Yefim P. Sukhman et al.

Patent Trials and Appeals Board

Jul 18, 2019

14467900 - (D) (P.T.A.B. Jul. 18, 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.
14/467,900 08/25/2014 Yefim P. Sukhman 48301-8030.US01 8631
25096 7590 07/18/2019
PERKINS COIE LLP - SEA General
PATENT-SEA
P.O. BOX 1247
SEATTLE, WA 98111-1247
EXAMINER
LAFLAME JR, MICHAEL A
ART UNIT PAPER NUMBER
3761
NOTIFICATION DATE DELIVERY MODE
07/18/2019 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):
patentprocurement@perkinscoie.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte YEFIM P. SUKHMAN, MICHAEL L. FLANARY,
STEFANO J. NOTO, CHRISTIAN J. RISSER, MIESHA T.
STOUTE, and DAVID JOHN ZIRBEL JR1
____________________

Appeal 2018–003298
Application 14/467,900
Technology Center 3700
____________________

Before MICHAEL L. HOELTER, JILL D. HILL, and NATHAN A.
ENGELS, Administrative Patent Judges.

HILL, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Yefim P. Sukhman et al. (“Appellants”) appeal under 35 U.S.C.
§ 134(a) from the Examiner’s final decision rejecting claims 1–17. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 Appellants identify the real party in interest as Universal Laser Systems,
Inc. Appeal Br. 1.
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Application 14/467,900

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BACKGROUND
Independent claims 1 and 14 are pending. Independent claim 1,
reproduced below, illustrates the claimed invention.
1. A system for dispensing laser energy by one or
more laser energy sources, the system comprising:
a laser energy credit transferring component configured
to ––
communicate with a laser energy source, wherein
the laser energy source is configured for producing and
dispensing laser energy;
receive a request from the laser energy source for
laser energy; and
transfer laser energy credits to the laser energy
source, wherein the laser energy credits enable ––
the laser energy source to dispense a
corresponding amount of laser energy to provide a
laser beam for processing materials via a material
processor, and
a user of the material processor to directly
control a rate at which the laser energy source
dispenses the laser energy to provide the laser
beam.

