Ex Parte Yoshida et al

Patent Trial and Appeal Board

Mar 21, 2017

12988495 (P.T.A.B. Mar. 21, 2017)

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.
12/988,495 01/04/2011 Kunio Yoshida 5354-78PUS - 335222 1973
27799 7590
Cozen O'Connor
277 Park Avenue, 20th floor
NEW YORK, NY 10172
EXAMINER
HAGAN, SEAN P
ART UNIT PAPER NUMBER
2828
NOTIFICATION DATE DELIVERY MODE
03/23/2017 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):
patentsecretary @ cozen. com
patentdocket@cozen.com
patentsorter@cozen.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KUNIO YOSHIDA, TAKASHI YABE, SHIGEAKI UCHIDA,
TOMOMASA OHKUBO, and KIYOSHI KATO1
Appeal 2016-001806
Application 12/988,495
Technology Center 2800
Before BEVERLY A. FRANKLIN, WESLEY B. DERRICK, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 13, 15—18, and 21—23. We have jurisdiction under
35 U.S.C. § 6(b). We AFFIRM.
BACKGROUND
The subject matter on appeal relates to a solar-pumped laser oscillator.
E.g., Spec. 11; claims 13. Claim 13 is reproduced below from page 12
(Claims Appendix) of the Appeal Brief with emphasis added to disputed
limitations:
1 According to the Appellants, the real party in interest is Electra Holdings
Co., Ltd. App. Br. 2.
Appeal 2016-001806
Application 12/988,495
13. A laser oscillator excited by solar rays to oscillate on a terrestrial
surface comprising:
a light guide comprising:
a laser cavity having a solar rays entrance window,
a laser medium disposed in the laser cavity along a light guide
optical axis, and
a reflecting surface arrangement having reflecting surfaces
arranged around the light guide optical axis within the laser
cavity to provide tapered reflecting surfaces wherein a
spacing between diametrically opposed reflecting surfaces is
decreased from the solar rays entrance window in a direction
of the light guide optical axis, the laser medium having an
output end at an end of the laser cavity opposite to the
entrance window;
a single Fresnel lens having a lens optical axis, for collecting
solar rays on an area covering the entrance window of the light
guide along the lens optical axis, the single Fresnel lens being
formed by a dividing method, the single Fresnel lens being made
of plastics where fluorescent materials are added, a slot being
formed in a light outgoing surface of the single Fresnel lens; and
an output mirror arranged to be opposed to the output end of the
laser medium;
wherein the optical axis of the single Fresnel lens is provided in
an inclined manner with respect to the optical axis of the laser
medium; and
wherein an angle of the light guide optical axis with respect to
the lens optical axis is greater than or equal to 15° and less than
or equal to 25°.
REJECTIONS ON APPEAL
1. Claims 13, 15—18, 21, and 23 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Imasaki (US 6,913,735 B2, issued July 5,
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Application 12/988,495
2005) in view of Lee (US 4,424,592, issued Jan. 3, 1984) and Fujino2 (JP
05-063263).
2. Claim 22 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Imasaki in view of Lee and Fujino, further in view of Joy
(US 3,784,929, issued Jan. 8, 1974).
ANALYSIS
The Appellants argue the claims as a group, focusing on limitations
that appear in claim 13. We select claim 13 as representative of the rejected
claims. The remaining claims on appeal will stand or fall with claim 13.
After review of the cited evidence in the appeal record and the
opposing positions of the Appellants and the Examiner, we determine that
the Appellants have not identified reversible error in the Examiner’s
rejections. We affirm the rejections for reasons set forth in the Final Action,
in the Advisory Action dated Oct. 22, 2014 (“AA1”), in the Advisory Action
dated Dec. 24, 2014 (“AA2”), and in the Examiner’s Answer. See generally
Final Act. 2—9; AA1 at 2; AA2 at 2; Ans. 2—13. We add the following for
emphasis.
The Examiner finds, inter alia, that the combination of Imasaki and
Lee discloses a laser oscillator comprising a light guide, a single Fresnel
lens, and an output mirror, but that Imasaki and Lee do not teach or suggest
inclining the optical axis of the Fresnel lens with respect to the optical axis
2 The prosecution history appears to include two different translations of
Fujino. See Office Action Response dated June 16, 2014 (attaching
translation); Office Action Response dated Dec. 1, 2014 (attaching
translation). The Appellants do not assert any material difference in the two
translations. Citations to Fujino in this Decision are to the translation
provided on Dec. 1, 2014.
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Application 12/988,495
of the laser medium, or the recited incline angle of “greater than or equal to
15° and less than or equal to 25°.” Final Act. 3—5. Relying on Figure 3 of
Fujino, the Examiner finds that Fujino discloses inclination of the optical
axis of a Fresnel lens with respect to the optical axis of the laser medium.
Id. at 4—5. The Examiner concludes that it would have been obvious to
combine Fujino with Imasaki and Lee because “[t]he use of an asymmetric
collecting region and pump light inputs along an axis other than the laser
optical axis as disclosed by Fujino would have been a suitable alternative to
the configuration of the collecting regions proposed by Imasaki and Lee.
The Selection of something based on its known suitability for its intended
use has been held to support a prima facie case of obviousness.” Id. at 5. In
the Answer, the Examiner further explains that “[t]he purpose of the
embodiment shown in Figure 3 [of Fujino] is ... to increase the number of
