Trials@uspto.gov
`571-272-7822
`
`Paper No. 7
`
` Entered: April 20, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TIFFANY AND COMPANY,
`Petitioner,
`
`v.
`
`LAZARE KAPLAN INTERNATIONAL, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00024
`Patent 6,476,351 B1
`____________
`
`
`Before MICHAEL P. TIERNEY, MICHELLE R. OSINSKI, and
`JEFFREY W. ABRAHAM, Administrative Patent Judges.
`
`ABRAHAM, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper No. 7
`
` Entered: April 20, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TIFFANY AND COMPANY,
`Petitioner,
`
`v.
`
`LAZARE KAPLAN INTERNATIONAL, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-00024
`Patent 6,476,351 B1
`____________
`
`
`Before MICHAEL P. TIERNEY, MICHELLE R. OSINSKI, and
`JEFFREY W. ABRAHAM, Administrative Patent Judges.
`
`ABRAHAM, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`IPR2015-00024
`Patent 6,476,351 B1
`
`
`I. INTRODUCTION
`Petitioner, Tiffany and Company, filed a Petition seeking inter partes
`review of claims 1 and 7 of U.S. Patent No. 6,476,351 B1 (Ex. 1001, “the
`’351 patent”). Paper 2 (“Pet.”). Patent Owner, Lazare Kaplan International,
`Inc., filed a Patent Owner Preliminary Response to the Petition. Paper 6
`(“Prelim. Resp.”). We have jurisdiction under 35 U.S.C. § 314(a), which
`provides that an inter partes review may not be instituted “unless . . . there is
`a reasonable likelihood that the petitioner would prevail with respect to at
`least 1 of the claims challenged in the petition.”
`We determine that the information presented in the Petition shows that
`there is a reasonable likelihood that Petitioner would prevail with respect to
`at least one challenged claim. Accordingly, we institute an inter partes
`review of claims 1 and 7 of the ’351 patent.
`
`
`A. Related Proceedings
`Patent Owner asserted the ’351 patent in Lazare Kaplan Int’l Inc. v.
`Photoscribe Techs., Inc., Case No. 1:06 CV 4005 (SDNY). Pet. 1; Paper 5.
`Petitioner is not a party to that proceeding.
`
`
`B. The ’351 Patent
`The ’351 patent discloses a method and system for microinscribing
`the surface of a gemstone using a laser. Ex. 1001, 1:14–17. The ’351 patent
`shows one microenscribing apparatus in Figure 9, reproduced below.
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`Figure 9 shows various components of a microenscribing apparatus,
`including laser 1, mirror 8 and focusing lens 10 for focusing laser energy
`from the laser onto gemstone/workpiece 11, displaceable stage 50, computer
`52, and cameras 28 and 32. Id. at 15:33–44, 16:13, 16:44–54.
`The ’351 patent discloses that the gemstone is held in a mounting
`system that is mounted on a translatable stage. See id. at Figs. 7A–7E,
`Fig. 10 element 144. The laser does not move, and therefore, to generate the
`inscription, the translatable three-axis (XYZ) stage moves the workpiece in
`relation to the laser beam. Id. at 16:44–48. The translatable stage is
`“controlled by a computer to produce a complex marking pattern.” Id. at
`2:47–48. The inscription data can be manually entered or generated by the
`computer. Id. at 20:15–23. The apparatus can include an assortment of
`fonts as well as custom or editable characters, such as logos and graphics.
`Id. at 20:3–14, 22:66–67.
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`Video cameras allow an operator to view the workpiece from a
`plurality of vantage points, provide for “optical feedback” of the inscription
`process, and can be used to ensure the correct positioning of the workpiece.
`Id. at 2:61–3:13, 16:51–17:8. “The optical feedback system also allows the
`operator to design an inscription, locate the inscription on the workpiece,
`verify the marking process and archive or store an image of the workpiece
`and formed markings.” Id. at 3:14–17, 18:13–17, 20:52–55.
`According to one embodiment of the ’351 patent, an operator inserts a
`gemstone into the apparatus and aligns it so that top and side views are
`displayed on video monitors. Id. at 18:31–33. The operator enters the
`inscription into the computer, and verifies the inscription positioning on the
`images of the gemstone displayed on the monitors. Id. at 18:33–39. Once
`the inscription positioning is verified, the computer sends commands to the
`inscription controller, which adjusts the position of the XYZ translatable
`stage accordingly to form the inscription pattern on the gemstone. Id. at
`18:39–43.
