Board of Patent Appeals and Interferences
Patent and Trademark Office (P.T.O.)
*1 EX PARTE THOMAS C. KUKLO AND RICHARD W. O'NEIL
Appeal No. 92-2698
August 31, 1992
HEARD: August 4, 1992
Application for Patent filed October 28, 1988, Serial No. 07/268,454, which is a Continuation of Serial No. 06/911,271 filed September 22, 1986, now abandoned. High Flow Velocity Dye Laser Amplifier.
Thomas O. Herbert for appellants
Primary Examiner--Nelson Moskowitz
Steiner, Lynch, Thomas and Hairston
This is an appeal from the final rejection of claims 2 through 22. In an Amendment After Final (paper number 18), claim 2 was amended. Claim 1 has been cancelled.
The disclosed invention relates to the lasing chamber of a dye laser. The lasing chamber is formed from two pairs of smooth windows fabricated from the same material. The sides of the lasing chamber converge towards one another to make the outlet from the lasing chamber smaller than the inlet to the lasing chamber.
Claim 2 is illustrative of the claimed invention, and it reads as follows:
2. In a dye laser amplifier in which a continuously replenished supply of dye is excited with a first light beam in order to amplify the intensity of a second different light beam passing therethrough, said amplifier including means defining a vertically extending chamber through which a continuous stream of said dye is caused to pass at a relatively high flow velocity from a plenum directly upstream of said chamber, means for directing said first beam into said chamber and means for directing said second beam into said chamber, the improvement comprising a specifically designed chamber extending between an upstream point directly below and adjacent said plenum and a downstream point, said chamber defining means including:
(a) A pair of spaced apart integrally formed confronting first windows serving to pass one of said light beams through said chamber, each said front window including a continuous first surface extending uninterrupted from said upstream point to said downstream point to form a portion of the chamber;
(b) A pair of spaced apart integrally formed confronting second windows serving to pass the other of said light beams into said chamber, each said second window having a continuous second upstream point to said downstream point, between said first surfaces;
(c) wherein said first and second surfaces cooperated to provide the outer lateral boundaries of said chamber, said second surfaces converging toward one another from said upstream point to said chamber so that together with said first surfaces they define a converging inlet to said chamber from said plenum, wherein neither the first, nor the second surfaces contain material-to-material transition junctures, the degree of convergence of said second surfaces in defining said inlet being at a maximum abruptness without causing said flow of dye to separate from said second surfaces as a result of their converging, whereby to minimize the thickness of the boundary layer of flowing dye formed on said second surfaces;
*2 (d) wherein said first and second surfaces are glass; and
(e) wherein said first and second surfaces are smooth so as not [sic, to] present any roughened edges to said flowing dye which would impart turbulence to the latter or cause the latter to separate from said surfaces.
The references relied on by the examiner are:
Aldag et al. (Aldag) 4,176,324 Nov. 27, 1979
Atomic Vapor, Laser Isotope Separation, 11-587-005/8, 1981, Lawrence Livermore Laboratory, page 10.
Claims 2 through 22 stand rejected under 42 U.S.C. 2185 and 35 U.S.C. 102(b) as the invention was in public use via laboratory tours more than one (1) year prior to the original filing date of September 22, 1986.
Claims 2 through 22 stand rejected under 42 U.S.C. 2185 and 35 U.S.C. 103 as being unpatentable over Aldag in view of the Lawrence Livermore publication 11-587-005/8.
Reference is made to the brief and the answer for the respective positions of the appellants and the examiner.
For all of the reasons expressed by the examiner in the answer, and for the additional reasons presented infra, we will sustain the 35 U.S.C. 102(b) and the 35 U.S.C. 103 rejections of claims 2 through 22. We will not, however, sustain the 42 U.S.C. 2185 [FN2] rejection of claims 2 through 22.
In an Information Disclosure Statement (paper number 6), appellants indicated that since 1977 the equipment that includes the structural features of the present invention was disclosed to visitors to the Lawrence Livermore Laboratory. Some of those visitors did not sign non-disclosure agreements concerning what they saw at the facility. On page 6 of this Statement, appellants stated that the equipment "may be operating," and that "the minimal viewing on occasion by visitors under escort does not reveal anything significant about the dyes." According to appellants, the public was not able to view the structural features of the invention because the structure is an assemblage of black boxes. Even if the occasional tours were public within the meaning of 35 U.S.C. 102(b), appellants contend that the experimental use exception applies.