reflections undergone by each pump light input so as to improve the
absorption of the pump light,” thereby “improving the efficiency of the
pump beam.” Ans. 10; see also Ans. 7; AA2 at 2,13 (noting that, similar to
Fujino, 194 of the Appellants’ Specification also discloses that a purpose of
the incline is to increase the number of reflections).
Concerning the claimed incline angle of “greater than or equal to 15°
and less than or equal to 25°,” the Examiner determines that “[i]t would have
been obvious ... to regulate the tilt of the collecting structure so as to adjust
the manner in which the light is collected, since it has been held that where
the general conditions of a claim are disclosed in the prior art, discovering
the optimum or workable ranges involves only routine skill in the art.” Final
Act. 7 (citing In re Alter, 220 F.2d 454, 456 (CCPA 1955)); Ans. 4.
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Application 12/988,495
The Appellants first argue that the claimed incline angle of “greater
than or equal to 15° and less than or equal to 25°” is critical because it
produces unexpected results. See App. Br. 3^4. For support, they rely on
194 of the Specification and assert that 194 discloses certain benefits
achieved by the claimed incline. Id. at 4.
That argument is not persuasive. See Iron Grip Barbell Co. v. USA
Sports, Inc., 392 F.3d 1317, 1322—23 (Fed. Cir. 2004) (“[E]ven though a
modification results in great improvement and utility over the prior art, it
may still not be patentable if the modification was within the capabilities of
one skilled in the art, unless the claimed ranges produce a new and
unexpected result which is different in kind and not merely in degree from
the results of the prior art.” (internal quotation marks and alterations
omitted)). We do find not the benefits set forth in 194 sufficient to establish
criticality of the claimed range. Further, even if this range was critical to
obtain the desired benefits, the Appellants make no meaningful argument,
and provide no evidence, that the alleged benefits would have been
unexpected to a person of ordinary skill in the art. “[I]t is not enough to
show that results are obtained which differ from those obtained in the prior
art: that difference must be shown to be an unexpected difference.” In re
Klosak, 455 F.2d 1077, 1080 (CCPA 1972) (emphasis in original). Nor do
the Appellants identify the closest prior art or provide any comparison to the
closest prior art. See In re Baxter TravenolLabs., 952 F.2d 388, 392 (Fed.
Cir. 1991) (“[W]hen unexpected results are used as evidence of
nonobviousness, the results must be shown to be unexpected compared with
the closest prior art.”). The Appellants have not shown that unexpected
results support a conclusion of nonobviousness.
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Application 12/988,495
The Appellants’ next group of arguments discusses Figures 1 and 2 of
Fujino, focusing largely on whether those figures teach the claimed incline,
and whether various embodiments of Fujino could physically be combined
with each other. See App. Br. 5—10. Those arguments are not persuasive for
reasons set forth by the Examiner. See Ans. 4—13. In particular, we note
that the Examiner does not rely on Figures 1 and 2 of Fujino for teaching the
claimed incline; the Examiner relies on Figure 3 for that limitation. See
Final Act. 4; Ans. 8 (“[T]he rejection of claim 13 is based on the
combination of the teachings of Imasaki and Lee with Figure 3 of Fujino,
not Figures 1 or 2.”). As the Examiner explains, Fujino Figure 3 depicts an
optical axis of lens 6 inclined with respect to the optical axis of the laser
medium 1. See Fujino Fig. 3. Similar to the Appellants’ own Specification,
see Spec. 194, Fujino discloses that the angle can be optimized to increase
the number of reflections through laser medium, see Fujino 126. The
Appellants’ arguments concerning Fujino Figures 1 and 2 do not
persuasively contest the Examiner’s findings and conclusions concerning
Fujino Figure 3 and motivation to incorporate such an incline into the laser
oscillator of Imasaki in view of Lee. Cf. In re Keller, 642 F.2d 413, 425
(CCPA 1981) (“The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the structure of the
primary reference .... Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill in the art.”).
Concerning Figure 3 of Fujino, the Appellants point out that it
includes two lenses rather than one, and they argue that the two lenses “are
indispensable” to the object of Fujino, “while in contrast the lens optical axis
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Application 12/988,495
of the single Fresnel lens is inclined to the optical axis of the laser medium
as expressly recited in independent claim 13.” App. Br. 6.
That argument is not persuasive for reasons set forth by the Examiner.
See Ans. 9-10. Namely, a person of ordinary skill in the art would have
expected an incline to increase reflections regardless of whether one lens or
two lenses were used, and the Appellants do not identify any teaching in
Fujino that might suggest that the benefits of angle inclination (i.e., increase
the number of reflections) would not apply to a single-lens oscillator such as
that of Imasaki. See id.
For those reasons, and for reasons stated by the Examiner, see
generally Final Act. 2—9; AA1 at 2; AA2 at 2; Ans. 2—13, we are not
persuaded of reversible error in the Examiner’s rejection of claim 13.
CONCLUSION
We AFFIRM the Examiner’s rejections of claims 13, 15—18, and 21—
23.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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