Ex Parte Watanabe

Patent Trials and Appeals BoardMar 7, 2019

13816996 - (D) (P.T.A.B. Mar. 7, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/816,996 02/14/2013 513 7590 03/11/2019 WENDEROTH, LIND & PONACK, L.L.P. 1030 15th Street, N.W., Suite 400 East Washington, DC 20005-1503 FIRST NAMED INVENTOR Masao Watanabe 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 2013_0204a 1961 EXAMINER STAPLETON, ERIC S ART UNIT PAPER NUMBER 3761 NOTIFICATION DATE DELIVERY MODE 03/11/2019 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): eoa@wenderoth.com kmiller@wenderoth.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MASAO WAT AN ABE 1 Appeal2018-003289 Application 13/816,996 Technology Center 3700 Before KEVIN F. TURNER, JILL D. HILL, and JEFFREY A. STEPHENS, Administrative Patent Judges. HILL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Masao Watanabe ("Appellant") appeals under 35 U.S.C. Â§ 134(a) from the Examiner's final decision rejecting claims 1-7. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We AFFIRM. 1 Appellant identifies the real party in interest as Mitsubishi Heavy Industries, Ltd. Appeal Br. 1. Appeal2018-003289 Application 13/816,996 BACKGROUND Independent claims 1 and 5 are pending. Independent claim 1, reproduced below, illustrates the claimed invention. 1. A laser cutting device which cuts a processing item that is formed of metal while spraying oxygen gas which serves as an assist gas, the laser cutting device comprising: an emitting unit for emitting a laser beam for cutting the processing item that has a thickness of 10 to 50 mm to form a molten pool inside thereof when irradiated with a laser beam, whose wavelength is shorter than that of CO2 laser light; a collimating optical system for turning the laser beam emitted from the emitting unit into a collimated beam; and a focusing unit arranged coaxially with the collimating optical system, the focusing unit being configured to focus the laser beam turned into the collimated beam so that the laser beam emitted from the emitting unit has an elliptical cross- sectional shape and so that a long-axis direction of the ellipse is aligned with a direction in which cutting of the processing item progresses, wherein the laser beam power at a front side of the processing item in a cutting direction is consumed for melting a metal forming the processing item, and the laser beam power at a rear side of the processing item in the cutting direction is consumed for raising a temperature of a molten metal to cut the processing item. Appeal Br. 14 (Claims App.). REJECTIONS I. Claims 1 and 3-7 stand rejected under 35 U.S.C. Â§ I03(a) as unpatentable over Briand (US 2012/0154922 Al, pub. June 21, 2012) and Beyer (US 5,578,228, iss. Nov. 26, 1996). Final Act. 2. II. Claim 2 stands rejected under 35 U.S.C. Â§ 103(a) as unpatentable over Briand, Beyer, and Yue (US 2009/0194514 Al, pub. Aug. 6, 2009). Final Act. 4. 2 Appeal2018-003289 Application 13/816,996 ANALYSIS The Examiner finds, inter alia, that Briand discloses a laser cutting device and method as claimed, including (1) an emitting unit SL for cutting a part 10 having a thickness of 10 to 50 mm with a laser beam having a wavelength shorter than that of CO2 laser light, (2) a focusing lens 14, and (3) a collimating optical system 13, 15 for collimating and turning the laser beam emitted from the emitting unit SL into a collimated beam. Final Act. 2 (citing Briand Figs. 2, 3, ,r,r 2, 40, 45, 46, 69). The Examiner finds that, although Briand's focusing lens 14 is not arranged coaxially with its collimating optical system 13, 15 in its embodiment of Figure 3, Briand's Figure 2 discloses coaxial collimating and focusing systems. Id. at 3. According to the Examiner, Briand's mirror 15 "control[s] damage to optical elements" and "limit[ s] focus drift," but is "not required ... for proper focusing and collimating in order to achieve the necessary power density for cutting a part." Id. The Examiner concludes that it would have been obvious to modify the embodiment of Briand's Figure 3 "to remove the mirror and align the focusing lens and the collimating lens coaxially as shown in figure 2." Id. Rejection I Appellant argues claims 1 and 3-7 as a group.2 We select independent claim 1 as representative. Claims 3-7 stand or fall with claim I. See 37 C.F.R. Â§ 4I.37(c)(l)(iv). 2 Although Appellant addresses independent claim 5 under a separate heading, Appellant relies on the same arguments regarding claim 1 in refuting the rejection of claim 5. 3 Appeal2018-003289 Application 13/816,996 Combining Briand 's Figures 2 and 3 Appellant argues that the Examiner erred in concluding that it would have been obvious to modify the embodiment of Briand's Figure 3 to align the focusing lens and the collimating lens coaxially as shown in Briand's Figure 2. Appeal Br. 10 (referring to Final Act. 3); Reply Br. 2 ("There would have been no reason to modify the embodiment illustrated in Fig. 3 based on the 'typical' optical system shown in Fig. 2."). According to Appellant, removing the mirror of Briand's Figure 3 would eliminate an essential element of its laser beam focusing head, and the Examiner's proffered reason for removing the mirror is only supported by hindsight, and not the teachings of the prior art references. Appeal Br. 11. In the Reply Brief, Appellant contends that, because Briand's mirror 15 is an essential element, removal of the mirror "would have changed the principle of operation" of Briand. Reply Br. 2. Appellant, however, does not define the principle of operation of Briand, or explain why or how removal of Briand's mirror would change the principle. The Examiner disagrees, arguing that (1) Briand discloses both coaxially aligned focusing and collimating systems, and non-aligned focusing and collimating systems, such that a skilled artisan "would have been able to recognize both arrangements," and (2) Briand's disclosure of the "pros and cons of the arrangements of Fig. 2 and 3 would not have precluded one of ordinary skill in the art to recognize both arrangements." Ans. 3. The Examiner also argues that