`Independent claims 1 and 7 are the only challenged claims, and are
`reproduced below:
`1. A method of microinscribing a gemstone with laser energy
`from a pulse laser energy source, focused by an optical
`system on the workpiece, comprising the steps of:
`mounting a gemstone in a mounting system;
`directing the focused laser energy onto a desired portion
`of the gemstone;
`imaging the gemstone from at least one vantage point;
`receiving marking instructions as at least one input; and
`controlling the directing of the focused laser energy
`based on the marking instructions and the imaging, to
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`selectively generate a marking on the gemstone based
`on the instructions.
`7. A laser energy microinscribing system, for gemstones, said
`system comprising:
`a laser energy source;
`a gemstone mounting system, allowing optical access to a
`mounted workpiece;
`an optical system for focusing laser energy from the laser
`energy source, onto the gemstone to create an ablation
`pattern thereon;
`means for directing said focused laser energy onto a
`desired portion of the gemstone, having a control
`input;
`an imaging system for viewing the gemstone from at
`least one vantage point and obtaining image
`information from the gemstone;
`an input for receiving marking instructions; and
`a processor for controlling said directing means based on
`said marking instructions and said imaging system, to
`selectively generate a marking based on said
`instructions and a predetermined program.
`Ex. 1001, 26:53–65, 27:17–34.
`
`
`C. References
`Petitioner relies on the following references:
`1. C. Paul Christensen, Fine Diamonds With Laser Machining,
`PHOTONICS SPECTRA 105–110 (Nov. 1993) (“Fine Diamonds,” Ex.
`1007).
`2. C. Paul Christensen, National Science Foundation Final Project
`Report, Ultraviolet Laser Fabrication of Diamond
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`Microstructures, Award No. 9261361, Award Date: January –
`September 1993 (“NSF Report,” Ex. 1008).1
`3. C. Paul Christensen, Laser Processing Works on a Micro Scale,
`INDUSTRIAL LASER REVIEW 1–4 (June 1994) (“ILR Article,” Ex.
`1009).
`4. Gresser et al., U.S. Patent No. 4,392,476, issued July 12, 1983
`(“Gresser,” Ex. 1010).
`
`
`References
`
`D. The Asserted Grounds
`Petitioner asserts the following grounds of unpatentability:
`Claims
`Statutory
`Challenged
`Basis
`1 and 7
`§103
`1 and 7
`§103
`1 and 7
`§103
`1 and 7
`§103
`1 and 7
`§103
`1 and 7
`§103
`
`
`Fine Diamonds
`Fine Diamonds and ILR Article
`NSF Report
`NSF Report and ILR Article
`Gresser
`Gresser and ILR Article
`
`II. CLAIM CONSTRUCTION
`A. Legal Standard
`In an inter partes review, claim terms in an unexpired patent are
`interpreted according to their broadest reasonable construction in light of the
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
`
`
`1 This reference is a compilation of documents that includes the final report
`(Ex. 1008, 3–32) and the proposal to the National Science Foundation (id. at
`33–59), as well as a cover letter from the Office of the General Counsel for
`the National Science Foundation dated July 28, 2011, providing the
`documents in response to a FOIA request (id. at 1–2).
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`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14,
`2012); In re Cuozzo Speed Techs., LLC, 778 F.3d 1271, 1279–80 (Fed. Cir.
`2015). Absent a special definition for a claim term being set forth in the
`specification, claim terms are given their ordinary and customary meaning as
`would be understood by a person of ordinary skill in the art at the time of the
`invention and in the context of the entire patent disclosure. Phillips v. AWH
`Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc); In re Translogic
`Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). In interpreting the claims,
`it is important not to read a particular embodiment appearing in the written
`description into the claim if the claim language is broader than the
`embodiment. See In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993)
`(“[L]imitations are not to be read into the claims from the specification.”).
`
`
`B. Claim Terms
`Petitioner proffers constructions for three terms (Pet. 4–6) as well as
`the means plus function limitations present in claim 7 (id. at 6). Patent
`Owner states that it “does not agree with much of the claim constructions”
`provided by Petitioner, but does not offer its own constructions for any
`terms. Prelim. Resp. 10–11.
