Stephan Gronenborn

Patent Trials and Appeals Board

Dec 2, 2019

14650606 - (D) (P.T.A.B. Dec. 2, 2019)

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.
14/650,606 06/09/2015 STEPHAN GRONENBORN 2012P01531WOUS 7664
24737 7590 12/02/2019
PHILIPS INTELLECTUAL PROPERTY & STANDARDS
465 Columbus Avenue
Suite 340
Valhalla, NY 10595
EXAMINER
HAGAN, SEAN P
ART UNIT PAPER NUMBER
2828
NOTIFICATION DATE DELIVERY MODE
12/02/2019 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):
katelyn.mulroy@philips.com
marianne.fox@philips.com
patti.demichele@Philips.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte STEPHAN GRONENBORN

Appeal 2018-007350
Application 14/650,606
Technology Center 2800
____________

Before MICHAEL P. COLAIANNI, CHRISTOPHER C. KENNEDY, and
LILAN REN, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–10. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Koninklijke
Philips N.V. Appeal Br. 3.
Appeal 2018-007350
Application 14/650,606

2
Appellant’s invention is directed to an optically pumped solid state
laser device (Spec. 1; Claim 1).
Claim 1 is representative of the subject matter on appeal:
An optically pumped solid state laser device, comprising:

a laser resonator;

at least one solid state laser media arranged in the laser resonator, the
laser resonator being formed of at least one first resonator mirror arranged at
a first side of the at least one solid state laser media and at least one second
resonator mirror arranged at a second side of the at least one solid state laser
media opposing said first side, said at least one first and second resonator
mirrors being arranged to guide laser radiation of said laser resonator on at
least two different straight paths through the at least one solid state laser
media;

at least one pump laser diode and pump radiation reflecting mirror,
said at least one pump laser diode being arranged to optically pump said at
least one solid state laser media by reflection of pump radiation at said at
least one pump radiation reflecting mirror, said at least one pump radiation
reflecting mirror being arranged on said second side and designed to directly
reflect said pump radiation to the at least one solid state laser media,

wherein said at least one pump reflecting mirror and second resonator
mirror are integrally formed in a single mirror element.

Appellant appeals the following rejections:
1. Claims 1–10 are rejected under 35 U.S.C. § 112(a) as failing to
comply with the enablement requirement.
2. Claims 1–3 and 10 are rejected under 35 U.S.C. § 103 as
unpatentable over Caprara (US 6,097,742, iss. Aug. 1, 2000) in
view of Cho (US 2006/0274807 A1, pub. Dec. 7, 2006).
3. Claims 4 and 5 are rejected under 35 U.S.C. § 103 as
Appeal 2018-007350
Application 14/650,606

3
unpatentable over Caprara in view of Cho and Mefferd (US
2006/0251141 A1, pub. Nov. 9, 2006).
4. Claims 6–9 are rejected under 35 U.S.C. § 103 as unpatentable
over Caprara in view of Cho and Kuehnelt (DE 2004/012014
A1, pub. Oct. 13, 2005).

35 U.S.C. § 112(a): Enablement

The Examiner’s conclusions regarding the enablement of the claims is
located on page 6 of the Final Office Action. The Examiner determines that
the present disclosure does not appear to indicate how a resonator may have
two straight paths with only one second resonating mirror (Final Act. 6).
The Examiner finds that Appellant discloses in Figures 1 and 4 that multiple
mirrors 310 and 311 are used to achieve two straight paths for the light
(Final Act. 6). The Examiner finds the two second resonator mirrors are
critical to practice the claimed invention and thus, the claimed invention is
not enabled when a single second resonator mirror is used (Final Act. 6 to
7).
Appellant argues that toroidal mirrors are well-known devices that
focus using two different radii whose axes are oriented perpendicularly
(App. Br. 8). Appellant contends that the level of skill in the art is high and
the use of toroidal mirrors is a well-known element at the time of the
invention such that Appellant did not need to describe a toroidal mirror or
how it works in the disclosure to enable the invention (App. Br. 8).
Appellant contends that the Examiner has not addressed the factors set-forth
Appeal 2018-007350
Application 14/650,606

