Decoster, YvesDownload PDFPatent Trials and Appeals BoardAug 7, 202013812926 - (D) (P.T.A.B. Aug. 7, 2020) Copy Citation 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. 13/812,926 04/01/2013 Yves Decoster 8527-3010-1 1245 29318 7590 08/07/2020 JAMES D. STEVENS REISING ETHINGTON P.C. 755 W. BIG BEAVER RD. SUITE 1850 TROY, MI 48084 EXAMINER BOYLAN, JAMES T ART UNIT PAPER NUMBER 2486 NOTIFICATION DATE DELIVERY MODE 08/07/2020 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): USPTOmail@gmx.com USPTOmail@reising.com stevens@reising.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte YVES DECOSTER ____________ Appeal 2019-001594 Application 13/812,926 Technology Center 2400 ____________ Before ROBERT E. NAPPI, KRISTEN L. DROESCH, and STEVEN M. AMUNDSON, Administrative Patent Judges. AMUNDSON, Administrative Patent Judge. DECISION ON APPEAL Appellant1 seeks our review under 35 U.S.C. § 134(a) from a final rejection of claims 1 and 3–15, i.e., all pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42 (2018). Appellant identifies the real party in interest as IEE International Electronics & Engineering S.A. Appeal Br. 2. Appeal 2019-001594 Application 13/812,926 2 STATEMENT OF THE CASE The Invention The Specification states that the invention concerns “an active- illumination scanning imager,” in particular, a “scanning imager that comprises an oscillating scanning mirror to scan a light beam though the scene to be imaged.” Spec. ¶ 1.2 The Specification also states that the invention “facilitates collimation of a light beam used for active illumination of a scene to be imaged.” Id. ¶ 8. A scanning imager according to the invention preferably includes the following: (1) “a light source (e.g. a laser diode) for producing a light beam”; (2) “an optical collimator (e.g. a collimating lens or mirror) for collimating the light beam in at least one direction transversal to the beam direction”; (3) “a scanning mirror for scanning the light beam through a scene to be imaged”; (4) “a light detector arranged with respect to the scanning mirror in such a way as to receive a fraction of the light beam reflected from the scene via the scanning mirror”; (5) “an actuator (e.g. an automated tip/tilt stage, an automated linear actuator, an automated XY or XYZ- stage, a piezoelectric actuator, etc.) configured to position the light source and/or the optical collimator relative to each other, and/or the light detector relative to the scanning mirror”; and 2 This decision uses the following abbreviations: “Spec.” for the Specification, filed July 19, 2011; “Final Act.” for the Final Office Action, mailed February 20, 2018; “Appeal Br.” for the Appeal Brief, filed July 23, 2018; “Ans.” for the Examiner’s Answer, mailed October 15, 2018; and “Reply Br.” for the Reply Brief, filed December 14, 2018. Appeal 2019-001594 Application 13/812,926 3 (6) “a controller operatively connected to the actuator for controlling the positioning.” Spec. ¶ 9, Abstract. Exemplary Claim Independent claim 1 exemplifies the claims at issue and reads as follows (with formatting added for clarity): 1. Active-illumination scanning imager comprising: a light source for producing a light beam; an optical collimator for collimating said light beam in at least one direction transversal to a direction of the collimated light beam; a scanning mirror located along an optical axis of said optical collimator and configured to receive said collimated light beam from said optical collimator and to scan said collimated light beam through a scene to be imaged or through a beam profiler by oscillating said scanning mirror about a first tilting axis and a second tilting axis; a light detector arranged with respect to said scanning mirror in such a way as to receive a fraction of said light beam reflected from said scene, via said scanning mirror; an actuator configured to position at least one of said light source and said optical collimator relative to one another, and to position said light detector relative to said scanning mirror; and a controller operatively connected to said actuator for controlling said positioning, and wherein said controller includes an interface operatively connecting said controller to the beam profiler, and