`
`1. “controlling the directing of the focused laser energy based on the
`marking instructions and the imaging”
`
`
`
`Petitioner proposes that under the broadest reasonable interpretation,
`this claim phrase means “controlling the directing based on automated or
`manual feedback derived from optical images of a gemstone before or
`during the laser burn process.” Pet. 4–5. Petitioner contends that support
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`for this construction can be found within the Specification of the ’351 patent,
`which discloses that “a single pass inscription is generally sufficient, and an
`automated optical feedback system may reliably control operation . . . [.]
`While the execution of retries may be automated, user control may be
`desirable, and such control is possible through use of the video cameras
`which are directed at the workpiece.” Id. at 5 (citing Ex. 1001, 5:57–6:4).
`Petitioner also contends that this construction is consistent with the Federal
`Circuit’s opinion in Lazare Kaplan International, Inc. v. Photoscribe
`Technologies, Inc., 628 F.2d 1359, 1369 (Fed. Cir. 2010), wherein the court
`held that “one of ordinary skill in the art at the time of the invention would
`have understood the term ‘controlling the directing . . . based on . . . the
`imaging’ to include control based on either automated or manual feedback
`derived from optical images of a gemstone, before or during the laser burn
`process.” Pet. 5; Ex. 1003 (Trumper Declaration), ¶¶ 25–26.
`The Specification of the ’351 patent discloses an “optical feedback
`imaging system, e.g. the video camera.” Ex. 1001, 4:39–40. According to
`the ’351 patent, “[o]ptical feedback through the imagers may . . . be used to
`monitor the progress of the marking process, and therefore may be used to
`adjust workpiece positioning as well as inscription speed, number, intensity
`and/or rate of pulses at a given location.” Id. at 3:1–5. It also “allows the
`operator to design an inscription, locate the inscription on the workpiece,
`verify the marking process and archive or store an image of the workpiece
`and formed markings.” Id. at 3:14–17.
`Additionally, the Specification of the ’351 patent explains that the
`user can use images from the video cameras to measure the profile and
`critical dimensions of the girdle of a cut diamond, and that this data is “used
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`to keep the focal point of the laser output on the surface of the girdle 12 at
`all times. The profile data and girdle 12 outline may be automatically
`extracted from the images, or a manual entry step employed to outline the
`profile and/or girdle boundaries.” Id. at 17:28–33. The Specification of the
`’351 patent further discloses that “[w]hen these procedures are complete a
`so-called G-code file is generated containing all inscription data. This file is
`transferred to the positioning stage controller 51 for performance of the
`actual inscription.” Id. at 17:36–39.
`Based on our review of the Specification of the ’351 patent, the
`Federal Circuit’s opinion in Lazare Kaplan, and the Trumper Declaration,
`we construe the “controlling” limitation to include control based on either
`automated or manual feedback derived from optical images either before or
`during the laser inscription process, and, therefore, adopt Petitioner’s
`proposed construction as our own.
`
`
`2. Other Claim Terms
`Petitioner offers constructions for the terms “vantage point” and
`“ablation,” as well as “means for directing said focused laser energy onto a
`desired portion of the gemstone, having a control input” and “a processor for
`controlling said directing means.” Pet. 5–6. We determine that no express
`construction for the noted terms or phrases is needed for purposes of this
`Decision.
`
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`III. ANALYSIS
`A. Ground 1 – Claims 1 and 7 as Obvious under 35 U.S.C. § 103 in
`view of Fine Diamonds
`
`Fine Diamonds is an article authored by Dr. Paul Christensen
`discussing laser machining of diamonds. Ex. 1007, 105. Fine Diamonds
`discloses systems that combine “small laser sources with high-resolution
`imaging and precision motion-control systems for sculpting, planarizing,
`marking and patterning of diamond and diamond-like materials.” Id. at 106.
`Fine Diamonds depicts a laser micromachining configuration in Figure 2,
`which is reproduced below.
`
`
`
`
`Figure 2 shows the components of the laser micromachining system,
`
`including a UV waveguide laser, beam delivery optics, a video camera and
`viewing optics, X-Y-Z stages, and a computer and stage controller. Id. Fine
`Diamonds discloses the use of CAD/CAM software not only to draw
`arbitrary shapes but also to allow the computer to control the stages such that
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`complex shapes can be etched into the diamond substrate. Id. at 107–108.