4
in In re Wands, 858 F.2d 731 (Fed. Cir. 1988) (i.e., the Wands factors) in
determining whether undue experimentation would have been required to
make and use the claimed invention (App. Br. 9).
The Examiner responds that the original disclosure does not enable
the full scope of claim 1 because only one second resonating mirror would
not appear to be capable of providing two straight paths between the first
and second resonating mirror (Ans. 3). Referring to Appellant’s Figure 1,
the Examiner finds that reducing the number laser media 100 to one will
reduce the number straight paths to two but two mirrors (i.e., 320 and 330)
would be required to achieve the two paths (Ans. 3). The Examiner cites to
Caprara as showing that at least two second resonating mirrors are required
to form two straight paths (Ans. 3-4). The Examiner finds that Appellant
has not provided any evidence that a toroidal mirror would provide two
different paths in a resonator with at least one first mirror (Ans. 5). The
Examiner finds that the Specification does not appear to guide one of
ordinary skill in the art to using a toroidal mirror (Ans. 6). The Examiner
provides an analysis of the Wands factors and finds that at least 4 of the
relevant factors favor a conclusion that the subject matter of claim 1, that
includes an embodiment where only one second resonating mirror is used, is
not enabled (Ans. 6–7).
Appellant responds that the first straight path (i.e., 510 in Figure 1) is
the ray of light generated by the pump laser diode directed toward the pump
radiation reflecting mirror 300, which is reflected toward the first resonating
mirror positioned behind the laser media 100 (Reply Br. 3). Appellant
contends that the light reflects off the first resonating mirror and is directed
toward the second resonating mirror 320 arranged at a second side of the at
Appeal 2018-007350
Application 14/650,606

5
least one solid state laser media opposing said first side (Reply Br. 3).
Appellant argues that the second path is designated by the line 320 in Figure
1 (Reply Br. 3).
Claim 1 recites, in relevant part:
at least one solid state laser media arranged in the laser resonator, the
laser resonator being formed of at least one first resonator mirror
arranged at a first side of the at least one solid state laser media and at
least one second resonator mirror arranged at a second side of the at
least one solid state laser media opposing said first side, said at least
one first and second resonator mirrors being arranged to guide laser
radiation of said laser resonator on at least two different straight
paths through the at least one solid state laser media;
at least one pump laser diode and pump radiation reflecting mirror….
(emphasis added).

Claim 1 recites clearly at least 3 separate mirrors: (1) a first resonating
mirror, (2) a second resonating mirror and (3) a pump reflecting mirror.
Appellant’s Figure 1 shows the second resonator mirrors as 310, 320 and
330. The first resonator mirror is formed as a Distributed Bragg Reflector
(DBR) formed on the pumped vertical extending cavity surface emitting
lasers (VCSEL) (Spec. 5). The Specification discloses that pump reflecting
mirrors 300 and the second resonator mirrors 310, 320, and 330 are
integrally formed together into one single optical element 600 (Spec. 5). In
other words, even though the pump reflecting mirror and second resonator
mirrors are integrally formed, the two mirrors are distinct in their function.
The pump reflecting mirror focuses the pump laser diode light on the laser
media and the second resonator mirrors in combination with the first
resonator mirrors provide a “zig-zag” path for the laser light (Spec. 7).
Appeal 2018-007350
Application 14/650,606

6
With this claim construction in mind, we find Appellant’s arguments
unpersuasive. Appellant argues that the first path corresponds to reference
number 510 in Figure 1 (Reply Br. 3). Reference number 510 corresponds
to the pump radiation. The pump radiation is produced by pump laser
diodes 200, which is reflected off of the pump reflecting mirrors 300 and
directed toward the laser media 100 (Figure 1). Pump radiation 510 is not
directed between a first resonator mirror and a second resonator mirror, so
its relevance to the claim requirement of first and second resonator mirrors
arranged to guide laser radiation on at least two different straight paths is not
apparent. Appellant refers to the second path as being shown by reference
numeral 320. However, reference numeral 320 corresponds to the end
mirror, which is one of the second resonator mirrors (Spec. 5). The ray of
laser light extending from end mirror 320 and laser media 100 would be
considered a first path and the ray of laser light extending between laser
media 100 and folding mirror 310 would be considered a second, different
path of the light between a first resonator mirror and a second resonator
mirror. In other words, for the two different paths to be formed it appears
that at least two second resonator mirrors would be required.
Although Appellant contends that toroidal mirror would constitute a
single, second resonator mirror where a laser hits at two different positions
so that the laser is directed on to at least two different paths (App. Br. 9),
claim 1 does not require and the Specification does not particularly disclose
using a toroidal mirror. The Specification discloses that the solid state laser
device uses an “appropriately designed” mirror element to direct pump light
into the solid state laser media and at the same time forms the second
resonator mirrors of the laser resonator (Spec. 3). .Although Appellant
Appeal 2018-007350
Application 14/650,606

7
argues that the use of toroidal mirrors is well-known citing to US Patent
4,179,219 to Smith, the Examiner finds that Smith does not teach that
toroidal mirrors have ever been employed with a single additional mirror for
the purpose of producing two straight resonating paths (App. Br. 8; Ans. 4).
The Examiner finds that Smith does not resonate light, does not produce two
straight beam paths, and is significantly different from the disclosed
arrangement of reflectors of the present invention (Ans. 4). Appellant does
not respond to these findings (Reply Br. 2-4). Rather, Appellant’s Figure 3
seems to show that an appropriately designed, integrally formed mirror
element 600 includes multiple second resonator mirrors (320, 310, 330) and
pump reflecting mirrors 300. We adopt the Examiner’s Wands factor
analysis (Ans. 6–7).
We find that the preponderance of the evidence favors the Examiner’s
conclusion that undue experimentation would have been required to make or
use the claimed invention where only one second resonator mirror is used.
As stated by the Examiner, “the original disclosure does not enable the full
scope of claim 1 in that the use of only one second resonating mirror would
not appear to be capable of providing two straight paths between the first
and second resonating mirror” (Ans. 3). We affirm the Examiner’s § 112(a)
rejection of claims 1–10 for lack of enablement.

