Ex Parte Kleinert et al

Patent Trial and Appeal Board

Jul 31, 2018

14059029 (P.T.A.B. Jul. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/059,029 10/21/2013
76362 7590 08/01/2018
ELECTRO SCIENTIFIC INDUSTRIES, INC.
13900 N.W. SCIENCE PARK DRIVE
PORTLAND, OR 97229
FIRST NAMED INVENTOR
Jan Kleinert
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.
El63:Nl 8417
EXAMINER
PAIK, SANG YEOP
ART UNIT PAPER NUMBER
3742
MAIL DATE DELIVERY MODE
08/01/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAN KLEINERT, ROBERT REICHENBACH,
MARK UNRATH, HISASHI MATSUMOTO,
JEFFERY HOWERTON, MEHMET E. ALPAY, and
ANDYMOORE 1
Appeal2017-005711
Application 14/059,029
Technology Center 3700
Before STEVEN D.A. McCARTHY, MICHELLE R. OSINSKI, and
PAUL J. KORNICZKY, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
1 Electro Scientific Industries, Inc. ("Appellant") is the Applicant as
provided in 3 7 C.F .R. 1.46 and is identified as the real party in interest.
Appeal Br. 3.
Appeal 2017-005711
Application 14/059,029
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-14, 16, 17, 19-23, 29, 32-37, and 40-45, 2 which
are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
THE CLAIMED SUBJECT MATTER
Independent claim 1, reproduced below, is representative of the
claimed subject matter on appeal.
1. A method of marking an article, comprising:
providing an article having a preliminary visual
appearance; and
generating a plurality of groups of laser pulses, wherein at
least one of the plurality of groups is generated by:
modulating a beam of laser pulses to form a
plurality of beamlets, each of the plurality of beamlets
including at least one laser pulse;
sequentially directing the plurality of groups of laser
pulses onto the article such that laser pulses within the at least
one of the plurality of groups impinge upon the article at spot
areas that do not overlap one another, the sequentially directing
compnsmg:
directing a first group of laser pulses onto the
article, wherein laser pulses within the first group impinge
upon the article at a first set of spot areas;
2 The Board's rules provide that "[a]n appeal, when taken, is presumed to be
taken from the rejection of all claims under rejection unless cancelled by an
amendment filed by the applicant and entered by the Office." 37 C.F.R.
§ 41.31 ( c ). Although the Appeal Brief only refers to claim 1, including
reproducing only claim 1 in the Claims Appendix, we see no amendment
cancelling the remaining claims, so this appeal is considered to be an appeal
of the rejections of all claims.
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Application 14/059,029
after directing the first group of laser pulses,
directing a second group of laser pulses onto the article,
wherein laser pulses within the second group impinge
upon the article at a second set of spot areas offset from
the first set of spot areas along a first direction; and
after directing the second group of laser pulses,
directing a third group of laser pulses onto the article,
wherein laser pulses within the third group impinge upon
the article at a third set of spot areas is offset from the first
set of spot areas along a second direction different from
the first direction,
wherein at least one spot area within the third set of spot
areas is located between at least two spot areas of the first set of
spot areas,
wherein laser pulses within the plurality of groups are
configured to produce a visible mark on the article, the mark
having a modified visual appearance different from
the preliminary visual appearance.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
James
Chaplick
Umetsu
Zhang
Rumsby
us 5,463,200
US 2007 /0224768 Al
US 7,521,649 B2
US 2011/0194574 Al
US 2011/0259631 Al
THE REJECTIONS
Oct. 31, 1995
Sept. 27, 2007
Apr. 21, 2009
Aug. 11, 2011
Oct. 27, 2011
I. Claims 1, 6-14, 16, 17, 19--23, 29, 35-37, 40-42, 44, and 45 stand
rejected under 35 U.S.C. § I03(a) as unpatentable over either
James or Umetsu in view of Chaplick. Final Act. 2--4.
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II. Claims 2-5 and 32-34 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over either James or Umetsu in view of Chaplick and
Zhang. Id. at 5.
III. Claim 43 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over either James or Umetsu in view of Chaplick and Rumsby. Id.
