Ex Parte EPSHTEIN

Patent Trial and Appeal Board

Feb 27, 2019

15087764 (P.T.A.B. Feb. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
15/087,764 03/31/2016 Haim EPSHTEIN
122004 7590 03/01/2019
ISUS Intellectual Property PLLC
A. Jason Mirabito
1300 I Street, NW
Suite 400
Washington, DC 20005
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.
35678-950US 1 8012
EXAMINER
VAN ROY, TOD THOMAS
ART UNIT PAPER NUMBER
2828
NOTIFICATION DATE DELIVERY MODE
03/01/2019 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
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HAIM EPSHTEIN
Appeal2018-002751
Application 15/087,764
Technology Center 2800
Before BEYERL YA. FRANKLIN, MICHAEL P. COLAIANNI, and
JANEE. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner's decision to finally reject claims 1, 5, 6, and 9-15. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
Appellant claims a method of improving the operation of a laser
assembly (independent claims 1 and 6), a pumped laser cavity assembly
(independent claims 5 and 9), a method of manufacturing a laser assembly
1 Appellant is the Applicant, Lumenis Ltd., which, according to the Appeal
Brief, is the real party in interest. Appeal Brief filed September 21, 2017
("App. Br."), 3.
Appeal2018-002751
Application 15/087,764
(independent claim 10), and a multiple cavity laser system (independent
claim 12). Claim 1 illustrates the subject matter on appeal and is reproduced
below with contested language italicized:
1. A method of improving the operation of a laser assembly,
compnsmg:
providing a glass element, wherein the glass element
comprises two, parallel glass tubes, a laser rod in one of the
glass tubes and a pumping flash lamp in the other of the glass
tubes wherein the laser rod is a CTH: YAG doped laser rod;
doping at least one of the two parallel glass tubes of the
glass element with one or more of Samarium or Europium,
whereby, upon excitation, the doped glass element absorbs at
least part of the blue emission spectrum irradiated upon
activation of the pumping flash lamp.
App. Br. 12, Claims App'x (emphasis added).
The Examiner sets forth the following rejections in the Final Office
Action entered April 19, 2017 ("Final Act."), and maintains the rejections in
the Examiner's Answer entered November 16, 2017 ("Ans.")2:
I. Claims 1, 5, 6, 9-11, and 13-15 under 35 U.S.C. § 103 as
unpatentable over Young (US 3,702,976, issued November 14, 1972) as
evidenced by Acharekar et al. (US 5,099,486, issued March 24, 1992)3
("Acharekar"); and
2 The Examiner withdrew the rejection of claims 13-15 under 35 U.S.C.
§ 112(a) for lack of enablement (Final Act. 3) in the Answer (Ans. 2).
3 Although the Examiner does not explicitly list Acharekar as an evidentiary
reference in the heading for the rejection of claims 1, 5, 6, 9-11, and 13-15
under 35 U.S.C. § 103 as unpatentable over Young, that the Examiner
nonetheless relies on Acharekar as an evidentiary reference in the Final
Action (Final Act. 6).
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Application 15/087,764
II. Claim 12 under 35 U.S.C. § 103 as unpatentable over Young
and Connors et al. (US 5,375,132, issued December 20, 1994) ("Connors")
as evidenced by Acharekar.
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant's contentions, we affirm the Examiner's rejections of
claims 1, 5, 6, and 9-15 under 35 U.S.C. § 103 for the reasons set forth in
the Final Action, the Answer, and below.
We review appealed rejections for reversible error based on the
arguments and evidence the Appellant provides for each ground of rejection
the Appellant contests. 37 C.F.R. § 4I.37(c)(l)(iv); Ex parte Frye, 94
USPQ2d 1072, 107 5 (BP AI 2010) (precedential) ( cited with approval in In
re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the
examiner had failed to make a prima facie case, "it has long been the
Board's practice to require an applicant to identify the alleged error in the
examiner's rejections")).
