Ex Parte Gaebelein et al

Patent Trial and Appeal Board

Feb 20, 2018

14568134 (P.T.A.B. Feb. 20, 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.
14/568,134 12/12/2014 Jens Guenter Gaebelein AVSY-0005 5981
146918 7590
patent2ip LLC
7901 Stoneridge Drive
Suite 320
Pleasanton, CA 94588
EXAMINER
CHOU, JIMMY
ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
02/22/2018 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 @ patent2ip. com
vnguyen@patent2ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JENS GUENTER GAEBELEIN and JEROEN HRIBAR
Appeal 2017-0065941
Application 14/568,1342
Technology Center 3700
Before ANTON W. FETTING, KENNETH G. SCHOPFER, and
SHEILA F. McSHANE, Administrative Patent Judges.
SCHOPFER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of claims
1—7 and 21—28. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 Our decision references the Appeal Brief (“Appeal Br.,” filed Dec. 9,
2016) and Reply Brief (“Reply Br.,” filed Mar. 13, 2017), and the
Examiner’s Answer (“Ans.,” mailed Jan. 13, 2017) and Final Office Action
(“Final Act.,” mailed May 10, 2016).
2 According to Appellants, the real party in interest is Avonisys AG. Appeal
Br. 3.
Appeal 2017-006594
Application 14/568,134
BACKGROUND
According to Appellants, the Specification provides “methods and
systems to improve the services and operation of a liquid jet guided laser
system.” Spec. 1.
ILLUSTRATIVE CLAIM
Claim 1 is the only independent claim on appeal and recites:
1. An add-on module for a laser system, the add-on module
comprising
a coupling module removably attached to a laser focus
optic module of the laser system,
wherein the coupling module comprises a body, a
window assembly and a nozzle assembly,
wherein the window assembly is removably
attached to the body at a first surface,
wherein the coupling module is removably attached
to the laser focus optic module with the window assembly
facing the laser focus optic module,
wherein the nozzle assembly is removably attached
to the body at a second surface opposite the first surface,
wherein the coupling module is configured to allow
independent removal of a window in the window assembly
and a nozzle in the nozzle assembly,
wherein the nozzle assembly comprises an air jet
nozzle assembly for forming an air jet surrounding a liquid
jet generated by the nozzle,
wherein the air jet nozzle assembly forms a partition
between the air jet and the liquid jet,
wherein the air jet and the liquid jet exit the
coupling assembly at two separate openings,
wherein the air jet and liquid jet do not merge until
after contact with the workpiece.
Appeal Br. 12.
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Appeal 2017-006594
Application 14/568,134
REJECTIONS
1. The Examiner rejects claims 1—7 and 21—28 under 35 U.S.C. § 112(a) as
failing to comply with the written description requirement.
2. The Examiner rejects claims 1—7 and 23—283 under 35 U.S.C.
§ 112(b) as indefinite.
3. The Examiner rejects claims 1—3, 5—7, and 21—28 under 35 U.S.C. § 103
as unpatentable over Muratsubaki4 in view of Lowney.5
4. The Examiner rejects claim 4 under 35 U.S.C. § 103 as unpatentable over
Muratsubaki in view of Lowney and Horn.6
DISCUSSION
Written Description
The Examiner finds that the limitation “wherein the air jet and liquid
jet do not merge until after contact with the workpiece,” lacks written
description support in the Specification and drawings as originally filed.
Final Act. 4. Specifically, the Examiner finds:
When the air jet comes out of nozzle, a portion of air jet (refers
to air) will spread and/or permeate in the surrounding
environment because there is no structure confines air jet (i.e.,
gaseous substance). In addition, drawing or specification does
not provide detail of any conduit configuration to provide
3 The Examiner separately addressed limitations in claims 21 and 27 in the
Final Action. Final Act. 6. However, in the Answer the Examiner appeared
to withdraw the specific rejections to claims 21 and 27. See Ans. 16.
Claims 21 and 27 depend from claim 1, and although the rejection for the
additional limitations of claims 21 and 27 may have been withdrawn,
indefmiteness due to their dependency to claim 1 is considered in this
Appeal.
4 Muratsubaki et al., US 8,134,098 B2, iss. Mar. 13, 2012.
5 Lowney, US 6,534,745 Bl, iss. Mar. 18, 2003.
6 Horn et al., US 2007/0228025 Al, pub. Oct. 4, 2007.
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Application 14/568,134
separate confined flow passages for air and fluid out of nozzle.
Based on figure, it is obvious that a portion of air jet will spread
and/or permeate in the surrounding environment once the fluid
pressure decreases as air and fluid flow away from nozzle outlet
opening. Therefore, air and fluid will more or less contact each
other before they touch the workpiece. In addition, there is no
disclosure of “wherein the air jet and liquid jet do not merge until
after contact with the workpiece” in the specification of instant
application.
Id.
“Adequate written description means that the applicant, in the
specification, must ‘convey with reasonable clarity to those skilled in the art
that, as of the filing date sought, he or she was in possession of the [claimed]
invention.’” Agilent Techs., Inc. v. Asymetrix, Inc., 567 F.3d 1366, 1379
(Fed. Cir. 2009) (citation omitted) (brackets in original), reh ’g en banc
denied Sep. 18, 2009. We find that the Specification here provides adequate
support for the claim limitation at issue such that the Specification conveys
with reasonable clarity that Appellants were in possession of the claimed
invention.
In particular, the Specification indicates that the air jet nozzle and
liquid jet nozzle can have independent controls such that the air jet does not
interfere with the liquid jet operation. Spec. 11. Further, the Specification
describes that “[d]ue to the potential interference between the air jet and the
liquid jet outside of the liquid and gas sources, the air jet can be diverged
from the liquid jet.” Id. at 13. The Specification goes on to describe that
