Ex Parte Claudet

Patent Trial and Appeal BoardNov 30, 2012

11086201 (P.T.A.B. Nov. 30, 2012)

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. 11/086,201 03/21/2005 Andre Claudet IL-11347 3817 24981 7590 12/03/2012 Lawrence Livermore National Security, LLC LAWRENCE LIVERMORE NATIONAL LABORATORY PO BOX 808, L-703 LIVERMORE, CA 94551-0808 EXAMINER ELVE, MARIA ALEXANDRA ART UNIT PAPER NUMBER 3721 MAIL DATE DELIVERY MODE 12/03/2012 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 ANDRE CLAUDET ____________ Appeal 2010-000548 Application 11/086,201 Technology Center 3700 ____________ Before JOHN C. KERINS, ANNETTE R. REIMERS and TIMOTHY J. O’HEARN, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-000548 Application 11/086,201 2 STATEMENT OF THE CASE Andre Claudet (Appellant) seeks our review under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 1, 2, 4-6, 8 and 9. Claims 3 and 7 are canceled. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. THE INVENTION Appellant’s claimed invention is to an apparatus for laser peening a workpiece. Claim 1, reproduced below, is illustrative: 1. An apparatus for laser peening a workpiece using a multiplicity of data points of the workpiece, comprising: a laser that produces a laser beam for laser peening the workpiece, a laser beam control system operatively connected to said laser, a world coordinate frame, a workpiece holder, a robot operatively connected to said world coordinate frame at a fixed point relative to said world coordinate frame and operatively connected to said workpiece holder, a calibration tool operatively connected to said robot for determining the multiplicity of data points of the workpiece, and a computer for storing the multiplicity of data points of the workpiece and for instructing said robot and said laser, said computer operatively Appeal 2010-000548 Application 11/086,201 3 connected to said robot and said laser for moving said laser beam on the workpiece for laser peening the workpiece. THE REJECTIONS The Examiner has rejected: (i) claims 1 and 8 under 35 U.S.C. § 103(a) as being unpatentable over Roos (US 6,615,112 B1, issued. Sep. 2, 2003) in view of Clauer (US 2003/0217997 A1, published Nov. 27, 2003); (ii) claims 1 and 8 under 35 U.S.C. § 103(a) as being unpatentable over Tang (US 2003/0167103 A1, published Sep. 4, 2003) in view of Clauer; (iii) claims 2, 4-6 and 9 under 35 U.S.C. § 103(a) as being unpatentable over Roos in view of Clauer and Knoll (US 6,529,852 B2, issued Mar. 4, 2003); and (i) claims 2, 4-6 and 9 under 35 U.S.C. § 103(a) as being unpatentable over Tang in view of Clauer and Knoll. ANALYSIS Claims 1 and 8--Obviousness--Roos/Clauer The Examiner presents findings evidencing that Roos discloses all elements of claims 1 and 8, with the exception of a laser peening apparatus or step of laser peening. Ans. 3-6. Citing to the Clauer teaching of an automated laser peening apparatus and process, the Examiner concludes that it would have been obvious to use the Roos apparatus to perform laser peening as a type of robotic processing that Roos was designed to perform. Ans. 7. Appeal 2010-000548 Application 11/086,201 4 Appellant first argues that the Roos and Clauer references fail to disclose all limitations in claims 1 and 8. Appeal Br. 19-21; Reply Br. 2-5. Appellant, however, merely restates the claim limitations and nakedly asserts that the references do not disclose those limitations. Appellant makes no attempt to point out where the Examiner’s findings relative to the presence of those elements in the prior art or in the combination of the teachings of the prior art are deficient. Such arguments are insufficient to apprise us of error in the rejection. In re Lovin, 652 F.3d 1349 (Fed. Cir. 2011) (“we hold that the Board reasonably interpreted Rule 41.37 to require more substantive arguments in an appeal brief than a mere recitation of the claim elements and naked assertion that the corresponding elements were not found in the prior art.”). Appellant next maintains that there would be no reasonable expectation of success with the proposed combination of Roos and Clauer. Appeal Br. 21; Reply Br. 5-6. Appellant bases this position on the same basis as above, namely the alleged lack of disclosure of certain claim elements in the references. As above, this argument does not apprise us of error in the Examiner’s position. Appellant further maintains that the Examiner has not provided an explanation as to how or why the Roos and Clauer teachings would be combined, and that those references do not recognize the problem solved by Appellant’s claimed invention. Appeal Br. 22. However, “[i]n determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007). Similarly, Appellant argues that the Examiner has not provided valid Appeal 2010-000548 Application 11/086,201 5 reasons for the proposed combination, and bases this assertion on the alleged failure of Roos and Clauer in disclosing particular claim limitations. Reply Br. 7. In addition to again merely reciting claim elements, Appellant asserts that Roos “only discloses ‘calibration’ of robots”, and does not disclose a laser peening apparatus or method that uses a multiplicity of data points of a workpiece. Reply Br. 7-8. With respect to the arguments that merely restate claim limitations, the arguments are insufficient to show error in the Examiner’s position. With respect to the latter argument, while Roos is directed to calibration of robots, the robots are also disclosed as performing functions relating to a workpiece, such as measuring the workpiece, in conjunction with other processing or manufacturing operations. See Roos, col. 4, ll. 32-41. As such, we are not persuaded that the Examiner failed to provide an articulated reason to combine the teachings of the references that is supported by rational underpinnings. The rejection of claims 1 and 8 as unpatentable over Roos and Clauer is sustained. Claims 1 and 8--Obviousness--Tang/Clauer The Examiner presents findings