Shamgar Elijah. Mcdowell et al.

Patent Trials and Appeals BoardAug 26, 2019

14592217 - (D) (P.T.A.B. Aug. 26, 2019)

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. 14/592,217 01/08/2015 Shamgar Elijah McDowell 277940-1/GEC-995 3427 87853 7590 08/26/2019 Dority & Manning, PA and General Electric Company Post Office Box 1449 Greenville, SC 29602 EXAMINER LIU, CHRIS Q ART UNIT PAPER NUMBER 3761 NOTIFICATION DATE DELIVERY MODE 08/26/2019 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): usdocketing@dority-manning.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte SHAMGAR ELIJAH MCDOWELL, ZHAOLI HU, ABE DENIS DARLING, and DOUGLAS ANTHONY SERIENO1 ____________ Appeal 2019-001301 Application 14/592,217 Technology Center 3700 ____________ Before JAMES P. CALVE, WILLIAM A. CAPP, and MICHAEL L. WOODS, Administrative Patent Judges. WOODS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Shamgar Elijah et al. (“Appellants”) appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1–7, 9–15, 18, 19, 21, 22, 24 and 25. Appeal Br. 5. We have jurisdiction over this appeal under 35 U.S.C. § 6(b). SUMMARY OF THE DECISION We AFFIRM-IN-PART. 1 According to Appellants, the real party in interest is General Electric Company. Appeal Br. 1. Appeal 2019-001301 Application 14/592,217 2 CLAIMED SUBJECT MATTER Appellants’ invention relates to a method and system for drilling holes. Spec. ¶ 1 (Field of the Invention). Claims 1, 15, and 21 are the independent claims. Appeal Br. 28–15 (Claims Appendix). We reproduce claim 15 below, adding emphasis to limitations discussed in this Decision. 15. A system for drilling a hole in a near wall of a component, the system comprising: a confined laser drill utilizing a confined laser beam defining a beam axis, the confined laser drill configured to drill the hole through a metal portion of the near wall of the component, the near wall positioned adjacent to a cavity defined by the component; a sensor positioned to sense a characteristic of light directed along the beam axis away from the near wall of the component, the characteristic of light being a characteristic of light reflected as a result of the directing of the confined laser beam towards the near wall; and a controller operably connected to the sensor, the controller configured to determine one or more operational conditions based on the characteristic of light sensed with the sensor, the one or more operational conditions including a depth of the hole being drilled through the metal portion of the near wall of the component by the confined laser drill prior to the confined laser drill breaking through the metal portion of the near wall of the component, the depth being greater than zero and less than a depth of the near wall of the component. Id. at 30–31 (emphasis added). Appeal 2019-001301 Application 14/592,217 3 THE REJECTIONS The Examiner rejected: (a) Claim 12 under 35 U.S.C. § 112(b) (or § 112, ¶ 2, pre-AIA) as being indefinite. Final Act. 2. (b) Claims 1–4, 9–15, and 18 under 35 U.S.C. § 103(a) as unpatentable over Chen (US 6,172,331 B1, issued Jan. 9, 2001) and Quitter (US 2011/0180521 A1, published July 28, 2011). Final Act. 4. (c) Claims 5 and 19 under 35 U.S.C. § 103(a) as unpatentable over Chen, Quitter, and Griffiths (US 2007/0106416 A1, published May 10, 2007). Final Act. 13. (d) Claims 6 and 25 under 35 U.S.C. § 103(a) as unpatentable over Chen, Quitter, Griffiths, and Clyde (US 5,286,947, issued Feb. 15, 1994). Final Act. 15. (e) Claim 7 under 35 U.S.C. § 103(a) as unpatentable over Chen, Quitter, Griffiths, and Kasner (US 4,789,770, issued Dec. 6, 1988). Final Act. 17. (f) Claim 21 under 35 U.S.C. § 103(a) as unpatentable over Chen and Kasner. Final Act. 19. (g) Claim 22 under 35 U.S.C. § 103(a) as unpatentable over Chen, Kasner, and Griffiths. Final Act. 21. (h) Claim 24 under 35 U.S.C. § 103(a) as unpatentable over Chen, Quitter, and Merdan (US 2004/0004061 A1, published Jan. 8, 2004). Final Act. 22. Appeal 2019-001301 Application 14/592,217 4 ANALYSIS I. Rejection (a): Claim 12 Rejected as Indefinite The Examiner rejects dependent claim 12 for reciting “the airfoil,” citing the lack of antecedent basis for the term. Final Act. 2. Appellants do not contest this rejection. See Appeal Br. Absent any identification of examiner error, we affirm the rejection of claim 12 as indefinite. See 37 C.F.R. § 41.37(c)(1)(iv) (“The arguments [in the appeal brief] “shall explain why the examiner erred as to each ground of rejection contected by appellant.”). II. Rejections (b), (c), (d), (e), and (h): Claims 1–7, 9–15, 18, 19, 24, and 25 Rejected as Unpatentable over