12175302 (P.T.A.B. Jul. 23, 2014)

Ex Parte Pomeranz

Patent Trial and Appeal BoardJul 23, 2014

12175302 (P.T.A.B. Jul. 23, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 12/175,302 07/17/2008 Leonard A. Pomeranz 20030016 DIV 1295 22500 7590 07/24/2014 BAE SYSTEMS PO BOX 868 NHQ1-719 NASHUA, NH 03061-0868 EXAMINER CARTER, MICHAEL W ART UNIT PAPER NUMBER 2828 MAIL DATE DELIVERY MODE 07/24/2014 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte LEONARD A. POMERANZ ____________ Appeal 2012-010325 Application 12/175,302 Technology Center 2800 ____________ Before PETER F. KRATZ, JEFFREY T. SMITH, and CHRISTOPHER M. KAISER, Administrative Patent Judges. KAISER, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 from the decision of the Primary Examiner finally rejecting claims 1-20 (“Final Rejection”). We have jurisdiction under 35 U.S.C. § 6(b). We affirm. OPINION Appellant’s invention is directed to “a laser in the 2.0 to 5.0 micron spectral region that is relatively simple, that can simultaneously produce Appeal 2012-010325 Application 12/175,302 2 multi-spectral outputs, and [that] can operate without the need for exhaustive cooling or power.” Spec. 4, ll. 25-27. Claim 1, reproduced below, is representative of the appealed subject matter: 1. A tunable solid state laser system for producing a simultaneous, multi-spectral output comprising: a laser crystal doped with an amount of thulium activator ions sufficient to produce a first laser emission at substantially 2 microns when the laser crystal is pumped by a pump beam; a pump laser for generating the pump beam for pumping the laser crystal; an optical parametric oscillator [(OPO)] having a plurality of Zinc Germanium Phosphide (ZGP) crystals, each of the ZGP crystals having the first laser emission impinging thereon for converting some of said first laser emission into two laser emissions having different wavelengths, the laser emissions from each of the plurality of ZGP crystals being different than the laser emissions from all others of the plurality of ZGP crystals; wherein the unconverted residual first laser emission and the converted first laser emission having different wavelengths comprise the simultaneous, multi-spectral output from the solid state laser system, and all wavelengths are in the mid infrared range between 2.0 microns and 5.0 microns. Claims App., Br. 17. The Examiner rejected claims 1, 10-18, and 20 under 35 U.S.C. § 103(a) as obvious over the combination of Esterowitz ’243,1 Esterowitz ’803,2 and Geiger.3 Final Rejection 2. The Examiner also rejected claims 2- 1 Esterowitz et al., US 6,358,243 B1, issued Mar. 19, 2002. 2 Esterowitz et al., US 4,965,803, issued Oct. 23, 1990. 3 Geiger, US 5,117,126, issued May 26, 1992. Appeal 2012-010325 Application 12/175,302 3 9 and 19 under 35 U.S.C. § 103(a) as obvious over the combination of Esterowitz ’243, Esterowitz ’803, Geiger, and Esterowitz ’433.4 Id. at 6. With respect to independent claims 1, 13, and 17, Appellant argues the Examiner erred in four ways.5 First, Appellant argues that, while the claims require that the output of the laser system include some residual portion of the pump beam, Geiger teaches only that the pump beam is “depleted in the first OPO crystal.” Br. 7-8. The Examiner responds that Esterowitz ’243 teaches some residual pump beam surviving its encounter with the OPO crystal, that Geiger does not require complete depletion of the pump beam in the first OPO crystal or even in the first two OPO crystals, and that “it is well known that the OPO conversion process is not totally efficient.” Answer 14. We agree with the Examiner. The Final Rejection relied on Esterowitz ’243, not Geiger, to teach the residual pump beam being part of the OPO output, so Geiger’s failure to teach this limitation is unimportant. Final Rejection 2. Moreover, Geiger’s recitation of “the pump beam [being] depleted by the first crystal before reaching the second crystal,” Geiger col. 5, ll. 37-38, does not require obliteration of the pump beam by the first crystal. Rather, it implies that some of the pump beam (albeit a “depleted” portion of it) “reach[es] the second crystal.” Id. Second, Appellant argues that a person of ordinary skill in the art would not have modified Esterowitz ’243 to produce a laser system that would create a beam having components with all wavelengths either produced by the pump laser or created by the OPO crystals, as required by 4 Esterowitz et al., US 5,381,433, issued Jan. 10, 1995. 