Ex Parte Stephens et al

Patent Trial and Appeal Board

Aug 29, 2016

13004536 (P.T.A.B. Aug. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/004,536 0111112011 Edward F. Stephens IV
70001 7590 08/31/2016
NIXON PEABODY LLP
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.
247080-000062USPT 1708
EXAMINER
70 West Madison Street, Suite 3500 HAGAN, SEANP
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ART UNIT PAPER NUMBER
2828
NOTIFICATION DATE DELIVERY MODE
08/3112016 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EDWARD F. STEPHENS IV, COURTNEY RYAN FEELER, and
JEREMY SCOTT JUNGHANS
Appeal2014-008884
Application 13/004,536
Technology Center 2800
Before CARL W. WHITEHEAD JR., BRUCE R. WINSOR, and
MELISSA A. RAAP ALA, Administrative Patent Judges.
RAAP ALA, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from a rejection
of claims 1-21. An oral hearing was conducted on August 16, 2016. 1 We
have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
1 A transcript of the oral hearing will be forthcoming.
Appeal2014-008884
Application 13/004,536
EXEMPLARY CLAIM
Claim 1 is exemplary of the subject matter on appeal:
1. A micro channel cooled laser apparatus, comprising:
a laser medium having a central axis;
a pump layer having a mounting surface, an opposite
bottom surface and a center aperture through which the laser
medium is inserted;
a plurality of laser diode emitters disposed on the
mounting surface of the pump layer circumferentially around the
laser medium and emitting light directed at the laser medium;
an intermediate layer having at least one radial channel,
the intermediate layer in contact with the bottom surface of the
pump layer;
a middle layer having a plurality of micro-channels
formed therethrough and a center aperture, the micro-channels
being arranged around the center aperture, the middle layer in
contact with the intermediate layer; and
a coolant source fluidly coupled to the micro-channels via
a conduit to allow coolant to be directed from the conduit through
the micro-channels, wherein the micro-channels have a
substantially smaller cross-section for coolant flow than the
conduit to direct the coolant in a direction generally parallel to
the central axis of the laser medium to form coolant jets to
impinge on the bottom surface of the pump layer and flow
through the at least one radial channel after impinging on the
bottom surface.
REJECTIONS ON APPEAL
Claims 1-5, 8, 10-13, and 15-21 stand rejected under 35 U.S.C.
§ 103(a) as being obvious over the combination of Kay (US 3,771,031; Nov.
6, 1973) and Coleman (US 2008/0025357 Al; Jan. 31, 2008).
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Appeal2014-008884
Application 13/004,536
Claims 6, 7, and 14 stand rejected under 35 U.S.C. § 103(a) as being
obvious over the combination of Kay, Coleman, and Morimoto (US
7,701,990 B2; Apr. 20, 2010).
Claim 9 stands rejected under 35 U.S.C. § 103(a) as being obvious
over the combination of Kay, Coleman, and Vetrovec (US 7,200, 161 B2;
Apr. 3, 2007).
ISSUES
Appellants' contentions present us with the following dispositive
issue:2 Did the Examiner set forth sufficient articulated reasoning, with
rational underpinnings, to support combining the teachings of Kay and
Coleman?
ANALYSIS
We have reviewed the Examiner;s rejections in consideration of
Appellants' contentions and the evidence of record. Appellants have
persuaded us the Examiner has failed to establish the claims are unpatentable
over the cited prior art.
The Examiner's 35 U.S.C. § 103(a) rejections of all of the claims
relies on the combination of Kay and Coleman. See Non-Final Act. 4--17.
The Examiner concludes it would have been obvious to modify the laser
assembly taught by Kay with the ceramic microchannel coolers taught by
Coleman to provide improved cooling relative to the cooling achieved in
2 We do not reach the additional contentions presented by Appellants
because the identified issue is dispositive of the appeal.
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Appeal2014-008884
Application 13/004,536
Kay. Ans. 2; see also Non-Final Act. 6. The Examiner finds one of
ordinary skill in the art may elect to implement the pump diodes as bars as
done in Coleman or maintain the use of single emitter diodes as shown in
Kay. Ans. 3. The Examiner further concludes the improved cooling system
of Coleman would enhance the teachings of Kay by allowing higher power
operation of either single emitters or laser diode bars. Ans. 8.
Appellants contend one of ordinary skill would not combine the recent
Coleman teachings with the older Kay reference. App. Br. 12-14; Reply Br.
5-9. Specifically, Appellants argue the Kay reference represents the state of
laser technology in the 1970s and the cooling requirements of the relatively
few light emitting diodes were satisfied by the high thermal transmission of
the metal structure in Kay, which are different from the considerations of the
densely packed semiconductor laser diodes in the Coleman reference. App.
Br. 12; see also Reply Br. 9 ("[T]he LEDs [in Kay] do not require high
coolant velocities.'} Appellants also argue the light emitting diodes in Kay
are much larger than the 1 mm laser diodes discussed in Coleman and
therefore necessitate structures that are on a greatly different magnitude of
scale. App. Br. 13; see also Reply Br. 5 ("These systems are fundamentally
different and the numerous considerations unique to each system are all
factors that lead against one of skill in the art looking to either reference to
modify the other."). Appellants further argue that to apply Coleman's
rectangular coolant structure to the individual diode arrangement in Kay
would require non-obvious design choices and the combination of Kay and
Coleman would therefore necessitate impermissible hindsight using only the
present claims as a template. Reply Br. 6.
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Appeal2014-008884
Application 13/004,536
"[R]ejections 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." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). We
agree with Appellants that the Examiner's reason to combine does not have
the requisite rational underpinning required to support the legal conclusion
of obviousness. In particular, we are unconvinced that one of ordinary skill
in the art would have combined the teachings of Kay and Coleman in the
manner proffered by the Examiner without having the benefit of Appellants'
claimed subject matter as a road map. Kay describes a plurality of header
assemblies 10, which each include a light-emitting member 18 mounted on
the surface, and are bolted together by a bolt 42, which is comprised of a
thermally conductive material and has a coolant passageway 44 formed
through it to transfer heat by passing a coolant therethrough. See Kay Figs.
1, 2; 1:47-55; 2:23--45. Coleman teaches a microchannel cooler 10 used to
cool a laser diode bar. Coleman i-f 22; see also Coleman Fig. 2, i-f 28. We
agree with Appellants that Kay already describes a mechanism to cool the
light-emitting member 18 (passing coolant through passageway 44 formed in
thermally conductive material). The Examiner has not established any
inadequacy in the cooling mechanism used by Kay to lead one of ordinary
skill in the art to modify it with a different cooling mechanism.
Furthermore, we agree with Appellants that the structures in Kay and
Coleman are on different scales of magnitude, which would involve
numerous design choices to perform the proposed modification. In KSR, the
Supreme Court guides that "[a] factfinder should be aware, of course, of the
distortion caused by hindsight bias and must be cautious of argument reliant
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Appeal2014-008884
Application 13/004,536
upon ex post reasoning." KSR, 550 U.S. at 421. The Examiner's articulated
reasoning is insufficient to support the combination because it improperly
relies upon ex post reasoning.
For the reasons stated above, Appellants persuade us of error in the 35
U.S.C. § 103(a) rejections of claims 1-21, which all rely on the combination
of Kay and Coleman. Accordingly, we do not sustain these rejections.
DECISION
We reverse the Examiner's decision to reject claims 1-21.
REVERSED
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