Ex Parte Montagne et al

Board of Patent Appeals and Interferences

Mar 16, 2012

11408060 (B.P.A.I. Mar. 16, 2012)

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.
11/408,060 04/21/2006 Jean-Eucher Montagne L7307.06112 8225
24257 7590 03/16/2012
Dickinson Wright PLLC
James E. Ledbetter, Esq.
International Square
1875 Eye Street, NW., Suite 1200
WASHINGTON, DC 20006
EXAMINER
PARK, KINAM
ART UNIT PAPER NUMBER
2828
MAIL DATE DELIVERY MODE
03/16/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte JEAN-EUCHER MONTAGNE and LOUIS
CABARET
____________________

Appeal 2010-008338
Application 11/408,060
Technology Center 2800
____________________

Before: JEAN R. HOMERE, ST. JOHN COURTENAY III, and
CAROLYN D. THOMAS, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-008338
Application 11/408,060

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims
1-23. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing on this
appeal was held on March, 13, 2012.
We Affirm.

The claims are directed to an active element for a laser source and
laser source comprising such an active element. Claim 1, reproduced below,
is illustrative of the claimed subject matter:
l. An active element for a laser source, said active element
comprising:

an elongate rod which comprises a doped matrix capable
of absorbing at least one pump beam in order to amplify at least
laser radiation propagating longitudinally;

a first coating that is placed on the periphery of said rod
and is capable of reflecting the pump beam; and

an absorption component for absorbing radiation that
passes through the periphery of said rod and has a wavelength
substantially equal to that of said laser radiation, wherein:

said elongate rod has a length L that is matched to the
lowest absorption coefficient of the rod, and

said length L is greater than 2.3/αλ, αλ being the lowest
absorption coefficient of the rod for an operating spectral
range.

(disputed limitation emphasized).

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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Suni
Meissner
US 5,572,541
US 5,846,638
Nov. 5, 1996
Dec. 8, 1998
Butterworth US 2004/0101015 A1 May 27, 2004

REJECTIONS
1. Claims 1-7 stand rejected under 35 U.S.C §103(a) as being unpatentable
over the combination of Butterworth and Suni.
2. Claims 8-23 stand rejected under 35 U.S.C §103(a) as being unpatentable
over the combination of Butterworth and Meissner.

PRINCIPLES OF LAW
"What matters is the objective reach of the claim. If the claim extends
to what is obvious, it is invalid under § 103." KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398, 419 (2007). To be nonobvious, an improvement must be
"more than the predictable use of prior art elements according to their
established functions." Id. at 417.
Invention or discovery is the requirement which constitutes the
foundation of the right to obtain a patent . . . unless more
ingenuity and skill were required in making or applying the said
improvement than are possessed by an ordinary mechanic
acquainted with the business, there is an absence of that degree
of skill and ingenuity which constitute the essential elements of
every invention.
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Dunbar v. Myers, 94 U.S. 187, 197 (1876) (citing Hotchkiss v. Greenwood,
52 U.S. 248, 267 (1850)) (Hotchkiss v. Greenwood was cited with approval
by the Supreme Court in KSR, 550 U.S. at 406, 415, 427).

GROUPING OF CLAIMS
Based on Appellants’ arguments in the Briefs, we decide the appeal
for claims 1-7 on the basis of representative claim 1. See 37 C.F.R.
§ 41.37(c)(1)(vii). We consider dependent claim 8 representative of the
group consisting of claims 8-22. We address independent claim 23
separately, infra.

ISSUE
Based upon our review of the administrative record, we have
determined that the following issue is dispositive in this appeal regarding
representative claim 1:

Under §103, did the Examiner err in finding that the combination of
Butterworth and Suni would have taught or suggested:
said length L is greater than 2.3/αλ, αλ being the lowest
absorption coefficient of the rod for an operating spectral
range,
within the meaning of representative claim 1?