`According to Fine Diamonds, the “CAD/CAM software and the direct-write
`approach to laser machining allows almost any shape to be generated in a
`diamond surface.” Id. at 108. The high resolution video cameras in Fine
`Diamonds allow the operator to monitor the machining process. Id.
`Petitioner argues that Fine Diamonds discloses, or a person of
`ordinary skill in the art would have understood from consideration of Fine
`Diamonds, all limitations of claims 1 and 7.
`As to claim 1’s recitation of a “method of microinscribing a gemstone
`with laser energy from a pulse laser energy source, focused by an optical
`system on the workpiece,” Petitioner contends that Fine Diamonds discloses
`a “micromachining” system for inscribing diamonds using a pulse laser
`energy source and optical tools for “sculpting, planarizing, marking and
`patterning of diamond and diamond-like materials,” such as a stone on a
`wedding ring (i.e., a gemstone). Pet. 11–12 (citing Ex. 1007, 106, 108).
`Claim 1 also requires “mounting a gemstone in a mounting system”
`and “directing the focused laser energy onto a desired portion of the
`gemstone.” As noted by Petitioner, Fine Diamonds discloses that “[t]he
`workpiece is mounted on precision X-Y stages” (id. at 12 (citing Ex. 1007,
`108)), and that the X-Y stages are “driven by DC motors, and stage position
`is monitored by encoders. Computer control of stage velocity is carried out
`using CAD/CAM software, and laser pulsing is synchronized to stage
`motion” (id. at 11–12 (citing Ex. 1007, 108)).
`Regarding claim 1’s recitation of “imaging the gemstone from at least
`one vantage point,” Petitioner points to the video cameras and viewing
`optics disclosed in Fine Diamonds. Id. at 13 (citing Ex. 1007, 108).
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`Claim 1 further requires “receiving marking instructions as at least
`one input.” Petitioner cites to Fine Diamonds’ description of using a
`CAD/CAM program to draw shapes and then etch them into a diamond. Id.
`Specifically, Petitioner points to Fine Diamonds’ disclosure that the “[u]se
`of a CAD/CAM program as a graphical interface allows long sequences of
`commands associated with complex shapes to be generated with a minimal
`amount of programming.” Id. at 13–14 (citing Ex. 1007, 107). Petitioner
`contends that a person of ordinary skill in the art would understand this to
`refer to creating and receiving marking instructions. Id. at 14.
`With regard to the step of “controlling the directing of the focused
`laser energy based on the marking instructions and the imaging, to
`selectively generate a marking on the gemstone based on the instructions,”
`Petitioner first contends Fine Diamonds shows controlling the laser based on
`marking instructions from the CAD/CAM program, noting that Fine
`Diamonds discloses that “[c]omputer control of stage velocity is carried
`out using CAD/CAM software, and laser pulsing is synchronized to
`stage motion.” Id. at 15 (citing Ex. 1007, 108) (emphasis in Petition).
`Petitioner further contends that Fine Diamonds discloses controlling the
`directing of the laser energy using imaging, citing to the portions of Fine
`Diamonds that recite “combin[ing] the small laser sources with high-
`resolution imaging and precision motion-control systems for sculpting,
`planarizing, marking and patterning of diamond and diamond-like materials”
`and that “[t]he opportunity exists to adjust the beam focus between scans.”
`Id. (citing Ex. 1007, 106, 108, 110) (emphasis in Petition). According to
`Petitioner, a person of ordinary skill in the art would have understood these
`portions of Fine Diamonds to disclose controlling the directing of the
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`focused laser energy based on a combination of marking instructions
`(CAD/CAM software) and imaging (high resolution imaging and adjusting
`beam focus). Id. at 15–16.
`Petitioner provides analogous arguments (including relying on similar
`disclosures in Fine Diamonds) with regard to the elements of claim 7, which
`are similar to those recited in claim 1, albeit in the context of a
`microinscribing system for gemstones. Id. at 16–22.
`Other than summarily stating that “Fine Diamonds is fundamentally
`flawed as it fails to disclose or suggest numerous limitations of claims 1 and
`7” (Prelim. Resp. 2), Patent Owner directs no specific arguments to this
`challenge.
`The arguments and evidence presented by Petitioner in connection
`with independent claims 1 and 7 persuade us that the Petitioner has
`demonstrated a reasonable likelihood of prevailing on its assertion that the
`subject matter of these claims would have been obvious to a person of
`ordinary skill in the art in view of Fine Diamonds.