Appeal 2019-001594 Application 13/812,926 4 wherein said controller is configured to receive from said beam profiler a beam profile of the scanned collimated light beam and to automatically adjust the position of said light source relative to said optical collimator until parameters of the beam profile are in agreement with target parameter values, wherein the parameters of the beam profile include a position of the scanned collimated light beam center and/or a width of the scanned collimated light beam. Appeal Br. 17 (Claims App.). The Prior Art Supporting the Rejections on Appeal As evidence of unpatentability under 35 U.S.C. § 103(a),3 the Examiner relies on the following prior art: 3 The Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125 Stat. 284 (2011), amended 35 U.S.C. § 103 effective March 16, 2013. Because the filing date for Application 13/812,926 predates the AIA’s amendment to § 103, this decision refers to the pre-AIA version of § 103. Houki US 4,847,492 July 11, 1989 Takada US 5,072,114 Dec. 10, 1991 Spence US 5,267,013 Nov. 30, 1993 Romanik, Jr. (“Romanik”) US 5,729,47 Mar. 17, 1998 Horie et al. (“Horie”) US 5,859,427 Jan. 12, 1999 Svetkoff et al. (“Svetkoff”) US 6,750,974 B2 June 15, 2004 Jamieson et al. (“Jamieson”) US 2005/0189503 A1 Sept. 1, 2005 Liu et al. (“Liu”) US 2006/0269896 A1 Nov. 30, 2006 Fisker et al. (“Fisker”) US 2008/0306709 A1 Dec. 11, 2008 Kato US 2009/0051998 A1 Feb. 26, 2009 Aoki US 2010/0002279 A1 Jan. 7, 2010 Appeal 2019-001594 Application 13/812,926 5 The Rejections on Appeal Claims 1, 3, 8, 9, 11, and 15 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Liu, Kato, Houki, and Spence. Final Act. 4–11. Claims 4 and 5 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Liu, Kato, Houki, Spence, and Jamieson. Final Act. 11–12. Claim 6 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Liu, Kato, Houki, Spence, and Aoki. Final Act. 12–13. Claim 7 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Liu, Kato, Houki, Spence, and Fisker. Final Act. 13–14. Claim 10 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Liu, Kato, Houki, Spence, and Takada. Final Act. 15. Claim 12 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Liu, Kato, Houki, Spence, and Svetkoff. Final Act. 14. Claim 13 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Liu, Kato, Houki, Spence, and Romanik. Final Act. 16–17. Claim 14 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Liu, Kato, Houki, Spence, Romanik, and Horie. Final Act. 17–18. ANALYSIS We have reviewed the § 103(a) rejections in light of Appellant’s arguments that the Examiner erred. For the reasons explained below, we concur with the Examiner’s conclusions concerning unpatentability under § 103(a). We adopt the Examiner’s findings and reasoning in the Final Office Action and Answer. See Final Act. 2–18; Ans. 5–8. We add the following to address and emphasize specific findings and arguments. Appeal 2019-001594 Application 13/812,926 6 The § 103(a) Rejection of Claims 1, 3, 8, 9, 11, and 15 CLAIM 1: THE “SCANNING MIRROR” LIMITATION As noted above, the § 103(a) rejection of claim 1 rests on Liu, Kato, Houki, and Spence. See Final Act. 4–9. Appellant argues that the Examiner erred in rejecting claim 1 because the references fail to teach or suggest the following limitation in claim 1: a scanning mirror located along an optical axis of said optical collimator and configured to receive said collimated light beam from said optical collimator and to scan said collimated light beam through a scene to be imaged or through a beam profiler by oscillating said scanning mirror about a first tilting axis and a second tilting axis. See Appeal Br. 6–9. Specifically, Appellant asserts that the scanning mirror in Kato’s Figure 13 has reflecting surfaces that rotate about a single axis. Appeal Br. 8–9 (citing Kato ¶¶ 7–8, 10, Fig. 13). Appellant contends that Kato “cannot possibly teach or suggest a scanning mirror as recited in claim 1, wherein the scanning mirror oscillates about a first tilting axis and a second tilting axis.” Id. at 9 (emphasis by Appellant). Appellant’s arguments do not persuade us of Examiner error because Appellant attacks the references individually. Where, as here, a rejection rests on the combined disclosures in the references, an appellant cannot establish nonobviousness by attacking the references individually. