Ex Parte Rossbach

Patent Trial and Appeal Board

May 25, 2016

13487611 (P.T.A.B. May. 25, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/487,611 06/04/2012
128836 7590 05/27/2016
Womble Carlyle Sandridge & Rice LLP
Attn: IP Docketing
P.O. Box 7037
Atlanta, GA 30357-0037
FIRST NAMED INVENTOR
Dennis Rossbach
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.
5013899.0lOUSl 6265
EXAMINER
VAN ROY, TOD THOMAS
ART UNIT PAPER NUMBER
2828
NOTIFICATION DATE DELIVERY MODE
05/27/2016 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):
ipdocketing@wcsr.com
patentadmin@Boeing.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL
BOARD
Ex parte DENNIS ROSSBACH
Appeal2015---000390
Application 13/487 ,611
Technology Center 2800
Before CATHERINE Q. TIMM, KAREN M. HASTINGS, and JULIA
HEANEY, Administrative Patent Judges.
HASTINGS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant 1 seeks our review under 35 U.S.C. § 134 of the Examiner's
final decision rejecting claims 5, 8-13, and 16. We have jurisdiction over
the appeal under 35 U.S.C. § 6(b ).
We REVERSE.
Claim 5 is illustrative of the claimed subject matter (emphasis added):
5. A laser resonator comprising:
a cavity bounded by an end mirror and output coupler;
one or more gain media between the end mirror and
output coupler;
1 The real party in interest is The Boeing Company (App. Br. 1 ).
Appeal2015---000390
Application 13/487,611
one or more fold mirrors between the end mirror and
output coupler, each of the one or more fold mirrors being
rotatable about its principal axis to correct lower spatial
frequency error within the cavity; and
a modal corrector mirror between the end mirror and
output coupler, and separate from the one or more fold mirrors,
the modal corrector mirror comprising:
a controllable-profile faceplate including an optically-
treated front surface; and
an array of static actuators comprising a plurality of
adjustable elements with a respective plurality of compliant
mechanisms located between the plurality of adjustable
elements and faceplate, each static actuator of the array of static
actuators comprising:
an adjustable element of the plurality of adjustable
elements; and
a compliant mechanism of the respective plurality of
compiiant mechanisms, the compiiant mechanism being iocated
between the adjustable element and faceplate,
the adjustable element being configured to exert a
selectable, localized push-pull force on the faceplate via the
compliant mechanism, and the compliant mechanism being
configured to scale the respective force, to correct residual
higher spatial frequency error within the cavity, and
the modal corrector mirror including only the plurality of
adjustable elements with the respective plurality of compliant
mechanisms located between the plurality of adjustable
elements and faceplate.
The Examiner has rejected claimed 5, 8-13, and 16 under 35 U.S.C.
§ 103(a) as being unpatentable over Vetrovec (U.S. 2002/0172253,
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Appeal2015---000390
Application 13/487,611
published Nov. 21, 2002) in view of Phillips et al., (U.S. 2003/0234970,
published Dec. 25, 2003; hereinafter "Phillips"). Claims 5 and 12 are
independent claims, and Appellant argues that claim 12 and the dependent
claims are allowable for the same reasons as claim 5.
ANALYSIS
"[D]uring examination proceedings, claims are given their broadest
reasonable interpretation consistent with the specification." In re Translogic
Tech., Inc., 504 F.3d 1249, 1256 (Fed. Cir. 2007), quoting In re Hyatt,
211F.3d1367, 1372 (Fed. Cir. 2000). See also, In re Am. Acad. of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (The scope of the claims in
patent applications is not determined solely on the basis of the claim
language, but upon giving claims their broadest reasonable construction in
light of the specification as it would be interpreted by one of ordinary skill in
the art.); Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir. 2005)
("[T]he specification 'is aiways highiy reievant to the claim construction
analysis. Usually, it is dispositive; it is the single best guide to the meaning
of a disputed term."' (Internal citation omitted)).
Then, the Examiner bears the initial burden of presenting a prima
facie case of obviousness based on the interpreted claim language. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
Upon consideration of the evidence on this record in light of the
arguments advanced by the Examiner and Appellant, we concur with
Appellant that the Examiner has not carried the burden of establishing that
the subject matter recited in independent claim 5 would have been obvious
over the applied prior art of Vetrovec and Phillips.
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Appeal2015---000390
Application 13/487,611
As explained by Appellant in the Briefs, the Examiner has not shown
that the combination of Vetrovec and Philips describes "each of the one or
more fold mirrors being rotatable about its principal axis to correct lower
spatial frequency error within the cavity" as recited in claim 5 (emphasis
added) (App. Br. 4--5; Reply Br. 2-3). The Examiner points to Vetrovec as
disclosing the claimed limitations for the laser resonator, with Phillips
disclosing the modal corrector mirror elements (Final Rej. 4--6; Ans. 2--4 ).
To meet the limitation of the mirror being "rotatable about its principal
axis," the Examiner relies on Vetrovec's Figure 5 and states that the figure
discloses that the mirror rotates "near," "in the vicinity of," and "reasonably
close to" the identified axis, in light of the dictionary definition of "about"
(Final Rej. 2-3; Ans. 2).
Appellant contends that Vetrovec' s mirror is not rotatable about its
principal axis, as required by claim 5 (App. Br. 4--5). Appellant states:
"[i]nstead, Vetrovec's steering mirror is tiltable (or rotatable) about an axis
perpendicular to the principal axis . . . . The two axes are clearly distinct as
are the rotations of the steering mirror about them" (App. Br. 5). Moreover,
Appellant's Specification details a mirror undergoing both tilting about one
axis and rotating about a different axis and distinguishes between the two
axes and movements (App. Br. 5; Spec. p. 6, 11. 3-22; Fig. 1 ). As such, it is
unreasonable to interpret the axes and movements to be the same, so
V etrovec' s tilting cannot read on the claimed rotation about the principal
axis. Additionally, the Examiner's stated interpretation of "about" is too
broad because the claim terms must be read in light of the Specification and
the claim as a whole. Phillips, 415 F.3d at 1315. Here, the claim term is
"being rotatable about its principal axis," so the claim limitation must be
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Appeal2015---000390
Application 13/487,611
interpreted to mean that the mirror rotates around the imaginary line that
forms the mirror's principal axis (Reply Br. 3). The Examiner has not
advanced any evidence or arguments to suggest that rotating the mirror
around its principal axis would have been obvious in light of Vetrovec's
mirror tilting about an axis perpendicular to the principal axis (see Ans.
generally).
Because the Examiner does not rely on Phillips to remedy this
deficiency, we need not address Appellant's arguments regarding the
motivation to combine the references (See Final Rej. 4--5; Ans. 3--4). For
similar reasons, we cannot sustain the obviousness rejection of claim 5 based
on the combination of Vetrovec in view of Phillips because Phillips does not
cure the aforementioned shortfall.
Thus, the Examiner's remaining 35 U.S.C. § 103(a) rejections are also
reversed.
DECISION
The Examiner's decision is reversed.
ORDER
REVERSED
5