Ex Parte De Kock et al

Patent Trial and Appeal Board

Jan 31, 2018

12879683 (P.T.A.B. Jan. 31, 2018)

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.
12/879,683 09/10/2010 Joel A. De Kock P187.12-0037 7491
27367 7590 02/02/2018
WESTMAN CHAMPLIN & KOEHLER, P.A.
SUITE 1400
900 SECOND AVENUE SOUTH
MINNEAPOLIS, MN 55402
EXAMINER
PAIK, SANG YEOP
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
02/02/2018 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):
docketing @ wck.com
tsorbel@wck.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOEL A. DeKOCK, JAMES J. BUCKLEW, and
STEVE P. WENBERG
Appeal 2017-004647
Application 12/879,683
Technology Center 3700
Before CHARLES N. GREENHUT, BRETT C. MARTIN, and
MICHELLE R. OSINSKI, Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2017-004647
Application 12/879,683
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 11-26. Claims App’x. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART and issue a new ground of rejection of
claim 11.
THE INVENTION
Appellants’ claims are directed “to manufacturing processes
employing lasers . . .[and,] [m]ore particularly, the disclosure relates to
focusing heads for use in heat treatment in metals.” Spec. ^ 2. Claims 11,
17, and 21, reproduced below, are illustrative of the claimed subject matter:
11. A laser heat treatment apparatus configured to
concurrently direct a plurality of laser beams to a plurality of
target locations on a metal workpiece comprising:
a laser adapter stage in optical communication with a laser
source and arranged to receive a first laser beam from the light
source;
a focus stage in optical communication with the laser
adapter stage and arranged to receive the first laser beam from
the adapter stage and to focus the first laser beam;
a beam splitting stage in optical communication with the
focus stage and arranged to receive the focused first laser beam
and to split the focused first laser beam into two second laser
beams; and
a redirection stage in optical communication with the
beam splitting stage and arranged to receive the second laser
beams and to direct the second laser beams toward the plurality
of corresponding target locations on the metal workpiece such
that at least a first target location avoids the effects of heat
transfer from heat treating at least a second target location,
wherein the target locations are corresponding locations on a
same feature of the workpiece and where each of the second laser
beams has an angle of incidence to its corresponding target
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Application 12/879,683
location of substantially 90° and where each of the second laser
beams is concurrently directed to a target location.
17. A method for directing multiple laser beams
concurrently toward an object for heat treating an object with a first
laser pass, the method comprising:
receiving a first laser beam from a laser source;
focusing the first laser beam;
splitting the focused first laser beam into a plurality of second
laser beams; and
redirecting the second laser beams concurrently toward a
plurality of target locations on the same object wherein the plurality
of target locations are positioned with respect to each other such that
heat treatment of a first target location avoids effects of the heat
treatment of second locations; and
passing the laser beams along the plurality of target locations
such that the heat treatment of the second locations do not harm the
heat treatment of the first location when processing the object.
21. A method for heat treating a metal using multiple laser
beams directed concurrently toward a metal workpiece comprising:
receiving a first laser beam from a laser source;
focusing the first laser beam;
splitting the focused first laser beam into a plurality of second
laser beams; and
redirecting the second laser beams toward a plurality of target
locations on the metal workpiece, wherein the target locations are
positioned on a plurality of sides of a same feature of the metal
workpiece such that at least a first target location is affected by heat
transfer from heat treating at least a second target location;
wherein the plurality of laser beams are concurrently directed
to at least a first and a second target location on the same feature of
the workpiece so as to concurrently heat treat a plurality of target
locations of the metal workpiece such that the heat treatment of one
target location avoids effects of heat treatment of another target
location when laser processing the feature.
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Application 12/879,683
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Chande
Lizotte
Hiramatsu
Jennings
US 4,844,574
US 2002/0162825 A1
US 2004/0222197 A1
US 7,005,601 B2
July 4, 1989
Nov. 7, 2002
Nov. 11,2004
Feb. 28, 2006
REJECTION
The Examiner made the following rejection:
Claims 11-26 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hiramatsu, Chande, Jennings, and Lizotte. Final Act. 2;
Ans. 2.
ANALYSIS
The Examiner rejects claim 11 as unpatentable over Hiramatsu,
Chande, Jennings, and Lizotte, but we need not address this prior art
rejection because the claim includes drafting issues that render it indefinite
and incapable of proper construction. Claim 11 recites “the plurality of