`
`B. Ground 2 – Claims 1 and 7 as Obvious under § 103 in view of Fine
`Diamonds and the ILR Article
`
`The ILR Article, also authored by Dr. Christensen, discloses surface
`patterning of various materials, including diamonds, on a micro scale using a
`UV laser source. Ex. 1009, 2. The ILR Article describes “[d]irect write”
`techniques, which “focus the entire beam of a smaller laser on the work
`surface and move the surface under the focused beam for pattern
`generation.” Id. The ILR Article further discloses computer control of the
`work surface motion, which allows for the production of CAD-generated
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`shapes. Id. A generic direct-write UV laser station is depicted in Figure 2 of
`the ILR Article, which is reproduced below.
`
`
`
`Figure 2 shows the UV laser station comprised of the laser itself in addition
`to beam transfer optics, a focusing objective, X-Y stages, video camera and
`viewing optics, and a computer and stage controller. Id. at 2–3. According
`to the ILR Article,
`CAD/CAM interface simplifies motion programming and
`allows electronic control of processing speed, exposure
`parameters, and other features.
` This simplifies set-up,
`accelerates process development, and improves flexibility of the
`system in small batch processing. Video images generated by
`the viewing system can be digitized and processed to derive
`information used for autofocus, registration, orientation, edge-
`following, and other operations that make the laser tool easier
`and faster to use.
`Id. at 3.
`
`Petitioner contends that to the extent Fine Diamonds alone does not
`render obvious all elements of claims 1 and 7, the combination of Fine
`Diamonds and the ILR Article does. Pet. 25. Specifically, Petitioner argues
`that the ILR Article discloses the “controlling the directing of the focused
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`laser energy based on the marking instructions and the imaging, to
`selectively generate a marking on the gemstone based on the instructions”
`step required in claim 1 and “a processor for controlling said directing
`means based on said marking instructions and said imaging system, to
`selectively generate a marking based on said instructions and a
`predetermined program” required in claim 7. Id. at 25–27. Petitioner cites
`to the portions of the ILR Article describing “computer control of work
`surface motion” and the CAD/CAM interface which “simplifies motion
`programming and allows electronic control of processing speed, exposure
`parameters and other features” to demonstrate that the ILR Article discloses
`controlling based on marking instructions. Id. at 25 (citing Ex. 1009, 2).
`Petitioner further argues that the ILR article discloses control of the laser
`energy based on feedback derived from optical images, based on the
`statement in the ILR Article that “[v]ideo images generated by the viewing
`system can be digitized and processed to derive information used for
`autofocus, registration, orientation, edge-following and other operations.”
`Id. at 25–26 (citing Ex. 1009, 2).
`Petitioner contends that Fine Diamonds discloses the remaining
`limitations in claims 1 and 7 (id. at 25), and that it would have been obvious
`to a person of ordinary skill in the art to combine the teachings of the ILR
`Article—regarding the programmed marking instructions and feedback
`using digitized video images—with Fine Diamonds to “simplif[y] set-up,
`accelerate[] process development, and improve[] flexibility of the system”
`and to “make the laser tool easier and faster to use” as taught by the ILR
`Article (id. at 24 (quoting Ex. 1009, 2)).
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`Once again, Patent Owner does not present any specific arguments in
`
`response to this challenge.
`
`Upon consideration of the arguments and evidence presented by
`Petitioner, we are persuaded that Petitioner has established a reasonable
`likelihood that Petitioner would prevail in its challenge to claims 1 and 7 on
`this ground.
`
`
`C. Ground 3 – Claims 1 and 7 as Obvious under 35 U.S.C. § 103 in view
`of the NSF Report
`
`
`The NSF Report is a collection of documents that includes a
`description of work carried out by Dr. Christensen between January and
`September 1993 relating to diamond micromachining systems. See
`generally Ex. 1008. Although the NSF Report is not identical to Fine
`Diamonds, the information contained in the two references is substantially
`similar. Compare Pet. 9–11, and Ex. 1007, with Pet. 27–29, and Ex. 1008.
