Yukiaki NAGATA et al.

Patent Trials and Appeals Board

Aug 27, 2020

2019006135 (P.T.A.B. Aug. 27, 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.
13/476,677 05/21/2012 Yukiaki NAGATA 153098 8300
25944 7590 08/27/2020
OLIFF PLC
P.O. BOX 320850
ALEXANDRIA, VA 22320-4850
EXAMINER
ROSARIO-APONTE, ALBA T
ART UNIT PAPER NUMBER
3761
NOTIFICATION DATE DELIVERY MODE
08/27/2020 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):
OfficeAction25944@oliff.com
jarmstrong@oliff.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YUKIAKI NAGATA, RYOJI MURATSUBAKI,
MASANORI KANEMITSU, and MASASHI TSUNEMOTO

Appeal 2019-006135
Application 13/476,677
Technology Center 3700
____________

Before JOHN C. KERINS, DANIEL S. SONG, and BRETT C. MARTIN,
Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1, 3, 6, and 13–15, the only claims now
pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). A
telephonic oral hearing was conducted on August 19, 2020, with Scott M.
Schulte, Esq., appearing on behalf of Appellant.
We REVERSE.

1 The term “Appellant” is used herein to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as SUGINO
MACHINE LIMITED. Appeal Br. 1.
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THE CLAIMED SUBJECT MATTER
Appellant’s invention relates to a laser machining apparatus. Claim 1
is illustrative, and is reproduced below:
1. A laser machining apparatus for machining with a laser
beam that is guided to a machining point by a liquid, comprising:
a nozzle including a nozzle inlet opening, the nozzle jetting a jet
liquid column;
a rectifying chamber having an annular shape, the rectifying
chamber attenuating disturbances in flow of the liquid;
a liquid oscillating chamber having a generally cylindrical shape
with a height greater than its diameter, the liquid oscillating
chamber guiding the liquid to the nozzle inlet opening;
an oscillating chamber inlet port arranged at only one arc portion
of a circumference of a sidewall of the oscillating chamber that
allows inflow of the liquid from the rectifying chamber from one
direction of the liquid oscillating chamber, the one direction
being a radial direction of the oscillating chamber;
a laser oscillator generating a laser beam;
a focusing optical system focusing the laser beam generated by
the laser oscillator above the nozzle inlet opening to cause the jet
liquid column to guide the laser beam;
a window opposed the nozzle inlet opening to cause the laser
beam transmitting from the focusing optical system to enter the
liquid oscillating chamber,
only one oscillating chamber inlet path for guiding the liquid
from the rectifying chamber to the oscillating chamber inlet port,
the oscillating chamber inlet path connected directly with the
oscillating chamber inlet port and the rectifying chamber, the
oscillating chamber inlet path extending horizontally, having a
fan shape in view from the window and extending downward
from the rectifying chamber, such that the liquid flows in from
the only one portion of the circumference of the sidewall of the
liquid oscillating chamber; and
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wherein the liquid oscillating chamber increases a surface wave
on an outer surface of the jet liquid column to cause the jet liquid
column jetted from the nozzle onto a workpiece to be easily
atomized at the machining point, and
wherein the rectifying chamber surrounds at least a portion of the
liquid oscillating chamber.

THE REJECTIONS
The Examiner rejects:
(i) claims 1, 3, 6, and 13–15 under 35 U.S.C. § 112, second paragraph,
as being indefinite; and
(ii) claims 1, 3, 6, and 13–15 under 35 U.S.C. § 103(a) as being
unpatentable over Muratsubaki (US 2009/0084765 A1, published Apr. 2,
2009) in view of Koseki (US 7,705,266 B2, issued Apr. 27, 2010) and Kaga
(US 5,609,781, issued Mar. 11, 1997).

ANALYSIS
Claims 1, 3, 6, and 13–15--§ 112 Indefiniteness
The Examiner finds that the limitation in claim 1 reciting “the only
one portion of the circumference of the sidewall” lacks sufficient antecedent
basis, thus rendering the claim indefinite. Final Act. 2. This recitation
differs from a previous recitation of “only one arc portion of a circumference
of a sidewall” in that it omits the term “arc.”
Appellant argues that the objected-to language does not render the
claim indefinite, in that it would be understood that “the only one portion” is
referring back to the limitation reciting “only one arc portion.” Appeal Br.
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7. The Examiner replies that the two recitations are “not the same,” and
repeats that the objected-to language lacks proper antecedent basis. Ans. 8.
Although the phrases are not the same, as observed by the Examiner, a
person of ordinary skill in the art would understand, within the context of the
claim as a whole, that the objected-to language is referring back to the
previously-recited “one arc portion.” The absence of exact correspondence
in language would not give rise to a question as to the scope of the claim,
such that the claim does not reasonably apprise those skilled in the art as to
the utilization and scope of the invention. In re Packard, 751 F.3d 1307,
1313 (Fed. Cir. 2014).
The rejection of claims 1, 3, 6, and 13–15 as being indefinite is not
sustained.