evidencing that Tang discloses all elements of claims 1 and 8, with the exception of a laser peening apparatus or step of laser peening. Ans. 7-9. Citing to the Clauer teaching of an automated laser peening apparatus and process, the Examiner concludes that it would have been obvious to use the Tang apparatus to perform laser peening as a type of robotic processing that Tang was designed to perform. Ans. 9-10. Further elaboration as to the Examiner’s position regarding the combined teachings is provided in the Response to Argument section of the Examiner’s Answer. Ans. 14-15. Appeal 2010-000548 Application 11/086,201 6 Appellant makes similar arguments in opposition to this rejection as were made with respect to the rejection in view of Roos and Clauer. Appeal Br. 25-27; Reply Br. 8-14. The arguments which merely restate the claim limitations and nakedly assert that the references do not disclose those limitations, without attempting to point out where the Examiner’s findings relative to the presence of those elements in the prior art or in the combination of the teachings of the prior art are deficient, are insufficient to apprise us of error in the rejection. In re Lovin, 652 F.3d 1349. The same is true of the argument that there would be no reasonable expectation of success in combining the references, which, too, is based upon naked assertions that certain claim limitations are not disclosed in the Tang and Clauer references. Appellant argues that the Examiner has not provided valid reasons for the proposed combination, and bases this assertion on the alleged failure of Roos and Clauer in disclosing particular claim limitations. Reply Br. 13. In addition to again merely reciting claim elements, Appellant asserts that Tang “only discloses ‘calibrating the orientation of a robot spindle’”, and does not disclose a laser peening apparatus or method that uses a multiplicity of data points of a workpiece. Reply Br. 14. With respect to the arguments that merely restate claim limitations, the arguments are insufficient to show error in the Examiner’s position. With respect to the latter argument, while Tang does disclose calibration of the orientation of a robot spindle, the robot is also disclosed as performing cutting, drilling, or other machining operations on a workpiece. Tang, p. 1, para. [0003]; p. 2, para. [0017]. As such, we are not persuaded that the Examiner failed to provide an articulated reason to combine the teachings of the references that is supported by rational Appeal 2010-000548 Application 11/086,201 7 underpinnings. The rejection of claims 1 and 8 as unpatentable over Tang and Clauer is sustained. Claims 2, 4-6 and 9--Obviousness--Roos/Clauer/Knoll The Examiner relies on Roos and Clauer as above, and further cites to Knoll as disclosing the limitations set forth in claims 2, 4-6 and 9. Ans. 10- 11. The Examiner concludes that it would have been obvious to further modify the apparatus and method obtained through the combination of the teachings of Roos and Clauer to include the elements set forth in those claims, because those elements are either standard components of a robot hand or would be useful in determining positioning. Ans. 11. Appellant’s arguments in opposition to this rejection again mainly devolve to essentially naked assertions that the references do not disclose the claim limitations, without attempting to point out where the Examiner’s findings relative to the presence of those elements in the prior art or in the combination of the teachings of the prior art are deficient. Appeal Br. 30- 33; Reply Br. 15-19. Such arguments are, again, insufficient to apprise us of error in the rejection. In re Lovin, 652 F.3d 1349. The same is true of the argument that there would be no reasonable expectation of success in combining the references, which, too, is based upon naked assertions that certain claim limitations are not disclosed in the Roos, Clauer and Knoll references. The rejection of claims 2, 4-6 and 9 as being unpatentable over Roos, Clauer and Knoll is sustained. Claims 2, 4-6 and 9--Obviousness--Tang/Clauer/Knoll The Examiner relies on Tang and Clauer as above, and further cites to Appeal 2010-000548 Application 11/086,201 8 Knoll as disclosing the use of a trigger probe. Ans. 11-12. The Examiner concludes that it would have been obvious to further modify the apparatus and method obtained through the combination of the teachings of Roos and Clauer to include a trigger probe, because that element would be useful in determining positioning. Ans. 12. Appellant’s arguments in opposition to this rejection again mainly devolve to essentially naked assertions that the references do not disclose the claim limitations, without attempting to point out where the Examiner’s findings relative to the presence of those elements in the prior art or in the combination of the teachings of the prior art are deficient. Appeal Br. 34- 36; Reply Br. 19-24. Such arguments are, again, insufficient to apprise us of error in the rejection. In re Lovin, 652 F.3d 1349. The same is true of the argument that there would be no reasonable expectation of success in combining the references, which, too, is based upon naked assertions that certain claim limitations are not disclosed in the Tang and Clauer references. The rejection of claims 2, 4-6 and 9 as being unpatentable over Tang, Clauer and Knoll is sustained. CONCLUSIONS Appellant has not persuaded us that the Examiner erred in concluding that the subject matter of claims 1 and 8 would have been obvious over Roos and Clauer, or over Tang and Clauer. Appellant has not persuaded us that the Examiner erred in concluding that the subject matter of claims 2, 4-6 and 9 would have been obvious over Roos, Clauer and Knoll, or over Tang, Clauer and Knoll. Appeal 2010-000548 Application 11/086,201 9 DECISION The decision of the Examiner to reject claims 1, 2, 4-6, 8 and 9 under 35 U.S.C. § 103(a) is AFFIRMED. 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). AFFIRMED mls