Ex Parte Ridderbusch

Patent Trial and Appeal BoardMay 23, 2014

12227748 (P.T.A.B. May. 23, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte HEIKO RIDDERBUSCH ____________ Appeal 2012-004913 Application 12/227,748 Technology Center 2800 ____________ Before BRADLEY R. GARRIS, MARK NAGUMO, and KAREN M. HASTINGS, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge HASTINGS. Opinion Dissenting filed by Administrative Patent Judge NAGUMO. HASTINGS, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-004913 Application 12/227,748 2 Appellant appeals under 35 U.S.C. § 134 from the Examiner’s rejections under 35 U.S.C. § 103(a) of claims 10-16 and 18 as obvious over the combined prior art of Spariosu1 and Wright,2 and of claim 17 as obvious over the combined prior art of Spariosu, Wright, and Early.3 We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). Independent claim 10 is representative of the claimed invention: 10. A laser device having a cavity which has a first laser-active region and at least one second laser-active region having a passive Q-switch, the laser device including mirrors bounding the cavity, the first laser-active region adapted to emit light of a first wavelength as a result of having pumping light applied to it, for which the cavity is a resonator, the second laser-active region having the passive Q-switch, adapted to emit light of a second wavelength as a result of an application of light of the first wavelength, the same cavity bounded by the same mirrors also being a resonator for the light of the second wavelength; wherein the cavity bounded by the mirrors and having the first laser- active region and the at least one second laser-active region is configured as an integrated unit. Independent claim 18 recites a method using a laser device corresponding to that of claim 10, and independent claim 17 recites an ignition device comprising a laser device corresponding to that of claim 10. Appellant relies upon the same arguments for each independent claim (App. Br. 4-7). 1 Spariosu et al., Dual Q switching and laser action at 1.06 and 1.44 μm in a Nd3+ :YAG-Cr4+ :YAG oscillator at 300 K, 18 OPTICS LETTERS 814-816 (1993). 2 Wright et al., US 6,314,116 B1, patented Nov. 6, 2001. 3 Early et al., US 6,382,957 B1, patented May 7, 2002. Appeal 2012-004913 Application 12/227,748 3 ANALYSIS Upon consideration of the evidence on this record and each of Appellant’s contentions, we find that the preponderance of evidence on this record supports the Examiner’s conclusion that the subject matter of Appellant’s independent claims 10, 17, and 18 is unpatentable over the applied prior art. We sustain the above rejections essentially for the reasons expressed by the Examiner in the Answer. We add the following for emphasis. It is well established that if a technique has been used to improve one device or composition, and a person of ordinary skill in the art would recognize that it would improve similar devices or compositions in the same way, using the technique is obvious unless its actual application is beyond that person’s skill. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Appellant has not adduced any persuasive technical reasoning or evidence in response to the Examiner’s reasonable determination that the use of a single cavity bounded by one set of mirrors as a resonator for multiple wavelengths as exemplified in Wright will likewise improve the laser device of Spariosu “by allowing the establishment of a resonator with a reduced number of required mirrors” (Ans. 5; generally App. Br; Reply Br.). “Obviousness does not require absolute predictability of success . . . all that is required is a reasonable expectation of success.” In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009) (emphasis omitted) (citing In re O’Farrell, 853 F.2d 894, 903-04 (Fed. Cir. 1988)). Appellant’s main argument is not directed to the combined teachings of the prior art, but rather focuses on each reference of Spariosu and Wright individually (App. Br. 4-6). According to Appellant, the integration of a Appeal 2012-004913 Application 12/227,748 4 one-piece embodiment was not known in the art because “as described in Spariosu et al. for example, the passive Q-switched solid lasers were always implemented using components that were set apart.” (App. Br. 5.) However, as pointed out by the Examiner, Wright exemplifies that a single cavity may be designed to contain a plurality of wavelengths and thus provide the benefit of reducing the number of required mirrors (e.g., Ans. 11). As further stated by the Examiner, Spariosu teaches the use of two lasers generating two wavelengths in two overlapping cavities, and since Wright teaches that the support of two wavelengths may be accomplished within a single cavity, use of a single cavity for the two wavelengths of Spariosu would have been prima facie obvious (id.; see also Ans. 13). See In re Keller, 642 F.2d 413, 425-26 (CCPA 1981) (“The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference . . . . Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art.”); see also In re Merck & Co., Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986) (“Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references”); In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not necessary that the inventions of the references be physically combinable to render obvious the invention under review”). We note that Appellant presented arguments for the first time in the Reply Brief filed January 14, 2012, stating that Wright’s coarse selector (that is, mirrors 304) provides a single wavelength operation and that the gain medium is efficient at single wavelength generation (Reply Br. 4). It is Appeal 2012-004913 Application 12/227,748 5 inappropriate for Appellant to discuss for the first time in the Reply Brief matters that could have been raised in the Appeal Brief. As the Board has stated, “[t]he failure to raise all issues and arguments diligently, in a timely fashion, has consequences,” and thus, such newly-raised arguments are technically waived. Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative decision) (“[The reply brief [is not] an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner’s rejections, but were not.”). In any event, Appellant’s newly raised arguments are not persuasive of error in the Examiner’s rejection, since they fail to completely address the prior art as a whole; Wright explicitly discloses that their laser system may have a “single resonator” used for simultaneous multiple desired wavelengths (see, e.g., Title; Abstract). The decision of the Examiner 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). AFFIRMED cdc Appeal 2012-004913 Application 12/227,748 1 NAGUMO, Administrative Patent Judge, dissenting. I respectfully dissent. In my judgment, the evidence cited by the Examiner is not sufficient to establish a prima facie case of obviousness, particularly in balance with Spariosu, the most detailed cited evidence of record relevant to the nature and state of the art at the time of invention. Spariosu reports, in a 1993 article published in Optics Letters, a refereed journal published by the Optical Society of America, “to our knowledge the first time that the same Cr4+-doped crystal has provided the dual functions of a Q switch and a laser.” (Spariosu 814, 1st col., 2d para.) This paper appears to report a noteworthy advance in a highly sophisticated technical field. The Examiner cites but a single passage in Wright describing FIGS. 4A-B, which, in the words of Wright, describe the “operation of the fine selector in a full-color operation.” (Wright, col. 6, ll. 10-11.) The fine selector, according to Wright, may be a thin film coating or an etalon.4 (Id. at ll. 41-42.) At most, the passage cited by the Examiner provides a teaching, familiar to the art, that more than one wavelength may be resonant in a laser cavity. Indeed, the Examiner relies on this passage of Wright for no more than this teaching, which is also apparent from the Title5 and the Abstract of Wright, cited by the Majority, supra at 5. I find this generic teaching entitled to scant weight compared to the specific teachings of 4 An etalon is a thin sheet of glass with parallel faces that acts as an interferometer and allows passage of only certain wavelengths of light. 5 David L. Wright et al., U.S. Patent 6,314,116 B1, Single resonator for simultaneous multiple single-frequency wavelengths (filed 7 July 1998). Appeal 2012-004913 Application 12/227,748 2 Spariosu, which support Appellant’s argument that the modification of laser designs and the swapping of one lasing medium for another “would not be [sic: have been] obvious or routine to one of ordinary skill in the art.” (Br. 6, 1st full para.)6 As further support for the conclusion of obviousness, the Examiner takes “Official Notice” [without designating the finding as such] that “the ability to integrate mirrors and solid crystals within an assembly was well within the skill of one or ordinary skill in the art.” (Ans. 14, 2d para.) As our reviewing court explained long ago, Official Notice of such a fact is inappropriate. In re Ahlert, 424 F.2d 1088, 1091 (CCPA 1970) (“Assertions of technical facts in areas of esoteric technology must always be supported by citation to some reference work recognized as standard in the pertinent art . . . . Allegations concerning specific ‘knowledge’ of the prior art, which might be peculiar to a particular art should also be supported . . . .”) The Examiner’s Notice is not entitled to evidentiary weight. The Examiner also cites a Supreme Court case from 1893 regarding the shapes of certain elements of heating stoves as support for the “obviousness” of integrating elements, and a 1945 case in which the Court held a heat-dryable printing ink unpatentable for lack of invention, as support for the obviousness of the selection of a thing known for its suitability for its intended use. Because the Examiner has not established the underlying foundational fact that, at the time of the invention, those skilled 6 It may be noted that Appellant did not cite Spariosu as support. However, both the Examiner and Appellant cite Spariosu and discuss its teachings in modest detail. Appeal 2012-004913 Application 12/227,748 3 in the art regarded the equivalence of various lasing media and laser cavity designs as routinely interchangeable, the legal conclusion of obviousness is without merit. Both the Examiner and the Appellant may be faulted for failing to support their arguments with credible evidence at various points, and, at various points, for failing to report the teachings of the references in context. However, based on the present record as discussed by the Examiner and the Appellant, I would reverse.