Waymo LLC

Patent Trials and Appeals Board

Dec 4, 2020

2020003647 (P.T.A.B. Dec. 4, 2020)

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.
15/614,148 06/05/2017 Drew Ulrich 12-1114-US-CON2 4939
145835 7590 12/04/2020
McDonnell Boehnen Hulbert & Berghoff LLP/Waymo
300 South Wacker Drive
Chicago, IL 60606
EXAMINER
HUTCHINSON, ALAN D
ART UNIT PAPER NUMBER
3669
MAIL DATE DELIVERY MODE
12/04/2020 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 DREW ULRICH, PIERRE-YVES DROZ, and
SAMUEL LENIUS
____________

Appeal 2020-003647
Application 15/614,1481
Technology Center 3600
____________

Before NINA L. MEDLOCK, CYNTHIA L. MURPHY, and
BRUCE T. WIEDER, Administrative Patent Judges.

WIEDER, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 21–40. We have jurisdiction under
35 U.S.C. § 6(b). An oral hearing was held November 19, 2020.
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as “Waymo
LLC, which is a subsidiary of Alphabet Inc.” (Appeal Br. 1.)
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Application 15/614,148

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CLAIMED SUBJECT MATTER
Appellant’s invention relates to “[a] beam-steering device for a light
detection and ranging (LIDAR) device.” (Spec. ¶ 5.)
Claims 21 and 36 are the independent claims on appeal. Claim 21 is
illustrative. It recites:
21. A device comprising:
a frame;
a first reflective slat;
a plurality of first-reflective-slat connecting arms
connecting the first reflective slat to the frame, wherein the
plurality of first-reflective-slat connecting arms define an axis of
rotation of the first reflective slat;
a second reflective slat;
a plurality of second-reflective-slat connecting arms
connecting the second reflective slat to the frame, wherein the
plurality of second-reflective-slat connecting arms define an axis
of rotation of the second reflective slat;
a plurality of first-reflective-slat electromagnets
proximate a portion of the first reflective slat and offset from the
axis of rotation of the first reflective slat, wherein the first-
reflective-slat electromagnets are configured to be activated to
magnetically attract the portion of the first reflective slat such
that the first reflective slat rotates about the axis of rotation of the
first reflective slat; and
a plurality of second-reflective-slat electromagnets
proximate a portion of the second reflective slat and offset from
the axis of rotation of the second reflective slat, wherein the
second-reflective-slat electromagnets are configured to be
activated to magnetically attract the portion of the second
reflective slat such that the second reflective slat rotates about
the axis of rotation of the second reflective slat.

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Application 15/614,148

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REJECTIONS
Claims 21–28, 30–36, and 38–40 are rejected under 35 U.S.C.
§ 103(a) as unpatentable in view of Elata (US 7,423,794 B2, iss.
Sept. 9, 2008), Bernstein (US 6,388,789 B1, iss. May 14, 2002), and
McClelland (US 6,201,629 B1, iss. Mar. 13, 2001).
Claim 29 is rejected under 35 U.S.C. § 103(a) as unpatentable in view
of Elata, Bernstein, McClelland, and Electrical steel, Wikipedia entry, dated
June 9, 2013, retrieved Jan. 20, 2019 (hereinafter “Electrical Steel”).
Claim 37 is rejected under 35 U.S.C. § 103(a) as unpatentable in view
of Elata, Bernstein, McClelland, and Matta (US 6,738,583 B1, iss.
May 18, 2004).

ANALYSIS
Obviousness is a legal conclusion involving a determination of
underlying facts.
Under § 103, the scope and content of the prior art are to be
determined; differences between the prior art and the claims at
issue are to be ascertained; and the level of ordinary skill in the
pertinent art resolved. Against this background, the obviousness
or nonobviousness of the subject matter is determined. Such
secondary considerations as commercial success, long felt but
unsolved needs, failure of others, etc., might be utilized to give
light to the circumstances surrounding the origin of the subject
matter sought to be patented.

