Ex Parte Watanabe

Patent Trial and Appeal Board

Mar 7, 2019

13816996 (P.T.A.B. Mar. 7, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/816,996 02/14/2013
513 7590 03/11/2019
WENDEROTH, LIND & PONACK, L.L.P.
1030 15th Street, N.W.,
Suite 400 East
Washington, DC 20005-1503
FIRST NAMED INVENTOR
Masao Watanabe
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2013_0204a 1961
EXAMINER
STAPLETON, ERIC S
ART UNIT PAPER NUMBER
3761
NOTIFICATION DATE DELIVERY MODE
03/11/2019 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):
eoa@wenderoth.com
kmiller@wenderoth.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MASAO WAT AN ABE 1
Appeal2018-003289
Application 13/816,996
Technology Center 3700
Before KEVIN F. TURNER, JILL D. HILL, and JEFFREY A. STEPHENS,
Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Masao Watanabe ("Appellant") appeals under 35 U.S.C. § 134(a)
from the Examiner's final decision rejecting claims 1-7. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellant identifies the real party in interest as Mitsubishi Heavy
Industries, Ltd. Appeal Br. 1.
Appeal2018-003289
Application 13/816,996
BACKGROUND
Independent claims 1 and 5 are pending. Independent claim 1,
reproduced below, illustrates the claimed invention.
1. A laser cutting device which cuts a processing item
that is formed of metal while spraying oxygen gas which serves
as an assist gas, the laser cutting device comprising:
an emitting unit for emitting a laser beam for cutting the
processing item that has a thickness of 10 to 50 mm to form a
molten pool inside thereof when irradiated with a laser beam,
whose wavelength is shorter than that of CO2 laser light;
a collimating optical system for turning the laser beam
emitted from the emitting unit into a collimated beam; and
a focusing unit arranged coaxially with the collimating
optical system, the focusing unit being configured to focus the
laser beam turned into the collimated beam so that the laser
beam emitted from the emitting unit has an elliptical cross-
sectional shape and so that a long-axis direction of the ellipse is
aligned with a direction in which cutting of the processing item
progresses,
wherein the laser beam power at a front side of the
processing item in a cutting direction is consumed for melting a
metal forming the processing item, and the laser beam power at
a rear side of the processing item in the cutting direction is
consumed for raising a temperature of a molten metal to cut the
processing item.
Appeal Br. 14 (Claims App.).
REJECTIONS
I. Claims 1 and 3-7 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Briand (US 2012/0154922 Al, pub. June 21, 2012) and
Beyer (US 5,578,228, iss. Nov. 26, 1996). Final Act. 2.
II. Claim 2 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Briand, Beyer, and Yue (US 2009/0194514 Al, pub.
Aug. 6, 2009). Final Act. 4.
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Application 13/816,996
ANALYSIS
The Examiner finds, inter alia, that Briand discloses a laser cutting
device and method as claimed, including (1) an emitting unit SL for cutting
a part 10 having a thickness of 10 to 50 mm with a laser beam having a
wavelength shorter than that of CO2 laser light, (2) a focusing lens 14, and
(3) a collimating optical system 13, 15 for collimating and turning the laser
beam emitted from the emitting unit SL into a collimated beam. Final Act. 2
(citing Briand Figs. 2, 3, ,r,r 2, 40, 45, 46, 69). The Examiner finds that,
although Briand's focusing lens 14 is not arranged coaxially with its
collimating optical system 13, 15 in its embodiment of Figure 3, Briand's
Figure 2 discloses coaxial collimating and focusing systems. Id. at 3.
According to the Examiner, Briand's mirror 15 "control[s] damage to optical
elements" and "limit[ s] focus drift," but is "not required ... for proper
focusing and collimating in order to achieve the necessary power density for
cutting a part." Id. The Examiner concludes that it would have been
obvious to modify the embodiment of Briand's Figure 3 "to remove the
mirror and align the focusing lens and the collimating lens coaxially as
shown in figure 2." Id.
Rejection I
Appellant argues claims 1 and 3-7 as a group.2 We select
independent claim 1 as representative. Claims 3-7 stand or fall with claim
I. See 37 C.F.R. § 4I.37(c)(l)(iv).
2 Although Appellant addresses independent claim 5 under a separate
heading, Appellant relies on the same arguments regarding claim 1 in
refuting the rejection of claim 5.
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Application 13/816,996
Combining Briand 's Figures 2 and 3
Appellant argues that the Examiner erred in concluding that it would
have been obvious to modify the embodiment of Briand's Figure 3 to align
the focusing lens and the collimating lens coaxially as shown in Briand's
Figure 2. Appeal Br. 10 (referring to Final Act. 3); Reply Br. 2 ("There
would have been no reason to modify the embodiment illustrated in Fig. 3
based on the 'typical' optical system shown in Fig. 2."). According to
Appellant, removing the mirror of Briand's Figure 3 would eliminate an
essential element of its laser beam focusing head, and the Examiner's
proffered reason for removing the mirror is only supported by hindsight, and
not the teachings of the prior art references. Appeal Br. 11. In the Reply
Brief, Appellant contends that, because Briand's mirror 15 is an essential
element, removal of the mirror "would have changed the principle of
operation" of Briand. Reply Br. 2. Appellant, however, does not define the
principle of operation of Briand, or explain why or how removal of Briand's
mirror would change the principle.
The Examiner disagrees, arguing that (1) Briand discloses both
coaxially aligned focusing and collimating systems, and non-aligned
focusing and collimating systems, such that a skilled artisan "would have
been able to recognize both arrangements," and (2) Briand's disclosure of
the "pros and cons of the arrangements of Fig. 2 and 3 would not have
precluded one of ordinary skill in the art to recognize both arrangements."
Ans. 3. The Examiner also argues that Briand's mirror 15 is not an essential
element. Id. at 5.
We are not persuaded that the Examiner's combination of Briand and
