Ex Parte Tseng et al

Patent Trial and Appeal Board

Nov 24, 2014

12120618 (P.T.A.B. Nov. 24, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/120,618 05/14/2008 JIE-TING TSENG 18906-172 5343
65358 7590 11/24/2014
WPAT, PC
INTELLECTUAL PROPERTY ATTORNEYS
8230 BOONE BLVD. SUITE 405
VIENNA, VA 22182
EXAMINER
KING, JOSHUA
ART UNIT PAPER NUMBER
2828
MAIL DATE DELIVERY MODE
11/24/2014 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 JIE-TING TSENG, SUNG-HO LIU and MIN-KAI LEE
____________

Appeal 2013-002394
Application 12/120,618
Technology Center 2800
____________

Before ROMULO H. DELMENDO, KAREN M. HASTINGS, and
ELIZABETH M. ROESEL, Administrative Patent Judges.

ROESEL, Administrative Patent Judge.

DECISION ON APPEAL

Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–23. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

STATEMENT OF THE CASE
The claimed subject matter relates to a programmable laser trigger
device. App. Br. 20 (claim 1). According to the Specification, the device
generates laser pulse outputs and modulates the output laser pulses in

1 According to Appellants, the Real Party in Interest is Industrial
Technology Research Institute. App. Br. 3.
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Application 12/120,618

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response to an external feedback signal and is useful in manufacturing
processes involving laser cutting or laser machining. Spec. 1. Claim 1 is
representative of the subject matter on appeal and is set forth below (with
bracketed lettering/numbering added for ease of reference):
1. A programmable laser trigger device, capable of
receiving a user programmed waveform command to generate
an output laser trigger signal by executing a waveform
command code, the programmable laser trigger device
comprising:
[a] an external signal module, capable of interfacing the
input and the output laser trigger signal when the waveform
command is executed;
[b] a command executing module, comprising:
[b1] at least a waveform command memory, capable of
storing the waveform command;
[b2] at least a waveform command decoder, capable of
accessing the waveform command for pre-decoding an
executing code;
[b3] at least a waveform generator, capable of
transforming a sequence of waveform trigger parameters into a
pulse-width modulation (PWM) pulse train; and
[b4] at least a buffer memory, capable of serving as a
waveform trigger parameter buffer between the waveform
command decoder and the waveform generator; and
[c] a management module, capable of managing the
programmable laser trigger device.
The prior art relied upon by the Examiner in rejecting the claims on
appeal are:
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Application 12/120,618

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Watabe US 2006/0067706 A1 Mar. 30, 2006
Sugimoto US 2006/0098216 A1 May 11, 2006

THE REJECTIONS
1. Claims 1–8, 10–21, and 23 are rejected under 35 U.S.C. § 102(b)
as anticipated by Watabe. Final Action 4, 8.
2. Claims 9 and 22 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Watabe in view of Sugimoto. Id. at 7, 8.