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting Graham v.
John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966)).
With regard to the scope and content of the prior art, the Examiner
finds that Elata discloses “a frame,” “a first reflective slat,” and “a plurality
of first-reflective-slat connecting arms . . . connecting the first reflective slat
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Application 15/614,148

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to the frame.” (Final Action 5.) The Examiner also finds that “Elata
discloses a single rotatable reflective slat but appears to be silent as to
arranging multiple reflective slats such that the slats rotate about parallel
axis and is thus silent as to a second reflective slat.” (Id.) The Examiner
finds that Bernstein discloses “a second reflective slat,” “a plurality of
second-reflective-[surface] connecting arms connecting the second reflective
[surface] to the frame, wherein the plurality of second-reflective-[surface]
connecting arms define an axis of rotation of the second reflective
[surface].” (Id. at 6 (citing Bernstein Fig. 6B) (brackets in original).)
Additionally, the Examiner determines:
It would have been obvious to one of ordinary skill in the
art at the time of filing to provide the invention of Elata with a
second reflective [surface]; a plurality of second-reflective-
[surface] connecting arms connecting the second reflective
[surface] to the frame, wherein the plurality of second-reflective-
[surface] connecting arms define an axis of rotation of the second
reflective [surface]; a plurality of second-reflective-[surface]
electromagnets proximate a portion of the second reflective
[surface] and offset from the axis of rotation of the second
reflective [surface], wherein the second-reflective-[surface]
electromagnets are configured to be activated to magnetically
attract the portion of the second reflective [surface] such that the
second reflective [surface] rotates about the axis of rotation of
the second reflective [surface] as taught by Bernstein because the
technique for improving a particular class of devices was part of
the ordinary capabilities of a person of ordinary skill in the art,
in view of the teaching of the technique for improvement in other
situations, would have yielded predictable results to one of
ordinary skill in the art at the time of the invention.

(Id. at 6–7 (brackets in original).)
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Appellant argues that “Bernstein does not teach arranging multiple
slats on the same level of a gimballed device, but instead teaches arranging
single slat devices next to each other in an array.” (Reply Br. 5.)
When, as in this case, it is necessary “to look to interrelated teachings
of multiple patents,” we must “determine whether there was an apparent
reason to combine the known elements in the fashion claimed by the patent
at issue.” KSR Int’l Co., 550 U.S. at 418. “‘[T]here must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.’” Id. (quoting In re Kahn, 441 F.3d 977, 988
(Fed. Cir. 2006)).
Elata discloses “a device and method for stacked multilevel uncoupled
electrostatic actuators that may be used to drive optical micro-mirrors.”
(Elata, col. 1, ll. 9–11.) Specifically, Elata is directed to solving the problem
of “nonlinear coupling between the axes, when using electrostatic actuation
to drive a micro-device with multiple rotation axes.” (Id. at col. 2, ll. 12–14;
see also id. at col. 3, ll. 30–39.) Elata discloses:
One means of eliminating this coupling is to deflect the
driving electrodes of the inner frame such that they remain
parallel to the inner frame axis. This can be achieved by fixing
the driving electrodes of the inner frame to the same external
frame that deflects the inner frame axis. In the present invention
this is achieved by multi-level stacking of multiple actuators, one
upon the other, each having a single degree of freedom. FIG. 3
gives a schematic illustration of such a stacked micro-mirror.

(Id. at col. 4, ll. 3–12.) Figure 4 of Elata, showing the separated layers of the
device of Figure 3, is reproduced below.
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Specifically, Figure 4 shows
[t]he first level 410 contains the first level bottom electrodes 412
that drive the first deformable element 431 about the x-axis 440.
The second level 420 contains first deformable element 431.
First deformable element 431 contains the counter electrodes to
the first level bottom electrodes 412 on its lower side. However,
the counter electrodes are not visible in a top perspective view.
Also, first deformable element 431 contains, on its upper side,
the second level bottom electrodes 422 that drive the second
deformable element 432 about the y-axis 445. The third level
430 contains the second deformable element 432 [i.e., the
reflective slat] of which the frame is attached to the first
deformable element 431 on second level 420.

(Id. at col. 4, ll. 17–30.) Figure 4 of Elata shows the single reflective
slat 432 with connecting arms connected to a frame, all within layer 430.
Additionally, Figure 4 shows that when layer 430 is attached to layer 420
(via first deformable element 431), the arms connecting first deformable
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element 431 to the frame of layer 420, indirectly connect the reflective slat
connecting arms of reflective slat 432 to the frame of layer 420.
Bernstein discloses “a multi-axis magnetically actuated
micromechanical device.” (Bernstein, col. 1, ll. 7–9.) In particular,
Bernstein discloses “a two-axis magnetically actuated micromechanical
device capable of angular deflections of a plate, or rotational member, of up
to 45°.” (Id. at col. 2, ll. 63–66.) Figure 1A of Bernstein is reproduced
below.

