UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`TIFFANY AND COMPANY,
`
`Petitioner,
`
`v.
`
`LAZARE KAPLAN INTERNATIONAL INC.,
`
`Patent Owner.
`
`Patent No. 6,476,351
`
`
`Inter Partes Review No. IPR2015-00024
`
`
`DECLARATION OF JEFFREY BOKOR IN SUPPORT OF
`PATENT OWNER
`
`
`
`
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`dc-799884
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`IPR2015-00024
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`Lazare Kaplan International, Inc. Exhibit 2005 Page 1
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`TABLE OF CONTENTS
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`Page
`
`A.
`B.
`C.
`D.
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`INTRODUCTION ................................................................................ 1
`Background and Qualifications ............................................................ 1
`Summary of Opinion ............................................................................ 4
`Legal Standards .................................................................................... 5
`A. Validity Generally ................................................................................ 5
`B. Determining Patent Validity Is a Two-Step Analysis .......................... 6
`C. Obviousness .......................................................................................... 6
`Level of Skill in the Art ........................................................................ 8
`Background of the Technology ............................................................ 8
`Summary of the ’351 Patent ............................................................... 12
`Specification ....................................................................................... 12
`Claims ................................................................................................. 16
`The claims require electronic image information .............................. 17
`The claims require marking instructions and electronic image
`information combined to perform laser inscription ........................... 19
`Summary of the Prior Art References at Issue ................................... 24
`Fine Diamonds ................................................................................... 24
`A.
`ILR Article ......................................................................................... 27
`B.
`C. Gresser ................................................................................................ 28
`Analysis of the Prior Art References at Issue .................................... 29
`Fine Diamonds does not render obvious claims 1 and 7.................... 29
`Fine Diamonds in combination with the ILR Article does not
`render obvious claims 1 and 7 ............................................................ 31
`C. A POSITA would not combine Fine Diamonds with the ILR
`Article ................................................................................................. 34
`D. Gresser in combination with the ILR Article does not render
`obvious claims 1 and 7 ....................................................................... 38
`i
`
`A.
`B.
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`
`
`I.
`II.
`III.
`IV.
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`V.
`VI.
`VII.
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`VIII.
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`IX.
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`TABLE OF CONTENTS
`(continued)
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`Page
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`E.
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`A POSITA would not combine Gresser with the ILR Article ........... 38
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`ii
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`1.
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`I, Jeffrey Bokor, make this declaration in connection with the above-
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`captioned inter partes review proceeding.
`
`I.
`
`INTRODUCTION
`2.
`
`I have been retained by counsel for Lazare Kaplan International Inc.,
`
`(“LKI” or “the Patent Owner”) as a technical expert in connection with this inter
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`partes review proceeding. I submit this declaration in support of the Patent Owner
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`Response for United States Patent Nos. 6,476,351 (the “’351 Patent.). I have been
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`retained to provide a technical opinion concerning the ’351 Patent, and certain
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`prior art references cited in this inter partes review proceeding, which are
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`discussed in further detail below.
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`II. BACKGROUND AND QUALIFICATIONS
`3.
`I have over 30 years of experience in the fields of optics, imaging
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`technology, laser technology, and precision opto-mechanical systems. I received a
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`BS in electrical engineering from the Massachusetts Institute of Technology in
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`1975, an MS in electrical engineering from Stanford University in 1976, and a
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`Ph.D. in electrical engineering from Stanford University in 1980. A detailed
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`account of my education, professional experience, and contributions to the
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`literature is available in my C.V., which is attached to this declaration as Appendix
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`A.
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`
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`1
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`4.
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`From 1980 until 1992, I was employed at AT&T Bell Laboratories,
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`where I worked extensively on laser engineering, optical engineering, and
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`semiconductor lithography, among other topics. In particular, I worked on laser
`
`engineering (including Q-switched, frequency multiplied, Nd:YAG and Nd:YLF
`
`lasers), laser processing of materials, design and construction of advanced optical
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`imaging systems, and design and construction of precision systems for alignment
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`and registration of semiconductor wafers in advanced lithography systems.
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`5.
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`From 1981 through 1984, I led experiments on laser processing of
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`silicon. As part of that work, I studied some of the basic mechanisms involved in
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`laser ablation.
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`6.
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`I have been a professor of Electrical Engineering and Computer
`
`Sciences (“EECS”) at the University of California, Berkeley since 1993. I have
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`also held a joint appointment as a Faculty Scientist at the Lawrence Berkeley
`
`National Laboratory (LBNL) since 1993. In 2008, I was appointed a Senior
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`Faculty Scientist at LBNL, and I continue to hold that title. I currently serve as
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`Associate Dean for Research in the College of Engineering at the University of
`
`California at Berkeley.
`
`7.
`
`At Berkeley, I have taught classes in optics, lasers, semiconductor
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`physics and devices, and semiconductor process technology. In 1999, I created a
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`one semester advanced undergraduate class in the EECS Department called
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`
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`2
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`Introduction to Optical Engineering. I taught that class almost annually through
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`2010. I also created a one semester advanced graduate class on advanced imaging
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`theory in the EECS Department in 1996 and offered the class four times between
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`1996 and 2004.
