Ex Parte Lawrence et al

Board of Patent Appeals and Interferences

Jul 16, 2012

10887634 (B.P.A.I. Jul. 16, 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.
10/887,634 07/09/2004 Wayne Lee Lawrence 128892 3599
7590 07/17/2012
Steven J. Rosen
Patent Attorney
4729 Cornell Rd.
Cincinnati, OH 45241
EXAMINER
HEINRICH, SAMUEL M
ART UNIT PAPER NUMBER
3742
MAIL DATE DELIVERY MODE
07/17/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte WAYNE LEE LAWRENCE,
PAUL MICHAEL PEROZEK, and
MARK SAMUEL BAILEY
____________________

Appeal 2010-007624
Application 10/887,634
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, WILLIAM V. SAINDON, and
MICHAEL J. FITZPATRICK, Administrative Patent Judges.

FITZPATRICK, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-007624
Application 10/887,634

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STATEMENT OF THE CASE
Wayne Lee Lawrence, Paul Michael Perozek, and Mark Samuel
Bailey (Appellants) appeal under 35 U.S.C. § 134(a) from a decision finally
rejecting claims 1-32. We have jurisdiction under 35 U.S.C. § 6(b).

The Claimed Subject Matter
According to Appellants, the claimed invention “relates to laser shock
peening and, more particularly, to apparatus and methods for
synchronization of laser firing and motion systems during laser shock
peening.” Spec. 1. Claim 1, reproduced below, is illustrative of the claimed
subject matter.
1. A continuous motion laser shock peening
apparatus comprising:
a laser unit for generating a laser beam for
laser shock peening a workpiece,
a motion controller controllably connected
to a manipulator for continuously moving and
positioning the workpiece,
a laser controller for modulating and firing
the laser beam from the laser unit,
a laser firing system for firing the laser beam
from the laser unit, and
the motion controller operably connected to
the laser controller to fire the laser beam based on
axis position feedback from a speed control of the
motion controller.

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Application 10/887,634

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Evidence
The Examiner relies upon the following prior art references:
Moyroud US 4,482,225 Nov. 13, 1984
Suttie US 4,952,789 Aug. 28 1990
Forsyth US 4,969,169 Nov. 6, 1990
Salter US 4,980,718 Dec. 25, 1990
Mannava US 5,674,328 Oct. 7, 1997
Staver US 5,987,042 Nov. 16, 1999
Dulaney US 6,144,012 Nov. 7, 2000
Levin US 6,144,007 Nov. 7, 2000
Akiha US 6,305,985 Oct. 23, 2001
Yoda US 6,539,035 Mar. 25, 2003

Rejections
The Examiner makes the following rejections under 35 U.S.C.
§ 103(a):
I. Claims 1-32 as unpatentable over Mannava, Salter, and Levin.
II. Claims 2, 19, and 24 as unpatentable over Mannava, Salter, and Levin
as applied to claim1, 18, and 23, and further in view of Yoda.
III. Claims 3-5, 17, 20-22, 25-28, and 32 as unpatentable over Mannava,
Salter, Levin, and Yoda as applied to claims 2, 19, and 24, and further
in view of Suttie.
IV. Claims 6-8 as unpatentable over Mannava, Salter, Levin, Yoda, and
Suttie as applied to claim 3, and further in view of Moyroud.
V. Claim 9 as unpatentable over Mannava, Salter, Levin, and Yoda as
applied to claim 2, and further in view of Akiha.
VI. Claims 10-12 as unpatentable over Mannava, Salter, Levin, Yoda, and
Akiha as applied to claim 9, and further in view of Suttie.
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VII. Claim 13 as unpatentable over Mannava, Salter, Levin, and Yoda as
applied to claim 2, and further in view of Applicant’s Admitted Prior
Art (“AAPA”) or Forsyth.
VIII. Claims 14-16 as unpatentable over Mannava, Salter, Levin, Yoda, and
AAPA or Forsyth as applied to claim 13 above, and further in view of
Suttie.
IX. Claims 17, 21, and 26 as unpatentable over Mannava, Salter, Levin,
Yoda, and Suttie as applied to claims 3, 20, and 25, and further in
view of Staver.
X. Claims 27 and 29-31 as unpatentable over Mannava, Salter, Levin,
Yoda, and Suttie as applied to claim 25, and further in view of
Dulaney.
XI. Claim 32 as unpatentable over Mannava, Salter, Levin, Yoda, and
Suttie as applied to claim 25, and further in view of Dulaney as
applied to claim 31, and further in view of Staver.

We REVERSE.
Claims 1-32
The appealed claims include three independent claims: 1, 18, and 23.
Independent claim 1, which is directed to a continuous motion laser shock
peening (LSP) apparatus, requires, in relevant part, “the motion controller
operably connected to the laser controller to fire the laser beam based on
axis position feedback from a speed control of the motion controller.”
Similarly, independent claims 18 and 23, which are directed to continuous
motion LSP methods, require in relevant part, “firing the laser beam pulses
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based on axis position feedback from a speed control of the motion
controller.”
The Examiner rejected claims 1-32 under 35 U.S.C. § 103(a) as being
unpatentable over Mannava, Salter, and Levin. Ans. 4. More specifically,
the rejection states:
Mannava et al describe (col. 6, lines 5-15 and lines 41-
51) modulating and firing the laser beam and continuously
moving the blade while continuously firing the laser.