REJECTIONS
I. Claims 14–16 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Parise (US 6,792,259 B1, iss. Sept. 14, 2004). Final Act. 2.
II. Claims 1–3, 6–11, 13, and 17 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Parise and Mordaunt (US 2007/0230520 A1,
pub. Oct. 4, 2007). Final Act. 3.
III. Claims 4 and 5 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Parise, Mordaunt, and DeWaal (US 2008/0182655 A1,
pub. July 31, 2008). Final Act. 5.
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IV. Claim 12 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Parise, Mordaunt, and Ishii (US 6,920,163 B2, pub. July
19, 2005). Final Act. 5.
ANALYSIS
Rejection I – Anticipation by Parise – Claims 14–16
Regarding claim 14, the Examiner finds that Parise discloses (1) a
laser energy source (a material processor connected to receptor 44)
producing and dispensing a laser beam, and (2) transmitting wireless energy
(from a laser energy transferring component 22) to a receptor (at the site of
the laser energy source 44) that is used with, and exchanges energy credits
for, “a corresponding quantity of wireless power transmitted to the power
receiver (credit transferring component, 44).” Final Act. 2 (citing Parise
4:11–14, 18:42–48); Ans. 3. According to the Examiner, Parise’s power
receiver 44 and, therefore, the associated laser energy source 13, is shown to
be remote from the energy source 22 in Parise’s Figure 11. Final Act. 2;
Ans. 3.
Appellants argue that Parise’s power transmitter 22 only provides
power to an electric vehicle 2, and “Parise cursorily mentions the use of the
power beam 5 in laser machining.” Appeal Br. 9. According to Appellants,
Parise’s energy delivery technique is completely impracticable in the context
of laser processing systems, and Parise only mentions that “transmission
may be used in laser machining or surgical applications where the energy
receptor is a target, such as, for instance, a workpiece.” Id. (citing Parise
18:42–48). Appellants contend that, in the material processing context,
Parise’s system would severely limit processing speed, because each burst
would have to be verified before the transmission of another, and materials
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processed via the laser beam would need to contain a power receiver system
44, including a translocator, for verifying receipt of each burst of wireless
power, making it impracticable to incorporate such a system into simple
materials for machine processing. Id.
Appellants’ contentions regarding impracticality of Parise’s energy
delivery technique in the context of material processing systems is not
persuasive, because Parise expressly teaches such an application to a skilled
artisan (Parise 18:42–48), and Appellants have provided us with no evidence
that cause us to disregard Parise’s teaching.
Appellants also argue that Parise discloses energy credits being
transferred to a removable translocator energy unit 30 that contains energy
credits “for the translocator [4] to transmit a communication signal [6] to a
power transmission unit [20] requesting a power beam [5].” Appeal Br. 10
(citing Parise 12:20–42, Fig. 6.). Appellants contend that, in contrast to
claim 14, Parise’s energy credits enable the transmission of a
communication signal 6 that requests power from transmitter 22, instead of
enabling the “laser energy [13] source to dispense a corresponding amount
of laser energy for forming the laser beam.” Id.
The Examiner responds that Parise’s power receiver 44 includes
stored energy 13 that was received from the power transmitter 22. Ans. 6.
According to the Examiner, Parise’s translocator energy unit 30 contains
energy credits that are transmitted through translocator 4 to request a power
beam, and an “energy source [13] is also in the vehicle (ie. on the right side
of Fig. 11 with the translocator [4] and translocator energy unit [30]),” such
that “Parise discloses transmitting wireless energy (from a laser energy
transferring component 22) to a receptor (44, at the site of the laser energy
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source) used with and exchanging energy credits for a corresponding
quantity of wireless power transmitted to the power receiver (credit
transferring component, 44).” Ans. 8–9 (citing Parise 12:24–29 and 4:11–
14). The Examiner contends that Parise’s “power receiver (44 and therefore
associated laser energy source [13]) can be seen remote from the energy
source (22) for example in Fig. 11.” Id. at 9.
We disagree with the Examiner’s findings regarding Parise
anticipating claim 14. Parise discloses a system for dispensing laser energy
from a laser energy source 13 at power receiver 44 that can be used for a
material processor. See Parise 18:42–48. Regarding its energy storage unit
13, Parise discloses that the energy within the storage unit 13 powers the
vehicle, and a power usage monitor 16 monitors: (1) “the amount of energy
available to the vehicle from the onboard energy storage unit 13”; (2) “the
energy used by the vehicle”; and (3) “the energy received from the power
transmission unit 20.” Id. at 7:12–18. Parise discloses that “[w]hen the
energy monitored falls below a predetermined level, the power usage
monitor 16 activates the translocator unit 4.” Id. at 7:19–21. Thereafter,
credits are transferred to the power transmitter 22 and energy 5 is received
therefrom and stored in the energy storage unit 13 until the level of energy in
the energy storage unit 13 rises above a predetermined level, at which time
power-requesting communication 6 from the translocator 4 ceases. Id. at
8:16–23.
Appellants do not refute that the laser energy source 13 at power
receiver 44 would provide a laser beam to a material processor for
processing materials. While Parise’s power transmitter 22 is found by the
Examiner to be a laser energy credit transferring component that is remote
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from a laser energy source 13 and communicates therewith, the Examiner
fails to explain how Parise discloses the laser energy credit transferring
component 22 enabling the laser energy source 13 “to dispense a
corresponding amount of laser energy for forming the laser beam” as recited
in claim 14. Parise’s crediting is used to dispense energy 5 from its power
transmitter 22 to its energy storage 13, rather than from its energy storage 13
to a material processor. Parise is silent regarding crediting between its
energy storage 13 and an associated material processor.
For this reason, we do not sustain the rejection of claim 14 as
anticipated by Parise. Claims 15 and 16 depend from claim 14, and we do
not sustain the rejection thereof for the same reason.
Rejection II – Obviousness – Claims 1–3, 6–11, 13, and 17
In Rejection II, the Examiner makes the same findings regarding the
disclosure of Parise relying on Mordaunt to disclose user control.
Appellants argue that the Examiner erred in finding that the
combination of Parise and Mordaunt discloses all of the limitations of
independent claim 1. Appeal Br. 13. Like independent claim 14,
independent claim 1 recites laser energy credits enabling (1) “the laser
energy source to dispense a corresponding amount of laser energy to provide
a laser beam for processing materials via a material processor.” Id. at 22.
The Examiner does not find this disclosure in Mordaunt. Appellants make
the same arguments regarding independent claim 1 that were made regarding
claim 14, as discussed above in Rejection I. Id. at 14–15. For the reasons
set forth above regarding independent claim 14, we do not sustain the
rejection of independent claim 1. Claims 2, 3, 6–11, and 13 depend from
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claim 1. Claim 17 depends from claim 14. For the reasons set forth above
in our analysis of Rejection I, we do not sustain the rejection of claim 17.
Rejections III and IV – Obviousness of Claims 4, 5, and 12
Claims 4 and 5 depend from claim 3, which depends from claim 1.
Claim 12 depends from claim 1. The Examiner does not find that DeWaal
or Ishii discloses “laser energy credits enab[ling] the laser energy source to
dispense a corresponding amount of laser energy to provide a laser beam for
processing materials via a material processor,” as recited in claim 1. Thus,
for the reasons set forth above regarding Rejections I and II, we do not
sustain Rejections III and IV.
DECISION
We REVERSE the rejection of claims 14–16 as anticipated by Parise.
We REVERSE the rejection of claims 1–3, 6–11, 13, and 17 as
unpatentable over Parise and Mordaunt.
We REVERSE the rejection of claims 4 and 5 as unpatentable over
Parise, Mordaunt, and DeWaal.
We REVERSE the rejection of claim 12 as unpatentable over Parise,
Mordaunt, and Ishii.

REVERSED