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Here, the Examiner correctly finds that the combined disclosures in Liu and Kato teach or suggest claim 1’s “scanning mirror” limitation. See Final Act. 4–6; Ans. 6. In particular, the Examiner correctly determines that Kato teaches or suggests “a scanning mirror located along an optical axis of Appeal 2019-001594 Application 13/812,926 7 [an] optical collimator [and] configured to receive said collimated light beam from said optical collimator.” Final Act. 5–6 (citing Kato ¶¶ 7–8, Fig. 13); Ans. 6. In addition, the Examiner correctly determines that Liu teaches or suggests “a scanning mirror to scan said collimated light beam through a scene to be imaged by oscillating said scanning mirror about a first tilting axis and a second tilting axis.” Final Act. 4 (citing Liu Fig. 3); Ans. 6. Appellant’s arguments disregard Liu’s disclosures about a Micro- Electro-Mechanical Systems (MEMS) mirror for scanning. See, e.g., Liu ¶¶ 2, 28, 50, 62, 64–67, 73–74, Fig. 3. Liu explains that “[d]uring the scanning process, the MEMS mirror is oscillated at very high speeds along the x-axis and the y-axis,” thus “enabling rapid scanning.” Id. ¶ 28; see id. ¶¶ 50, 62, 73–74, Fig. 7. Hence, Liu’s MEMS mirror “oscillat[es] . . . about a first tilting axis and a second tilting axis” as required by claim 1. For the reasons discussed above, the combined disclosures in Liu and Kato teach or suggest claim 1’s “scanning mirror” limitation. See Final Act. 4–6; Ans. 6; Liu ¶¶ 2, 28, 50, 62, 64–67, 73–74, Figs. 3, 7; Kato ¶¶ 28, 34, 58–60, 78, Figs. 1–2. CLAIM 1: THE “CONTROLLER” LIMITATION Appellant argues that the Examiner erred in rejecting claim 1 because the references fail to teach or suggest the following limitation in claim 1: a controller . . . configured to receive from said beam profiler a beam profile of the scanned collimated light beam and to automatically adjust the position of said light source relative to said optical collimator until parameters of the beam profile are in agreement with target parameter values, wherein the parameters of the beam profile include a position of the scanned Appeal 2019-001594 Application 13/812,926 8 collimated light beam center and/or a width of the scanned collimated light beam. See Appeal Br. 9–12; see also id. at 6–7. Specifically, Appellant asserts that Kato does not teach or suggest a controller that “‘automatically adjust[s] the position of [a] light source relative to [an] optical collimator until parameters of the beam profile are in agreement with target parameter values,’ as recited in claim 1.” Appeal Br. 9–11 (emphasis omitted) (citing Kato ¶¶ 80–97, Fig. 1). Appellant also asserts that Kato’s sensors 91A and 91B detect a light beam “through slits at the front of each sensor.” Id. at 10 (emphasis omitted). According to Appellant, Kato uses the information from sensors 91A and 91B “to create a spot profile” rather than a beam profile, and then Kato uses the spot profile “to adjust the distance between the laser and the lens.” Id. at 10–11 (emphasis omitted). In addition, Appellant contends that Spence does not teach or suggest a controller that receives “a beam profile of [a] scanned collimated light beam” and “automatically adjust[s] the position of [a] light source relative to [an] optical collimator until parameters of the beam profile are in agreement with target parameter values” where “the parameters of the beam profile include a position of the scanned collimated light beam center and/or a width of the scanned collimated light beam,” as recited in claim 1. Appeal Br. 11–12. Appellant admits that Spence “measures the beam intensity of a laser beam” and produces signals used “to determine an overall intensity profile.” Id. at 11. But Appellant asserts that Spence “does not disclose or contemplate in any manner how to utilize” those signals “to determine a Appeal 2019-001594 Application 13/812,926 9 profile of a scanned collimated light beam that includes the center position of the beam and/or the width of the beam.” Id. (emphasis by Appellant). Appellant’s arguments do