Ex Parte Hoffman et al

Board of Patent Appeals and Interferences

Jul 20, 2009

11024948 (B.P.A.I. Jul. 20, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte ROBERT HOFFMAN,
SALVATORE F. NATI JR., XINHUA GU,
and ZHENLIN LIU
______________

Appeal 2009-003362
Application 11/024,948
Technology Center 2800
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Decided:1 July 20, 2009
_______________

Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and
CHARLES F. WARREN, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicants appeal to the Board from the decision of the Primary

1 The two month time period for filing an appeal or commencing a civil
action specified in 37 C.F.R. § 1.304, begins to run from the Decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-003362
Application 11/024,948
Examiner finally rejecting claims 1 through 8 and 11 through 18 in the
Office Action mailed January 11, 2007. 35 U.S.C. §§ 6 and 134(a) (2002);
37 C.F.R. § 41.31(a) (2007).
We reverse the decision of the Primary Examiner.
Claim 1 illustrates Appellants’ invention of a control apparatus or a
fiber laser system, and is representative of the claims on appeal:
1. Control apparatus or a fiber laser system including an oscillator
and an amplifier, comprising:
detecting elements for monitoring laser parameters including pump
diode temperature and current or power, and an output power and repetition
rate of a fiber laser oscillator; and
a controller receiving inputs from said detecting elements, and
controlling said monitored parameters in order to initiate and maintain
mode-locked operation of said fiber laser oscillator.
The Examiner relies upon the evidence in these references (Ans. 2 and
5): 2
Chao US 4,866,712 Sep. 12, 1989
Lin US 2002/0176452 A1 Nov. 28, 2002
Appellants request review of the following grounds of rejection
advanced on appeal by the Examiner (App. Br. 8):
claims 1, 2, 11, and 12 under 35 U.S.C. § 102(a) over Lin (Ans. 3);
claims 3 through 7 and 13 through 17 under 35 U.S.C. § 103(a) over Lin
(Ans. 4); and
claims 8 and 18 under 35 U.S.C. § 103(a) over Lin in view of Chao (Ans. 4).