Chen, Quitter, and other Art A. Examiner’s Rejection (b) In rejecting claims 1–4, 9–15, and 18 as unpatentable over Chen and Quitter, the Examiner relies on Chen for disclosing several of the claimed limitations. See Final Act. 4–5. In support of these findings, the Examiner submits an annotated version of Chen’s Figure 1, which we reproduce, below: Appeal 2019-001301 Application 14/592,217 5 According to the Examiner, Chen’s annotated Figure 1 depicts a system for drilling a hole comprising a confined laser drill configured to direct a laser beam (LB) towards a metal portion of the near wall (NW) of a component (200). Id. at 4. The Examiner relies on Chen’s camera 180 for satisfying the claimed “sensor.” See Adv. Act. (“See the Fig. 1 of Chen, camera 180 senses the characteristic of light reflected”). As to the claimed “sensor positioned to sense . . . a characteristic of light reflected as a result of the directing of the confined laser beam towards the near wall,” the Examiner cites to Chen’s disclosure that “[t]he camera 180 is typically configured to monitor the reflected light from the hole 202 being drilled in the target 200.” Chen, col. 6, ll. 13–15; see also Final Act. 5 (citing Chen, Fig. 1, ll. 13–15). The Examiner acknowledges, however, that Chen does not disclose the claimed “controller configured to determine one or more operational conditions based on the characteristic of light sensed with the sensor . . . including a depth of the hole being drilled.” See Final Act. 11–12. To address this limitation, the Examiner relies on Quitter. Id. (citing Quitter ¶ 15). Quitter discloses, in relevant part, “DAQ 20 determines machining parameters such as feature depth and the degree of breakthrough based on the reflected intensity and the focus position.” Quitter ¶ 15. In combining Chen with Quitter, the Examiner reasons, It would have been obvious to someone with ordinary skill in the art at the time the invention was made to modify the method for drilling a hole of Chen with the function of determining a depth of the hole being drilled as taught by Quitter, in order to precisely controlled in order to form detailed features with reduced heating of the surrounding Appeal 2019-001301 Application 14/592,217 6 workpiece and provide precision manufacturing work and prevent the processing component to be damaged. Final Act. 6 (bold emphasis omitted, italicized emphasis added). B. Appellants’ Argument Appellants contend that neither Chen nor Quitter teaches determining the depth of the hole with light reflected from the confined laser beam. Appeal Br. 7 (citations omitted). We agree. C. Analysis We are not persuaded that a person having ordinary skill in the art would have modified Chen based on Quitter’s teaching, as the Examiner has done. See Final Act. 6. Our reviewing court has cautioned us from succumbing to hindsight bias if a proposed combination would run contrary to the stated purpose of one of the references. See Polaris Indus., Inc. v. Arctic Cat, Inc., 882 F.3d 1056, 1069 (Fed. Cir. 2018). Additionally, even if a reference does not teach away, its statements regarding preferences are relevant to a finding regarding whether a skilled artisan would have been motivated to combine that reference with another reference. See Apple Inc. v. Samsung Elecs. Co., 839 F.3d 1034, 1051 n.15 (Fed. Cir. 2016) (en banc) (noting that, even if a reference “does not teach away, its statements regarding users preferring other forms of switches are relevant to a finding regarding whether a skilled artisan would be motivated to combine the slider toggle in” that reference with the invention of a second reference). Appeal 2019-001301 Application 14/592,217 7 In the present case, and as found correctly by the Examiner, Chen discloses a single laser beam for drilling a hole (“Drilling Laser”). See Final Act. 4 (citing Chen Fig. 1, col. 2, ll. 48–49). The Examiner also correctly found that Chen discloses a camera 180—the claimed sensor—for sensing the light reflected from the Drilling Laser. See id. at 5 (citing Chen, col. 6, ll. 13–22). Quitter, on the other hand, discloses two lasers: one laser for drilling holes and a second, lower intensity laser for measuring the depth of the drilled hole. In particular, Quitter discloses [0014] Working laser 14 and sensing laser 18 generate separate working and sensing (or sampling) beams, each with different wavelengths. . . . Working laser 14 ablates material from workpiece 11 to create features 12, and sensing laser 18 reflects from workpiece 11 to create a reflected sensing beam. [0015] Motion stage 21 translates iris 44 along the reflected