Ex Parte Patel

Board of Patent Appeals and Interferences

Jun 15, 2009

10488866 (B.P.A.I. Jun. 15, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte ARVINDBHAI L. PATEL
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Appeal 2009-002035
Application 10/488,866
Technology Center 3700
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Decided:1 June 15, 2009
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1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Before: WILLIAM F. PATE, III, STEFAN STAICOVICI and
FRED A. SILVERBERG, Administrative Patent Judges.

PATE, III, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-002035
Application 10/488,866

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
45-58 and 60-63. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
The claims are directed to a laser diamond sawing machine. Claim 45,
reproduced below, is illustrative of the claimed subject matter:

45. A laser diamond sawing machine comprising:
a CNC interface consisting of an X or Y or Z axis and a
computer unit configured for diamond sawing;
a RF Q-Switched laser source unit comprising:
(i) a laser head for generating a laser beam,
(ii) a front side mirror and a back side mirror for
amplifying the laser beam,
(iv) a Q-switch situated between the back side mirror
and the laser head to emit a high power burst,
(v) a shutter placed between the laser head and the
back side mirror for blocking the laser beam in case of
electrical failure,
(vi) a beam expander for expanding the laser beam to
minimize its divergence, and
(vii) at least one aperture for controlling light
amplification along an off axis of the laser source unit
and for providing a sharp frequency band;
a beam delivery system comprising a beam bender for
bending the laser beam coming from the beam expander at a
predetermined angle and a focusing lens for focusing the laser
beam coming from the beam bender, wherein the focusing lens
is configured to have a focal length, power density and depth of
focus that are selectively changeable; and
a RF Q - Switch driver for producing a pulsed output with
high peak power when the laser source unit is operated in Q-
switched mode.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
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Application 10/488,866

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Esterowitz US 4,167,712 Sep. 11, 1979
Kaplan US 5,932,119 Aug. 3, 1999
Rieck. US 6,064,034 May 16, 2000

Claims 45-58 and 60-63 stand rejected under 35 U.S.C. § 103(a)
over the combination of Kaplan, Esterowitz and Rieck. Ans. 3.

ISSUE
Appellant argues the rejected claims 45, 62 and 63 as a group. App.
Br 7-11. We select claim 45 as the representative claim, and claims 62 and
63 stand or fall with claim 45. 37 C.F.R. § 41.37(c)(1)(vii). Appellant
contends that the Examiner erred in rejecting claims 45, 62 and 63 over the
combination of Kaplan, Esterowitz and Rieck because Kaplan fails to teach
or suggest “a computer unit configured for diamond sawing.” App. Br. 8-9;
Reply Br 2-3. Appellant contends that the device of Kaplan is configured
only to mark or engrave already cut gemstones and is therefore not
configured to saw them. App. Br. 8-9; Reply Br. 2-3. Appellant further
contends that since neither Esterowitz nor Rieck are concerned with
diamond sawing the combination of Kaplan with Esterowitz or Rieck to
support a rejection under 35 U.S.C. § 103(a) is improper. App. Br.9-11;
Reply Br. 3-4. In light of these contentions the first issue presented is:
Has Appellant established that the Examiner erred by rejecting claim
45 under 35 U.S.C. § 103(a) over the combination of Kaplan, Esterowitz and
Rieck?
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Appellant further contends that the Examiner erred in rejecting claims
45, 62 and 63 over the combination of Kaplan, Esterowitz and Rieck
because the Examiner proposed combination fails to teach or suggest a 37-
pin port, as required by claim 47; a twin side sawing fixture configured to set
six dies, as required by claim 55; a shutter actuated by a toggle switch, as
required by claim 60; and a computer program for diamond sawing as
required by claim 61. App. Br. 11; Reply Br. 4-8. In light of these
contentions the next issue presented is:
Has Appellant established that the Examiner erred by rejecting claims
47, 55, 60 or 61 under 35 U.S.C. § 103(a) because the combination of
Kaplan, Esterowitz and Rieck would not have taught or suggested to a
person of ordinary skill in the art a 37-pin port, a twin side sawing fixture
configured to set six dies, a shutter actuated by a toggle switch or a computer
program for diamond sawing?
Appellant additionally contends that the Examiner erred by rejecting
claims 49-51 over the combination of Kaplan, Esterowitz and Rieck because
Kaplan teaches away from the claimed chilling unit. App. Br. 11. Thus, the
final issue presented is:
Has Appellant established that the Examiner erred by rejecting claims
49-51 under 35 U.S.C. § 103(a) over the combination of Kaplan, Esterowitz
and Rieck because Kaplan teaches away from the claimed chilling unit?