2 We consider these documents: Appeal Brief filed August 9, 2007;
Supplemental Appeal Brief filed September 7, 2007; Examiner’s Answer
mailed December 10, 2007; and Reply Brief filed February 11, 2008.
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Appeal 2009-003362
Application 11/024,948
Issue
The dispositive issue with respect to the ground of rejection of
appealed independent claims 1 and 11 and the grounds of rejection of the
remainder of the appealed claims dependent thereon, is whether Appellants
have established that the Examiner has not identified any disclosure in Lin,
including Figures 1 and 6 relied on by the Examiner, which would provide a
description of an apparatus comprising detecting elements for monitoring
fiber laser parameters, including at least pump diode temperature and current
or power, and output power and repetition rate of a fiber laser oscillator, and
a method which monitors the same parameters to one of ordinary skill in this
art. See Ans. 3 and 6-8; App. Br. 10-13; Reply Br. 5-9.
Claim Interpretation
The plain language of representative independent claim 1, in pertinent
part, encompasses any apparatus which can be used with any fiber laser
system that includes at least, among other things, an oscillator and an
amplifier, wherein the apparatus comprises at least any detecting elements
for monitoring laser parameters including at least detecting elements for
pump diode temperature, pump diode current or power, fiber laser oscillator
repetition rate, and fiber laser oscillator output power. The plain language of
independent claim 11 encompasses any method of controlling a fiber laser
system by monitoring the same laser parameters. See Spec., e.g., 4-5 and
Figs. 2 and 2a. See, e.g., In re ICON Health and Fitness, Inc., 496 F.3d
1374, 1378-79 (Fed. Cir. 2007); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004), and cases cited therein; In re Morris, 127 F.3d
1048, 1054-55 (Fed. Cir. 1997).
Findings of Fact
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Appeal 2009-003362
Application 11/024,948
We find Lin would have disclosed to one of ordinary skill in this art,
as illustrated by embodiments depicted in Figures 1 and 6, a fiber laser
system including, among other things, diode-based optical pump source 130,
optical power splitter 124, optical coupler 160, optical detector 170,
temperature sensor(s) 154A, and, in Figure 6, temperature sensor(s) 154B.
Lin, e.g., ¶¶ 0014-0018, 0025-0035, 0072-0073.
We find Lin does not disclose detecting elements specifically
monitoring pump diode temperature and current or power of pump diode
130. Lin, e.g., ¶ 0018 and Figs. 1 and 6. With respect to pump diode
temperature, Lin discloses in Figure 1, pump diode 130 inside chamber 150
but outside of the area encompassed by closed fiber ring 101, and
temperature sensor(s) 154A disposed inside of the area encompassed by
closed fiber ring 101 to measure temperature inside chamber 150. Lin, e.g.,
¶¶ 0016, 0018, 0025, and 0040. Lin discloses in Figure 6, pump diode 130
outside chamber 150, temperature sensor(s) 154A inside chamber 150, and
temperature sensor(s) 154B outside chamber 150. Signal 156B from
“temperature sensors 150B [sic, 154B]” indicates “local temperatures” at
sensor location(s), none of which is disclosed in vicinity of pump diode 130.
Lin, e.g., ¶ 0073. With respect to current or power, Lin discloses no
detecting element, including optical detector 170, associated with pump
diode 130, electrical driving signal 131 to pump diode 130, and pump light
132 from pump diode 30. Lin, e.g., ¶¶ 0018, 0029, and 0073, and Figs.
1 and 6.
We find Lin does not disclose detecting elements specifically
monitoring fiber laser oscillator repetition rate and output power. Lin
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Appeal 2009-003362
Application 11/024,948
discloses optical splitter 124 produces a laser output which optical coupler
160 splits into the final laser output and monitor beam 162. Lin, e.g.,
¶ 0018 and Figs. 1 and 6. Monitor beam 162 is used “for monitoring the
condition of the laser oscillation and the fiber ring 101 in one or more
control feedback loops for stabilizing the laser.” Lin ¶ 0018. “The
performance of the laser 100 is monitored by using an optical detector 170 to
convert the optical monitor signal 162 into an electronic monitor signal 172
[sic, 170A3].” Lin, e.g., ¶ 0018 and 0029-0032, and Figs. 1 and 6. Electrical
detector signal 170A is split into several signals which “are then processed
electronically in different ways to produce different feedback signals” in
mixer 174 and bandpass filters 171, 172, and 173, none of which involves
fiber laser oscillator repetition rate and output power. Lin, e.g.,
¶¶ 0030-0039, and Figs. 1 and 6; see also ¶ 0014.
A discussion of Chao is unnecessary to our decision.
Discussion
We considered the totality of the record in light of Appellants’
arguments with respect to claims 1 and 11 and the grounds of rejection
advanced on Appeal. See, e.g., In re Kahn, 441 F.3d 977, 985-86 (Fed. Cir.
2006) (“‘On appeal to the Board, an applicant can overcome a rejection by
showing insufficient evidence of prima facie obviousness or by rebutting the
prima facie case with evidence of secondary indicia of nonobviousness.’”)
(quoting In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998)); In re Oetiker,
977 F.2d 1443, 1445 (Fed. Cir. 1992) (“After evidence or argument is
submitted by the applicant in response, patentability is determined on the

3 Lin discloses numeral 172 represents an electrical bandpass filter. Lin,
e.g., ¶¶ 0030 and 0039.
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Appeal 2009-003362
Application 11/024,948
totality of the record, by a preponderance of evidence with due consideration
to persuasiveness of argument.”) (citing, inter alia, In re Spada, 911 F.2d
705, 707 n.3 (Fed. Cir. 1990)).
We are of the opinion Appellants have established that the Examiner
has not identified any disclosure in Lin which would provide a description of
detecting elements for monitoring the fiber laser parameters, pump diode
temperature and current or power, and output power and repetition rate of a
fiber laser oscillator to one of ordinary skill in this art. App. Br. 10-13;
Reply Br. 5-9. Such a description is required to support a finding of prima
facie anticipation under § 102(a), see, e.g., In re Schreiber, 128 F.3d 1473,
1477 (Fed. Cir. 1997) (“To anticipate a claim, a prior art reference must
disclose every limitation of the claimed invention, either explicitly or
inherently.”), as well as provide the factual foundation for a conclusion of
prima facie obviousness under § 103(a). See, e.g., Oetiker, 977 F.2d at
1445; In re Warner, 379 F.2d 1011, 1017 (CCPA 1967).
Accordingly, in the absence of a prima facie case of anticipation and
of obviousness, we reverse the grounds of rejection advanced on appeal.
The Primary Examiner’s decision is reversed.
REVERSED

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