Claims 1, 3, 6, and 13–15--§ 103(a)--Muratsubaki/Koseki/Kaga
The Examiner applies a combination of Muratsubaki and Koseki as
teaching all limitations in independent claim 1, except for recitations that the
oscillating chamber inlet port is arranged at only one arc portion of a
circumference of a sidewall of the liquid oscillating chamber, and that the
sole inlet path to the oscillating chamber has a fan shape and extends
downwardly so that liquid flows into the liquid oscillating chamber from
only one side of the circumference of the sidewall of the liquid oscillating
chamber. Final Act. 5.
The Examiner cites to Kaga as teaching a laser machining apparatus
having an oscillating chamber inlet port having two partitions attached to a
plate formed in a fan shape that provide only one oscillating chamber inlet
path, such that fluid flows in from only one side of the circumference of the
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side wall of the oscillating chamber. Final Act. 5–6, citing principally Kaga,
Figs. 37A, 37B, and partitions 35b shown therein. The Examiner concludes
that it would have been obvious to modify the oscillating chamber inlet
port/path of Muratsubaki (interconnecting channel 82) to “provide an
oscillating chamber inlet path having a fan shape for liquid flow from only
one arc side of a circumference of a sidewall of the liquid oscillating
chamber, as disclosed by Kaga,” so as to allow for easy regulation of the
amount of liquid entering the oscillating chamber, to thereby regulate the
size of the liquid column surrounding the laser beam. Id. at 6.
Figures 37A and 37B of Kaga are reproduced below for ease of
reference in the ensuing discussion.