beam to locate a focus position between pinhole lens 42 and final focus lens 46, using an active feedback system to maximize the reflected intensity at photodetector 48. DAQ 20 determines machining parameters such as feature depth and the degree of breakthrough based on the reflected intensity and the focus position, and laser/CNC controller controls working laser 14 based on the machining parameters. . . . . [0024] In addition, sensing laser 18 operates at lower intensity than working laser 14, such that sensing laser 18 does not substantially heat or ablate workpiece 11, and such that the intensity of the reflected sensing beam falls within the dynamic range of photodetector 48. Chen ¶¶ 4, 15, 24 (emphases added). Appeal 2019-001301 Application 14/592,217 8 Importantly, Chen discloses a working laser that ablates material and a separate sensing laser that creates a reflected sensing beam. Id. ¶¶ 4, 15. The sensing laser operates at a lower intensity and is used to determine machining properties, such as depth. Id. ¶¶ 15, 23. Chen does not disclose that its working beam is used for determining depth. The Examiner’s combination proposes to use the reflected light from Chen’s Drilling Laser to determine the depth of the hole with its camera. See Final Act. 4. However, we are not persuaded that a skilled artisan would have used the reflected light from Chen’s Drilling Laser to measure the depth of the hole as it is being drilled. Id. Nothing in Quitter teaches using the reflected light from its working/drilling laser to measure the depth of the hole as it is being drilled. Furthermore, we are not persuaded that such a modification—using a drilling laser to measure hole depth—“involves only routine skill,” as the Examiner contends. See Ans. 30. Indeed, Quitter discloses two lasers—one for drilling and one for sensing depth—and we are not persuaded that the light reflected from Chen’s Drilling Laser could be used to measure the depth of the hole as it’s being drilled. A sensing laser is not the same as a working laser, and Quitter discloses that its sensing laser operates at a lower intensity than the working laser so that the reflection from the sensing laser falls within a range of the sensor. Quitter ¶ 25. Although Chen discloses a camera that monitors the reflected light from the hole being drilled, Chen describes the camera as detecting “a sudden drop in reflected energy . . . [once] the beam enters the interior of the target.” Chen col. 6, ll. 13–21. In other words, nothing in Chen discloses that the camera is capable of sensing the reflected light from the ablation Appeal 2019-001301 Application 14/592,217 9 laser to measure depth of the hole as it is being drilled, only that its camera can detect the “sudden drop” in light after the hole has been drilled and the laser “beam enters the interior of the target.” Id. Accordingly, we do not sustain the rejection of claims 1–4, 9–15, and 18 as unpatentable over Chen and Quitter. D. Rejections (c), (d), (e), and (h) We also reverse the following rejections: Rejection (c), the rejection of claims 5 and 19 over Chen, Quitter, and Griffiths; Rejection (d), the rejection of claims 6 and 25 over Chen, Quitter, Griffiths, and Clyde; Rejection (e), the rejection of claim 7 over Chen, Quitter, Griffiths, and Kasner; and Rejection (h), the rejection of claim 24 as unpatentable over Chen, Quitter, and Merdan. These rejections rely on the same unsupportable combination of Chen and Quitters discussed above. App. Br. 13–19, 22–23. For the same reasons we reverse Rejection (b), we also reverse Rejections (c), (d), (e), and (h). III. Rejections (f) and (g): Claim 21 as Unpatentable Over Chen and Kasner and Claim 22 as Unpatentable over Chen, Kasner, and Griffiths A. Examiner’s Rejection Unlike Rejections (b), (c), (d), (e), and (h), the Examiner does not rely on Quitter under Rejections (f) and (g). See supra p. 3. Rather, the Examiner rejects independent claim 21 based on a combination of Chen and Kasner and rejects dependent claim 22 over Chen, Kasner, and Griffiths. Final Act. 19, 21. In rejecting claims 21 and 22, the Examiner relies on Chen for disclosing the steps of “directing a confined laser beam . . .,” “sensing a Appeal 2019-001301 Application 14/592,217 10 characteristic of light . . . with a sensor,” and “determining one or more operational conditions based on the characteristic of light sensed with the sensor,” as similarly addressed above. Id. at 19–21 (citing Chen col. 6, ll. 13–22, Fig. 1); see also id. at 22 (addressing dependent claim 22). Additionally, to address the claimed “determining a breakthrough of the