35 U.S.C. § 103 Rejection
The Examiner’s findings and conclusions regarding Caprara and Cho
are located at pages 7 to 9 of the Final Office Action. The Examiner finds
that Caprara discloses the subject matter of claim 1, except for the pump
reflecting mirror and the position of the pump reflecting mirror to direct the
Appeal 2018-007350
Application 14/650,606

8
pump laser onto the laser diode (Final Act. 8). The Examiner finds that Cho
teaches a pump reflecting mirror positioned so that the pump laser is directly
reflected onto the surface of the laser media (Final Act. 8). The Examiner
concludes that it would have been obvious to use Cho’s pump reflecting
mirror with Caprara’s pump laser to reduce the number of cooling plates
necessary to cool all lasers present as taught by Cho (Final Act. 8).
The Examiner further finds that Caprara and Cho do not disclose the
pump reflecting mirror and second resonator mirror are integrally formed
(Final Act. 9). The Examiner concludes based on Howard v. Detroit Stove
Works, 150 U.S. 164 (1893) that it would have been obvious to include
sufficient structural material so as to join multiple nearby elements and
thereby enhance the relative positioning of these elements as such
modification would have been a matter of routine skill in the art (Final Act.
9).
Appellant argues that the Examiner’s reasoning for making the pump
reflecting mirror and second resonator mirror integral is based on
impermissible hindsight (App. Br. 11). Appellant contends that although a
skilled person might include sufficient structural material to join multiple
nearby elements, Caprara does not necessarily imply that these elements are
integrally formed in a single element (App. Br. 12). Appellant contends that
Caprara does not teach forming two different paths between the first and
second resonator mirrors (App. Br. 11).
We find that the preponderance of the evidence favors the Appellant’s
argument of nonobviousness. The Examiner determines that it would have
been obvious to combine Caprara’s teachings with Cho’s device in order to
reduce the number of cooling plates necessary to cool all lasers present
Appeal 2018-007350
Application 14/650,606

9
(Final Act. 8). The Examiner further determines that it would have been a
matter of routine skill to integrally form the second resonator mirror and
pump reflecting mirror (Final Act. 9). The Examiner does not direct us to
anywhere in Caprara or Cho that teaches or suggests to make the second
resonator mirror and pump reflecting mirror integral. Rather, Caprara
teaches to move mirror 28 axially away from fold-mirror 26 to detune the
cavity and reduce beam spot-size at OPS (i.e., optically pumped
semiconductor laser) structure 32 (col. 10, ll. 66–67). Caprara teaches that
the fold-mirror 26 and mirror 30 on the OPS structure are separated by a
distance for 202 mm (col. 10, ll. 20–21). Caprara does not teach the distance
of mirror 44, which is used as a pump-light reflecting mirror, to the fold-
mirror 26 or mirror 28. Caprara’s teachings to allow the movement of the
mirrors to affect beam spot size, would not have motivated one of ordinary
skill in the art to use structural material to connect the mirrors in a single
locked in (i.e., integrally formed) arrangement. The Examiner’s reason to
make the mirrors integral is based upon “enhanc[ing] the relative positioning
of these elements” (Final Act. 9). However, locking the elements into place
would appear to restrict the relative positioning of the mirrors rather than
enhance the relative positioning.
Caprara’s Figure 14 embodiment relied upon by the Examiner, does
not disclose the distance between the mirrors 28F, 144 (i.e., the second
resonating mirror according to the Examiner) and the pump laser radiation
mirror that the Examiner proposes to add to Caprara’s embodiment. It is
unclear whether there is reasonable expectation of successfully making
second resonating mirrors (28F and 144) integral with the pump radiation
mirror given the absence of disclosure regarding the space between these
Appeal 2018-007350
Application 14/650,606

10
mirrors in Caprara. The Examiner has not established that it would have
been obvious to integrally formed Caprara’s mirrors based on the teachings
of Cho absent hindsight.
On this record, we find that the Examiner engaged in impermissible
hindsight in concluding that the combined teachings of Caprara and Cho
would have rendered obvious the subject matter of claim 1. The § 103
rejections of dependent claims 4–9 over Caprara in view of Cho and
Kuehnelt or Mefferd are reversed for the same reasons we reverse the § 103
rejection of independent claim 1.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
110 112(a) Enablement 1–10
1–3, 10 103 Caprara, Cho 1–3, 10
4, 5 103 Caprara, Cho
Mefferd
4, 5
6–9 103 Caprara, Cho,
Kuehnelt
6–9
Overall
Outcome
1–10

AFFIRMED