OPINION
Rejection I
The Examiner relies on James or Umetsu for many of the limitations
of independent claim 1, but acknowledges that these references "do[] not
explicitly show sequentially directing a group of lasers including a first, a
second, and a third group of lasers in the offset manner as claimed wherein
the third set of spot areas is located between at least two spot areas of the
first set of spot areas." Final Act. 2-3. The Examiner finds that Chaplick
teaches "sequentially directing a plurality group of laser pulses" in
accordance with this limitation. Id. at 3. The Examiner concludes that it
would have been obvious to a person of ordinary skill in the art "to adapt
James or Umetsu with a first, a second and a third group of laser pulses, or
any number of groups, that are overlapped and un-overlapped manners in
offset directions or any other desired directions to form a desired pattern as a
matter of routine experimentation[]." Id. The Examiner further determines
that "use of [a] known technique [in the field of laser markings] to improve
similar devices would further yield ... predictable results as a matter of
routine experimentation[] as stated in the ground of rejection" and that
"sequential markings [be Jing partially overlapping as claimed would [have]
predictably resulted as a matter of routine experimentation[]." Ans. 6.
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Appellant argues that the reasoning articulated by the Examiner in
support of combining the teachings of either James or Umetsu with the
teachings of Chaplick lacks rational underpinnings. Appeal Br. 12.
Appellant argues that even if combining the teachings of either James or
Umetsu with the teachings of Chap lick would have been predictable, at best
the Examiner has explained only that James and Umetsu are in the same
field of endeavor as Chap lick ( e.g., laser processing) and this is insufficient
to support a conclusion that the claimed subject matter would have been
obvious to one of ordinary skill in the art. Id. at 12-13. We agree with
Appellant that the Examiner's conclusion of obviousness is not adequately
supported.
First, with respect to James, Appellant argues that James teaches the
simultaneous formation of dots on a workpiece in mask imaging marking,
whereas Chap lick teaches the sequential delivery of laser pulses on a
workpiece. Id. at 6. Appellant argues that James teaches away from
Chaplick's sequential delivery of laser pulses and that modifying James with
the teachings of Chap lick "would require a change in the basic principle
under which the marking techniques of James w[ere] designed to operate."
Id.
James contrasts the benefits of mask imaging marking (i.e., utilizing
single pulse) with focused spot marking (i.e., utilizing sequential delivery of
pulsed laser to eventually achieve the desired mark). James 1 :65-2:20. In
particular, James teaches that the simultaneous formation of the whole
pattern with a single pulse in mask imaging marking is much faster and can
result in a more easily recognized marking as compared to focused spot
marking. Id. at 2:31--40. James teaches a solution to a described problem in
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mask imaging marking in which achieving a larger pattern on the same
material requires an increase in laser pulse energy, which can be difficult or
expensive in practice. Id. at 2:23-30. James seeks to utilize energy that
would normally be wasted (id. at 9:8-11) by deflecting light not required to
form a desired pattern so that it "strikes the workpiece at another selected
location, e.g., a location substantially coincident with a beamlet that does
form part of the patterned array" (id. at 3 :34--42).
That Chaplick's sequential delivery of laser pulses could be utilized in
place of James' mask imaging marking technique to predictably form a
desired pattern is likely correct. The problem with relying on that basis for
the proposed combination is that it overlooks the stated purpose of James
which is to maintain the formation of the pattern with a single pulse. 3 The
Examiner has not explained sufficiently how the teachings of Chaplick's
sequential delivery of laser pulses could be applied to James' mask imaging
marking technique in a way that would have maintained James' intended
purpose of forming the pattern with a single pulse. See DePuy Spine, Inc. v.
Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1326 (Fed. Cir. 2009)
(nothing that the "predictable result" discussed in KSR also means "that the
combination would have worked for its intended purpose"). Because the
proposed modification would render James unsatisfactory for its intended
purpose, the Examiner has failed to articulate reasoning with rational
underpinnings to support that the proposed combination would have been
obvious.
3 We do not agree with the Examiner's attempts to couch James as teaching
sequential delivery of laser beams. See Adv. Act. 2 (citing James 3:21-22);
Ans. 5 (citing James Figs. 15-16, claim 2).
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Second, with respect to Umetsu, Appellant argues that Umetsu is
concerned with the formation of holes in a workpiece (i.e., resulting in a
"damaged" workpiece), whereas "Chap lick' s intent [is] to actually avoid
producing the damage that Umetsu requires." Appeal Br. 11 (citing Umetsu
3:61---67; Chaplick ,r,r 6-7). Appellant further explains that "[i]nstead of
forming holes, the techniques disclosed in Chaplick are disclosed as being
suitable for processing 'delicate or sensitive surfaces .... "' Id. ( citing
Chaplick ,r,r 10-25). Appellant argues that "[i]f the techniques disclosed in
Chaplick were implemented in Umetsu, then the hole forming process
disclosed in Umetsu would be rendered inoperable for its intended purpose
and, consequently, there can be no suggestion ... to modify Umetsu per the
teachings of Chaplick." Id. (citing MPEP § 2143(V)).
