Ex Parte Xuan et al

Patent Trial and Appeal Board

Feb 29, 2016

12980014 (P.T.A.B. Feb. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/980,014 12/28/2010
109610 7590 03/02/2016
Bookoff McAndrews, PLLC
2401 Pennsylvania Avenue, NW, Suite 450
Washington, DC 20037
FIRST NAMED INVENTOR
Rongwei Jason Xuan
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.
11900-0034-01000 4016
EXAMINER
CARTER, MICHAEL W
ART UNIT PAPER NUMBER
2828
NOTIFICATION DATE DELIVERY MODE
03/02/2016 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):
usptomail@bookoffmcandrews.com
Kross@bookoffmcandrews.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RONGWEI JASON XUAN, RUSSEL E. KLEIN,
MICHAEL A. SCOTT, JAMES E. JOHNSON, EDWARD D. REED, JR.,
and XIRONG YANG
Appeal2014-004379
Application 12/980,014
Technology Center 2800
Before MICHAEL P. COLAIANNI, JAMES C. HOUSEL, and
JULIA HEANEY, Administrative Patent Judges.
COLAIANNI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134 the final rejection of claims
1-20. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
Appellants' invention is directed to laser gain media secured in a laser
resonator with a cooling jacket surrounding the laser gain media (Spec. 1 :9-
10; Spee. 4: 3-7). The gain media 104 is secured to the coo ling jacket 160
using a coupling member 184 situated in an annular groove 182 formed in
Appeal2014-004379
Application 12/980,014
the cooling jacket and an annular groove 180 formed in the gain media
directly facing the annular groove 182 (Fig. 2; Spec. 9:23-28).
Claim 1 is illustrative:
1. A laser resonator comprising:
a cylindrical gain medium having a central axis, an outer side surface,
two opposing end faces and a first depression in the outer side surface;
a cooling system comprising a cooling jacket disposed around the gain
medium and defining a cooling cavity in which cooling fluid is guided over
the side surface, the cooling jacket comprising a second depression; and
a coupling member received within the first and second depressions,
wherein movement of the first depression along the central axis relative to
the cooling jacket is restricted by the coupling member.
Appellants appeal the following rejections:
1. Claims 1---6, 9-14, and 16-20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Koechner (US 3,665,337, issued May 23, 1972) in
view of Quaile (US 5,080,521, issued Jan. 14, 1992).
2. Claims 7, 8, and 15 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Koechner in view of Quaile and Fujikawa et al. (US
2004/0240496 Al, published Dec. 2, 2004) (hereinafter "Fujikawa").
Appellants argue the subject matter of claims 1, 11, and 16 (Br. 7-14).
Appellants make the same arguments regarding claims 1, 11, and 16. Id.
Therefore, we select claim 1 as representative of the group on which to
render our Decision. The non-argued dependent claims will stand or fall
with our analysis of claim 1.
FINDINGS OF FACT AND ANALYSES
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Application 12/980,014
The Examiner finds that Koechner discloses all the features of claim
1, except for the laser resonator and a cylindrical gain medium with a first
depression, and a coupling member received within the first depression
(Final Act. 2-3). The Examiner finds that Koechner teaches a laser rod and
that it is well known to place a laser rod in a resonator (Final Act. 2).
Therefore, the Examiner concludes that it would have been obvious to
include Koechner' s laser rod in a laser resonator. Id. Appellants do not
dispute that conclusion of the Examiner (Br. generally).
The Examiner further finds that Quaile teaches forming a first
depression in the outer surface of a concentric member and a coupling
member received in the first surface to restrict movement of the first
depression along the central axis of the member and thus relative movement
of the two concentric members (Final Act. 3). The Examiner concludes that
it would have been obvious to combine the first depression of Quaile with
the device of Koechner in order to prevent relative displacement of the
concentric members and ensure the proper alignment of the rod in the laser
device (Final Act. 3).
Appellants argue that Quaile is non-analogous art (Br. 7-8).
Appellants contend that Quaile is not directed to a laser gain medium and
thus is in a different field of endeavor (Br. 7). Appellants argue that Quaile
is not reasonably pertinent to Appellants' problem: preventing the position
of the laser gain medium within the laser resonator from shifting over time
in response to thermal expansion and contraction of the laser gain medium
(Br. 8). Appellants contend that Quaile is directed to preventing relative
movement of concentric machine parts (Br. 8).
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Application 12/980,014
We agree with the Examiner's finding that Quaile is analogous art in
that it is reasonably pertinent to Appellants' problem of securing two
concentric members together using a coupling agent (i.e., 0-ring) (Ans. 2).
That Quaile does not disclose a laser gain medium is not dispositive because
"[ c ]ommon sense teaches, however, that familiar items may have obvious
uses beyond their primary purposes, and in many cases a person of ordinary
skill will be able to fit the teachings of multiple patents together like pieces
of a puzzle." KSR Int'! Co. v. Teleflex, Inc., 550 US 398, 420 (Fed. Cir.
2007). In the present case, Appellants seek to couple together two
concentric structures (i.e., the cooling jacket and laser gain medium) to resist
movement of the laser gain medium and maintain the position of the cooling
jacket relative to the laser gain medium (Spec. 2:20-25). Quaile is
reasonably pertinent to the problem of keeping two concentric bodies
aligned by resisting their relative movement. Quaile uses an 0-ring
positioned in two facing annular grooves to couple the two concentric bodies
together. Therefore, we find that Quaile is analogous art.
Appellants argue that there is no motivation for modifying Koechner's
laser gain medium to have a groove as taught by Quaile so as to ensure
proper alignment of the laser gain medium in the laser device (Br. 10).
Appellants contend that Koechner already has sleeves and recesses that
permit the laser gain medium to be aligned so that it would have been an
unnecessary expense to modify the laser gain medium to have a groove (Br.
10). Appellants argue that Koechner teaches that the laser rod (i.e., gain
medium) is supported identically on each end of the rod so that when
modified by Quaile each end of the laser medium would be modified to have
the groove (Br. 11 ). Appellants contend that if each end of the laser medium
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Application 12/980,014
has the grooves and 0-rings then the laser medium would not be allowed to
expand and the laser medium would crack and fail (Br. 11-12).
Appellants' arguments are unpersuasive. The Examiner correctly
finds that Quaile provides the teaching of applying the 0-ring coupling
member in between two grooves on only one end of the concentric bodies
(Ans. 4--5). The end not coupled would be allowed to expand as necessary.
The Examiner's reason for the modification is "to prevent relative
displacement of the concentric members [] and ensure the proper alignment
of the rod in the laser device" (Final Act. 3). The Examiner finds that based
upon the teachings of Koechner and Quaile, one of ordinary skill in the art
would have modified Koechner' s laser gain medium to have a groove as a
known alternative to the non-grooved inner member ofKoechner with the
groove ensuring that the inner and outer members are aligned properly and
not displaced in case an external force acts on the concentric members (Ans.
3). The Examiner finds that maintaining alignment is especially important
in light of Koechner' s teaching of positioning a metal band 18 between the
0-ring 25 and the laser gain medium 17 to prevent exposing 0-ring 25 to the
damaging laser light that causes premature seal failure (Ans. 3--4).
Appellants do not respond to these reasonable findings of the Examiner (no
Reply Brief).
On this record, we find that the preponderance of the evidence favors
the Examiner's obviousness conclusion. For the above reasons, we affirm
the Examiner's § 103 rejections of record.
DECISION
The Examiner's decision is affirmed.
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THvIE PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l).
ORDER
AFFIRMED
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