Decoster, Yves

Patent Trials and Appeals Board

Aug 7, 2020

13812926 - (D) (P.T.A.B. Aug. 7, 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.
13/812,926 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.
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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.
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(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
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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
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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.
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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
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[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
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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
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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
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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;
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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
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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
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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.
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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.
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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
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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[]
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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,
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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.
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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.,
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“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
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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