Sergio Bossoni et al.

Patent Trials and Appeals Board

Jul 29, 2019

14678140 - (D) (P.T.A.B. Jul. 29, 2019)

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.
14/678,140 04/03/2015 Sergio Bossoni 21422.1 6525
22913 7590 07/29/2019
Workman Nydegger
60 East South Temple
Suite 1000
Salt Lake City, UT 84111
EXAMINER
LIU, CHRIS Q
ART UNIT PAPER NUMBER
3761
NOTIFICATION DATE DELIVERY MODE
07/29/2019 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):
Docketing@wnlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte SERGIO BOSSONI and MARKUS STEINLIN
____________________

Appeal 2018-008419
Application 14/678,140
Technology Center 3700
____________________

Before EDWARD A. BROWN, ANNETTE R. REIMERS, and
JEREMY M. PLENZLER, Administrative Patent Judges.

PLENZLER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s Decision rejecting claims 1–16 and 18–37. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

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CLAIMED SUBJECT MATTER
Claims 1 and 22 are independent. Claims 2–16, 18–21, and 23–37
depend from claim 1 or 22. Claim 1 is reproduced below:
1. A beam processing machine for processing a workpiece,
comprising:
a frame;
a workpiece rest held by the frame, including a rest
surface configured to hold a workpiece;
a tool configured to emit a laser beam or a fluid jet,
carried by the frame and movable relative to the workpiece rest;
within the beam processing machine a vibration-
transmitting connecting path between the tool and the rest
surface, transmitting mechanical vibrations caused by the
dynamics of the tool to the rest surface of the workpiece rest;
at least one damping element incorporated into said
vibration-transmitting connecting path or a plurality of damping
elements connected in parallel and arranged at a distance from
one another, is incorporated;
wherein the at least one damping element or plurality of
damping elements is located between the workpiece rest and the
frame; and
wherein the at least one damping element or plurality of
damping elements is one of a spring damper, a damper
including elastomeric material, a hydraulic damper, a piezo-
element damper, or a friction damping element.
REJECTIONS1
1. Claims 1, 2, 4–14, 18–22, and 35–37 are rejected under
35 U.S.C. § 103 as being unpatentable over Vande Berg (US 6,727,457 B1,
issued Apr. 27, 2004) and Helms (US 4,958,437, issued Sept. 25, 1990).

1 The § 112 rejection in the Final Action was withdrawn in the Answer.
Ans. 30–31.
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2. Claims 3, 16, and 23–28 are rejected under 35 U.S.C. § 103 as
being unpatentable over Vande Berg, Helms, and Cox (US 2004/0008331
A1, published Jan. 15, 2004).
3. Claim 15 is rejected under 35 U.S.C. § 103 as being unpatentable
over Vande Berg, Helms, and Oblak (EP 2 700 838 A1, published Feb. 26,
2014).
4. Claims 29–31, 33, and 34 are rejected under 35 U.S.C. § 103 as
being unpatentable over Vande Berg, Helms, and Frank (US 2011/0272874
A1, published Nov. 10, 2011).
5. Claim 32 is rejected under 35 U.S.C. § 103 as being unpatentable
over Vande berg, Helms, and Schmidt (US 2003/0034624 A1, published
Feb. 20, 2003).
OPINION
Independent claims 1 and 22 each recite a “damping element” that is
“located between the workpiece rest and the frame.” In each of the
rejections, the Examiner acknowledges that “Vande Berg does not
explicitly teach at least one damping element . . . located between the
workpiece rest and the frame.” Final Act 8; see also id. at 23 (same finding
with respect to claim 22). To address this omission, the Examiner relies on a
finding that “Helms teaches at least one damping element (Air bearings 26;
fig.2) . . . located between the workpiece rest (Table 14; fig.2) and the frame
(Structure 16; fig.2).” Id. at 9; see also id. at 23 (same finding with respect
to claim 22).
Appellant responds that air bearing 26 in Helms is not a damper.
Appeal Br. 8–11. Appellant has the better position.
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Helms “relates generally to vibration dampers for machines with high
precision positioning mechanisms movable along three coordinate axes.”
Helms, 1:6–8. Figure 2 of Helms is reproduced below.

Figure 2 of Helms “is a schematic representation of a three axis coordinate
measuring machine embodying the vibration damper.” Helms, 3:29–31.
Helms explains that the machine includes air bearings 26 between table 14
and gantry-type structure 16 “to allow structure 16 to move in a relatively
frictionless manner.” Id. at 4:16–22. Helms further explains that “vibration
damper 30 is disposed on structure 16.” Id. at 5:30–31.
The Examiner fails to provide sufficient basis to support the finding
that air bearing 26 is a damper. In the Answer, the Examiner attempts to
characterize air bearing 26 as “a friction damping element.” Ans. 39. As
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noted above, however, Helms explains that air bearings 26 provide for
“move[ment] in a relatively frictionless manner.” Helms, 4:18–19. The
Examiner further explains that an air bearing is a damper because it is “a
spring damper and a damper including elastomeric material.” Ans. 39
(citing Devitt2 ¶¶ 6, 72–75). Initially, we note that the Examiner has not
established that air bearing 26 in Helms includes the elements in Devitt.
Moreover, the Examiner does not explain which “damping elements” from
Devitt’s disclosure would be present in air bearing 26 in Helms. As best we
can tell, the Examiner considers the “elastomeric mounting” (Devitt ¶ 6) or
“spring 166” (id. ¶ 75) to be those “damping elements.” Having an
elastomeric mounting between air bearings and a corresponding structure, in
some circumstances, does not make air bearings, themselves, damping
elements. Nor does the fact that a spring may be a component of an air
bearing make the air bearing a damping element.
As explained above, Helms teaches that its damping element is
“vibration damper 30.” Helms does not teach that air bearing 26 is also a
damping element. For the reasons set forth above, the Examiner fails to
establish that one skilled in the art would consider air bearing 26 in Helms to
be a damping element as recited in the claims.
For at least these reasons, we do not sustain the Examiner’s decision
to reject claims 1–16 and 18–37.

2 US 2014/0286599 A1, published Sept. 25, 2014.
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DECISION
We REVERSE the Examiner’s decision to reject claims 1–16 and 18–
37.

REVERSED