confined laser beam,” “continuing to sense the characteristic of light directed along the beam axis away from the airfoil with the sensor subsequent to determining the breakthrough of the confined laser beam,” and “continuing to direct the confined laser beam . . . subsequent to determing the breakthrough of the confined laser beam,” the Examiner finds that Chen discloses this feature, citing the following disclosure (id. at 22). The camera 180 is typically configured to monitor the reflected light from the hole 202 being drilled in the target 200. Before the laser beam has broken through to the interior of the target 200, the bottom of the hole 202 is reflective. As soon as the laser breaks through to the interior of the target 200, a sudden drop in reflected energy is detected by the camera 180, since the beam enters the interior of the target 200. At this point, the camera 180 signals the shutter 170 to close, to interrupt the laser drilling process. Chen, col. 6, ll. 13–22. The Examiner acknowledges, however, that Chen does not disclose the claimed “one or more operational conditions including a material . . . .” Final Act. 21. To meet this limitation, the Examiner relies on Kasner and reasons that a skilled artisan would have modified the method for drilling a hole of Chen, with the function of determining a material into which the confined laser beam of the confined laser drill is being directed as taught by Kasner, in order to monitor the material status of breakthrough and prevent causing a bulge-out or even a puncture of the far wall. Appeal 2019-001301 Application 14/592,217 11 Id. (citing Kasner, col. 6, ll. 31–34). B. Analysis Appellants contend that the Examiner erred because Chen does not teach determining the depth of the hole with light reflected from the confined laser beam after the breakthrough has been determined. Appeal Br. 26 (referencing arguments made in connection with claims 11 and 12); id. at 23–26 (presenting arguments for claims 11 and 12). In particular, Appellants argue that the claim requires, “continuing to direct the confined laser beam of the confined laser drill towards the near wall of the component subsequent to determining a breakthrough” and that “Chen expressly requires closing a shutter of the laser immediately to stop the drilling process once a breakthrough is detected.” Id. at 24 (citing Chen, col. 6, ll. 13–22) (underlined emphasis omitted, italicized emphasis added). Even if we assume Appellants’ construction of the claim requires the laser beam to continue to emit after breakthrough has been determined, Appellants’ argument is not persuasive. Contrary to Appellants’ assertion, there is a brief delay between the time the breakthrough is detected and the time Chen’s laser stops—or Chen’s shutter closes. As explained correctly by the Examiner, Chen’s laser beam continues after the breakthrough is determined, as it takes time for the breakthrough signal to be processed by Chen’s control unit and before a control signal is sent to close Chen’s shutter in response to the breakthrough signal. See Ans. 49 (“[T]he laser beam [] continu[es] during the period of the breakthrough is detected, a signal with a command, which is closing the Appeal 2019-001301 Application 14/592,217 12 shutter . . . (or other control unit), the command is performed, the shutter is closed”). For the foregoing reasons, Appellants’ arguments do not apprise us of Examiner error and we affirm the rejection of claim 21 as unpatentable over Chen and Kasner. Furthermore, Appellants rely on the same unpersuasive arguments in contending the rejection of claim 22. See Appeal Br. 26. Accordingly, we also affirm the rejection of claim 22 as unpatentable over Chen, Kasner, and Griffiths. SUMMARY We affirm the rejection of claim 12 as indefinite. We reverse the rejection of claims 1–4, 9–15, and 18 as unpatentable over Chen and Quitter. We reverse the rejection of claims 5 and 19 as unpatentable over Chen, Quitter, and Griffiths. We reverse the rejection of claims 6 and 25 as unpatentable over Chen, Quitter, Griffiths, and Clyde. We reverse the rejection of claim 7 as unpatentable over Chen, Quitter, Griffiths, and Kasner. We affirm the rejection of claim 21 as unpatentable over Chen and Kasner. We affirm the rejection of claim 22 as unpatentable over Chen, Kasner, and Griffiths. We reverse the rejection of claim 24 as unpatentable over Chen, Quitter, and Merdan. Appeal 2019-001301 Application 14/592,217 13 No time period for taking any subsequent action in connection with this appeal may be extended. See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED-IN-PART