“the air jet can be directed away from the liquid jet, such as between 0 and
45 degrees, or between 0 and 30 degrees” when a workpiece is placed at a
relatively far distance from the nozzle. Id. The Specification describes that
when the workpiece is placed at a relatively far distance, the air jet pressure
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Application 14/568,134
may need to be increased, and when such an increase is necessary, “[t]he
high pressure and flow can potential[ly] interfere with the liquid jet... if
running parallel or toward the liquid jet.” Id. at 14.
Thus, the Specification indicates that the directions of the air and
liquid jets may be altered such that they are directed away from each other to
avoid the air jet interfering with the liquid jet. We conclude that such
disclosure provides adequate support for the limitation at issue.
Accordingly, we do not sustain this rejection.
Indefiniteness
With respect to claim 1, the Examiner indicates that the limitation
“wherein the air jet and liquid jet do not merge until after contact with the
workpiece” is indefinite. Final Act. 5. In support, the Examiner states:
As best understood, the nozzle structure must be different in
order to deflect air jet 161 la at different angles. Nothing in the
specification of instant application suggest the nozzle structure
for different embodiment. Therefore, air and fluid will more or
less contact each other before they touch the workpiece. For
examining purpose, examiner interprets that air jet and liquid jet
can either touch or not touch each other out of nozzle.
Final Act. 5.
We are persuaded of reversible error in this rejection. At best, the
Examiner’s rejection is related to the breadth of the claim limitation, which
requires that the air jet and liquid jet do not merge without indicating the
specific structure required to perform that function. However, the breadth of
a claim is not to be equated with indefmiteness. See e.g., In re Miller, 441
F.2d 689, 693 (CCPA 1971). The Examiner does not point to any language
in the claim that is unclear or otherwise explain why one of ordinary skill in
the art would not “understand what is claimed when the claim is read in light
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Application 14/568,134
of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806
F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted). Accordingly, we do
not sustain this rejection.
Claims 2—7 and 21—28 depend directly or indirectly from claim 1. No
additional limitations of these claims were found to be indefinite by the
Examiner, so the rejections of claim 2—7 and 23—28 are reversed in light of
the reversal of the rejection of claim 1.
Obviousness
Claims 1—3, 5—7, and 21—28
With respect to claim 1, we are persuaded of reversible error in the
rejection because the Examiner has not shown that the art of record teaches
or otherwise makes obvious a system including a coupling module in which
“the air jet and liquid jet do not merge until after contact with the
workpiece” as required by the claim.
As an initial matter, we note that it is not precisely clear where in the
rejection the Examiner addresses this limitation. The Examiner appears to
paraphrase the claim to require that the “air jet and liquid jet can either touch
or not touch each other out of [the] nozzle,” and the Examiner finds that
“Muratsubaki’s laser device is capable of performing this feature.” Final
Act. 8. However, the Examiner does not further explain how Muratsubaki’s
device is even capable of performing the feature indicated in the limitation.
Furthermore, the claim language requires that the air jet and liquid jet do not
merge until after contact with a workpiece. It is not clear if the feature
indicated by the Examiner is commensurate with the scope of the claim
limitation, and the Examiner does not provide an explanation. The
Examiner does reference the “112 rejections above” in this rejection, but
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Application 14/568,134
does not otherwise explain how the rejections under 35 U.S.C. § 112 are
pertinent to the obviousness rejection. Thus, the Examiner has not
adequately shown how Muratsubaki teaches a device in which the air jet and
liquid jet do no merge until after contact with the workpiece.
Further, the Examiner acknowledges that Muratsubaki fails to teach
an air jet surrounding a liquid jet generated by the nozzle; a partition
between the air jet and the liquid jet; and the air jet and liquid jet exiting the
coupling assembly at two separate openings. Final Act. 8. With respect to
these requirements, the Examiner relies on Lowney and concludes that “it
would have been obvious to one of ordinary skill in the art to use Lowney’s
nozzle configuration in order to provide shielding for the treatment area... as
taught by Lowney.” Id. (citing Lowney col. 4,11. 65—67). However, the
Examiner does not explain how Lowney may show that the disputed
limitation requiring that the jets do not merge would have been obvious.
Indeed, the Examiner specifically indicates that Lowney is not relied upon
with respect to this limitation. Ans. 17—18.
Based on the foregoing, we find that the Examiner erred in rejecting
claim 1 over Muratsubaki in view of Lowney. Accordingly, we do not
sustain the rejection of claim 1. We also do not sustain the rejection of
depedent claims 2, 3, 5—7, and 21—28 for the same reasons.
Claim 4
We also sustain the rejection of claim 4 over Muratsubaki in view of
Lowney and Horn for the same reasons discussed above and because it is not
readily apparent on the record before us that the cited art cures the
deficiency in the rejection of claim 1. Furthermore, we note that although
the rejection of claim 4 cites an alleged figure and paragraph in Horn, Horn
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Application 14/568,134
does not appear to include the cited evidence. See Final Act. 14 (citing
annotated Fig. 4; | 62).
CONCLUSION
We REVERSE the rejections of claims 1—7 and 21—28.
REVERSED
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