not persuade us of Examiner error because Appellant attacks the references individually. Where, as here, a rejection rests on the combined disclosures in the references, an appellant cannot establish nonobviousness by attacking the references individually. See Merck, 800 F.2d at 1097. Here, the Examiner correctly finds that the combined disclosures in Kato and Spence teach or suggest claim 1’s “controller” limitation. See Final Act. 2, 5–6, 8; Ans. 6–7. In particular, the Examiner correctly determines that Kato teaches or suggests a controller that receives information about a scanned collimated light beam and automatically adjusts the position of a light source relative to an optical collimator until parameters of the light beam agree with target parameter values. Final Act. 2, 5–6 (citing Kato ¶¶ 7–8, 30–32, 82–83, Figs. 6–7, 9, 13); Ans. 6–7. In addition, the Examiner correctly determines that Spence teaches or suggests a controller that receives a beam profile of a scanned light beam where the parameters of the beam profile include a width of the scanned light beam. Final Act. 8 (citing Spence 2:52–65, 6:28–46, Fig. 5); Ans. 7. In particular, Kato discloses an optical scanning apparatus with, among other things, (1) a light source, e.g., a semiconductor laser; (2) an optical collimator, e.g., a collimator lens, for collimating a light beam from the light source; (3) a scanning mirror, e.g., a light deflector; (4) light sensors, e.g., CCD sensors; and (5) a moving mechanism that “functions as an adjusting unit.” Kato ¶¶ 2, 58–60, 73–74, 80–83, Figs. 1–2. Kato also discloses methods for adjusting the position of the light source relative to the Appeal 2019-001594 Application 13/812,926 10 optical collimator in two directions: (1) a direction parallel to the optical axis for focus-state adjustments and (2) a direction perpendicular to the optical axis for irradiation-position adjustments. Id. ¶¶ 2, 28–35, 78, 81–94, 108–115; see Ans. 8. For adjustments in the direction parallel to the optical axis, the scanning mirror deflects a collimated light beam to the light sensors, and the light sensors supply information about the focus state of the collimated light beam. Kato ¶¶ 78–82, 108–109, Fig. 1; see id. ¶¶ 27–32, 86–94. Based on information about the focus state of the collimated light beam, the moving mechanism automatically adjusts the position of the light source relative to the optical collimator until the focus state agrees with a target value. Id. ¶¶ 27–32, 78, 83–95, 108–109; see Appeal Br. 16 (quoting Kato ¶¶ 83–84). Spence discloses a stereolithography apparatus with, among other things, (1) a light source, e.g., an ultraviolet laser; (2) a scanning mirror for directing a laser beam from the light source toward a working surface; (3) a beam profiler; (4) beam profile sensors; and (5) a computer control system for controlling the laser beam’s position. Spence 4:22–39, 6:28–38, Figs. 4–5, 7a; see id. at 1:48–55. For the stereolithography apparatus to work effectively, the laser beam must have a proper focus at the working surface. Id. at 2:3–10. To maintain a proper focus at the working surface, “[t]he scanning mirror is periodically commanded to direct the laser beam onto the beam profiler sensors,” and the beam profiler sensors measure the beam profile. Id. at 6:35–38. The beam profile specifies the intensities for various “portions of preselected size” over the beam cross-section. Spence 2:52–57, 6:35–41; Appeal 2019-001594 Application 13/812,926 11 see id. at 2:46–51, 3:61–63, 10:11–18, Fig. 13. The beam cross-section diameter relates to the beam width. See Final Act. 8; Ans. 7; Spence 3:61–63, Fig. 13. Based on the beam profile, the stereolithography apparatus may (1) adjust the beam focus at the working surface, (2) compensate for “drift” in the scanning system, e.g., in the scanning mirror, and (3) correct optical aberrations or distortions. Id. at 2:13–29, 2:52–3:2, 6:35–46. Because (1) the stereolithography apparatus adjusts the beam focus based on the beam profile, (2) the beam profile depends on the beam cross-section, and (3) the beam cross-section diameter relates to the beam width, the beam width corresponds to an adjustment parameter according to claim 1’s “controller” limitation. See id. at 2:52–57, 10:11–18, Fig. 13; Final Act. 8; Ans. 7. For the reasons discussed above, the combined disclosures in Kato and Spence teach or suggest claim 1’s “controller” limitation. See Final Act. 5–6, 8; Ans. 6–7; Kato ¶¶ 27–32, 78–95, 108–109, Fig. 1; Spence 2:13–29, 2:46–3:2, 3:61–63, 6:35–46, 10:11–18, Fig. 13. CLAIM 1: THE “OPTICAL COLLIMATOR” LIMITATION In the Reply Brief, Appellant argues that the Examiner erred in rejecting claim 1 because the references fail to teach or suggest the following limitation in claim 1: “an optical collimator for collimating said light beam in at least one direction transversal to a direction of the collimated light beam.” See Reply Br. 5–7. In particular, Appellant contends that “[t]here is no teaching, suggestion, or evidence whatsoever in Kato that the collimator lens 2 is configured to collimate the light beam ‘in at least one direction transversal to a direction of the collimated light beam,’ as recited in claim 1.” Id. at 5 (emphasis by Appellant). Appellant Appeal 2019-001594 Application 13/812,926 12 also contends that the cross-sectional views in Kato’s Figures 6 and 7 do not “necessarily reveal or illustrate a direction of collimation with respect to the collimated light beam.” Id. at 6. Further, Appellant asserts that “[a]ny skilled artisan when looking at the collimator lens 2 and the cross-section views provided in Figures 6 and 7 of Kato, would never conclude that the light beam from the lens 2 is collimated in at least one direction transversal to a direction of the collimated light beam.” Id. at 7 (emphasis by Appellant). Appellant’s arguments about claim 1’s “optical collimator” limitation do not respond to any positions in the Answer. See Ans. 6–8; see also Final Act. 5–7. Appellant advances those arguments for the first time in the Reply Brief. Such arguments “will not be considered by the Board” unless an appellant shows good cause. See 37 C.F.R. § 41.41(b)(2); see also Ex parte Borden, 93 USPQ2d 1473, 1475 (BPAI 2010) (informative) (discussing procedural difficulties with belated arguments). Here, Appellant has not shown good cause for the belated arguments about claim 1’s “optical collimator” limitation. Hence, we decline to consider them. “Considering an argument advanced for the first time in a reply brief . . . is not only unfair to an appellee, but also entails the risk of an improvident or ill-advised opinion on the legal issues tendered.” McBride v. Merrell Dow & Pharm., Inc., 800 F.2d 1208, 1211 (D.C. Cir. 1986). We note, however, that the Specification discloses a collimating lens that produces a collimated light beam “of substantially circular cross section.” See Spec. ¶¶ 9, 19, 26. A collimated light beam “of substantially circular cross section” has light collimated in at least one direction transversal to the light beam’s direction. See id. ¶¶ 9, 11, 19, 26–27. Kato’s Appeal 2019-001594 Application 13/812,926 13 collimator lens produces a “collimated light beam.” Kato ¶ 78. Kato’s collimator lens appears identical to the Specification’s collimating lens that produces a collimated light beam “of substantially circular cross section.” See Kato ¶ 78; Spec. ¶¶ 9, 19, 26. The absence of evidence distinguishing Kato’s collimator lens from the Specification’s collimating lens that produces a collimated light beam “of substantially circular cross section” would have doomed Appellant’s belated arguments about claim 1’s “optical collimator” limitation. See In re Best, 562 F.2d 1252, 1255 (CCPA 1977). CLAIM 1: COMBINING THE TEACHINGS OF KATO WITH THE TEACHINGS OF THE OTHER REFERENCES Appellant argues that the Examiner erred in rejecting claim 1 because the Examiner’s reason to combine Kato’s teachings with Liu’s teachings does not support the proposed combination. See Appeal Br. 12–13; Reply Br. 8–10. In particular, Appellant quotes the Examiner’s explanation that “[t]he motivation comes straight from the Kato reference and the [K]ato reference is utilized to improve image quality by focus control of the scanning su[r]face.” Reply Br. 8 (quoting Ans. 7) (emphasis omitted). Appellant then asserts that “the stated purpose of Kato is not to improve image quality as asserted by the Examiner, but rather