Rejection I
Claims 1, 5, 6, and 9-11
Appellant argues claims 1, 5, 6, and 9-11 together. App. Br. 8-9. We
accordingly select claim 1 as representative, and decide the appeal as to
claims 1, 5, 6, and 9-11 based on claim 1 alone. 37 C.F.R. § 4I.37(c)(l)(iv).
Young discloses an all-glass laser structure that comprises glass
tubing 33 having a multi-arcuate cross-section and containing glass laser
disc 30, which is supported in, and encompassed by, samarium-doped glass
ring 31. Abstr.; col. 3, 11. 19-24; col 4, 11. 43--45, 51-52; claim 1; Fig. 2.
Appellant does not dispute the Examiner's finding that Young's glass tubing
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Application 15/087,764
33 and glass ring 31 correspond to two parallel glass tubes as recited in
claim 1. Compare Final Act. 4, with App. Br. 8-9. Young discloses using
neodymium-doped glass for laser disc 30, and indicates that dopants other
than neodymium can also be used for the laser disc. Col. 3, 11. 48-50; col. 6,
11. 1-3.
Young discloses that samarium-doped glass ring 31 that encompasses
laser disc 30 preferably contains 10% dopant by weight, and absorbs any
off-axis light rays that could interfere with the laser beam, reducing
interference by "off axis" spontaneously emitted light. Abstr.; col 4, 11. 22-
23, 43--46.
Young discloses that the laser structure also includes flash tubes 15
that provide the necessary excitation energy to the laserable material, and
Young discloses that part of the surface of each flash tube combines with a
surface of arcuate glass tubing 33. Col. 3, 11. 51-54; col. 4, 11. 32-33, 51-55;
Fig. 2. The Examiner finds that samarium-doped glass ring 31 would
inherently absorb at least part of a blue emission spectrum irradiated from
flash tubes 15 when the tubes are activated, by virtue of the glass being
doped with samarium. Final Act. 4.
The Examiner finds that although Young does not explicitly disclose a
CTH:YAG doped laser rod, such laser rods were known in the art, as
evidenced by Acharekar, which the Examiner finds "teaches the usefulness
of the alternate wavelength produced by CTH: Y AG lasers." Final Act. 6
(citing Acharekar col. 1, 11. 5-12). Acharekar discloses that CTH:YAG
lasers operate at a wavelength of 2090 nm (2.09 µm), which "is considered
eye-safe and therefore, is considered useable for commercial laser radar
applications." Acharekar col. 1, 11. 5-12.
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The Examiner concludes that it would have been obvious to one of
ordinary skill in the art at the time of the invention to use a CTH: Y AG laser
as the laser in Young's all-glass laser structure to permit emission of
alternate wavelengths from the laser. Final Act. 4--5.
Appellant argues that the fact that CTH: Y AG doped rods existed at
the time of the invention would not have made it obvious to use such a rod
in combination with doping one or more laser elements with samarium and
europium in a method as recited in claim 1, absent a reading of Appellant's
disclosure. App. Br. 8.
As the Examiner correctly finds (Final Act. 6), however, Acharekar
evidences that CTH: Y AG lasers were known in the art at the time of the
invention to emit light having a wavelength of 2090 nm, which Acharekar
discloses provides the advantage of being safe to the eyes, allowing
CTH: Y AG lasers to be used for commercial laser radar applications. In
view of these disclosures in Acharekar, and considering Young's disclosure
of the suitability of using glass that includes dopants other than neodymium
in the laser described in the reference, one of ordinary skill in the art seeking
to produce a laser structure as disclosed in Young that could be used for
commercial laser radar applications reasonably would have been led to use a
CTH: Y AG doped laser in the structure, as recited in claim 1, with a
reasonable expectation of successfully producing an eye-safe laser. KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398,417 (2007) (quoting Sakraida v. Ag
Pro, Inc., 425 U.S. 273, 282 (1976) ("[W]hen a patent 'simply arranges old
elements with each performing the same function it had been known to
perform' and yields no more than one would expect from such an
arrangement, the combination is obvious."); In re Kubin, 561 F.3d 1351,
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1360 (Fed. Cir. 2009) ("Obviousness does not require absolute predictability
of success ... all that is required is a reasonable expectation of success.")