Briand's mirror 15 is not an essential element. Id. at 5. We are not persuaded that the Examiner's combination of Briand and Beyer contains error. Briand is prior art for all that it teaches, which 4 Appeal2018-003289 Application 13/816,996 includes both ( 1) coaxially aligned focusing and collimating systems (without a mirror), and (2) focusing and collimating systems that include a mirror and are not coaxially aligned. See Briand Figs. 2, 3; see Beckman Instruments v. LKB Produkter AB, 892 F.2d 1547, 1551 (Fed. Cir. 1989). Briand is directed to preventing focal drift caused by thermal gradients and thermal expansion of a focusing lens 1. See Briand Fig. 1, ,r 9. Focal drift is particularly relevant when cutting material having a thickness of "4 mm and higher." Id. ,r 12. Briand proposes two measures to prevent focal drift, and one measure to compensate for focal drift. Id. Focal drift prevention is accomplished by employing a zinc sulfide (ZnS) lens, and using lenses of larger dimensions. Id. ,r,r 18, 38, 39, 59, 74--84 (discussing Figs. 4 and 5 and concluding that employing ZnS and thicker lenses reduce focal drift). Focal drift is compensated for by employing a mirror to displace the focal point toward its correct location. Id. ,r,r 63-64. Nowhere does Briand state or imply that the mirror 15 is an essential element, or that reduction in focal drift using a thicker lens and/ or a ZnS lens must be accompanied by focal drift compensation with a mirror. We are not persuaded that a skilled artisan, considering the teachings of Briand in their entirety, would fail to understand that the "typical" optical cutting system of Figure 2 could be employed with a thicker lens and/or a ZnS lens to beneficially reduce or eliminate focal drift, without also employing a mirror. Combining Briand and Beyer The Examiner also finds that, although Briand does not disclose its laser beam having an elliptical cross-sectional shape, Beyer discloses a laser beam with an elliptical cross-sectional shape as claimed. Final Act. 3--4. The Examiner concludes that it would have been obvious to further modify 5 Appeal2018-003289 Application 13/816,996 Briand to have an elliptical beam cross section as taught by Beyer "to satisfactorily control melt expulsion." Id. at 4 ( citing Beyer 6: 1-7). The Examiner explains that Beyer' s elliptical beam has a longer axis in the cutting direction so that, when the intensity of the laser beam on workpiece (sheet 10) is reduced, the interaction surface in the direction of cutting the sheet is lengthened, which "stabilizes" cutting, because "plasma formation and melt expulsion can be more satisfactorily controlled." Ans. 7-8. The Examiner reasons that application of an elliptical beam would allow Briand's laser "to melt metal at its front and heat the molten metal at the back" because, as taught by Beyer, having a longer axis in the cutting direction enlarges the interaction surface of the laser. See id. at 8. We discern no error in the Examiner's reasoning. Beyer indeed discloses that lower beam intensity can be counteracted by a using an elliptical beam cross section that lengthens an interaction surface to provide reliable cutting. See Beyer 5:64---6:9. Although Beyer uses its lengthened interaction surface to cut faster, one skilled in the art would appreciate that the lengthened interaction surface would benefit Briand by providing more reliable cutting at Briand's target depth of 4 mm or more. Material Thickness In the Reply Brief, Appellant argues that claim 1 "requires at least an emitting unit that is suitable for cutting processing items having a thickness of 10 to 50 mm," and "[t]he examiner appears to suggest that the language describing the processing item [thickness] can be ignored." Reply Br. 3. This argument was not raised in the Appeal Brief, and good cause has not been shown for its consideration. See 37 C.F.R. Â§ 4I.41(b)(2) ("Any argument raised in the reply brief which was not raised in the appeal brief, or 6 Appeal2018-003289 Application 13/816,996 is not responsive to an argument raised in the examiner's answer ... , will not be considered by the Board ... , unless good cause is shown."). In addition, this argument is not persuasive. First, none of the claims require a laser beam that is "suitable for" cutting workpieces having the entire range of claimed thickness of 10 to 50 mm. Rather, the claims recite a laser beam "for cutting the processing item that has a thickness of 10 to 50 mm," which includes, for example, a laser beam for cutting a workpiece having a thickness of 30mm. Briand discloses a laser for cutting a workpiece that is 30 mm thick. Further, overlapping ranges can establish prima facie obviousness. See, e.g., In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). The claims recite a beam for cutting a workpiece having "a thickness of 10 to 50 mm." Briand is directed to cutting a workpiece having an overlapping thickness range of .1 mm to 30 mm. Briand ,r 71. Both Appellant and Briand seek to accurately cut a given thickness of material with a Y AG laser (having a wavelength shorter than that of CO2 laser light). Even if the claims required a laser that is suitable for cutting the entire claimed range of 10 - 50 mm, we are not persuaded that a skilled artisan would fail to understand that elongating Briand's laser beam to lengthen its interaction surface in the direction of cutting its workpiece would allow Briand's laser to cut a thicker workpiece, for example a workpiece having a thickness ofup to 50 mm. For these reasons, we sustain rejection I. Re} ection II Appellant makes no argument that claim 2 would be patentable over Briand, Beyer, and Yue if claim 1 is not patentable over Briand and Beyer. For the reasons explained above, we sustain Rejection II. 7 Appeal2018-003289 Application 13/816,996 DECISION We AFFIRM the rejection of claims 1 and 3-7 under 35 U.S.C. Â§ 103 as unpatentable over Briand and Beyer. We AFFIRM the rejection of claim 2 under 35 U.S.C. Â§ 103 as unpatentable over Briand, Beyer, and Yue. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). AFFIRMED 8