to mitigate the focus problems associated with” warping of a light deflector’s deflecting surface. Id. at 9 (emphasis by Appellant) (citing Kato ¶¶ 26–27). In addition, Appellant contends that even if “the purpose of Kato is ‘to improve image quality’ as the Examiner suggests, improving image quality in the context of Kato is not relevant to the scanner in Liu, and therefore, cannot serve as ‘motivation’ for supporting a conclusion of obviousness.” Id. Appeal 2019-001594 Application 13/812,926 14 Appellant’s arguments do not persuade us of Examiner error because “the law does not require that the references be combined for the reasons contemplated by the inventor.” See In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992); see also Outdry Techs. Corp. v. Geox S.p.A., 859 F.3d 1364, 1371 (Fed. Cir. 2017). “[T]he desire to enhance commercial opportunities by improving a product or process is universal . . . .” DyStar Textilfarben GmbH v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006); see In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003). An “implicit motivation to combine” may result from a desire to make a product or process “stronger, cheaper, cleaner, faster, lighter, smaller, more durable, or more efficient.” DyStar, 464 F.3d at 1368. Here, Kato describes a problem focusing a light beam on a target surface due to warping of a light deflector’s deflecting surface. Kato ¶¶ 26–27. That focusing problem degrades image quality. Id. ¶ 26. To address that focusing problem and improve image quality, Kato discloses a moving mechanism that “functions as an adjusting unit” to adjust the position of a light source relative to an optical collimator. Id. ¶¶ 2, 28–35, 39, 78, 80–94, 107–115, Figs. 1–2. Kato’s moving mechanism addresses a focusing problem like the focusing problem described in the Specification and addressed by claim 1’s “actuator” limitation. See Spec. ¶ 10. Appellant fails to identify evidence that Liu’s scanning systems do not suffer from warping of a light deflector’s deflecting surface. See Appeal Br. 12–15; Reply Br. 7–11. Thus, Appellant fails to refute the Examiner’s reason to combine Kato’s teachings with the teachings of the other references. Appeal 2019-001594 Application 13/812,926 15 In addition, Liu discloses scanning systems for “a wide variety of industrial, medical, archeological, forensic, archival, or other purposes.” Liu ¶ 27; see id. ¶ 3. Because Liu discloses scanning systems for a wide variety of purposes, warping of a scanning system’s scanning mirror may occur in systems with relatively large components, e.g., systems intended for industrial purposes. Also, while Liu describes a preferred embodiment that includes a handheld scanner with a MEMS mirror, Liu does not exclude larger scanners with light deflectors according to Kato. See id. ¶¶ 3, 27, claims 1 and 21. On top of all that, Kato explains that the moving mechanism may compensate for “manufacturing errors” in optical components other than light deflectors. Kato ¶ 107. Compensating for “manufacturing errors” in optical components other than light deflectors constitutes another reason to modify Liu’s scanning systems according to Kato’s teachings. Hence, an ordinarily skilled artisan would have been motivated to modify Liu’s scanning systems according to Kato’s teachings to better focus a light beam on a target surface. See Final Act. 7. Among other things, a better-focused light beam improves the accuracy of a three-dimensional computer model produced by scanning a target object. See Liu ¶¶ 2–3, 22, 25–28, 41, 62, 124, 126. Appellant argues that the Examiner erred in rejecting claim 1 because combining Kato’s components with Liu’s components “renders Liu unsatisfactory for its intended purpose” and “destroys the purpose and intended function of Liu.” Appeal Br. 13–14. Specifically, Appellant asserts that Kato discloses “full-size components designed for printers and copy machines,” while Liu discloses a handheld scanner with miniature Appeal 2019-001594 Application 13/812,926 16 components. Id. at 13. In addition, Appellant contends that combining Kato’s full-size components with Liu’s miniature components “is not reasonable or even possible.” Id. Appellant’s arguments do