Ex Parte LI et al

Board of Patent Appeals and Interferences

Jun 16, 2010

10812113 (B.P.A.I. Jun. 16, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte MING LI and MITSUHIKO KIMOTO
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Appeal 2009-003446
Application 10/812,113
Technology Center 3700
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Decided: June 17, 2010
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Before WILLIAM F. PATE, III, MICHAEL W. O’NEILL, and KEN B.
BARRETT, Administrative Patent Judges.

BARRETT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Ming Li and Mitsuhiko Kimoto (Appellants) seek our review under 35
U.S.C. § 134 of the final rejection of claims 1, 5-14, 16-20, 22, 23, 25-29,
and 32-34. We have jurisdiction under 35 U.S.C. § 6(b).
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Application 10/812,113

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We REVERSE.

THE INVENTION
Appellants’ claimed invention pertains to micromachining using a
laser beam. Spec. 1, para. [0002]. Claim 1, reproduced below, is
representative of the subject matter on appeal.
1. A laser micromachining system for drilling holes in a
work piece comprising:
a laser beam generator for directing a laser beam having
a wavelength λ, along an optical path,
an image interpolating mask having an array of apertures,
disposed in the optical path, for receiving the laser beam and
forming a corresponding array of sub-beams of a first pitch
size, the array of sub-beams being a sub-pattern of a reduced-
size pattern formed on the work piece,
a demagnifier, disposed in the optical path, for forming
the reduced-size pattern of the array of sub-beams on the work
piece, the reduced-size pattern having a second pitch size, and
a translation stage coupled to the image interpolating
mask for moving the image interpolating mask and the array of
sub-beams in a perpendicular direction to the optical path such
that the array of sub-beams is moved in a sequence to form the
reduced-size pattern on the work piece,
wherein the second pitch size is less than λ and the first
pitch size is greater than λ, and
when the laser beam is generated and the translation
stage moves the array of sub-beams, the image interpolating
mask is effective in forming an array of holes having the second
pitch size.

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Application 10/812,113

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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Smith US 5,296,673 Mar. 22, 1994
Nakatani et al. US 5,811,754 Sept. 22, 1998
Noddin US 5,973,290 Oct. 26, 1999
Liu et al. (hereinafter “Liu ‘303”) US 6,433,303 B1 Aug. 13, 2002
Liu et al. (hereinafter “Liu ‘305”) US 6,433,305 B1 Aug. 13, 2002

The following Examiner’s rejections are before us for review:
1. Claims 1, 5, 7-14, 17-20, 22-23, 25-29, and 32-34 are rejected
under 35 U.S.C. § 103(a) as being unpatentable over Liu ‘303, Nakatani, Liu
‘305, and Smith; and
2. Claims 6 and 16 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Liu ‘303, Nakatani, Liu ‘305, Smith and Noddin.
These two rejections were made as new rejections in the Examiner’s
Answer, and differ from those in the Final Rejection at least by the addition
of the Nakatani reference. See Ans. 8 (“another reference Nakatani et al. has
been added to the rejection”). The Examiner does not repeat or discuss in
the Answer the two Nakatani-less rejections from the Final Rejection, and
thus we consider them to be withdrawn. See Manual of Patent Examining
Procedure (MPEP) § 1207.02 (8th ed., Rev. 7, Jul. 2008).

OPINION
Appellants’ claimed invention pertains to a laser drilling system and
method where the laser beam is received by an element (e.g., an image
interpolating mask) thereby forming an array of sub-beams which, in turn,
form an array of holes in the work piece. See, e.g., Claim 1 (system); Claim
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26 (method); Spec., figs. 1, 8. In order to form multiple arrays of holes in
the work piece, the sub-beams are translated in a direction perpendicular to
the direction of the optical path. To that end, Appellants’ independent
system claims 1, 5, 8, 11, 17, 20, and 23 recite “a translation stage” either for
moving the image interpolating mask and the array of sub-beams or
configured to move the array of sub-beams. Appellants’ independent
method claims 26 and 32 recite the step of translating the array of
sub-beams.
The Examiner found that Liu ‘303 discloses much of Appellants’
claimed invention (Ans. 4) but teaches translating the work piece rather than
the sub-beams, see id. at 5 (“motion of the mask is not taught”). For the new
grounds of rejection in the Answer, the Examiner relies on Nakatani for the
disclosure of both a mask moving mechanism and a workpiece moving
mechanism. Id. The Examiner reasons that:
It would have been obvious to one of ordinary skill in the art at
the time of the invention to move the mask as taught by
Nakatani et al. in the Liu et al. (‘303) apparatus because the
greater mobility would improve the circularity of the exit holes
and reduce the taper of the holes. (Liu et al. ‘303 col. 6, lines
15-16).
Id. Appellants contend that the Examiner’s articulated reasoning in support
of the conclusion of obviousness lacks a rational underpinning. E.g., Reply
Br. 7-8.
In rejecting claims under 35 U.S.C. § 103(a), the examiner bears the
initial burden of establishing a prima facie case of obviousness. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992); see also In re Piasecki, 745
F.2d 1468, 1472 (Fed. Cir. 1984). The analysis supporting an obviousness
rejection should contain articulated reasoning with some rational
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underpinning. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (citations
omitted) (cited approvingly in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007)).
Appellants correctly note (Reply Br. 6) that the portion of Liu ‘303
upon which the Examiner bases the conclusion of obviousness, when read in
its entirety, discloses that a rotating half-wave plate or similar device may
be used to improve circularity and to possibly reduce hole taper. See Liu
‘303, col. 6, ll. 13-16. Appellants contend that this disclosure of Liu ‘303
has nothing to do with a greater mobility of laser sub-beams that may be
achieved by adding a mask moving mechanism as disclosed by Nakatani.
See Reply Br. 6. Appellants assert that the quarter-wave plate mentioned by
Liu ‘303 pertains to controlling the polarization of the laser beam. Id. This
assertion is consistent with Liu’s description of a wave plate. See Liu ‘303,
col. 2, l. 66 – col. 3, l. 2 (“The quarter-wave plate 113 changes the
polarization of the laser beam from linear to circular polarization, which the
inventors have determined is desirable for drilling round holes.”). The
Examiner does not explain why translational mobility would be expected to
improve hole circularity and reduce taper. Thus, we are left with the
impression that the Examiner’s reliance on Liu ‘303 as support for the
conclusion of obviousness is misplaced.
In light of the above, we conclude that the Examiner has not made
sufficient findings and has not articulated adequate reasoning with rational
underpinning to explain why one having ordinary skill in the art would have
combined the elements of, inter alia, Liu ‘303 and Nakatani so as to render
obvious Appellants’ claimed subject matter. As such, we cannot sustain the
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rejection of claims 1, 5, 7-14, 17-20, 22-23, 25-29, and 32-34 as being
unpatentable over Liu ‘303, Nakatani, Liu ‘305, and Smith.
The second rejection pertains to claims 6 and 16, which depend from
independent claims 1 and 11, respectively. The Examiner found that Noddin
discloses a crystal for harmonic generation, but does not rely on Noddin in
any manner that cures the deficiency of the underlying rejection of claims 1
and 11. See Ans. 6-7, 9-10. As such, we also cannot sustain the rejection of
claims 6 and 16 as unpatentable over Liu ‘303, Nakatani, Liu ‘305, Smith
and Noddin.

DECISION
The decision of the Examiner to reject claims 1, 5-14, 16-20, 22, 23,
25-29, and 32-34 is reversed.

REVERSED

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