Umetsu describes a method by which "it is possible to efficiently form
a group of many spot traces (holes) of a desired depth, without being
restricted by the output limit of the laser generator, by adjusting the number
of shots of a beam as appropriate at the same spot." Umetsu 2:28-32.
Umetsu describes that preferably the number of shots S applied to a point is
equal to M· (P/L), where Mis a number of branches of a beam, Pis a pitch
between a plurality of beams, and L is an amount of shifts of the plurality of
beams. Id. at 2:38--43. Umetsu teaches a solution to ensuring formation of
multiple spot traces of a desired depth (id. at 2:28-32) and is concerned with
"provid[ing] laser-processing technology which excels in mass production"
(id. at 1:51-53). According to Umetsu, "[s]ince a great number of spot
traces may be formed all at once according to this method, further efficiency
and high speed processing of numerous holes may be made." Id. at 3:2-5.
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The Examiner takes the position that Chaplick is in the field of
endeavor of laser markings, and as such, its combination with Umetsu (also
in the field of laser markings) is merely the application of a "known
technique to improve similar devices [that] would ... yield ... predictable
results as a matter of routine experimentation[]." Ans. 6. That Chaplick's
method of treating damage-sensitive surfaces with pulsed laser radiation
(Chap lick ,r 2) could be utilized in place of Umetsu's disclosed processing
method of forming spot traces or holes to predictably mark a target is likely
correct. The problem with relying on the purported predictability of
"improv[ing]" Umetsu's process with Chaplick's process (Ans. 6) is that the
Examiner has not established adequately the similarity of Umetsu and
Chap lick beyond both being in the broad category of laser processing. That
is, the Examiner has not explained sufficiently how Chap lick' s teachings
could be seen as an improvement that would have applicability to Umetsu's
process (i.e., how Chaplick's process of treating damage-sensitive surfaces
would improve or benefit Umetsu's process, which is not concerned with
delicate or sensitive surfaces at all). The Examiner has not supported
adequately that the two processes are sufficiently similar such that a person
of ordinary skill would be led to improve Umetsu with Chaplick's technique,
and consequently, the proposed combination ofUmetsu and Chaplick cannot
be viewed merely as the application of a known improvement taught by
Chaplick to a similar technique described by Umetsu. Compare KSR Int 'l
Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) ("[I]f a technique has been
used to improve one device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the same way, using the
technique is obvious unless its application is beyond his or her skill."). That
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both Umetsu and Chap lick fall generally within the field of laser marking is
insufficient to establish the obviousness of their combination. In sum, the
Examiner has failed to articulate reasoning with rational underpinnings to
support that the proposed combination would have been obvious.
For the foregoing reasons, Appellant apprises us of error in the
Examiner's conclusion that the combination of James or Umetsu in view of
Chaplick renders obvious the subject matter of independent claim 1. We do
not sustain the rejection of independent claim 1 under 35 U.S.C. § 103(a) as
unpatentable over either James or Umetsu in view of Chaplick. We also do
not sustain the rejection of claims 6-14, 16, 17, 19--23, 29, 35-37, 40-42,
44, and 45, which depend or otherwise incorporate limitations from
independent claim 1, and for which the Examiner relies on the same
reasoning in support of the combination of references that we found
deficient in connection with independent claim 1. Final Act. 2--4.
Rejections II and III
The Examiner's rejections, under 35 U.S.C. § 103(a), of claims 2-5
and 32-34 as unpatentable over either James or Umetsu in view of Chaplick
and Zhang and claim 43 as unpatentable over either James or Umetsu in
view of Chap lick and Rums by rely on the same reasoning in support of the
combination of references that we found deficient in connection with
independent claim 1. Final Act. 5. Accordingly, we also do not sustain the
rejections of these claims.
DECISION
The Examiner's decision to reject claims 1, 6-14, 16, 17, 19--23, 29,
35-37, 40-42, 44, and 45 under 35 U.S.C. § 103(a) as unpatentable over
either James or Umetsu in view of Chaplick is reversed.
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The Examiner's decision to reject claims 2-5 and 32-34 under
35 U.S.C. § 103(a) as unpatentable over either James or Umetsu in view of
Chaplick and Zhang is reversed.
The Examiner's decision to reject claim 43 under 35 U.S.C. § 103(a)
as unpatentable over either James or Umetsu in view of Chaplick and
Rumsby is reversed.
REVERSED
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