not persuade us of Examiner error because “[c]ombining the teachings of references does not involve an ability to combine their specific structures.” See In re Nievelt, 482 F.2d 965, 968 (CCPA 1973) (emphasis by the court). Obviousness does not depend on “whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). Moreover, Appellant’s arguments overlook Liu’s disclosures about scaling a scanner up or down in size depending on its intended use. See Liu ¶¶ 3, 27. For example, Liu discloses using a scanner “to analyze the surface and three-dimensional shape of virtually any three-dimensional object, including work pieces and manufactured objects, art objects, archaeological artifacts, and large scale structures such as rooms and buildings.” Id. ¶ 3. By scaling a scanner up in size, “it can be used to make mathematical models of larger scale objects such as works of art, sculptures, archeological sites (e.g., the caves at Lascaux, France or the dwellings or kivas in Mesa Verde National Park), rooms or building facades.” Id. ¶ 27. By scaling a scanner down in size, “it can be hand-held and used to scan small objects, e.g., teeth or small machined parts.” Id. Consistent with Liu’s disclosures about scaling a scanner up or down in size depending on its intended use, Liu’s independent claims impose no size requirement on a scanner. Id. at 12–13 (claims 1 and 21). Hence, contrary to Appellant’s argument, combining Kato’s components with Liu’s components does not “render[] Appeal 2019-001594 Application 13/812,926 17 Liu unsatisfactory for its intended purpose” or “destroy[] the purpose and intended function of Liu.” See Appeal Br. 13–14. For the reasons discussed above, an ordinarily skilled artisan would have had sound reasons to combine Kato’s teachings with the teachings of the other references. See Final Act. 7; Kato ¶¶ 2, 26–35, 39, 78, 80–94, 107–115, Figs. 1–2. CLAIM 1: COMBINING THE TEACHINGS OF SPENCE WITH THE TEACHINGS OF THE OTHER REFERENCES Appellant argues that the Examiner erred in rejecting claim 1 because the Examiner’s reason to combine Spence’s teachings with Liu’s teachings “amounts to no more than a conclusory statement with no rational underpinning to support the legal conclusion of obviousness.” Appeal Br. 15. In particular, Appellant quotes the Examiner’s explanation that an ordinarily skilled artisan would have been motivated “to modify the device by Liu [(modified by Kato and Houki)] to add the teachings of Spence, in order to obtain and provide useful information about the beam to correct/calibration for distortions caused by the laser in a scanner.” Id. (quoting Final Act. 9 but omitting “(modified by Kato and Houki)” inserted above); see Final Act. 9 (citing Spence 2:16–29). Appellant then asserts that the Examiner “sets forth a reasoning that lacks any relevance whatsoever to Liu or to Appellant’s claims as neither are concerned at all with correcting for distortions caused by the laser in a scanner.” Appeal Br. 15 (emphasis by Appellant). Appellant’s arguments do not persuade us of Examiner error because, as discussed above, “the law does not require that the references be combined for the reasons contemplated by the inventor.” See Beattie, Appeal 2019-001594 Application 13/812,926 18 974 F.2d at 1312. As also discussed above, Spence’s stereolithography apparatus determines a beam profile and based on the beam profile may compensate for “drift” in the scanning system and correct optical aberrations or distortions. Spence 2:13–29, 2:52–3:2, 6:35–46, 10:11–18, Fig. 13. Appellant fails to identify evidence that Liu’s scanning systems are free of “drift” and optical aberrations or distortions. See Appeal Br. 12–15; Reply Br. 2–4, 9–10. In addition, Kato’s scanning systems suffer from optical aberrations or distortions, e.g., warping of a light deflector’s deflecting surface. See Kato ¶¶ 26–27, 32, 39, 107, 109. Thus, Appellant fails to refute the Examiner’s reason to combine Spence’s teachings with the teachings of the other references. Contrary to Appellant’s arguments, an ordinarily skilled artisan would have been motivated to modify Liu’s or Kato’s scanning systems according to Spence’s teachings to obtain the benefits disclosed in Spence, e.g., the ability to