Ex Parte Claudet

Patent Trial and Appeal Board

Nov 30, 2012

11086201 (P.T.A.B. Nov. 30, 2012)

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.
11/086,201 03/21/2005 Andre Claudet IL-11347 3817
24981 7590 12/03/2012
Lawrence Livermore National Security, LLC
LAWRENCE LIVERMORE NATIONAL LABORATORY
PO BOX 808, L-703
LIVERMORE, CA 94551-0808
EXAMINER
ELVE, MARIA ALEXANDRA
ART UNIT PAPER NUMBER
3721
MAIL DATE DELIVERY MODE
12/03/2012 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 ANDRE CLAUDET
____________

Appeal 2010-000548
Application 11/086,201
Technology Center 3700
____________

Before JOHN C. KERINS, ANNETTE R. REIMERS and
TIMOTHY J. O’HEARN, Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-000548
Application 11/086,201

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STATEMENT OF THE CASE
Andre Claudet (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s final rejection of claims 1, 2, 4-6, 8 and 9. Claims 3
and 7 are canceled. We have jurisdiction under 35 U.S.C. § 6(b). We
AFFIRM.

THE INVENTION
Appellant’s claimed invention is to an apparatus for laser peening a
workpiece. Claim 1, reproduced below, is illustrative:
1. An apparatus for laser peening a workpiece
using a multiplicity of data points of the
workpiece, comprising:
a laser that produces a laser beam for laser peening
the workpiece,
a laser beam control system operatively connected
to said laser,
a world coordinate frame,
a workpiece holder,
a robot operatively connected to said world
coordinate frame at a fixed point relative to said
world coordinate frame and operatively connected
to said workpiece holder,
a calibration tool operatively connected to said
robot for determining the multiplicity of data
points of the workpiece, and
a computer for storing the multiplicity of data
points of the workpiece and for instructing said
robot and said laser, said computer operatively
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connected to said robot and said laser for moving
said laser beam on the workpiece for laser peening
the workpiece.

THE REJECTIONS
The Examiner has rejected:
(i) claims 1 and 8 under 35 U.S.C. § 103(a) as being unpatentable over
Roos (US 6,615,112 B1, issued. Sep. 2, 2003) in view of Clauer (US
2003/0217997 A1, published Nov. 27, 2003);
(ii) claims 1 and 8 under 35 U.S.C. § 103(a) as being unpatentable
over Tang (US 2003/0167103 A1, published Sep. 4, 2003) in view of
Clauer;
(iii) claims 2, 4-6 and 9 under 35 U.S.C. § 103(a) as being
unpatentable over Roos in view of Clauer and Knoll (US 6,529,852 B2,
issued Mar. 4, 2003); and
(i) claims 2, 4-6 and 9 under 35 U.S.C. § 103(a) as being unpatentable
over Tang in view of Clauer and Knoll.