`Patent Owner contends that the NSF Report is redundant in view of
`Fine Diamonds, noting that Petitioner’s own expert stated that “[b]oth
`systems share similar, if not identical, configurations.” Prelim. Resp. 17
`(citing Ex. 1003 ¶ 32 n.4). Patent Owner also argues that Petitioner has
`failed to meet its burden of demonstrating that the NSF Report is a prior art
`“printed publication.” Id. at 12. Patent Owner takes the position that the
`NSF released the NSF Report in July 2011 in response to a FOIA request
`and that nothing in the report indicates that it was available prior to the 1996
`provisional application date of the ’351 patent. Id. at 13. Additionally,
`Patent Owner contends that because FOIA requests allow a party to redact
`portions of the response, any version of the NSF Report that might have
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`been available publicly prior to 1996 may have been different than the report
`released in 2011. Id. at 15. Therefore, Patent Owner argues that, on its own,
`the NSF Report released in 2011 does not necessarily demonstrate what
`portions of the report would have been publicly available prior to 1996. Id.
`at 15–16.
`In view of the question surrounding the publication date of the NSF
`Report, the substantial overlap in content between the NSF Report and Fine
`Diamonds, and our decision to institute review of claims 1 and 7 on the
`grounds discussed above, we exercise our discretion not to institute inter
`partes review on the alleged grounds of unpatentability that claims 1 and 7
`would have been obvious over the NSF Report.
`
`D. Ground 4 – Claims 1 and 7 as Obvious under 35 U.S.C. § 103 in view
`of the NSF Report and the ILR Article
`
`As noted above, in view of the question surrounding the publication
`date of the NSF Report, the substantial overlap in content between the NSF
`Report and Fine Diamonds, and our decision to institute review of claims 1
`and 7 on the grounds discussed above, we exercise our discretion not to
`institute inter partes review on the alleged grounds of unpatentability that
`claims 1 and 7 would have been obvious over the NSF Report and the ILR
`Article.
`
`E. Ground 5 – Claims 1 and 7 as Obvious under 35 U.S.C. § 103 in view
`of Gresser
`
`Gresser discloses a method and apparatus for inscribing precious
`stones, such as diamonds. Ex. 1010, 2:13–16. Gresser depicts one
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`embodiment of its inscription system in Figure 1, which is reproduced
`below.
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`
`Figure 1 of Gresser shows laser beam generation system 2, table system 7
`supporting diamond 5, a computer control system 8 that controls the table
`system and laser generator, and microscopes 68 and 101 that provide direct
`viewing of the diamond from the front and above, respectively. Ex. 1010,
`2:13–68, 4:46–51.
`Although Petitioner acknowledges that Gresser was before the
`Examiner during prosecution of the application that led to the ’351 patent
`(Pet. 3), Petitioner contends that the subject matter of claims 1 and 7 would
`have been obvious to a person of ordinary skill in the art in view of Gresser.
`See Pet. 43–55. In addition to the other limitations in claims 1 and 7,
`Petitioner argues that Gresser discloses the “imaging” and “imaging system”
`requirements in claims 1 and 7, respectively, citing to the portions of Gresser
`discussing the viewing microscopes. Id. at 46, 52. Petitioner contends that
`viewing a diamond through the microscope satisfies the “imaging”
`limitations in claims 1 and 7. Id.
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`Patent Owner contends that Gresser alone does not disclose or suggest
`“imaging the gemstone from at least one vantage point” as required in claim
`1, or “an imaging system for viewing the gemstone from at least one vantage
`point and obtaining image information from the gemstone” as required in
`claim 7. Prelim. Resp. 21. Specifically, Patent Owner argues that using a
`microscope to view a diamond does not teach the “imaging” step or
`comprise an “imaging system” as required in the challenged claims. Id.
`Patent Owner notes that during the original examination, the Examiner
`considered Gresser and took the position that Gresser did not disclose
`“imaging the gemstone from at least one vantage point.” Id. at 20 (citing Ex.
`1002 (’351 File History), 174). In view of this, Patent Owner asks the Board
`to deny Ground 5 under 35 U.S.C. § 325(d). Id. at 21–22.
`According to 35 U.S.C. § 325(d), “[i]n determining whether to
`institute or order a proceeding under this chapter, chapter 30, or chapter 31,
`the Director may take into account whether, and reject the petition or request
`because, the same or substantially the same prior art or arguments previously
`were presented to the Office.” Because Gresser, and the question of whether
`Gresser discloses or suggests the imaging claim limitations, was previously
`considered by the Office, the Board exercises its authority under 35 U.S.C.