ANALYSIS
Method Claims 11–23
Appellants assert that the statutory bases of rejection are defective
with respect to claims 11–23. App. Br. 11. The Examiner states that these
claims are rejected under the same grounds as claims 1–10. Final Action 8.
The Examiner’s statement is sufficient to place Appellants on notice as to
the statutory bases for the rejection, as demonstrated by Appellants’
summary of the grounds of rejection and their responsive arguments.
App. Br. 10–19. 35 U.S.C. § 132; In re Jung, 637 F.3d 1356, 1362 (Fed.
Cir. 2011) (applicant’s understanding of the examiner’s rejection was
manifested by his response to the office actions). Appellants’ assertion is
not persuasive of reversible error by the Examiner.
Rejection 1 -- Claims 1–6, 10–18, 21, and 23
In response to the first ground of rejection, Appellants argue claims
7-8 and 19–20 separately, but present no argument for patentability of any of
the other claims separate from claim 1. App. Br. at 11–19. Therefore,
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claims 1–6, 10-18, 21, and 23 stand or fall together with claim 1, which we
select as representative pursuant to 37 C.F.R. § 41.37(c)(iv).
The Examiner finds that Watabe describes every limitation of
claim 1. Final Action 4–5 (citing Watabe, Fig. 5, ¶¶ 31, 32). The
Examiner maps the elements of claim 1 to the apparatus shown in
Watabe Figure 5, identifying the component(s) of Watabe’s disclosed
apparatus that correspond to each claim element. Id. (citing Watabe,
Fig. 5, parts 10, 13, 15 and 18, ¶¶ 31, 32).
Appellants assert that Watabe does not disclose the external signal
module, command executing module, waveform command memory,
waveform command decoder, waveform generator, or buffer memory of
claim 1. App. Br. 11. Appellants quote from paragraphs 32 and 35 of
Watabe and assert that the functionality described in these paragraphs is
different from a list of functions copied from the preamble and paragraphs
[b1] to [b2] of claim 1. Id. at 12. Appellants further assert that Watabe does
not provide certain express functionality, referring to functions that are not
recited in the claims. Id. at 12–13.
We do not find the Appellants’ arguments persuasive to demonstrate
reversible error on the part of the Examiner. In re Jung, 637 F.3d at 1365
(explaining that even if the examiner had failed to make a prima facie case,
the Board would not have erred in framing the issue as one of reversible
error because it has long been the Board’s practice to require an appellant to
identify the alleged error in the examiner’s rejections). The Examiner has
provided an element-by-element mapping of claim 1 to the apparatus
disclosed in Watabe Figure 5. Final Action 4–5. Appellants’ argument that
Watabe’s disclosed functionality is different from the claimed subject matter
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is undeveloped and merely conclusory because Appellants have not
explained why the Examiner’s specific findings are in error. Appellants fail
to respond to the Examiner’s element-by-element analysis and fail to explain
how each element of Appellants’ claim 1 differs from the corresponding
components disclosed in Watabe and identified by the Examiner.
Appellants’ conclusory assertions, unsupported by any evidence or
substantive argument, are insufficient to challenge the Examiner’s factual
findings. SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312, 1320
(Fed. Cir. 2006) (“mere statements of disagreement . . . as to the existence of
factual disputes do not amount to a developed argument”). Such
undeveloped assertions of fact do not comply with 37 C.F.R.
§ 41.37(c)(1)(iv), which requires arguments in the appeal brief to “explain
why the examiner erred as to each ground of rejection contested by
appellant.” In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (the Board
reasonably interpreted 37 C.F.R. § 41.37 (c)(1)(vii) as requiring “more
substantive arguments in an appeal brief than a mere recitation of the claim
elements and a naked assertion that the corresponding elements were not
found in the prior art”); Ex parte Belinne, No. 2009-004693, slip op. at 7-8,
2009 WL 2477843, *3-4 (BPAI Aug. 10, 2009) (informative) (merely
restating elements of claim and arguing that elements are missing from the
reference, without further explanation, is not persuasive to show error in the
Examiner’s specific fact finding). Appellants’ argument is also
unpersuasive to the extent it relies on functions not recited in the claims.
In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (“appellant’s arguments fail . .
. because . . . they are not based on limitations appearing in the claims”).
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Rejection 1 -- Claims 7–8 and 19–20
The Examiner finds that the features of claims 7–8 and 19–20 are
disclosed by Watabe, which teaches a central processing unit (CPU) that
performs the steps recited in these claims. Final Action 6; Ans. 5 (citing
Watabe, ¶ 44). More specifically, the Examiner finds that the claimed
GOTO and wait commands are taught in Watabe as a sample hold circuit
and that Watabe teaches a CPU that performs these steps through a Castle
Write strategy that switches between an enable (GOTO command) and a
hold (wait command). Ans. 5 (citing Watabe ¶¶ 37, 46); see also Watabe,
Fig. 9 (showing modulation signal, power enable signals and sampling hold
signal).
Appellants assert that Watabe does not disclose the features of claims
7–8 and 19–20, repeating the limitations of these claims three times. App.
Br. 13–14. Appellants contend that the claimed steps are not inherently
disclosed, asserting that the steps are not so trivial that every CPU performs
them. Id. at 14. Appellants further assert that Watabe’s description of
controlling three laser levels (boost, peak and bias) are different from the
claimed invention, referring to limitations that are not recited in claims 7–8
and 19–20.
We do not find the Appellants’ arguments persuasive to demonstrate
reversible error on the part of the Examiner for the reasons as explained
above. In re Jung, 637 F.3d at 1365; see also In re Lovin, 652 F.3d at 1357;
SmithKline, 439 F.3d at 1320; In re Self, 671 F.2d at 1348; Ex parte Belinne,
2009 WL 2477843, *3-4. We note that Appellants do not submit a Reply
Brief and do not contest the Examiner’s findings that Watabe’s enable signal
corresponds to the claimed GOTO command and Watabe’s hold signal
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corresponds to the claimed wait command. Ans. 5. Nor do Appellants
provide any evidence or substantive argument sufficient to challenge the
Examiner’s finding that Watabe discloses the claimed pulse-width
modulation (PWM) command. Ans. 4–5.
We are, therefore, not persuaded of reversible error in the Examiner’s
first ground of rejection.
Rejection 2 – Claims 9 and 22
Appellants do not challenge the Examiner’s findings or conclusions
regarding obviousness of claims 9 and 22. Instead, Appellants contend that
Sugimoto does not cure the alleged deficiencies of Watabe, asserting that
Sugimoto does not disclose the same list of functions from claim 1 that are
recited in a preceding section of its brief. Compare App. Br. 14 with id. at
12. That contention is merely conclusory and fails to identify error in the
Examiner’s second ground of rejection, which relies on Watabe, not
Sugimoto, to show the elements of claim 1. See Ans. 5. We are, therefore,
not persuaded of reversible error in the Examiner’s second ground of
rejection.

CONCLUSION OF LAW AND DECISION
The rejections are 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)(1).
AFFIRMED

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