with a chamber that is open to the ambient environment. See Maehara Fig. 4. The Examiner does not adequately explain how or why the air introduction passage could be considered a hole in the inner wall, where the inner wall is defined as in claim 1. Accordingly, we are persuaded of reversible error, and thus, we do not sustain the rejection of claim 5. 6 Appeal2017-010131 Application 14/535,341 Claim 8 Claim 8 depends from claim 1 and further recites "wherein the inner wall is longer than the outer wall." The Examiner rejects the claim as follows: With respect to claim 8, Kray does not disclose that the inner wall is longer than the outer wall. FIG. 4 of Muller shows a dimensional relationship between the portions carrying the fluid 1.4' and the process as 3 .11. Office notes that size/proportion ("the inner wall is longer than the outer wall") does not establish patentability absent persuasive evidence that the particular configuration was significant (MPEP 2144.04 IV A). Final Act. 5. Further, the Examiner finds: the grounds of rejecting claim 8 is Kray in view of Maehara. Maehara teaches in FIG. 2 that the cylindrical gap 754 is made up of a hatched portion at the right and another hatched portion at the left, both portions shown at the left of the liquid column 70. The hatched portion at the right (reading on the inner wall) is longer than the hatched portion at the left (reading on the outer wall) as can be seen in FIG. 2. Ans. 13. We are not persuaded of reversible error with respect to this rejection. Appellants argue that "[ w ]hile there is a taper to the outside, wherein the wall becomes progressively longer as going from inside to outside, Maehara does not provide for the inner wall to be longer in any iteration as can be seen above in Fig. 2 as well as the below Fig. 4." Reply Br. 5. We disagree. In Maehara's Figure 2, the entirety of element 751, which forms the inner wall, is noticeably longer than that of element 755, which forms the outer wall. Thus, the plain language of the claim reads on Maehara's structure. Accordingly, we are not persuaded of reversible error, and thus, we sustain the rejection of claim 8. 7 Appeal2017-010131 Application 14/535,341 Claim 9 Claim 9 depends from claim 1 and further requires "wherein the inner wall comprises an inlet for accepting an assist gas flow." Appeal Br. 38. In rejecting claim 9, the Examiner finds that "Maehara teaches gas introduction passage 755f, FIG. 2." Final Act. 5. We are persuaded of reversible error. The Examiner does not explain adequately how passage 755f is a hole or inlet in the inner wall, and the Examiner does not otherwise explain how such an inlet would have been obvious to a person of ordinary skill in the art in light of Maehara's disclosure of passage 755f. Accordingly, we do not sustain this rejection. Obviousness over Kray, Maehara, and Foltz Appellants do not raise arguments with respect to the rejection of claims 10 and 11, each of which depends directly from claim 1. Accordingly, we summarily sustain this rejection. Obviousness over Kray and Mueller As discussed below, we are persuaded of reversible error in the rejection of claim 12. Independent claim 12 is similar to claim 1 and requires, in relevant part, "wherein the air jet nozzle comprises a fluid communication path between the gas flow and the liquid jet." Appeal Br. 38-39. With respect to the air jet nozzle recited in claim 12, the Examiner relies on Mueller as follows: Mueller teaches spraying nozzle 2.9, FIG. 4 which accepts fluid 1.4' and process gas 3.11, FIG. 4, directed towards the working surface 1.6. Mueller further teaches wherein the air jet nozzle (portion carrying process gas 3.11 lets fluid 1.4' pass through the middle portion of spraying nozzle 2.9) is configured to allow the liquid jet to pass through, wherein the air jet nozzle 8 Appeal2017-010131 Application 14/535,341 (portion carrying process gas 3 .11 keeps fluid 1.4' separate at least in a part of the spraying nozzle 2.9, FIG. 4) is configured to physically separate the gas flow from the liquid jet, and wherein the air jet nozzle comprises a fluid communication path between the gas flow and the liquid jet (aerosol spray 1.4, shown in FIG. 4 and described in paragraph(s) 0026-0031 reads on fluid communication path). Final Act. 7-8. We agree with Appellants that the claim limitation cannot be interpreted so broadly as to read on the nozzle openings of Mueller as apparently relied upon by the Examiner. See Appeal Br. 26-27. First, we note that the Examiner does not specifically explain how this claim limitation reads on the structure described in Mueller. The Examiner has not identified where Mueller expressly discloses a direct fluid communication path between the gas flow and liquid jet, and thus, our understanding of the rejection is consistent with Appellants in that we understand the Examiner is relying on the opening of both the gas flow path and liquid flow path to the ambient environment at the end of the nozzle as the claimed fluid communication path. However, we agree with Appellants' arguments, and specifically, we agree that "[a] nozzle always includes a tip exposed to the ambient, and thus the present [ claimed] nozzle for a liquid jet guided laser system also includes the liquid jet and the air jet exiting to the ambient." Appeal Br. 26-27. Thus, the additional recitation of a fluid communication path in the claim must refer to a different fluid communication, to avoid this claim limitation from being rendered superfluous. Further, this interpretation of the claim is consistent with the Specification, which describes nozzles that not only are open to the ambient environment at their 9 Appeal2017-010131 Application 14/535,341 tip but also have a separate fluid communication path within the nozzle. See Spec. 16, Fig. 10 (element 1023). Based on the foregoing, we are persuaded that the Examiner has not identified where the art discloses a fluid communication path between the gas flow and the liquid jet in the air jet nozzle that is distinct from the openings at the nozzle end, as required by claim 12. Accordingly, we do not sustain the rejection of claim 12. We also do not sustain the rejection of claims 13-16, which depend from claim 12. Obviousness over Kray, Mueller, and Maehara The Examiner does not rely on the art of record in a manner that would cure the deficiency in the rejection of claim 12, as discussed above. Accordingly, we do not sustain the rejection of claims 24 and 25 for the reasons discussed above. CONCLUSION We AFFIRM the rejections of claims 1, 2, 4, 6-8, 10, 11, and 21-23. We REVERSE the rejections of claims 3, 5, 9, 12-16, 24, and 25. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED-IN-PART 10 Copy with citationCopy as parenthetical citation