Ex Parte Ellin et al

Patent Trial and Appeal Board

Nov 30, 2012

10500716 (P.T.A.B. Nov. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte ALEXANDER DAVID SCOTT ELLIN and
JAMES REYNOLDS HENSHAW
________________

Appeal 2010-009287
Application 10/500,716
Technology Center 3700
________________

Before STEVEN D.A. McCARTHY, GAY ANN SPAHN and 1
JOHN W. MORRISON, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE 2
The Appellants1 appeal under 35 U.S.C. § 134 from the Examiner’s 3
final decision rejecting claims 1-36, 42 and 43. The Examiner rejects under 4
35 U.S.C. § 103(a) claims 1-14, 19-32, 42 and 43 as being unpatentable over5

1 The Appellants identify the real party in interest as Renishaw PLC.
Appeal No. 2010-0009287
Application No. 10/500,716

2
the Appellants’ Admitted Prior Art (“the AAPA”), Michel (DE 196 08 937 1
A1, publ. Sep. 12, 1996)2 and Neev (US 6,156,030, issued Dec. 5, 2000); 2
claims 15-17 and 33-35 as being unpatentable over the AAPA, Michel, Neev 3
and Gallagher (US 2003/0015672 A1, publ. Jan. 23, 2003); and claims 18 4
and 36 as being unpatentable over the AAPA, Michel, Neev and Neiheisel 5
(US 5,736,709, issued Apr. 7, 1998). An oral hearing was held on 6
November 6, 2012. We have jurisdiction under 35 U.S.C. § 6(b). 7
We REVERSE. 8
Claims 1 and 19 are independent. Claim 1 is illustrative: 9
1. A method of producing precision 10
marks for a metrological scale, employing 11
apparatus including: 12
a scale substrate to be marked 13
at repeated instants by a laser and 14
thereby forming a metrological scale; 15
a laser operable so as to provide 16
light pulses for forming scale 17
markings at the substrate; 18
a displacement device for 19
causing relative displacement between 20
the substrate and the location at which 21
the light is incident on the substrate; 22
and 23
a controller for controlling the 24
relative displacement and the laser, 25
the method comprising the steps, in any 26
suitable order, of: 27
operating the displacement 28
mechanism so as to cause relative 29

2 References to Michel will be to the Official Translation prepared by
FLS, Inc. in or about November 2009.
Appeal No. 2010-0009287
Application No. 10/500,716

3
displacement between the substrate 1
and the light; 2
using the controller to control 3
the relative displacement and to 4
operate the laser so as to produce light 5
pulses at the substrate; 6
characterised in that: 7
the laser produces a plurality of 8
ultra-short pulses3 of a fluence at the 9
substrate such that the metrological 10
scale marks are formed by laser 11
ablation, wherein the plurality of 12
ultra-short pulses have a duration such 13
that the scale markings are formed on 14
the scale substrate by a laser ablation 15
mechanism in which the molten stage 16
is omitted. 17
Independent claim 19 recites an apparatus for producing precision marks for 18
a metrological scale including, inter alia, a laser, 19
characterised in that the pulses of light produced 20
by the laser are ultra-short pulses of a fluence at 21
the substrate such that the metrological scale 22
marks are formed by laser ablation, wherein the 23
plurality of ultra-short output pulses have a 24
duration such that the scale markings are formed 25
on the scale substrate by a laser ablation 26
mechanism in which the molten stage is omitted. 27
The AAPA appears primarily at page 1, line 31 through page 2, line 28
29 of the Specification. The Examiner summarizes the AAPA as describing 29
“[1] known production of measurement scale using a laser, [2] use of a 30
reference to correct deficiencies, [3] marking perpendicular to the laser 31

3 The Specification defines “ultra-short pulses” as pulses having pulse
lengths below approximately 4 picoseconds. (See Spec. 2, ll. 21-27).
Appeal No. 2010-0009287
Application No. 10/500,716