CONTENTIONS
Appellants present the following principal contentions regarding
claim 1:
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As shown in FIG. 2 and discussed in paragraph [0015] of
Butterworth, the entire operating spectral range of laser light
ranges from 800 nm to 830 nm, where 830 nm corresponds to
the lowest absorption coefficient. However, Butterworth does
not teach using the light (830 nm wavelength, as shown in FIG.
2) which corresponds to the lowest absorption coefficient.
Instead, Butterworth teaches using light which preferably has a
wavelength in the 814 nm to 825 nm sub-range, corresponding
to light wavelengths with higher absorption coefficients than
the light with an 830 nm wavelength. Thus, FIG. 2 of
Butterworth does not teach or suggest correlating the length of
a rod with light that has the lowest absorption coefficient in an
operating spectral range.
Moreover, as shown in FIG. 2, within the 814 nm to 825
nm sub-range, the wavelength which has the lowest absorption
coefficient is the light with the 825 nm wavelength. However,
Butterworth does not even suggest using the light with the
lowest absorption coefficient in this sub-range. Instead,
Butterworth states that the preferable light to use within this
sub-range is light which has a wavelength of 818 nm, because
this light has π and σ absorption coefficients (respectively
corresponding to the parallel and perpendicular polarized light,
paragraph [0015] and FIG. 2 of Butterworth) which are "about
equal," further reducing the stress on the yttrium vanadate
crystals. Therefore, nothing in Butterworth teaches or suggests
correlating the length of a rod which is matched to the lowest
absorption coefficient of the rod.

(App. Br. 7-8).

The Examiner disagrees:

The Examiner notes in the Office Action that the
elongate[d] rod (28) has a length L that is matched to the lowest
absorption coefficient of the rod (see, figure 2), and said length
L is greater than 2.3/ αλ ,αλ being the lowest absorption
coefficient of the rod for an operating spectral range (the term
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of "greater than 2.3/ αλ" is the same as the term of "gr[e]ater
than 90%", see, here, all of pump light (100 %) is absorbed,
paragraph [0020]).
Regarding the limitation of "the lowest absorption
coefficient of the rod for an operating spectral range" cited in
claim 1, this limitation does not provide the specific range of an
operating spectral range for the lowest absorption coefficient of
the rod. However, Butterworth discloses in figure 2 and the
specification that Nd:YVO4 crystal 28 is optically pumped by
unpolarized light 33 having a wavelength in a range between
about 814 and 825 nm and a preferred pump light wavelength
in this range is 818 nm. At this wavelength, the π and σ
absorption coefficients are about equal (see, paragraph [0017]),
which means that this prior art provides the specific range of an
operating spectral range for the lowest absorption coefficient of
the rod since the 830 nm does not correspond to the lowest
absorption coefficient available and 818 nm does. Therefore,
the limitation of "the lowest absorption coefficient of the rod
for an operating spectral range" cited in claim 1 is [] broader
because it reads on the prior art as explained above. Therefore,
FIG. 2 of Butterworth does teach or suggest correlating the
length of a rod with light that has the lowest absorption
coefficient in an operating spectral range.

(Ans. 8-9, emphasis added).

ANALYSIS
Limitations under §103
We observe that Appellants point to the Specification, at page 4, lines
15-32), as providing the requisite support for the disputed limitation “said
length L is greater than 2.3/αλ, αλ being the lowest absorption coefficient of
the rod for an operating spectral range.” (App. Br. 4 quoting claim 1,
emphasis added). For convenience, we reproduce the relevant portion of the
Specification here:
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For this purpose, according to the invention, said active element
of the type comprising:
- an elongate rod which comprises a doped matrix
capable of absorbing at least one pump beam in order to
amplify at least laser radiation propagating longitudinally;

- a first coating that is placed on the periphery of said rod
and is capable of reflecting at least some (preferably at least
80%) of said pump beam; and
- an absorption means for absorbing at least some
(preferably at least 70%) of the radiation that passes through the
periphery of said rod and has a wavelength substantially equal
to that of said laser radiation, is noteworthy in that the length
and the doping of said elongate rod are such that the
proportion of pump energy absorbed by said elongate rod is
greater than 90% for the wavelength of an operating spectral
range that has the lowest absorption coefficient.

(Spec. 4, ll. 15-32, emphasis added).