5 Appellants do not present any separate arguments with respect to the dependent claims. Appeal 2012-010325 Application 12/175,302 4 the claims. Br. 9-10. According to Appellant, Esterowitz ’243 requires removing the residual pump beam from the OPO emission in order to create a useful beam, and a person of ordinary skill in the art would not have modified Esterowitz ’243 to include the residual pump beam in the OPO emission because doing so would render Esterowitz ’243 useless for its intended purpose. Br. 9-10. We do not find this argument persuasive. While the combination of Esterowitz ’243, Esterowitz ’803, and Geiger might not be appropriate for use as the medical laser of Esterowitz ’243, there is no evidence that it would be inappropriate for use as the LIDAR laser of Geiger. Appellant’s narrow focus on preserving the intended function of Esterowitz ’243 is improper, because it does not matter which reference is considered the primary reference whose intended use must be preserved. “[W]here a rejection is predicated on two references each containing pertinent disclosure which has been pointed out to the applicant, we deem it to be of no significance, but merely a matter of exposition, that the rejection is stated to be on A in view of B instead of on B in view of A, or to term one reference primary and the other secondary.” In re Bush, 296 F.2d 491, 496 (CCPA 1961). Third, Appellant argues that the prior-art references relied upon by the Examiner teaches away from the claimed invention, because all the references either teach “no residual pump beam” or teach a residual pump beam that “is dumped and does not appear at the output.” Br. 11. This argument is unpersuasive, because Appellant does not point to any actual teaching away. In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (holding that a prior-art reference that discloses a different solution to a similar Appeal 2012-010325 Application 12/175,302 5 problem does not teach away from the claimed subject matter unless it also criticizes, discredits or otherwise discourages the solution claimed). Finally, Appellant argues that the Examiner erred by relying on prior- art references that disclose only depleting the pump beam or dumping the residual portion of the pump beam, as opposed to including a residual portion of the pump beam in the system output, which Appellant’s claims require. Br. 7, 11. As noted above, the Final Rejection relies on Esterowitz ’243 to teach “the unconverted residual laser emission” being part of “the simultaneous, multi-spectral output from the solid state laser system.” Final Rejection 2. Appellant’s argument is that this finding was incorrect because Esterowitz ’243 teaches dumping the residual pump beam rather than directing it to the same place as the emissions from the OPO crystal, implying that Appellant views the “solid state laser system” in Esterowitz ’243 as comprising not merely the pump laser, transfer optics, and OPO, but also the collection of beam splitters, beam combiners, and other equipment downstream of the OPO outlet that separate the residual pump beam from the other beams and direct the pump beam to a beam stop. We disagree that the “solid state laser system” should be interpreted to include any equipment installed downstream of the OPO. Appellant’s own claims define the “solid state laser system” as including merely “a laser crystal,” “a pump laser,” and “an optical parametric oscillator.” Br. 17. Were we to interpret “solid state laser system” as also requiring the additional equipment disclosed in Esterowitz ’243, we would fail to give the term its broadest reasonable interpretation, as we are required to do. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Instead, we agree with the Examiner that a beam emitted from the OPO that includes Appeal 2012-010325 Application 12/175,302 6 a residual portion of the pump beam is sufficient to satisfy the limitation of Appellant’s claims that requires “the unconverted residual first laser emission” to be part of “the simultaneous, multi-spectral output from the solid state laser system.” We also agree with the Examiner that Esterowitz ’243 shows such a beam being emitted from the OPO. Esterowitz ’243 Fig. 1 (showing beam splitters for separating and directing residual pump beam to beam stop as downstream of OPO outlet), col. 5, ll. 27-38 (discussing presence of residual pump beam at beam splitter downstream of OPO outlet). Because we are not persuaded by any of Appellant’s arguments, we affirm the Examiner’s rejection of claims 1-20. ORDER The Examiner’s decision rejecting claims 1-20 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. AFFIRMED tc