11891429 (P.T.A.B. Aug. 7, 2014)

Ex Parte Starikov et al

Patent Trial and Appeal BoardAug 7, 2014

11891429 (P.T.A.B. Aug. 7, 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. 11/891,429 08/10/2007 David Starikov 09.1002.04 1828 53189 7590 08/07/2014 Cooke Law Firm 2040 NORTH LOOP 336 WEST SUITE 123 CONROE, TX 77304 EXAMINER KRUPICKA, ADAM C ART UNIT PAPER NUMBER 1784 MAIL DATE DELIVERY MODE 08/07/2014 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 DAVID STARIKOV and ABDELHAK BENSAOULA ________________ Appeal 2013-000244 Application 11/891,429 Technology Center 1700 ________________ Before CHUNG K. PAK, CHARLES F. WARREN, and TERRY J. OWENS, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from Examiner’s rejection of claims 5–8, 10, 11, 13, and 21. We have jurisdiction under 35 U.S.C. § 6(b). The Invention Appellants claim a method for bonding two objects together. Claim 5 is illustrative: 5. A method for bonding a first object to a second object comprising: forming a micro-column array on a surface of at least one of the objects wherein the micro-column array is formed by laser treatment of the surface; Appeal 2013-000244 Application 11/891,429 2 providing a source of heat separate from the laser used to treat the surface of at least one of the objects; preheating the surface with the source of heat prior to or concurrently with the laser treatment; positioning a bonding material between the first and second objects; and bonding the first object to the second object. The References Weihs US 2002/0182436 A1 Dec. 5, 2002 Neil US 6,809,291 B1 Oct. 26, 2004 X.M. Zhang et al., Enhancement of ceramic-to-metal adhesive bonding by excimer laser surface treatment, 30 MATERIALS LETTERS 327–32 (1997) (hereinafter Zhang). The Rejections Claims 5–8, 10, 11, 13, and 21 stand rejected under 35 U.S.C. § 103 over Weihs in view of Zhang and Neil and over Zhang in view of Neil. OPINION We reverse the rejections. We need to address only the sole independent claim, i.e., claim 5. Zhang uses a pulsed excimer laser to surface treat an Si3N4-based ceramic and a structural alloy steel and then bonds the treated surfaces together using an adhesive (p. 328). The laser forms conical microstructural features (which correspond to Appellants’ micro-column array) on the ceramic surface and melts the surface of the steel (pp. 328, 330). Neil performs “precision machining of materials using lasers” (col. 1, ll. 10–11) and teaches that “[c]ompelling reasons to use ultrafast lasers include: 1) a lower threshold for ablation, 2) more deterministic damage zone, 3) ablation with minimal creation of a heat-affected zone, 4) no Appeal 2013-000244 Application 11/891,429 3 cracking or melting, and 5) reduced time to create the desired machining effect” (col. 2, ll. 25–30), but “[c]onventional ultrafast (short-pulsed) lasers have not yet achieved high average power” (col. 2, ll. 23–24). Neil combines an ultrafast laser with a continuous wave laser to provide the benefits of an ultrafast laser at high average power (col. 3, ll. 18–20). The ultrafast laser provides an initial ultrashort pulse which causes an electron avalanche, and the continuous wave laser provides, simultaneously with or shortly after the initial pulse, a longer pulse which sustains the electron avalanche such that it continues to have beneficial effects including high energy absorption, more deterministic interactions, minimized heat-affected zones, no cracking or melting, and reduced time to create a desired machining effect (col. 3, ll. 18–28; col. 3, l. 3 – col. 4, l. 8). Examiner argues that “Neil et al. teach a process for laser machining and surface treatment where a continuous wave laser is used simultaneously or as a pulsed pair, with the pulsed laser of Zhang et al. when carrying out the ablation step of Zhang et al.” (Ans. 6–7.) That argument is not well taken because Examiner has not established that Neil mentions Zhang. Examiner argues that “Neil et al. teach a process of laser machining and surface treatment also using a pulsed laser, and additionally utilizing a continuous laser to lower the ablation threshold, which minimizes the heat effected [sic, affected] zone, minimizes cracking and melting, and reduces the time required to create the desired effect (abstract, col. 1 lines 9-16, col. 3 lines 18-38, and col. 3 line 61 – col. 4 line 8)” (Ans. 9). Appeal 2013-000244 Application 11/891,429 4 The benefits referred to by Examiner are provided by Neil’s ultrafast laser (col. 2, ll. 23–30). The continuous wave laser does not cause those benefits but, rather, merely sustains them (col. 3, ll. 26–28; col. 4, ll. 2–8). Thus, Neil does not support Examiner’s argument that the additional use of Neil’s continuous wave laser provides the disclosed benefits (Ans. 9). Examiner argues that “[o]ne of ordinary skill in the art at the time of the invention would have found it obvious to use a continuous wave laser together with the pulsed laser in preforming [sic, performing] the pulse laser ablation treatment of Zhang et al. in order to perform the surface ablation at improved speed while minimizing damage” (Ans. 7). Zhang’s laser’s pulse length is 25 nanoseconds (p. 328), which is much closer to that of Neil’s continuous wave laser (100 nanoseconds to 1 microsecond) than to that of Neil’s ultrafast laser (100-600 femtoseconds) (col. 3, ll. 20–25). Thus, Zhang’s pulsed laser corresponds more to Neil’s continuous wave laser than to Neil’s ultrafast laser. Examiner’s reason for combining Neil’s continuous wave laser with Zhang’s pulsed laser is based upon Examiner erroneously considering Zhang’s pulsed laser to correspond to Neil’s ultrafast laser (Ans. 6). Examiner argues that “Neil et al., as a whole, more broadly relate[s] to the machining and surface treatment of surfaces using lasers” (Ans. 11). Neil discloses that “[a]blative processing includes micromachining, cutting and slitting, and deposition of large area thin films” (col. 1, ll. 61–63) whereas adhesive bond pretreatment, which is the process performed by Zhang (p. 328), is a form of thermal processing (col. 1, ll. 57–59). Examiner has not established that one of ordinary skill in the art would have Appeal 2013-000244 Application 11/891,429 5 considered Neil’s method for improving ablative processing (col. 2, ll. 25– 30; col. 4, ll. 2–8) to apply to thermal processing. Thus, Examiner has not set forth a factual basis which is sufficient to support a conclusion of prima facie obviousness of Appellants’ claimed method.1 See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (“A rejection based on section 103 clearly must rest on a factual basis, and these facts must be interpreted without hindsight reconstruction of the invention from the prior art”). Accordingly, we reverse the rejections. DECISION/ORDER The rejections of claims 5–8, 10, 11, 13 and 21 under 35 U.S.C. § 103 over Weihs in view of Zhang and Neil and over Zhang in view of Neil are reversed. It is ordered that Examiner’s decision is reversed. REVERSED cdc 1 Examiner does not rely upon Weihs for any disclosure that remedies the deficiency in Zhang and Neil (Ans. 3–4).