Figure 1A is a schematic illustration of an embodiment “of a two-axis
magnetically actuated device.” (Id. at col. 4, ll. 29–30.) The device shown
in Figure 1A
comprises a base member 1 and a first rotational member 2
suspended by a first set of torsional flexures 4 which connect the
base member 1 and the first rotational member 2. The torsional
flexures 4 substantially define an axis 40 about which the first
rotational member 2 and a second rotational member 3 [i.e., the
reflective slat] may rotate. The second rotational member 3 is
suspended by a second set of torsional flexures 5 which are
connected to the first rotational member 2. The second set of
torsional flexures 5 substantially define an axis 50 about which
the second rotational member 3 may rotate.

(Id. at col. 5, ll. 15–25.) Figure 6B of Bernstein is reproduced below.
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Figure 6B shows “an array of multi-axis magnetically actuated devices.”
(Id. at col. 4, ll. 62–64.) In other words, Figure 6B shows a series of single
slat devices, like the device shown in Figure 1A, arranged in an array. The
Examiner, however, as noted above, premises the obviousness analysis, in
part, on Bernstein disclosing “a plurality of second-reflective-[surface]
connecting arms connecting the second reflective [surface] to the frame,
wherein the plurality of second-reflective-[surface] connecting arms define
an axis of rotation of the second reflective [surface].” (Final Action 6 (citing
Bernstein Fig. 6B) (emphasis added) (brackets in original).)
Claim 21 recites “a frame,” the “first-reflective-slat connecting arms
connecting the first reflective slat to the frame,” and the “second-reflective-
slat connecting arms connecting the second reflective slat to the frame.”
(Emphasis added.) It is not clear from the Examiner’s description what it is
in Bernstein that is asserted to constitute the common frame to which the
first-reflective-slat connecting arms and the second-reflective-slat
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connecting arms are connected. Rather, it appears that the reflective slat in
each device in Figure 6B is connected to its own frame. Therefore, we
disagree with the Examiner’s finding that Bernstein discloses “a plurality of
second-reflective-[surface] connecting arms connecting the second reflective
[surface] to the frame.” (Final Action 6 (citing Bernstein Fig. 6B) (brackets
in original).) And we must look elsewhere for the necessary reasoning to
support the conclusion of obviousness.
The Examiner determines that “Elata discloses a first reflective slat
and additional reflective slats is merely a duplication of parts, and the courts
have held that mere duplication of parts has no patentable significance. (see
MPEP 2144.04 VI. B.)” (Answer 4.) But the Examiner does not sufficiently
explain why the duplication of parts would duplicate only the second slat
and second slat connecting arms, as is shown in Figure 6B of Bernstein, but
not duplicate the frame, i.e., the Examiner does not sufficiently explain why
one of skill in the art would have connected the second slat connecting arms
to the same frame as the first slat connecting arms.
As noted above, the Examiner determines that “the technique for
improving a particular class of devices was part of the ordinary capabilities
of a person of ordinary skill in the art” and the technique “would have
yielded predictable results to one of ordinary skill in the art at the time of the
invention.” (Final Action 7.) However, the Examiner does not sufficiently
explain why one would have been motivated to modify Elata as the
Examiner suggests. See KSR Int’l Co., 550 U.S. at 418.
In sum, the Examiner does not sufficiently explain why one would
have modified Elata to add a second reflective slat such that the second-
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reflective-slat connecting arms connect the second reflective slat to the same
frame to which the first-reflective-slat connecting arms are connected.
Therefore, we will reverse the rejection of claim 21. For the same
reasons we will reverse the rejection of independent claim 36, and dependent
claims 22–35 and 37–40.

CONCLUSION
The Examiner’s rejections of claims 21–40 under 35 U.S.C. § 103(a)
are reversed.
Specifically:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
21–28,
31–36,
38–40
103(a) Elata, Bernstein,
McClelland
21–28,
31–36,
38–40
29 103(a) Elata, Bernstein,
McClelland,
Electrical Steel
29
37 103(a) Elata, Bernstein,
McClelland, Matta
37
Overall
Outcome
21–40

REVERSED