`§ 325(d) to deny this ground.
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`F. Ground 6 – Claims 1 and 7 as Obvious under 35 U.S.C. § 103 in view
`of Gresser and the ILR Article
`
`Petitioner contends that Gresser in combination with the ILR Article
`renders obvious claims 1 and 7 of the ’351 patent. Pet. 55–59.
`With regard to claim 1’s recitation of a “method of microinscribing a
`gemstone with laser energy from a pulse laser energy source, focused by an
`optical system on the workpiece,” Petitioner cites to Gresser’s disclosure of
`“a laser beam generation system 2 [applying] a pulsed laser beam 3 to a
`diamond 5,” and optical system 6 that focuses beam 3. Id. at 45–46 (citing
`Ex. 1010, 2:13–16, 58–59) (emphasis in Petition).
`Claim 1 also requires “mounting a gemstone” and “directing the
`focused laser energy onto a desired portion of the gemstone.” Petitioner
`points to table system 7 of Gresser which “supports the diamond 5 and is
`adjusted to maintain the surface 4 of the diamond at the beam 3 focus
`position during the inscription process.” Pet. 46 (citing Ex. 1010, 2:63–65).
`Petitioner also notes that “keyboard unit 88 permits entry of operator control
`instructions, including instructions defining the particular indicia to be
`inscribed,” and therefore the keyboard is capable of “receiving marking
`instructions as at least one input” as required by claim 1. Id. at 47 (citing
`Ex. 1010, 3:36–39, Fig. 1).
`Petitioner presents analogous arguments for the corresponding
`limitations in claim 7. Id. at 50–52.
`Petitioner again contends that Gresser discloses the “imaging”
`requirements in claims 1 and 7, but , as discussed above, we exercise our
`authority under 35 U.S.C. § 325(d), and will not revisit the question of
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`whether Gresser discloses this limitation, as it has already been considered
`by the Office.
`As discussed in Section C above in connection with Ground 2,
`Petitioner argues that the ILR Article discloses controlling the directing of
`the focused laser based on marking instructions (programming a computer to
`control a translatable stage to produce CAD-generated shapes) and imaging
`(“video images generated by the viewing system can be digitized and
`processed to derive information used for autofocus, registration, orientation,
`edge-following and other operations”), thereby satisfying the “controlling”
`limitations in claim 1. Id. at 57. Petitioner presents analogous arguments
`for the claim 7 requirement of “a processor for controlling said directing
`means based on said marking instructions and said imaging system, to
`selectively generate a marking based on said instructions and a
`predetermined program.” Id. at 58–59.
`Petitioner argues that it would have been obvious to a person of
`ordinary skill in the art to incorporate the programmed marking instructions
`and feedback from digitized images of the ILR Article into Gresser’s system
`to “simplif[y] set-up, accelerate[] process development, and improve[]
`flexibility of the system” and “make the laser tool easier and faster to use.”
`Id. at 56 (citing Ex. 1009, 2).
`Patent Owner does not address the merits of Petitioner’s argument,
`other than to argue that Gresser does not disclose the imaging limitations of
`claims 1 and 7, and the ILR Article does not cure these deficiencies because
`Petitioner “only argues that ILR discloses the ‘controlling’ limitation.”
`Prelim. Resp. 24–25. Patent Owner also argues that the Office has already
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`considered Gresser, and therefore contends that Ground 6 should be denied
`pursuant to 35 U.S.C. § 325(d). Id.
`We do not find Patent Owner’s arguments to be persuasive. Although
`Petitioner does not argue expressly that the ILR Article discloses or suggests
`the imaging limitations in claims 1 and 7, the UV laser workstation depicted
`in Figure 2 of the ILR Article includes a video camera and viewing optics,
`similar to those disclosed in Fine Diamonds, which, according to Petitioner,
`satisfy the imaging limitations of the claims. See Section B supra; Pet. 13,
`19–20. In addition, the ILR Article expressly discloses “[v]ideo images
`generated by the viewing system” (Ex. 1009, 3 (emphasis added)), and
`Petitioner refers to these video images in arguing that the ILR Article
`discloses controlling the directing of the focused laser energy based on
`imaging (Pet. 57–58).
`Therefore, upon consideration of the evidence presented by Pe
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