Ex Parte DeRossett et al

Board of Patent Appeals and Interferences

Jun 12, 2009

10625783 (B.P.A.I. Jun. 12, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte THOMAS DEROSSETT, JR. and TIMOTHY MILLER
____________

Appeal 2009-001488
Application 10/625,783
Technology Center 3700
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Decided:1 June 12, 2009
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Before: WILLIAM F. PATE, III, JENNIFER D. BAHR, and STEVEN D.A.
McCARTHY, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-001488
Application 10/625,783

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STATEMENT OF THE CASE
Thomas Derossett et al. (Appellants) appeal under 35 U.S.C. § 134
from the Examiner's decision rejecting claims 1-6. Claim 7 has been
canceled. We have jurisdiction over this appeal under 35 U.S.C. § 6 (2002).

The Invention
Appellants' claimed invention is directed to an apparatus for laser
inscription of an image on a surface. An emitter housing 12 is pivotally
attached to marking head 14. Specification 6:17-19. A laser beam emitted
from a laser within emitter housing 12 is reflected off an adjustable
alignment mirror 24 and to marking head 14 through a running passage 24.
Specification 7:21-25. Once inside the marking head 14, the laser beam
goes through a beam directing apparatus made of an X and a Y galvos
mirror mechanism 32 and 34 (Specification 8:6-8), through a focusing lens
39 (Specification 8: 25-26), and out of an emission port 60 (Specification 9:
11-12).
Claim 1, reproduced below, is illustrative of the claimed invention.
1. In a system for inscribing a pattern on a surface,
said system comprising an emitter housing
including a laser for generating a high energy
emission beam, a system controller for entering
data representing the pattern to inscribed [sic] on
the surface and for converting said data to control
signals and beam direction apparatus for
controllably directing said emission beam
responsive to the control signals from said system
controller and power circuitry connecting said
laser and said beam direction means to a source of
power, the improvement comprising an
Appeal 2009-001488
Application 10/625,783

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emitter/marking head assembly, said assembly
comprising :
an emitter housing defining an interior
comprising top, bottom, side and end walls, said
housing containing a laser source for producing a
high intensity beam disposed in said interior of
said emitter housing;
a marking head comprising a housing
defined by top, bottom, side and end walls, said
walls defining an interior, said marking head being
pivotally joined to a wall of said emitter housing
by a pivot joint, said pivot joint including a
through running passage for optical
communication between said interior of said
emitter housing and said interior of said marking
head, said interior of said marking head
electronically communicating with said emitter
housing and with said system controller, one of
said end walls defining an emission face of said
marking head and having an emission port for the
passage of the high intensity beam there through,
said interior of said housing including beam
directing apparatus for moving the high energy
beam in a defined pattern on a surface being
etched responsive to signals from said system
controller and said housing further including a lens
for focusing said high intensity beam;
an optical path from said laser source to said
emitter port of said marking head being defined by
an alignment mirror in said emission housing, said
through-running passage in said pivot joint, said
beam directing apparatus and said lens in said
marking head;
circuit means electrically connecting said
system controller, said marking head and said laser
source.

Appeal 2009-001488
Application 10/625,783

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The Rejections
Appellants seek review of the Examiner's rejection under 35 U.S.C.
§ 102(b) of claims 1-6 as anticipated by U.S. Patent 5,897,797 to Drouillard
et al. (Apr. 27, 1999)2.

SUMMARY OF DECISION
We AFFIRM.

ISSUE
Appellants argue that the Examiner has not shown that the subject
matter of claims 1-6 is anticipated by Drouillard. Appellants argue claims 1-
6 as a group. The issue presented in this appeal is whether the Appellants
have demonstrated that Drouillard fails to describe a marking head pivotally
joined to a wall of an emitter housing by a pivot joint, as claimed. Reply Br.
8-9, Ans. 5-6.

FACTS PERTINENT TO THE ISSUE
(FINDINGS-OF-FACT (FF))
FF1 Drouillard describes a device for laser etching of fruit. Abstract. A
main cabinet 90 is attached to remote scanning head 50 via articulated
arm and conduit assembly 92 and 94. Col. 10, l. 65 - col. 11, l. 1, fig.
6. A laser beam produced by laser tube 126 and emitted from main

2 Appellants also seek review of the Examiner's objection to an amendment
of the specification. App. Br. 8-9. However, this issue is reviewable by
petition under 37 C.F.R. § 1.181, see MPEP § 608.04(c), and thus is not
within the jurisdiction of the Board. See In re Mindick, 371 F.2d 892, 894
(CCPA 1967).
Appeal 2009-001488
Application 10/625,783

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cabinet 90 is reflected through articulated arm and conduit assembly
92 and 94 to remote scanning head 50, where it is further directed
through laser beam scanning mechanism 96 and output lens system 98
toward a target 24. Col. 11, ll. 1-17, col. 12, ll. 41-43.
FF2 As depicted by the dashed-line locations of lasers 28 in fig. 6 of
Drouillard, the articulated arm and conduit assembly 92 and 94 allows
for movement of remote scanning head 50 into various positions. The
articulated arm assembly is depicted as having several pivoting joints
that provide the articulated movement. Fig. 6.

PRINCIPLES OF LAW
“Anticipation is established only when a single prior art reference
discloses, expressly or under the principles of inherency, each and every
element of a claimed invention.” RCA Corp. v. Applied Digital Data Sys.,
Inc., 730 F.2d 1440, 1444 (Fed. Cir. 1984). In other words, “[t]here must be
no difference between the claimed invention and the reference disclosure, as
viewed by a person of ordinary skill in the field of the invention.” Scripps
Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565, 1576 (Fed.
Cir. 1991). It is not necessary that the reference teach what the subject
application teaches, but only that the claim read on something disclosed in
the reference, i.e., that all of the limitations in the claim be found in or fully
met by the reference. Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772
(Fed. Cir. 1983).

Appeal 2009-001488
Application 10/625,783

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ANALYSIS
The Examiner found that Drouillard describes each element of claim
1, with the claimed "pivot joint" being described by the articulated arm and
conduit assembly 92 and 94 (articulated arm). Ans. 3-4, see FF1, FF2.
Appellants argue that the articulated arm is not a pivot joint, as claimed,
because an articulated arm is "not a direct pivotal attachment." Reply. Br. 8.
The Examiner responds that articulated arms are flexible and provide a
pivotal motion (Ans. 6), and further, that the claims do not require a direct
attachment (Ans. 7).
Drouillard's articulated arm describes several pivot joints within the
articulated arm. FF2. The articulated arm connects the scanning head 50 to
the main cabinet 90 (FF1), meaning they are joined by way of a pivot joint.
Claim 1 does not recite that the marking head and emitter housing are
directly joined, as Appellants argue. It is well established that limitations
not appearing in the claims cannot be relied upon for patentability. See In re
Self, 671 F.2d 1344, 1348 (CCPA 1982). Because "directly joined" and
"joined" have plainly different meanings, we would be reading in limitations
not found in the claim to require "joined" to mean "directly joined."
Therefore, Appellants' argument is not found persuasive.

CONCLUSION
Appellants' arguments fail to persuade us that us that the Examiner
erred in rejecting the subject matter of claims 1-6 as anticipated by
Drouillard. Drouillard describes a marking head pivotally joined to an
emitter housing by a pivot joint.

Appeal 2009-001488
Application 10/625,783

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DECISION
The Examiner's decision is affirmed as to claims 1-6.

AFFIRMED

mls

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