ANALYSIS
Claims 1 and 8--Obviousness--Roos/Clauer
The Examiner presents findings evidencing that Roos discloses all
elements of claims 1 and 8, with the exception of a laser peening apparatus
or step of laser peening. Ans. 3-6. Citing to the Clauer teaching of an
automated laser peening apparatus and process, the Examiner concludes that
it would have been obvious to use the Roos apparatus to perform laser
peening as a type of robotic processing that Roos was designed to perform.
Ans. 7.
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Appellant first argues that the Roos and Clauer references fail to
disclose all limitations in claims 1 and 8. Appeal Br. 19-21; Reply Br. 2-5.
Appellant, however, merely restates the claim limitations and nakedly
asserts that the references do not disclose those limitations. Appellant
makes no attempt to point out where the Examiner’s findings relative to the
presence of those elements in the prior art or in the combination of the
teachings of the prior art are deficient. Such arguments are insufficient to
apprise us of error in the rejection. In re Lovin, 652 F.3d 1349 (Fed. Cir.
2011) (“we hold that the Board reasonably interpreted Rule 41.37 to require
more substantive arguments in an appeal brief than a mere recitation of the
claim elements and naked assertion that the corresponding elements were
not found in the prior art.”).
Appellant next maintains that there would be no reasonable
expectation of success with the proposed combination of Roos and Clauer.
Appeal Br. 21; Reply Br. 5-6. Appellant bases this position on the same
basis as above, namely the alleged lack of disclosure of certain claim
elements in the references. As above, this argument does not apprise us of
error in the Examiner’s position.
Appellant further maintains that the Examiner has not provided an
explanation as to how or why the Roos and Clauer teachings would be
combined, and that those references do not recognize the problem solved by
Appellant’s claimed invention. Appeal Br. 22. However, “[i]n determining
whether the subject matter of a patent claim is obvious, neither the particular
motivation nor the avowed purpose of the patentee controls.” KSR Int'l Co.
v. Teleflex Inc., 550 U.S. 398, 419 (2007).
Similarly, Appellant argues that the Examiner has not provided valid
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reasons for the proposed combination, and bases this assertion on the alleged
failure of Roos and Clauer in disclosing particular claim limitations. Reply
Br. 7. In addition to again merely reciting claim elements, Appellant asserts
that Roos “only discloses ‘calibration’ of robots”, and does not disclose a
laser peening apparatus or method that uses a multiplicity of data points of a
workpiece. Reply Br. 7-8. With respect to the arguments that merely restate
claim limitations, the arguments are insufficient to show error in the
Examiner’s position. With respect to the latter argument, while Roos is
directed to calibration of robots, the robots are also disclosed as performing
functions relating to a workpiece, such as measuring the workpiece, in
conjunction with other processing or manufacturing operations. See Roos,
col. 4, ll. 32-41. As such, we are not persuaded that the Examiner failed to
provide an articulated reason to combine the teachings of the references that
is supported by rational underpinnings.
The rejection of claims 1 and 8 as unpatentable over Roos and Clauer
is sustained.
Claims 1 and 8--Obviousness--Tang/Clauer
The Examiner presents findings evidencing that Tang discloses all
elements of claims 1 and 8, with the exception of a laser peening apparatus
or step of laser peening. Ans. 7-9. Citing to the Clauer teaching of an
automated laser peening apparatus and process, the Examiner concludes that
it would have been obvious to use the Tang apparatus to perform laser
peening as a type of robotic processing that Tang was designed to perform.
Ans. 9-10. Further elaboration as to the Examiner’s position regarding the
combined teachings is provided in the Response to Argument section of the
Examiner’s Answer. Ans. 14-15.
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Appellant makes similar arguments in opposition to this rejection as
were made with respect to the rejection in view of Roos and Clauer. Appeal
Br. 25-27; Reply Br. 8-14. The arguments which merely restate the claim
limitations and nakedly assert that the references do not disclose those
limitations, without attempting to point out where the Examiner’s findings
relative to the presence of those elements in the prior art or in the
combination of the teachings of the prior art are deficient, are insufficient to
apprise us of error in the rejection. In re Lovin, 652 F.3d 1349. The same is
true of the argument that there would be no reasonable expectation of
success in combining the references, which, too, is based upon naked
assertions that certain claim limitations are not disclosed in the Tang and
Clauer references.
Appellant argues that the Examiner has not provided valid reasons for
the proposed combination, and bases this assertion on the alleged failure of
Roos and Clauer in disclosing particular claim limitations. Reply Br. 13. In
addition to again merely reciting claim elements, Appellant asserts that Tang
“only discloses ‘calibrating the orientation of a robot spindle’”, and does not
disclose a laser peening apparatus or method that uses a multiplicity of data
points of a workpiece. Reply Br. 14. With respect to the arguments that
merely restate claim limitations, the arguments are insufficient to show error
in the Examiner’s position. With respect to the latter argument, while Tang
does disclose calibration of the orientation of a robot spindle, the robot is
also disclosed as performing cutting, drilling, or other machining operations
on a workpiece. Tang, p. 1, para. [0003]; p. 2, para. [0017]. As such, we are
not persuaded that the Examiner failed to provide an articulated reason to
combine the teachings of the references that is supported by rational
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underpinnings.
The rejection of claims 1 and 8 as unpatentable over Tang and Clauer
is sustained.
Claims 2, 4-6 and 9--Obviousness--Roos/Clauer/Knoll
The Examiner relies on Roos and Clauer as above, and further cites to
Knoll as disclosing the limitations set forth in claims 2, 4-6 and 9. Ans. 10-
11. The Examiner concludes that it would have been obvious to further
modify the apparatus and method obtained through the combination of the
teachings of Roos and Clauer to include the elements set forth in those
claims, because those elements are either standard components of a robot
hand or would be useful in determining positioning. Ans. 11.
Appellant’s arguments in opposition to this rejection again mainly
devolve to essentially naked assertions that the references do not disclose the
claim limitations, without attempting to point out where the Examiner’s
findings relative to the presence of those elements in the prior art or in the
combination of the teachings of the prior art are deficient. Appeal Br. 30-
33; Reply Br. 15-19. Such arguments are, again, insufficient to apprise us of
error in the rejection. In re Lovin, 652 F.3d 1349. The same is true of the
argument that there would be no reasonable expectation of success in
combining the references, which, too, is based upon naked assertions that
certain claim limitations are not disclosed in the Roos, Clauer and Knoll
references.
The rejection of claims 2, 4-6 and 9 as being unpatentable over Roos,
Clauer and Knoll is sustained.
Claims 2, 4-6 and 9--Obviousness--Tang/Clauer/Knoll
The Examiner relies on Tang and Clauer as above, and further cites to
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Knoll as disclosing the use of a trigger probe. Ans. 11-12. The Examiner
concludes that it would have been obvious to further modify the apparatus
and method obtained through the combination of the teachings of Roos and
Clauer to include a trigger probe, because that element would be useful in
determining positioning. Ans. 12.
Appellant’s arguments in opposition to this rejection again mainly
devolve to essentially naked assertions that the references do not disclose the
claim limitations, without attempting to point out where the Examiner’s
findings relative to the presence of those elements in the prior art or in the
combination of the teachings of the prior art are deficient. Appeal Br. 34-
36; Reply Br. 19-24. Such arguments are, again, insufficient to apprise us of
error in the rejection. In re Lovin, 652 F.3d 1349. The same is true of the
argument that there would be no reasonable expectation of success in
combining the references, which, too, is based upon naked assertions that
certain claim limitations are not disclosed in the Tang and Clauer references.
The rejection of claims 2, 4-6 and 9 as being unpatentable over Tang,
Clauer and Knoll is sustained.

CONCLUSIONS
Appellant has not persuaded us that the Examiner erred in concluding
that the subject matter of claims 1 and 8 would have been obvious over Roos
and Clauer, or over Tang and Clauer.
Appellant has not persuaded us that the Examiner erred in concluding
that the subject matter of claims 2, 4-6 and 9 would have been obvious over
Roos, Clauer and Knoll, or over Tang, Clauer and Knoll.

Appeal 2010-000548
Application 11/086,201

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DECISION
The decision of the Examiner to reject claims 1, 2, 4-6, 8 and 9 under
35 U.S.C. § 103(a) is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

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