Ex Parte Deladurantaye et al

Patent Trial and Appeal BoardOct 19, 2012

11316568 (P.T.A.B. Oct. 19, 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. 11/316,568 12/21/2005 Pascal Deladurantaye 09680.0338US01 2178 23552 7590 10/19/2012 MERCHANT & GOULD PC P.O. BOX 2903 MINNEAPOLIS, MN 55402-0903 EXAMINER HAGAN, SEAN P ART UNIT PAPER NUMBER 2828 MAIL DATE DELIVERY MODE 10/19/2012 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 PASCAL DELADURANTAYE, YVES TAILLON, and ROBERT LAROSE Appeal 2010-006437 1 Application 11/316,568 Technology Center 2800 ____________________ Before JEAN R. HOMERE, CAROLYN D. THOMAS, and CARL W. WHITEHEAD JR, Administrative Patent Judges. HOMERE, Administrative Patent Judge. DECISION ON APPEAL 1 The real party in interest is INSTITUT NATIONAL D’OPTIQUE. (App. Br. 2.) Appeal 2010-006437 Application 11/316,568 2 I. STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1-8, 10-12, and 14-37. Claims 9 and 13 have been canceled. (App. Br. 4.) We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appellants’ Invention Appellants invented a system for processing a continuous beam (40) obtained from a pulsed laser light source (10) to thereby produce optical output pulses with a flexible shape. (Specification 1, ll. 4-6.) In particular, the system utilizes two cascaded modulators (32, 54), each being independently controlled by a separate pulse generator (34, 56), wherein the modulators are synchronized to help determine the shape of the output pulses as they pass therethrough. (Spec. 3, l. 26- spec. 4, l. 3, Fig. 2.) Illustrative Claim Independent claim 1 further illustrates the invention. It reads as follows: 1. A pulsed laser light source for outputting optical pulses having an adaptable pulse shape, comprising: a continuous wave laser light source generating a continuous light beam having spectral characteristics which determine spectral characteristics of the optical pulses; a first modulator and a first pulse generator connected to the first modulator for transmitting a first drive signal thereto, the first drive signal having controllable characteristics, the first modulator being disposed to receive the continuous light beam therethrough and temporally modulating the continuous light beam according to said first drive signal so as to generate said optical pulses; and Appeal 2010-006437 Application 11/316,568 3 a second modulator and a second pulse generator connected to the second modulator for transmitting a second drive signal thereto, the second drive signal having controllable characteristics, the second modulator being disposed to receive the optical pulses therethrough, the second drive signal opening the second modulator in at least a partial synchronization with said optical pulses thereat, said controllable characteristics of the first and second drive signal and said at least partial synchronization being controlled to determine the pulse shape of said optical pulses downstream of the second modulator. Prior Art Relied Upon Emmons, Jr. US 5,197,074 Mar. 23, 1993 Shichijyo US 5,809,048 Sep. 15, 1998 Waarts US 5,867,305 Feb. 2, 1999 Gu US 2004/0263949 A1 Dec. 30, 2004 Rejections on Appeal The Examiner rejects the claims on appeal as follows: 1. Claims 1-5, 8, 10, 11, 12, and 14-18 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Shichijyo and Emmons. 2. Claims 6, 7, 20, 21, and 22 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Shichijyo, Emmons, and Waarts. 3. Claims 19 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Shichijyo, Emmons, and Gu. Appeal 2010-006437 Application 11/316,568 4 4. Claims 23-29 and 37 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Shichijyo and Waarts. 5. Claims 30-36 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Shichijyo, Waarts and Emmons. ANALYSIS We consider Appellants’ arguments seriatim as they are presented in the Appeal Brief, pages 9-18. Representative Claim 1 Dispositive Issue: Have Appellants shown that the Examiner erred in finding that the combination of Shichijyo and Emmons teaches or suggests two modulators, each being coupled to a separate pulse generator, and the modulators being synchronized to determine the pulse shape of optical pulses passing therethrough, as recited in claim 1? Appellants argue that Emmons does not describe the disputed limitations emphasized above. (App. Br. 15.) In particular, Appellants argue that while Emmons discloses Q-switching to generate optical pulses, one of ordinary skill would not have been led to use a first and second modulators being synchronized therein to determine the shape of optical pulses. (Id.) Appeal 2010-006437 Application 11/316,568 5 In response, the Examiner finds that Emmons’ disclosure of first and second modulators coupled with separate generators teaches the disputed limitations. (Ans. 4.) Based upon our review of the record, we agree with the Examiner’s underlying factual findings and ultimate conclusion of obviousness regarding claim 1. Emmons discloses a laser system (70) including a light beam emitted by a light source (22) passes through a first modulator (74) coupled to a first pulse generator (36), and then passes through a second modulator (72) coupled to a second pulse generator (66). Emmons further discloses that upon exiting the second modulator, the trailing edge of the output pulse is refined. (Col. 7, ll. 12-31, ll. 65-68, Fig. 4.) We find that Emmons’ disclosure clearly teaches two modulators being separately coupled to a generator. We also find that because the output of the first modulator is fed as input to the second modulator to thereby refine the pulse trailing edge, Emmons teaches that the two modulators are synchronized to thereby achieve such result. That is, Emmons teaches that the modulators are synchronized to help shape the output of the pulses as they pass therethrough. Further, we note that even if the components in Emmons’ disclosed laser system did not perform the same functionalities as those recited in the claim, Appellants would be unable to distinguish the merits of the disputed limitations over Emmons’ based solely on the functional limitations of those elements. Our reviewing court has indicated that while features of an apparatus may be recited either structurally or functionally, claims directed Appeal 2010-006437 Application 11/316,568 6 to an apparatus must be distinguished from the prior art in terms of structure rather than function.” In re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997). We are therefore satisfied that the combination of Shichijyo and Emmons teaches the disputed limitations. It follows that Appellants have not shown that the Examiner erred in concluding that the proffered combination renders claim 1 unpatentable. Regarding claim 23, Appellants argue that Emmons does not disclose two separate stages, each containing a separate modulator coupled with a generator. (App. Br. 16-17.) This argument is unavailing. As discussed above, we find that the two modulators and respective generators coupled thereto as disclosed by Emmons teaches or suggests two separate stages that are synchronized to refine the shape of a pulse passing therethrough. As further discussed above, Appellants’ reliance upon the functionality of these stages to distinguish the cited laser system over Emmons is not persuasive. It follows that Appellants have not shown error in the Examiner’s rejection of claim 23. Claims 2-5, 8, 10-12, 14-18, 24-29, and 37 (not argued separately) fall with claims 1 and/or 23. See 37 C.F.R. § 41.37(c)(1)(vii). Regarding claims 6, 7, 19-22, and 30-36, Appellants reiterate substantially the same arguments presented above for patentability of claims 1 and/or 23. (App. Br. 17-18.) As discussed above, these arguments are not persuasive. Further, Appellants argue that the additional references relied upon do not cure the noted deficiencies. (Id.) We find no such deficiencies Appeal 2010-006437 Application 11/316,568 7 in the proffered combination. Therefore, Appellants have not shown error in the Examiner’s rejection of those claims. DECISION We affirm the Examiner’s rejections of claims 1-8, 10-12, and 14-37 as set forth above. 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 ELD