Given the aforementioned support in the Specification, as a matter of
claim construction,1 the Examiner interprets the disputed limitation of “said
length L is greater than 2.3/ αλ, αλ being the lowest absorption coefficient of
the rod for an operating spectral range” (claim 1) as having a scope that at
least encompasses the disclosed embodiment relied on by Appellants as
providing § 112, first paragraph support. (See App. Br. 4). Thus, the

1 During ex parte prosecution, the Patent & Trademark Office (PTO)
determines the scope of the claims by giving the language “the broadest
reasonable construction ‘in light of the specification as it would be
interpreted by one of ordinary skill in the art.’” Phillips v. AWH Corp., 415
F.3d 1303, 1316 (Fed. Cir. 2005) (en banc) (quoting In re Am. Acad. of Sci.
Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004)).

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Examiner reasons that the claim limitation of “greater than 2.3/ αλ ” would
have been taught or at least suggested by a proportion of pump energy
absorbed by the rod being “greater than 90%,” as supported in Appellants’
Specification at page 4, ll. 31-32. (Ans. 4, ¶1). 2
Given this construction, the Examiner finds that Butterworth’s
teaching of “[p]referably, the crystal length is arranged to be sufficient that
all of the pump-light is absorbed therein” (para. [0020]), would have taught
or at least suggested an elongate rod of a “length L [that] is greater than 2.3/
αλ ,αλ being the lowest absorption coefficient of the rod for an operating
spectral range.” (claim 1) (Ans. 4). In particular, the Examiner notes that
Butterworth’s para. [0020] expressly teaches that “all of the pump light
(100 %) is absorbed” (i.e., greater than ninety percent). (Ans. 4).
Given the Examiner’s construction, we are not persuaded by
Appellants’ argument that “FIG. 2 of Butterworth does not teach or suggest
correlating the length of a rod with light that has the lowest absorption
coefficient in an operating spectral range.” (App. Br. 7). We particularly
note that claim 1 recites “for an operating spectral range” (i.e.,
encompassing subset ranges) and does not recite for “a full spectral range”
as argued by Appellants in the Reply Brief. (Reply Br. 5, ¶3)
In reviewing the evidence, we agree with Appellants that the proffered
combination of references does not teach a specific length L being greater
than the ratio of a literal numerator of 2.3 to a denominator αλ (being the
lowest absorption coefficient of the rod for an operating spectral range).

2 See also Spec. 10, ll. 32-35: “the length and the doping of the rod 2 are
such that the proportion of pump energy absorbed Abs is greater than about
90% for the least absorbent pumping wavelength of the operational spectral
range.”
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However, in construing the full scope of Appellants’ claims, we must
consider the entire range of values that are covered by the recited
mathematical inequality. Given that an elongate rod cannot have a zero or
negative length, we consider the following inequality within the meaning of
claims 1 and 23:
0 < 2.3/ αλ < L
Thus, from basic calculus, a lower bound for elongate rod length L is
close to zero because when αλ approaches infinity, the ratio 2.3/ αλ
approaches zero in the limit. An upper bound for elongate rod length L is
infinity because when αλ approaches zero, the ratio 2.3/ αλ approaches
infinity in the limit, where any number divided by zero is considered
undefined.
Therefore: 0 < L < infinity
We acknowledge that the absorption coefficient αλ varies according to
the laser light wavelength and the specific type of elongate rod material.
However, Appellants have not pointed to anything in the Specification (or
contained within an Evidence Appendix) that informs this panel of any
specific values or range of values for absorption coefficient αλ that would
reasonably restrict the range of L as a matter of claim construction.
Without further evidence, we decline to speculate regarding a range of
absorption coefficient αλ values that would be considered reasonable from
the perspective of the artisan. We also particularly note the absence of any
recited units of measurement regarding the claimed length L. (Claims 1, 23).
Thus, for different units of measurement, the recited length L is amenable to
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two or more plausible claim constructions (i.e., a particular numerical value
of L, when expressed in two different units of measurement, would result in
two different elongate rod lengths). 3
Because the pure mathematical range covered by the claims of
0 < L < infinity is extremely broad, and is not further limited by any specific
recited units of measurement, or specific values or reasonable ranges for
absorption coefficient αλ (supported by evidence), on this record, we are not
persuaded of Examiner error.
As the Court of Appeals for the Federal Circuit held in Ormco Corp.
v. Align Technology, Inc., 463 F.3d 1299, 1311 (Fed.Cir.2006), “[w]here a
claimed range overlaps with a range disclosed in the prior art, there is a
presumption of obviousness.” The overlap need not be substantial to trigger
the presumption. In re Geisler, 116 F.3d 1465, 1469 (Fed.Cir.1997).
This reasoning is applicable here, given the Examiner’s findings
regarding at least Butterworth’s Figure 2, and paragraph [0020]. (See Ans. 3-
4, 8-10).
Therefore, on this record, we are not persuaded that the Examiner
erred in finding that the combination of Butterworth and Suni would have
taught or suggested the disputed limitation of “said length L is greater than
2.3/αλ, αλ being the lowest absorption coefficient of the rod for an operating
spectral range.” (Claim 1, emphasis added).