compensate for “drift” and correct optical aberrations or distortions. See Final Act. 9. Compensating for “drift” and correcting optical aberrations or distortions improves the ability to focus a light beam on a target surface. See Spence 2:13–29, 2:52–3:2. And as discussed above, a better-focused light beam improves the accuracy of a three-dimensional computer model produced by scanning a target object. See Liu ¶¶ 2–3, 22, 25–28, 41, 62, 124, 126. For the reasons discussed above, an ordinarily skilled artisan would have had sound reasons to combine Spence’s teachings with the teachings of the other references. See Final Act. 9; Spence 2:13–29, 2:52–3:2. Appeal 2019-001594 Application 13/812,926 19 SUMMARY FOR CLAIM 1 For the reasons discussed above, Appellant’s arguments have not persuaded us that the Examiner erred in rejecting claim 1 as unpatentable based on Liu, Kato, Houki, and Spence. In our view, the claimed subject matter exemplifies the principle that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Thus, we sustain the § 103(a) rejection of claim 1. DEPENDENT CLAIM 9 Claim 9 depends directly from claim 1 and specifies that “said actuator is configured and arranged to move at least one of said light source and said optical collimator transversally to the optical path.” Appeal Br. 18 (Claims App.). Appellant argues that the Examiner erred in rejecting claim 9 because Kato’s moving mechanism “adjust[s] the ‘distance’ between the laser and the collimator lens in a direction that is only along the optical axis, and therefore, does not teach or suggest moving ‘said light source and said optical collimator transversally to the optical path,’ as recited in claim 9.” Appeal Br. 16 (emphasis by Appellant) (citing Kato ¶¶ 82–84). We disagree that the Examiner errs in rejecting claim 9. As discussed above, Kato discloses methods for adjusting the position of the light source relative to the optical collimator in two directions: (1) a direction parallel to the optical axis for focus-state adjustments and (2) a direction perpendicular to the optical axis for irradiation-position adjustments. Kato ¶¶ 2, 28–35, 78, 81–94, 108–115; see Ans. 8. For example, Kato explains that the moving mechanism “adjusts the relative position between” a semiconductor laser and a collimator lens “in a direction perpendicular to the optical axis,” i.e., Appeal 2019-001594 Application 13/812,926 20 “in a direction perpendicular to the optical axis of the collimator lens.” Kato ¶¶ 114–115; see id. ¶¶ 34–35, 78. A “direction perpendicular to the optical axis” corresponds to a direction “transvers[e] to the optical path” as recited in claim 9. Thus, we sustain the § 103(a) rejection of claim 9. INDEPENDENT CLAIM 15 AND DEPENDENT CLAIMS 3, 8, AND 11 Appellant does not argue patentability separately for independent claim 15 or dependent claims 3, 8, and 11. See Appeal Br. 6–16; Reply Br. 2–11. Thus, we sustain the § 103(a) rejection of these claims for the same reasons as claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). The § 103(a) Rejections of Claims 4–7, 10, and 12–14 Claims 4–7, 10, and 12–14 depend directly or indirectly from claim 1. Appellant does not argue patentability separately for these dependent claims. See Appeal Br. 6–16; Reply Br. 2–11. Thus, we sustain the § 103(a) rejections of these dependent claims for the same reasons as claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). CONCLUSION We affirm the Examiner’s decision to reject claims 1 and 3–15. In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3, 8, 9, 11, 15 103(a) Liu, Kato, Houki, Spence 1, 3, 8, 9, 11, 15 4, 5 103(a) Liu, Kato, Houki, Spence, Jamieson 4, 5 6 103(a) Liu, Kato, Houki, Spence, Aoki 6 Appeal 2019-001594 Application 13/812,926 21 Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 7 103(a) Liu, Kato, Houki, Spence, Fisker 7 10 103(a) Liu, Kato, Houki, Spence, Takada 10 12 103(a) Liu, Kato, Houki, Spence, Svetkoff 12 13 103(a) Liu, Kato, Houki, Spence, Romanik 13 14 103(a) Liu, Kato, Houki, Spence, Romanik, Horie 14 Overall Outcome 1, 3–15 TIME PERIOD FOR RESPONSE 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)(iv). See 37 C.F.R. § 41.50(f). AFFIRMED Copy with citationCopy as parenthetical citation