Beyer contains error. Briand is prior art for all that it teaches, which
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Application 13/816,996
includes both ( 1) coaxially aligned focusing and collimating systems
(without a mirror), and (2) focusing and collimating systems that include a
mirror and are not coaxially aligned. See Briand Figs. 2, 3; see Beckman
Instruments v. LKB Produkter AB, 892 F.2d 1547, 1551 (Fed. Cir. 1989).
Briand is directed to preventing focal drift caused by thermal gradients and
thermal expansion of a focusing lens 1. See Briand Fig. 1, ,r 9. Focal drift is
particularly relevant when cutting material having a thickness of "4 mm and
higher." Id. ,r 12. Briand proposes two measures to prevent focal drift, and
one measure to compensate for focal drift. Id. Focal drift prevention is
accomplished by employing a zinc sulfide (ZnS) lens, and using lenses of
larger dimensions. Id. ,r,r 18, 38, 39, 59, 74--84 (discussing Figs. 4 and 5 and
concluding that employing ZnS and thicker lenses reduce focal drift). Focal
drift is compensated for by employing a mirror to displace the focal point
toward its correct location. Id. ,r,r 63-64. Nowhere does Briand state or
imply that the mirror 15 is an essential element, or that reduction in focal
drift using a thicker lens and/ or a ZnS lens must be accompanied by focal
drift compensation with a mirror. We are not persuaded that a skilled
artisan, considering the teachings of Briand in their entirety, would fail to
understand that the "typical" optical cutting system of Figure 2 could be
employed with a thicker lens and/or a ZnS lens to beneficially reduce or
eliminate focal drift, without also employing a mirror.
Combining Briand and Beyer
The Examiner also finds that, although Briand does not disclose its
laser beam having an elliptical cross-sectional shape, Beyer discloses a laser
beam with an elliptical cross-sectional shape as claimed. Final Act. 3--4.
The Examiner concludes that it would have been obvious to further modify
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Application 13/816,996
Briand to have an elliptical beam cross section as taught by Beyer "to
satisfactorily control melt expulsion." Id. at 4 ( citing Beyer 6: 1-7). The
Examiner explains that Beyer' s elliptical beam has a longer axis in the
cutting direction so that, when the intensity of the laser beam on workpiece
(sheet 10) is reduced, the interaction surface in the direction of cutting the
sheet is lengthened, which "stabilizes" cutting, because "plasma formation
and melt expulsion can be more satisfactorily controlled." Ans. 7-8. The
Examiner reasons that application of an elliptical beam would allow
Briand's laser "to melt metal at its front and heat the molten metal at the
back" because, as taught by Beyer, having a longer axis in the cutting
direction enlarges the interaction surface of the laser. See id. at 8.
We discern no error in the Examiner's reasoning. Beyer indeed
discloses that lower beam intensity can be counteracted by a using an
elliptical beam cross section that lengthens an interaction surface to provide
reliable cutting. See Beyer 5:64---6:9. Although Beyer uses its lengthened
interaction surface to cut faster, one skilled in the art would appreciate that
the lengthened interaction surface would benefit Briand by providing more
reliable cutting at Briand's target depth of 4 mm or more.
Material Thickness
In the Reply Brief, Appellant argues that claim 1 "requires at least an
emitting unit that is suitable for cutting processing items having a thickness
of 10 to 50 mm," and "[t]he examiner appears to suggest that the language
describing the processing item [thickness] can be ignored." Reply Br. 3.
This argument was not raised in the Appeal Brief, and good cause has not
been shown for its consideration. See 37 C.F.R. § 4I.41(b)(2) ("Any
argument raised in the reply brief which was not raised in the appeal brief, or
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Application 13/816,996
is not responsive to an argument raised in the examiner's answer ... , will not
be considered by the Board ... , unless good cause is shown."). In addition,
this argument is not persuasive.
First, none of the claims require a laser beam that is "suitable for"
cutting workpieces having the entire range of claimed thickness of 10 to 50
mm. Rather, the claims recite a laser beam "for cutting the processing item
that has a thickness of 10 to 50 mm," which includes, for example, a laser
beam for cutting a workpiece having a thickness of 30mm. Briand discloses
a laser for cutting a workpiece that is 30 mm thick.
Further, overlapping ranges can establish prima facie obviousness.
See, e.g., In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). The claims
recite a beam for cutting a workpiece having "a thickness of 10 to 50 mm."
Briand is directed to cutting a workpiece having an overlapping thickness
range of .1 mm to 30 mm. Briand ,r 71. Both Appellant and Briand seek to
accurately cut a given thickness of material with a Y AG laser (having a
wavelength shorter than that of CO2 laser light). Even if the claims required
a laser that is suitable for cutting the entire claimed range of 10 - 50 mm, we
are not persuaded that a skilled artisan would fail to understand that
elongating Briand's laser beam to lengthen its interaction surface in the
direction of cutting its workpiece would allow Briand's laser to cut a thicker
workpiece, for example a workpiece having a thickness ofup to 50 mm.
For these reasons, we sustain rejection I.
Re} ection II
Appellant makes no argument that claim 2 would be patentable over
Briand, Beyer, and Yue if claim 1 is not patentable over Briand and Beyer.
For the reasons explained above, we sustain Rejection II.
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Appeal2018-003289
Application 13/816,996
DECISION
We AFFIRM the rejection of claims 1 and 3-7 under 35 U.S.C. § 103
as unpatentable over Briand and Beyer.
We AFFIRM the rejection of claim 2 under 35 U.S.C. § 103 as
unpatentable over Briand, Beyer, and Yue.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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