FINDINGS OF FACT
1. The primary purpose of Kaplan is to inscribe indicia on a surface of
gemstones, and more particularly to employ a Q-switched pulse laser for
forming markings on a portion of a gemstone. Col. 1, ll. 7-10.
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2. Kaplan acknowledges that laser systems that are capable of both marking
and sawing a diamond in one operation are known in the art. Col. 1, ll.
45-50.
3. In order to construct the system, and carry out the method, described by
Kaplan, Kaplan suggests making use of laser systems that are known in
the art, such as those specifically discussed in the Background of
Invention section of Kaplan. Col. 2, ll. 30-32.
4. Kaplan discloses computer system 52, having application software, for
control of the system, including control of the X-Y-Z stages and laser
unit. Col. 15, ll. 24-31; col., 16, ll. 17-21; col. 18, ll. 48-52.
5. Kaplan additionally discloses Q-switched laser 1, beam expander 5, beam
bending mirror 8, and microscope objective (lens) 10, col. 15, ll. 1-44;
col. 12, l. 64 - col. 13, l. 11.
6. Kaplan teaches that the preferred laser system has low cooling
requirements thereby avoiding the need for a water cooling system. Col.
6, ll. 36-44; col. 13, ll. 11-13.
7. Esterowitz teaches a laser system that is particularly suitable for an
underwater environment (col. 1, ll. 9-10) and useful for underwater
communication and detection (col. 1, ll. 43-44).
8. Esterowitz demonstrates that Q-switches are known components of laser
systems which produce pulses of short duration and higher power
desirable for many underwater applications. Col. 5, ll. 1-23
9. Rieck teaches a laser marking process for vitrification of an object such
as brick. Col. 1, ll. 11-19.
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10. Rieck demonstrates that computer control, Q-switches beam expanders,
safety shutters, apertures and lenses are known components of laser
systems. Col. 7, ll. 58-67.

PRINCIPLES OF LAW
The examiner bears the initial burden of factually supporting any
prima facie conclusion of obviousness. The key to supporting any prima
facie conclusion of obviousness under 35 U.S.C. § 103 is the clear
articulation of the reason(s) why the claimed invention would have been
obvious. The Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007) noted that the analysis supporting a rejection under 35 U.S.C. §
103 should be made explicit. The Federal Circuit has stated that “rejections
on obviousness grounds cannot be sustained by mere conclusory statements;
instead, there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness.” In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550 U.S. at
418.
The combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.
KSR, 550 U.S. at 416. A prima facie conclusion of obviousness may be
supported by a showing that the claims are directed to a process, machine,
manufacture, or composition of matter already known in the prior art that is
altered by the mere substitution of one element for another known in the
field, and such modification yields a predictable result. See id. (citing United
States v. Adams, 383 U.S. 39, 40). The Court further stated that:
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[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 actual application is beyond his or her skill.

KSR, 550 U.S. at 417. When considering obviousness of a
combination of known elements, the operative question is thus “whether the
improvement is more than the predictable use of prior-art elements
according to their established functions.” Id.
Whether a reference teaches away from a claimed invention is a
question of fact. In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005). A
reference will teach away when it suggests that the developments flowing
from its disclosures are unlikely to produce the objective of the applicant's
invention. A statement that a particular combination is not a preferred
embodiment does not teach away absent clear discouragement of that
combination. Syntex (U.S.A.) LLC v. Apotex, Inc. 407 F.3d 1371, 1380 (Fed.
Cir. 2005) (Internal citations omitted).