4
travel direction, and [4] known laser solid to gaseous state ablation 1
performed at below 4 picoseconds pulse length.” (Ans. 4 (reference 2
numerals added)). The Appellants’ Specification supports all four of the 3
Examiner’s findings. (See Spec. 1, ll. 31-32; Spec. 1, l. 34 – 2, l. 1; Spec. 2, 4
ll. 6-8; and Spec. 2, ll. 14-17 and 21-29). On the other hand, the Examiner 5
finds that the “AAPA does not describe forming a scale by laser ablation 6
(direct solid to vapor phase transition).” (Ans. 4). 7
Neev describes the use of a laser to ablate material. (Neev, col. 7, ll. 8
7-8). In fact, both the AAPA and Neev describe laser ablation mechanisms 9
using high energy, ultra-short pulses (that is, pulses of length less than 4 10
picoseconds). Neither suggests exploiting this mechanism to produce scale 11
markings, however. In particular, the only examples of materials which 12
Neev appears to suggest ablating with a laser producing a pulse width of 4 13
picoseconds or less are biological tissues. (See, e.g., Neev, col. 28, ll. 56-63 14
and col. 29, ll. 20-34; see also id., col. 5, ll. 3-18). 15
Michel describes forming tags (that is, index markings) using high-16
energy laser from an excimer laser. (Michel 2, l. 20 – 3, l. 2). Michel 17
discloses applying the tag (or scale marked) layer T1 “in the usual way” as a 18
gold layer on a steel strip as S1 or, alternatively, on a highly polished surface 19
T2 on the steel strip. (Michel 3, ll. 16-20). Michel teaches that: 20
The high-energy radiation can be generated with 21
the use of the previously mentioned excimer laser. 22
For manufacturing the separating structure [or 23
divisional structure] TS1 or TS2 in the form of a 24
grid, the highly reflective surface of the gold layer 25
T1 or the polished surface T2 of the substrate S2 is 26
melted with the use of short laser pulses with a 27
duration of about 20 ns [that is, about 20,000 28
picoseconds], after which, in the pulse pause, the 29
Appeal No. 2010-0009287
Application No. 10/500,716

5
surface T1, T2 immediately solidifies again. In 1
order to prevent energy dissipation from the 2
processing area during the duration of the laser 3
pulse, pulses of a clearly shorter duration can be 4
used. The solidified melt has a different roughness 5
and thus different optical properties than the highly 6
reflective surfaces T1, T2 and a separating structure 7
TS1, TS2 with reduced reflectivity develops. 8
(Michel 3, l. 21 – 4, l. 7 (italics added)). 9
In other words, Michel teaches forming scale markings by melting 10
and re-solidifying portions of the polished surface of a marked layer in order 11
to change the optical properties of the marked layer. (See Michel 3, l. 21 – 12
4, l. 7 (italics added)). On the other hand, the Examiner cites the AAPA and 13
Neev as teaching the use of lasers to ablate materials. (Ans. 4). Neev, in 14
fact, suggests that one advantage of Neev’s teachings is that melting and 15
boiling are minimized. (See, e.g., Neev, col. 24, ll. 10-15). 16
As the Appellants point out, Michel appears to teach the desirability 17
of what, in other contexts, might have been viewed as product defects. (See 18
Br. 16). In view of these differences, the Examiner’s conclusion that the 19
“use of a low thermal transfer to the workpiece by performing ultra-short 20
pulse laser ablation would have been obvious at the time applicant’s 21
invention was made to a person having ordinary skill in the art in order to 22
minimize the heat affected zone (HAZ) and thereby reduce product defects” 23
(Ans. 4) is not persuasive. 24
Based on this reasoning, we do not sustain the rejection of claims 1-14 25
and 42 under § 103(a) as being unpatentable over the AAPA, Michel and 26
Neev. In addition, the Examiner has not provided reasoning with some 27
rational underpinning to show that one of ordinary skill would have reason 28
to provide an apparatus for producing precision marks for a metrological 29
Appeal No. 2010-0009287
Application No. 10/500,716

6
scale with a laser capable of producing ultra-short pulses, we do not sustain 1
the rejection of claims 19-32 and 43 under § 103(a) as being unpatentable 2
over the AAPA, Michel and Neev. 3
With respect to the rejection of claims 15-17 and 33-35, the Examiner 4
finds that “[d]isplacement is described by Gallagher.” (Ans. 5). The 5
Examiner concludes that the “the use thereof in displacement for laser 6
ablation of marks” would have been obvious “because automated movement 7
control provides controlled regular ablation.” (Id.) This finding and 8
reasoning does not remedy the deficiencies in the combined teachings of the 9
AAPA, Michel and Neev as applied to independent claims 1 and 19. We do 10
not sustain the rejection of claims 15-17 and 33-35 under § 103(a) as being 11
unpatentable over the AAPA, Michel, Neev and Gallagher. 12
With respect to the rejection of claims 18 and 36, the Examiner finds 13
that “Neiheisel describes laser ablation and shows (Figure 10b) the well 14
known elliptical spot.” (Ans. 6). The Examiner concludes that the 15
“elliptical spot” would have been obvious “because it provides a narrower 16
profile for precision shaped etching.” (Id.) This finding and reasoning does 17
not remedy the deficiencies in the combined teachings of the AAPA, Michel 18
and Neev as applied to independent claims 1 and 19. We do not sustain the 19
rejection of claims 15-17 and 33-35 under § 103(a) as being unpatentable 20
over the AAPA, Michel, Neev and Neiheisel. 21
DECISION 22
We REVERSE the Examiner’s decision rejecting claims 1-36, 42 and 23
43. 24
REVERSED 25
Klh 26