Salter et al describe (column 6, lines 59-66) "Position
feedback from an x-axis sensor 37 of the wafer stage 25 is also
monitored on a line 38 and .... control of a laser trigger 40 by
the x-align error signal on line 39 is enabled, thereby firing an
excimer laser source 41".

Levin describes (column 4, line 37 through column 5,
line 10) "pulse controller 16 thus either speeds up or delays the
time interval between pulses to accurately place the perforations
or holes 12 in the object 7" and (last paragraph beginning in
column 4 through column 5, line 10) "position feedback sensor
14, in addition to receiving signals relating to the object
movement 6 and the laser head movement 8, also receives a
firing signal 11 from the laser firing control 50" and "After
passing through position feedback sensor 14, the firing signal
11 is passed through the pulse controller 16 where the timing of
the next firing of the laser 5 can be altered, if need be. This is
particularly advantageous as the feedback control mechanism
makes immediate adjustments on a pulse by pulse basis not
only for variations in the object movement 6 or laser head
movement 8, but also for variations in the timing of the laser
pulses."

Laser shock peening with continuous moving and
positioning and with feedback from a motion control feature
would have been obvious at the time applicant’s invention was
made to a person having ordinary skill in the art because
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automatic positioning control is old and well known in the laser
machining art and because the continuous motion provides
quicker processing.

Ans. 4-5; Final Rej. 2-3.
Appellants argue that the prior art does not disclose, teach, or suggest
“the motion controller operably connected to the laser controller to fire the
laser beam based on axis position feedback from a speed control of the
motion controller” as recited in claim 1. Appellants concede that Salter and
Levin disclose position feedback sensors but argue that they are “not part of
the motion controller and [are] not part of a speed control of the motion
controller.” App. Br. 20 (discussing the position feedback sensor of Salter);
see also App. Br. 21 (“The same arguments apply to Levin. … The position
feedback sensors 14 and 24 are not part of the motion controller and not part
of a speed control of the motion controller”).
We agree with Appellants that the Examiner’s rejection does not
identify how the cited reference(s) allegedly disclose, teach, or suggest this
limitation.
The Examiner has the initial burden to set forth the basis for any
rejection so as to put the patent applicant on notice of the reasons why the
applicant is not entitled to a patent on the claim scope that he seeks – the so
called “prima facie case.” In re Oetiker, 977 F.2d 1443, 1445 (Fed.
Cir.1992); In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984) (the initial
burden of proof is on the USPTO “to produce the factual basis for its
rejection of an application under sections 102 and 103”) (quoting In re
Warner, 379 F.2d 1011, 1016 (CCPA 1967)).
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In his Response to Argument, the Examiner acknowledges
Appellants’ argument but still does not identify how the cited reference(s)
allegedly disclose, teach, or suggest the limitation at issue. Instead, the
Examiner interprets the limitation as purely functional,1 stating:
In response to applicant’s argument that neither Salter et al or
Levin disclose motion control to fire a laser beam based on axis
position feedback from a speed control of the motion controller,
a recitation of the intended use of the claimed invention must
result in a structural difference between the claimed invention
and the prior art in order to patentably distinguish the claimed
invention from the prior art. If the prior art structure is capable
of performing the intended use, then it meets the claim.

Ans. 10.
The Examiner then cites to portions of Salter (column 6, line 37
through column 7, line22) and Levin (column 5, lines 6-10) to show that the
prior art structure is allegedly capable of performing what the Examiner has
interpreted as an intended use (i.e., “fir[ing] the laser beam based on axis
position feedback from a speed control of the motion controller”). Ans. 10.
Yet, the Examiner has still failed to explain, and the portions of Salter
and Levin cited by the Examiner do not appear to address, how the prior art
of record may be capable of “fir[ing] the laser beam based on axis position
feedback from a speed control of the motion controller,” as recited in claim
1. Indeed, the Final Rejection and Examiner’s Answer do not even mention
a “speed control.” Accordingly, we cannot sustain the rejection of claims 1-

1 Not all of the appealed claims are apparatus claims. Claims 18-32 are
method claims. Thus, the Examiner’s response does not address claims 18-
32, each of which requires the actual step of “firing the laser beam pulses
based on axis position feedback from a speed control of the motion
controller.”
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32 as being unpatentable over Mannava, Salter, and Levin for failure to
present a prima facie case of unpatentability.
The Examiner’s rejections of various subsets of claims 1-32 over
Mannava, Salter, Levin and one or more additional references fail to cure the
underlying deficiency discussed above. Accordingly, we do not sustain any
of the Examiner’s rejections.

DECISION
The Examiner’s decision to reject claims 1-32 is REVERSED.

REVERSED

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