On page 9 of paper number 15, appellants stated that:
[L]asers incorporating the claimed invention were used for isotope separation prior to September 22, 1985. Further, Applicants state that some changes were made to the invention between 1977 and September 22, 1985. The primary change made occurred in approximately July of 1978 and involved backfilling the four glass windows (26, 34) by injecting silicon rubber potting materials behind the joints to form good seals.
*3 With respect to the tours given, people participating in the tours would have been able to see the exterior of the dye laser amplifier housing, but not the window construction.
On page 7 of the answer, the examiner concluded that any uses of the invention after the July 1978 addition of potting material to the structure were not for experimental purposes.
After considering the "totality of circumstances," we are of the opinion that the record before us presents a prima facie case of public use of the invention. Although appellants' statement that the equipment "may be operating" in the presence of the tour groups is not dripping with specificity, we agree with the examiner that an inference of public use of the invention may be drawn from this statement. Once a prima facie case of public use has been established, the burden is on appellants to come forward with evidence that will counter such a case. See Hycor Corp. v. Schlueter Co., 740 F.2d 1529, 222 USPQ 553 (Fed.Cir.1984).
With respect to appellants' argument that the public did not see the inner workings of the dye laser amplifier, we are not aware of any requirement that the person to which an invention is publicly disclosed has to understand the significance and the technical complexities of the invention. Appellants' experimental use exception argument is not very convincing since the last change (i.e., the back filling with the potting material) occurred more than eight (8) years before the filing of an application describing the invention. Appellants' arguments in the brief do not convince us that the public use of the invention is negated by the experimental use exception. The rejection of claims 2 through 22 under 35 U.S.C. 102(b) is sustained.
In response to the 35 U.S.C. 103 rejection of claims 2 through 22, appellants argue that the applied references do not disclose glass with smooth surfaces in the lasing chamber, elimination of material-to-material junctures in the lasing chamber, convergence of window surfaces being at a maximum abruptness without causing the flow of dye to separate from the window surfaces as a result of the convergence, and first and second pairs of surfaces that define the lasing chamber. The examiner acknowledges on page 6 of the answer that single material glass walls are not disclosed in the applied references.
Both of the applied references disclose dye laser amplifiers. One set of optically transmissive window surfaces in the lasing chamber is shown in each of the applied references. Aldag indicates at column 3, lines 11 through 13, and in the paragraph bridging columns 5 and 6 that while the optically transmissive windows are generally parallel, they typically "converge" slightly in a downstream direction. Appellants' arguments to the contrary notwithstanding, Aldag indicates at column 1, lines 52 through 60 that "reduced turbulence effects" are produced to provide a "smooth and even laminar flow" between the windows. Appellants' arguments concerning turbulence reduction in Aldag are without merit because the claims on appeal do not preclude the use of the additional structure (e.g., the mesh screens and the hydraulic capacitor) upstream of the lasing chamber in Aldag to reduce the turbulence in the flow of dye. Even if Aldag did not teach the desirability of a "smooth and even laminar flow" in the lasing chamber, we agree with the examiner that appellants' discussion on page 3 of the specification of the prior art problem of flow separation from the flow channel walls caused by discontinuities in the channel walls would have suggested to the skilled artisan to use a flow channel wall with a smooth surface to avoid the noted problem. The desired "smooth and even laminar flow" of the dye would also require the elimination of material-to-material junctures in the lasing chamber.
*4 If Aldag has a "smooth and even laminar flow" of dye through the lasing chamber, and the windows in the lasing chamber have a slight convergence to them, then it follows that the convergence of the window surfaces in Aldag is at a "maximum abruptness" without causing the flow of dye to separate from the walls of the optically transmissive window surfaces. The degree of "maximum abruptness" is neither disclosed nor claimed by appellants.
With respect to the use of glass as the optically transmissive window surfaces, we are of the opinion that it would have been obvious to one of ordinary skill in the art to use a well-known optically transmissive material such as glass in Aldag. The skilled artisan would know that glass is one of the few optically transmissive materials that is used in a laser.