corresponding target locations,” but there is no antecedent basis for these
“corresponding” locations. The claim goes on to recite “wherein the target
locations are corresponding locations on a same feature of the workpiece.”
It is unclear whether these target locations that are corresponding locations
are the same as the previously recited plurality of corresponding locations.
Lastly, the claim further recites that “each of the second laser beams is
concurrently directed to a target location.” This further confuses the
construction because this could be read to mean that this last recitation is to
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Application 12/879,683
be directed to a target location that is not one of the previously recited
“corresponding target locations.” Based upon the disclosure, we can read
into these claims the intended meaning of the various locations, but given
that this case is still in prosecution, these antecedent basis issues should be
corrected to more clearly recite the various locations and to provide the
proper antecedent basis to avoid any confusion. As such we reject claim 11
and its dependent claims 12-16 as indefinite.
Appellants essentially argue the independent claims as a group and
apply the same arguments despite the claims not containing the same
language to describe the various locations. Appellants argue that Hiramatsu
fails to teach “concurrently directing at least two laser beams to different
sides of the same feature or object on the workpiece.” App. Br. 15. We
agree that claim 11 attempts to claim this type of method, but claim 17
recites only “redirecting the second laser beams concurrently toward a
plurality of target locations on the same object wherein the plurality of target
locations are positioned with respect to each other such that heat treatment
of a first target location avoids effects of the heat treatment of second
locations.” App. Br. 22 (Claims App’x.). There is no requirement in claim
17 that the beams be directed to different sides of the same feature. We
agree with the Examiner that Hiramatsu discloses directing a plurality of
split laser beams to a plurality of locations on the same object and that those
locations are spaced as claimed such that heat treatment at one location
would be unaffected by heat treatment at any of the other locations. See
Ans. 3.
Although Appellants make arguments regarding the secondary
references (see App. Br. 16-19), we agree with the Examiner’s response to
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Application 12/879,683
these arguments and adopt them as our own. Ans. 4-5. We note that
Appellants make no further rebuttal to the Examiner’s response regarding
the secondary references in the Reply Brief, thus leaving the Examiner’s
response uncontroverted. Appellants also make no specific argument as to
the content of the dependent claims. As such we sustain the rejection of
claims 17-20.
Claim 21, however, does include language requiring that the beams be
directed to different sides of the same feature. Here, we agree with
Appellants that Hiramatsu is deficient in teaching this because it directs its
split laser beams to a plurality of locations that are all on the same side of
the workpiece. Additionally, each target location in Hiramatsu is a different
location (albeit a duplicate or triplicate copy of the first location) and cannot
be considered working on the same feature. While we understand the
Examiner’s point that a duplication of a feature could be considered a “same
feature” (see Ans. 3), given the disclosure in the Specification, we agree
with Appellants that the proper construction in light of the Specification is
that the laser beams must be directed at the same actual feature, rather than a
duplicate or triplicate version of the feature at a different location.
Accordingly, we do not sustain the Examiner’s rejection of claims 21-26.
DECISION
For the above reasons, we REVERSE the Examiner’s decision to
reject claims 21-26, AFFIRM the rejection of claims 17-20, and issue a new
ground of rejection for claims 11-16.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (2011). 37 C.F.R. § 41.50(b) provides “[a] new ground
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of rejection pursuant to this paragraph shall not be considered final for
judicial review.”
37 C.F.R. § 41.50(b) also provide that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the Examiner, in which event the proceeding will be
remanded to the Examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed
rejection1, the effective date of the affirmance is deferred until conclusion of
the prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome. If Appellants elect
prosecution before the Examiner and this does not result in allowance of the
application, abandonment or a second appeal, this case should be returned to
the Patent Trial and Appeal Board for final action on the affirmed rejection,
including any timely request for rehearing thereof.
1 37 C.F.R. § 41.52(a)(1) provides “Appellant may file a single request for
rehearing within two months from the date of the original decision of the
Board.”
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED-IN-PART; 37 C.F.R, § 41.50(b)
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