Depicted on the left above is Figure 37A of Kaga, which is a partial cross-
sectional perspective view of a machining head. Depicted on the right above
is Figure 37B of Kaga, which is a longitudinal cross-sectional view of the
same machining head. Kaga, col. 5, ll. 34–37.
Appellant argues that partitions 35b in Kaga divide an annular gas
flow channel into two “rooms” (reference numeral 32 with two lead lines),
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but that this Kaga construction still allows gas flow through both rooms, i.e.,
two flow paths and not the claimed only one inlet path, with the gas flow
extending completely around the circumference of the flow channel. Appeal
Br. 11–12. Appellant explains that, via the use of fan-shaped plate 35a, to
which partitions 35b are attached and from which they extend downwardly,
gas flows directly into a smaller room bounded by the partitions and
unrestricted by plate 35a, but that gas also flows into the larger room
separated from the smaller room by the partitions, along a path that is
partially obstructed by plate 35a. Id., citing Kaga, Fig. 37A, col. 15, ll. 1–
31.
Appellant additionally argues that it is not entirely clear how the
Examiner proposes to modify Muratsubaki in view of Kaga, and that it is
particularly unclear how Muratsubaki could be modified in view of Kaga so
as to result in the structure recited in claim 1, which requires an oscillating
chamber inlet port arranged at only one arc portion of a circumference of a
side wall of the oscillating chamber, and requires that there be only one inlet
path to the oscillating chamber. Appeal Br. 14.
The Examiner responds that claim 1 is not limited “to having only one
arc portion or only one oscillating inlet port, it just indicates that there is an
oscillating chamber inlet port arranged at only one arc portion (at a specific
arc portion) of the circumference of a sidewall of the oscillating chamber.”
Ans. 11−12. The Examiner additionally clarifies the proposed modification
as involving “placing elements 35a/b of Kaga in element 82 of Muratsubaki
so it only allows flow from element 81 of Muratsubaki thru element 32 of
Kaga.” Ans. 12. In further responding, it is apparent that the Examiner is of
the understanding that, in the construction illustrated in Figure 37A of Kaga,
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fluid flow is confined to only one path or room bounded by partitions 35b
and unrestricted at the top by plate 35a. See Ans. 13–14.
Appellant has the better position here. In discussing the operation of
the nozzle depicted in Figures 37A and 37B, Kaga discloses that:
The sub assist gas flows into the small rooms 32 formed by the
partition plates 35b, the inside wall of the sub assist gas nozzle 2
and the outside wall of the main assist gas nozzle 1, through the
small holes 11 where the small holes 11 are not interrupted by
the fan shaped plate 35a, and goes out from the sub assist gas
nozzle outlet. Accordingly, a similar effect to that of the
embodiment 17 is obtained by controlling the small rooms to be
located behind the machining direction.
Kaga, col. 15, ll. 23–31 (italics added, except in reference numerals). This is
the passage cited by the Examiner in finding that fluid flow is confined to
only the smaller room or path 32.
The italicized language in the passage quoted above, at first blush,
appears to support the Examiner’s position. However, the reference to
obtaining a similar effect to that of “embodiment 17” in Kaga, as well as a
review of the drawings and Kaga’s reference to sub assist gas flowing into
“the small rooms 32,” plural, cast doubt on that interpretation.
Embodiment 17 of Kaga is described at column 14, lines 23–67, and
accompanying Figures 33A, 33B, and 34–36. Kaga discusses that, in this
embodiment, which has four chambers or rooms each supplied by a separate
supply inlet, “the assist gas flow speed distribution at the outlet of the sub
assist gas nozzle can be adjusted freely by adjusting the quantity of gas flow
that is supplied to each small room.” Kaga, col. 14, ll. 43–46. In connection
with this description, Kaga references Figure 36, which, although a side
view, appears to show sub assist gas exiting at different flow rates or
pressures from a plurality of the small rooms. This is consistent with Kaga’s
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description of adjusting the gas flow to each small room; Kaga does not
appear to discuss or contemplate shutting off the gas flow to all but one of
the four rooms and providing only one flow path for the sub assist gas.
In obtaining a “similar effect” with the embodiment illustrated in
Figures 37A and 37B, Kaga appears to be influencing sub assist gas flow
through the nozzle; with a mostly unrestricted flow through the portion (one
of rooms 32) of the nozzle where holes 11 are not interrupted by fan shaped
plate 35a, and with a more restricted flow path to reach the portion (the other
of rooms 32) of the nozzle where fan shaped plate 35a obstructs the
remainder of holes 11. It is possible, though we believe not likely, that
Figures 37A and 37B omit various sealing measures spanning all of the
illustrated gaps that would strictly limit gas flow to only the former path.
However, in that this embodiment is designed to achieve a similar effect to
Embodiment 17, which provides a sub assist gas flow around an entire
circumference, albeit with different flow characteristics in different sectors,
it is more likely than not that Kaga provides two flow paths to two rooms 32
in the embodiment of Figures 37A and 37B.
Accordingly, even though it might be possible to install partitions
connected to a fan shaped upper plate, as disclosed in Kaga, into
interconnecting channel 82 of Muratsubaki in a manner that would fully
restrict passage of liquid to liquid reservoir chamber 83 to only between the
partitions where the upper plate is not present, i.e., so that only one
oscillating chamber inlet path would be present, Kaga provides no indication
as to why that manner of installation would be of any particular significance
in the Kaga device, let alone in the Muratsubaki device. The Examiner’s
proffered reasoning, that it would allow for easy regulation of the amount of
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liquid entering the oscillating chamber, to regulate the size of the liquid
column, seems to not be particularly related to restricting flow to a particular
path around less than the entire circumference of the oscillating chamber,
and also seems to be something that the Muratsubaki device would be able
to accomplish without the proposed modification.
To the extent that the Examiner may have relied on Embodiment 17 of
Kaga separately from the embodiment of Figures 37A and 37B, as opposed
to relying on the two embodiments in conjunction with one another, the
above discussion addresses why that embodiment is deficient as well. Final
Act. 5–6; Ans. 13.
The rejection of claims 1, 3, 6, and 13–15 as being unpatentable over
Muratsubaki, Koseki, and Kaga, is not sustained.

DECISION
The rejection of claims 1, 3, 6, and 13–15 under 35 U.S.C.
§ 112, second paragraph, as being indefinite, is reversed.
The rejection of claims 1, 3, 6, and 13–15 under 35 U.S.C. § 103(a) is
reversed.
CONCLUSION

In summary:

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3, 6,
13–15
112, second
paragraph
Indefiniteness 1, 3, 6, 13–
15
1, 3, 6,
13–15
103(a) Muratsubaki, Koseki,
Kaga
1, 3, 6, 13–
15
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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
Overall
Outcome

1, 3, 6, 13–
15

REVERSED