Ex Parte Luetke et al

Patent Trial and Appeal Board

Aug 18, 2016

12988883 (P.T.A.B. Aug. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/988,883 01/04/2011 Matthias Luetke
30636 7590 08/18/2016
FAY KAPLUN & MARCIN, LLP
150 BROADWAY, SUITE 702
NEW YORK, NY 10038
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.
40149/08301 (108P 2165) 5357
EXAMINER
PAIK, SANG YEOP
ART UNIT PAPER NUMBER
3742
MAIL DATE DELIVERY MODE
08/18/2016 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 MATTHIAS LUETKE, LOTHAR MORGENTHAL,
THOMAS RIMMER, and ECKHARD BEYER
Appeal2014-008009
Application 12/988,883
Technology Center 3700
Before: CHARLES N. GREENHUT, MICHAEL L. HOELTER, and
ERIC C. JESCHKE, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
11, 13-18, and 20. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
Appeal2014-008009
Application 12/988,883
CLAIMED SUBJECT MATTER
The claims are directed to a method for the machining of workpieces
using a laser beam. Claim 11, reproduced below, is illustrative of the
claimed subject matter:
11. A method for cutting machining of a workpiece using a
laser beam, comprising:
directing the focused laser beam onto a surface of the
workpiece for a formation of a kerf; and
removing a material exclusively by ablation, wherein the
laser beam has a power density in a focal point of at least 1*107
WI cm2, the laser beam has a feed speed taking account of an
absorption capability of the material to be removed of at least
150 m/min up to a maximum of 1200 m/min, the laser beam
operating in a cw mode, the laser beam being directed a
multiple of times to the same positions of the material surface
for a successive material removal along a cutting contour to be
formed.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Andrews
Flanagan
Gu
US 6,3 88,231 B 1
US 6,696,667 B 1
US 2007/0199927 Al
REJECTIONS
May 14, 2002
Feb.24,2004
Aug.30,2007
Claims 11, 13-18, and 20 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Andrews in view of Flanagan or Gu. Final Act. 2.
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Application 12/988,883
OPINION
Regarding independent Claim 11, the issue is whether the Andrews
reference discloses "a laser beam operating in a cw mode" (i.e., continuous
wave mode) which is used for "removing a material exclusively by
ablation." App. Br. 11 (emphasis added).
A rejection must be set forth in sufficiently articulate and informative
manner as to meet the notice requirement of 35 U.S.C. § 132, such as by
identifying where or how each limitation of the rejected claims is met by the
prior art references. In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011); see
also 37 C.F.R. § 1.104(c)(2).
In the Final Rejection, the Examiner does not cite to any specific
portion of Andrews for a laser operating in a "cw mode" that performs
"ablation." Final Act. 2-3. The Examiner also departed from the specific
claim limitations recited by Appellants. Id. Next, in the 'Response to
Arguments' section of the Final Rejection (Final Act. 4) and in the
Examiner's Answer (Ex. Ans. 3--4), the Examiner cited to several portions
of the Andrews disclosure. However, none of the cited portions in Andrews
provided explicit teaching of the disputed subject matter. Rather, the cited
portions of Andrews only mention different types of lasers such as Nd:YAG
lasers and C02 lasers but no specific teaching was found for those lasers
having the recited functionality.
The Examiner lastly stated in response to Appellants' arguments: "It
is noted that Flanagan and Gu show using solid state lasers for ablation ...
various laser sources are shown to perform the laser ablation including the
CW lasers which includes the solid state lasers wherein the combined
teachings of Andrews, Flanagan, and Gu are deemed to meet the claimed
invention." Ans. 4. The Examiner does not demonstrate unpatentability
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Appeal2014-008009
Application 12/988,883
with the naked assertion that a cw mode laser used for ablation may be
found in some unspecified portion of at least one of the three cited
references (i.e., "the combined teachings"). As explained in In re Jung and
as required by 37 C.F.R. § 1.104(c)(2):
[i]n rejecting claims for want of novelty or for obviousness, the
examiner must cite the best references at his or her command. When a
reference is complex or shows or describes inventions other than that
claimed by the applicant, the particular part relied on must be
designated as nearly as practicable. The pertinence of each reference,
if not apparent, must be clearly explained and each rejected claim
specified.
37 C.F .R. § 1.104( c )(2) (emphasis added). This requirement for adequate
notice is particularly relevant as the Examiner's statement of the rejection
specifically relies on Andrews and not Flanagan or Gu for the teaching of a
cw mode laser for ablation. Final Act. 2-3. Andrews discusses various
lasers, and the Examiner failed to specify the particular aspects of Andrews
relied upon for the rejection. We agree with Appellants, who point out: "the
laser ablation aspect of Andrews is performed by a completely different type
of laser that does not operate in cw mode. Andrews teaches that the cw-laser
therein is only used for a different purpose- laser cutting." Reply Br. 4.
The Examiner does not appear to disagree with the distinction between
cutting and ablation as argued by Appellants and as evident in Andrews.
Thus, there does not appear to be any evidentiary basis for the Examiner's
reliance on Andrews as teaching a cw mode laser used exclusively for laser
ablation, as recited in the claims.
The totality of the record before us, including Appellants' rebuttal
evidence, demonstrates that the Examiner did not provide sufficient
evidence to support the rejection of claim 11. The Examiner's rejection of
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Appeal2014-008009
Application 12/988,883
claim 11 over Andrews in view of Flanagan/Gu therefore cannot be
sustained.
Regarding the rejection of dependent claims 13-18 and 20 over
Andrews in view of Flanagan or Gu, based on Examiner's same reliance on
the Andrews reference, these rejections also cannot be sustained.
DECISION
The Examiner's rejection of claims 11, 13-15, and 20 under 35 U.S.C.
§ 103 is reversed.
REVERSED
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