Although only one pair of optically transmissive windows are disclosed in each of the applied references, common sense and skill in the art would tell the skilled artisan that a second set of optically transmissive windows must be located in the laser to transmit the other laser beam (e.g., the dye laser beam in Figure 7 of the Lawrence Livermore publication) through the lasing chamber. See In re Sovish, 769 F.2d 738, 226 USPQ 771 (Fed.Cir.1985). In Figure 3 of Aldag, the end wall 176 and the corresponding wall on the other side of the laser flow channel must of necessity have optically transmissive windows to pass the other beam. The second set of optically transmissive windows would cooperate with the first set of optically transmissive windows to contain [FN3] the flow of dye, and to form the converging inlet [FN4] to the lasing chamber. The 35 U.S.C. 103 rejection of claim 2 is sustained.
The 35 U.S.C. 103 rejection of claims 5 and 6 is sustained because the plenums in the applied references are configured such that the flow velocity of the dye therethrough is "at substantially a minimum velocity at all points along the length" of the plenum. The converging inlet to the lasing chamber in each of the applied references increases the velocity of the dye flow as it leaves the plenum. Figure 7 in the Lawrence Livermore publication clearly shows the 90<<degrees>> corners at the transition junctures between the plenum and the lasing chamber. The surfaces of the windows in Figure 7 of the publication "extend horizontally toward one another from said vertical wall means before beginning to converge toward one another to define said inlet."
The 35 U.S.C. 103 rejection of claims 3, 4 and 7 through 22 is sustained because appellants have chosen in their grouping of the claims to let these claims fall with claims 2, 5 and 6.
With respect to the rejection of the claims on appeal under 42 U.S.C. 2185, [FN5] appellants argue that an inventor's own work cannot be treated as prior art against him without a statutory basis for doing so, and that 42 U.S.C. 2185 does not include a bar [FN6] to patentability by an Atomic Energy Commission affiliated inventor's own prior knowledge or use.
*5 The public use of the invention, without the benefit of non-disclosure agreements, made the invention publicly known. The statutory basis for rejecting the claims based upon the appellants making the invention known to the public via public use of the invention is 35 U.S.C. 102(b). The secret knowledge exception provisions of 42 U.S.C. 2185 are not needed to establish a bar to patentability of the claimed invention under 35 U.S.C. 102(b). The rejection of claims 2 through 22 under 42 U.S.C. 2185 is reversed.
The decision of the examiner rejecting claims 2 through 22 under 35 U.S.C. 102(b), 35 U.S.C. 103 and 42 U.S.C. 2185 is affirmed as to the 35 U.S.C. 102(b) and 35 U.S.C. 103 rejections, and is reversed as to the 42 U.S.C. 2185 rejection. Accordingly, 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 CFR 1.136(a). See the final rule notice, 54 F.R. 29548 (July 13, 1989), 1105 O.G. 5 (August 1, 1989).
BOARD OF PATENT APPEALS AND INTERFERENCES
Ian A. Calvert
Arthur J. Steiner
Thomas E. Lynch
James D. Thomas
FN1. The panel was expanded after oral argument to include Calvert and Steiner. See In re Bose Corp., 772 F.2d 866, 227 USPQ 1 (Fed.Cir.1985).
FN2. The rejection is reversed because 42 U.S.C. 2185 is not an acceptable statutory basis for rejecting claims. It is merely a statutory exception to the provisions of 35 U.S.C. 102. See In re Borst, 345 F.2d 851, 145 USPQ 554 (CCPA1965).
FN3. A two-sided chamber formed from one set of windows will not support a flow of dye. The second set of windows is needed to prevent the flow of dye from escaping from the lasing chamber.
FN4. The claims on appeal only require that one set of the windows have surfaces that converge towards one another in the converging inlet.
FN5. 42 U.S.C. 2185 states: "In connection with applications for patents covered by this subchapter, the fact that the invention or discovery was known or used before shall be a bar to the patenting of such invention or discovery even though such prior knowledge or use was under secrecy within the atomic energy program of the United States."
FN6. As indicated supra, 42 U.S.C. 2185 has been treated as an exception to the publicly known portion of 35 U.S.C. 102(a). In In re Borst, supra, the Court stated that "[t]he knowledge contemplated by section 102(a) must be accessible to the public," ... but that "[w]ith respect to subject matter covered by the patent provision of the Atomic Energy Act, prior knowledge or use under section 102(a) need not be accessible to the public."
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