ANALYSIS
The subject matter of claim 45 involves only the combination of
familiar elements that are used for their well-established functions in order
to yield predictable results and would have been obvious to one having
ordinary skill in the art. While we agree with Appellant’s premise that the
computer of Kaplan must at least be capable of sawing diamonds (Reply Br.
2), we disagree with the Appellant that Kaplan’s computer does not possess
that capability. Although Kaplan is primarily concerned with engraving,
(Fact 1) Kaplan recognizes that his system and method may be embodied by
using known systems that are configured to saw a diamond (Facts 2 and 3).
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Whether the workpiece is sawn or engraved with Kaplan’s system depends
upon the thickness of the workpiece, and the intensity and dwell time of the
laser. Since the latter factors are under the exclusive control of the computer
and its software (See Fact 4), we find that a person of ordinary skill in the art
would have readily recognized that the computer of Kaplan possesses the
capability for sawing a diamond and therefore satisfies the limitation in
question.
The fact that the laser systems of Rieck and Esterowitz are not
primarily intended for cutting or engraving (Facts 7 and 9) does not render
the teachings of Rieck and Esterowitz wholly inapplicable to laser systems
that are intended to perform those functions as Appellant suggests. App. Br.
9-11; Reply Br. 3-4. To the contrary, Kaplan, Rieck and Esterowitz would
suggest to one of ordinary skill in the art that laser systems, regardless of
their end use, share many similar components. See e.g., Facts 5, 8 and 10.
Accordingly, Appellant has not established that the Examiner improperly
relied upon hindsight bias in determining the scope and content of the prior
art and using the combined teachings of Kaplan, Rieck and Esterowitz to
support a conclusion of obviousness.
Accordingly, Appellant has failed to establish that the Examiner erred
by rejecting claim 45 under 35 U.S.C. § 103(a) over the combination of
Kaplan, Esterowitz and Rieck.
The Examiner concludes that the inclusion of a 37-pin port, a twin
side sawing fixture configured to set six dies, a shutter actuated by a toggle
switch, and a computer program for diamond sawing amounts to the use of
well-known components for their established functions and does no more
than yield predictable results and therefore would have been obvious to one
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having ordinary skill in the art. Ans. 4-6. Appellant doesn’t contest the
Examiner’s conclusion of obviousness, but instead contends that conclusion
is not properly supported because the applied references do not specifically
mention the claimed components. App. Br. 11; Reply Br. 4-8. The fact that
these elements are not specifically mentioned in any of the applied
references does not, without more, establish that the Examiner erred by
concluding that the inclusion of these elements would have been obvious to
one having ordinary skill in the art. What a reference teaches or suggests
must be examined in the context of the knowledge, skill, and reasoning
ability of a skilled artisan. What a reference teaches a person of ordinary
skill is not limited to what a reference specifically “talks about” or what is
specifically “mentioned” or “written” in the reference. Syntex (U.S.A.) LLC
v. Apotex, Inc. 407 F.3d 1371, 1380 (Fed. Cir. 2005). “[A] person of
ordinary skill is also a person of ordinary creativity, not an automaton.”
KSR v. Teleflex, 550 U.S. 398, 421 (2007).
Accordingly, Appellant has failed to establish that the Examiner erred
by rejecting claims 47, 55, 60 or 61 under 35 U.S.C. § 103(a) over the
combination of Kaplan, Esterowitz and Rieck
The fact that Kaplan describes a laser system that does not require a
cooling unit as preferential to one that does, does not constitute teaching
away from a chilling or cooling unit. Fact 6. To the contrary, this statement
would have suggested to one having ordinary skill in that, despite requiring
additional space, such lasers would be suitable for cutting or engraving.
App. Br. 11; Reply Br. 6.
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Accordingly, Appellant has failed to establish that the Examiner erred
by rejecting claims 49-51 under 35 U.S.C. § 103(a) over the combination of
Kaplan, Esterowitz and Rieck.

CONCLUSION OF LAW
On the record before us, Appellant has not established that the
Examiner erred by rejecting claims 45-58 and 60-63 under 35 U.S.C.
§ 103(a) over the combination of Kaplan, Esterowitz and Rieck.

DECISION
For the above reasons, the Examiner's rejection of claims 45-58 and
60-63 is affirmed.
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.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED

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