3 “[I]f a claim is amenable to two or more plausible claim constructions, the
USPTO is justified in requiring the applicant to more precisely define the
metes and bounds of the claimed invention by holding the claim . . .
indefinite.” Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008)
(precedential).
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Combinability of the References under §103

Appellants further contend that Butterworth and Suni teach away from
each other:
Suni teaches away from Butterworth because Suni
discloses a reflective outer surface which reduces the pump
power required to reach the laser threshold, whereas
Butterworth discloses an off-peak absorption method which
increases the amount of pump power that can safely be used
without cracking or damaging the crystals or rods. These
conflicting purposes of Butterworth and Suni indicate that one
skilled in the art would not have been motivated to combine the
two references to arrive at the claimed invention.
(App. Br. 9-10).

“What the prior art teaches and whether it teaches toward or away
from the claimed invention … is a determination of fact.” Para-Ordnance
Mfg., Inc. v. SGS Importers Int'l, Inc., 73 F.3d 1085, 1088 (Fed. Cir. 1995).
“A reference may be said to teach away when a person of ordinary skill,
upon reading the reference, would be discouraged from following the path
set out in the reference, or would be led in a direction divergent from the
path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed.
Cir. 1994). Teaching an alternative or equivalent method, however, does not
teach away from the use of a claimed method. See In re Dunn, 349 F.2d
433, 438 (CCPA 1965). Thus, “the prior art's mere disclosure of more than
one alternative does not constitute a teaching away from any of these
alternatives because such disclosure does not criticize, discredit, or
otherwise discourage the solution claimed …” In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004) (emphasis added).
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This reasoning is applicable here. Notwithstanding Appellants’
arguments, we are of the view that Appellants’ claimed invention merely
arranges prior art elements with each element performing the same function
it had been known to perform and yields no more than one would expect
from such an arrangement. Our reviewing courts guide that such a
combination of familiar elements is obvious. See KSR, 550 U.S. at 417
(quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)).
On this record, we are not persuaded of error regarding the
Examiner’s underlying factual findings and ultimate legal conclusion of
obviousness. Accordingly, for essentially the same reasons articulated by
the Examiner in the Answer (8-11), as discussed above, we sustain the
obviousness rejection of representative claim 1 over the combination of
Butterworth and Suni. Claims 2-7 (not argued separately) fall therewith.
See 37 C.F.R. § 41.37(c)(1)(vii).

Second-stated §103 rejection (Independent claim 23)
Regarding the Examiner’s second-stated §103 rejection over the
combination of Butterworth and Meissner, Appellants restate the same
arguments we have addressed above regarding claim 1 and the Butterworth
reference. (App. Br. 10). Therefore, we also sustain the Examiner’s
obviousness rejection of independent claim 23 for the same reasons
discussed above regarding claim 1.

Second-stated §103 rejection (dependent claims 8-22)
Appellants contend that “Meissner does not cure the above-noted
deficiencies of Butterworth and Suni” (App. Br. 11). However, we find no
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deficiencies regarding Butterworth for the same reasons discussed above
regarding independent claims 1 and 23. Therefore, we sustain the
Examiner’s obviousness rejection of representative claim 8, and claims 9-22
(not argued separately), which fall therewith. See 37 C.F.R.
§ 41.37(c)(1)(vii).

DECISION
We affirm the Examiner’s §103 rejections of claims 1-23.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
ORDER
AFFIRMED

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