(emphasis omitted, citing In re O 'Farrell, 853 F.2d 894, 903-04 (Fed. Cir.
1988)).
Appellant argues that the inventor selected a CTH: Y AG doped laser
rod and a laser system doped with samarium or europium to address an issue
with CTH:YAG doped lasers caused by blue regions producing a non-
radiate relaxation that increases the thermal load of the laser rod. App. Br.
8-9. Appellant argues that doping with samarium or europium reduces the
thermal load and increases laser output. Id. Appellant argues that "nowhere
does Young state that the use of Samarium or Europium is to absorb part of
the blue light spectrum." App. Br. 8 (emphasis omitted).
It is well-settled, however, that "[i]n determining whether the subject
matter of a patent claim is obvious, neither the particular motivation nor the
avowed purpose of the patentee controls." KSR, 550 U.S. at 419.
Regardless of the inventor's particular motivation for arriving at the method
recited in claim 1, and regardless of whether Young explicitly discloses that
the purpose of using samarium in Young's structure is to absorb part of the
blue light spectrum, as discussed above, one of ordinary skill in the art
seeking to produce a laser structure as disclosed in Young that would be safe
to the eyes, and therefore useful for commercial laser radar applications,
reasonably would have been led to use a CTH: Y AG doped laser in the
structure, as recited in claim 1, in view of the state of the art at the time of
the invention, as evidenced by Acharekar's disclosure that CTH:YAG lasers
emit light having a wavelength of 2090 nm.
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Appellant argues that "Young describes a Samarium doped glass tube
which is transparent to the external pumping light source but absorbs
internal spontaneous off-axis light generated by the laser and in this tube."
App. Br. 9. Appellant argues that Young's structure is designed to absorb
off-axis laser light that could interfere with the on-axis laser light, and
Appellant argues that Young therefore "discloses inherently that his
invention improves a laser output only if the laser wavelength is absorbed by
Samarium, and thus Young's invention is designed to improve the operation
and efficiency of UV /Blue lasers." Id. Appellant argues that Young
"provides no teaching or suggestion whatsoever of using Samarium in a non-
UV /Blue laser," such as a CTH:YAG laser. Id.
As discussed above, however, Young discloses that the laser disc
described in the reference is formed of neodymium-doped glass. As the
Examiner correctly explains in the Answer (Ans. 3), one of ordinary skill in
the art would have understood that neodymium emits light having a
wavelength of 1064 nm, which is in the infrared region of the
electromagnetic spectrum, rather than the ultraviolet region. See, e.g.,
https ://www.sciencedirect.com/topics/medicine-and-dentistry /ndyag-laser.
Therefore, contrary to Appellant's arguments, Young's invention is not
limited to improving the operation and efficiency of only lasers that emit
ultraviolet light. Although Young does not disclose using samarium-doped
glass in a CTH: Y AG laser, as discussed above, one of ordinary skill in the
art seeking to produce a laser structure as disclosed in Young that would be
safe to the eyes, and therefore useful for commercial laser radar applications,
reasonably would have been led to use a CTH:Y AG doped laser in Young's
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structure, resulting in samarium-doped glass ring 31 encompassing a
CTH:YAG laser, as recited in claim 1.
Appellant's arguments are therefore unpersuasive of reversible error
in the Examiner's rejection of claims 1, 5, 6, and 9-11 under 35 U.S.C.
§ 103 as unpatentable over Young, which we accordingly sustain.
Claims 13-15
Appellant argues claims 13-15 together. App. Br. 10. We
accordingly select claim 13 as representative, and decide the appeal as to
claims 13-15 based on claim 13 alone. 37 C.F.R. § 4I.37(c)(l)(iv).
Claim 13 depends from claim 1 and recites that upon activation of
the pumping flash lamp, the output of the laser as a function of input
pumped optical energy remains linear at frequencies of from 1 OHz to 40Hz.
To address the rejection of claim 13, Appellant repeats the argument
that Appellant presents for claim 1 that "there is no basis to combine a CTH-
y AG doped rod with a Sm doped laser glass other than through hindsight
and a reading of Appellant's own specification." App. Br. 10. This
argument is unpersuasive of reversible error in the Examiner's rejection of
claim 13 for the reasons discussed above for claim 1.
Appellant further argues that "the linearity shown in Figs. 6-11
evidencing testing of the pumped laser cavity assembly of claims 1, 6 and 11
as compared to a prior art pumped laser cavity are unexpected results that
have been effectively ignored but point to the patentability of claims 13 to
15." App. Br. 10; Reply Br 1-2.
The burden of analyzing and explaining Specification disclosures to
establish unexpected results rests with the Appellant. In re Klosak, 455 F.2d
1077, 1080 (CCP A 1972) ("the burden of showing unexpected results rests
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Application 15/087,764
on he who asserts them"). To meet this burden, the Appellant must establish
that the claimed invention imparts results that would have been unexpected
by one of ordinary skill in the art at the time of the invention relative to the
closest prior art. In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir.
1991) ("[W]hen unexpected results are used as evidence of nonobviousness,
the results must be shown to be unexpected compared with the closest prior
art."). "[I]t is not enough to show that results are obtained which differ from
those obtained in the prior art: that difference must be shown to be an
unexpected difference." In re Klosak, 455 F.2d at 1080 (emphasis omitted).
Figures 6-11 of Appellant's application plot measurements of output
lasing energies for non-doped laser cavities, and laser cavities doped with
5% or 10% samarium, as a function of input optical energy (pumped) at
frequencies of 10 Hz, 15 Hz, 20 Hz, 25 Hz, 30 Hz, and 40 Hz. Spec. pp. 6-
7. Although Figures 6-11 show linearity for cavities doped with 10%
samarium at 10 Hz to 40 Hz as recited in claim 13, Figures 6-11 do not
provide a comparison between output lasing energies as a function of input
optical energy for a laser assembly as recited in claim 13 ( and claim 1) and a
laser structure as disclosed in Young, which, as discussed above, preferably
contains 10% samarium dopant by weight. Thus, on this appeal record,
Appellant does not identify any showing directed to a comparison between
the subject matter of claim 13 and the closest prior art-Young. Baxter, 952
F.2d at 392.
Nor does Appellant identify any averment in the Specification, or
provide any other evidence, establishing that the asserted linearity achieved
by the method of claim 13 would have been unexpected by one ordinary
skill in the art at the time of the invention. App. Br. 10. In re Geisler, 116
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Application 15/087,764
F.3d 1465, 1471 (Fed. Cir. 1997) ("Geisler made no such assertion [that
results were unexpected] in his application. Nor did Geisler submit any such
statement through other evidentiary submissions, such as an affidavit or
declaration under Rule 132 .... Instead, the only reference to unexpected
results was a statement by Geisler's counsel ... that Geisler's results were
'surprising."').
Accordingly, Appellant's arguments and the relied-upon Figures in
Appellant's application do not establish that the method of claim 13 imparts
results that would have been unexpected by one of ordinary skill in the art at
the time of Appellant's invention relative to the closest prior art. Therefore,
considering the totality of the evidence relied upon in this appeal, a
preponderance of the evidence weighs in favor of the Examiner's conclusion
of obviousness; consequently, we sustain the Examiner's rejection of claims
13-15 under 35 U.S.C. § 103 as unpatentable over Young.
Rejection II
To address the rejection of claim 12 over Young in view of Connors,
Appellant argues that "since the main and still applied reference to Young
fails to make obvious the combination of a CTH: Y AG doped rod with Sm or
Er doped glass, the combination of Young plus Connors fails to make
obvious the recitations of claim 12." App. Br. 9. Because we are
unpersuaded of reversible error in the Examiner's rejection of claim 1 over
Young for the reasons discussed above, Appellant's position as to this
rejection is also without merit. We accordingly sustain the Examiner's
rejection of claim 12 under 35 U.S.C. § 103.
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DECISION
We affirm the Examiner's rejections of claims 1, 5, 6, and 9-15 under
35 U.S.C. § 103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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