`
`8.
`
`Beginning in 1987 at Bell Labs, and continuing at UC Berkeley
`
`through 2005, I worked intensively on a number of projects related to advanced
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`semiconductor lithography. These projects included precision interferometry,
`
`projection imaging, focusing systems, and mask inspection, among other topics.
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`During the course of this work, I became familiar with a variety of image
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`processing technologies including autofocusing, alignment and registration, and
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`feature extraction.
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`9.
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`I have been elected Fellow of the Optical Society of America (OSA),
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`the Institute for Electrical and Electronic Engineers (IEEE), and the American
`
`Physical Society (APS). I currently hold the National Semiconductor
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`Distinguished Professorship (an endowed Chair) in Electrical Engineering and
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`Computer Sciences at the University of California at Berkeley. During my career,
`
`I have served on numerous Program Committees, Scientific Advisory Committees,
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`and Technical Advisory Boards. I have served as Chair or Co-Chair of numerous
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`technical conferences. I have published over 260 journal articles in the scientific
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`and technical literature.
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`3
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`10.
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`I am being compensated by the Patent Owner for my consultation in
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`connection with this inter partes review proceeding, and all activities in connection
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`with the preparation of this declaration. I am being paid regardless of the
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`conclusions or opinions I reach. I have no personal or financial stake or interest in
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`the outcome of this inter partes review proceeding.
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`11.
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`I have previously consulted and testified as a technical expert in a
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`number of patent infringement cases. Many of these cases related to precision
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`opto-mechanical systems involving imaging and image processing technologies.
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`III. SUMMARY OF OPINION
`12.
`I understand that Tiffany and Company (“Tiffany”) filed a Petition for
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`Inter Partes Review of claims 1 and 7 of U.S. Patent No. 6,476,351 (the “’351
`
`Patent”), entitled “Laser Marking System,” assigned to Lazare Kaplan
`
`International Inc., (“LKI”). I further understand that the Patent Trial and Appeal
`
`Board has instituted review based on the following three obviousness grounds:
`
` The article entitled “Fine Diamonds with Laser Machining” by C. Paul
`
`Christensen (“Fine Diamonds”), Ex. 1007.
`
` Fine Diamonds in combination with the article from the Industrial Laser
`
`Review entitled “Laser Processing Works on a Micro Scale,” by C. Paul
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`Christensen (the “ILR Article”), Ex. 1009.
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`
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`4
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` U.S. Patent No. 4,392,476 to Gresser et al. (“Gresser”), Ex. 1010, in
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`combination with the ILR Article.
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`13.
`
`I have reviewed these prior art references, as well as the ’351 Patent
`
`(Ex. 1001), its file history (Ex. 1002), and a 2010 Federal Circuit opinion regarding
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`claim construction (Ex. 1006). I have been asked to articulate and declare my
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`opinions, based on my expertise and review of the materials, concerning the
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`validity of claims 1 and 7 in view of these instituted grounds. My opinion is that
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`claims 1 and 7 of the ’351 Patent are valid over all three instituted grounds.
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`IV. LEGAL STANDARDS
`14.
`In formulating my opinions set forth in this report, I have been
`
`provided with an explanation of the relevant principles of U.S. patent law that
`
`govern the determination of patent validity. The discussion of those legal
`
`principles set forth below is not intended to be exhaustive. It is intended only to
`
`provide some context for my opinions set forth in this report.
`
`A. Validity Generally
`15.
`I understand that a patent claim will be deemed invalid if it is
`
`“anticipated” or rendered “obvious” in view of the “prior art.” I have been
`
`instructed by counsel for LKI to assume that the patents, patent applications, and
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`other publications discussed herein qualify as “prior art.”
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`B. Determining Patent Validity Is a Two-Step Analysis
`16.
`I have been informed that a determination of patent validity involves a
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`two-step analysis. In the first step, the claim language must be construed to
`
`determine its scope and meaning. In the second step, the claims as properly
`
`construed must be compared to the alleged prior art to determine whether the claim
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`is valid.
`
`C. Obviousness
`17.
`I understand that a patent claim is deemed “obvious” if the subject
`
`matter of the claimed invention (including all limitations) would have been
`
`obvious to a person of ordinary skill in the art, at the time of the patent’s invention
`
`date, in view of a prior art reference or combination of prior art references.
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`18.
`
`I understand that an analysis of obviousness involves a factual inquiry
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`into (1) the scope and content of the prior art; (2) the differences between the prior
`
`art and the claims at issue; (3) the level of ordinary skill in the art; and (4)
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`secondary considerations of non-obviousness.
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`19.
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`I understand that a claim may be non-obvious even if all of the
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`limitations it recites existed in the prior art amongst more than one reference. To
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`determine whether such a claim is obvious, I understand that it is important to
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`consider whether there was an apparent reason to combine the various elements in
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`the fashion claimed by the claimed invention. For example, that can be a teaching,
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`suggestion, or motivation to combine. I understand, however, that prior art
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`references need not provide an explicit teaching, suggestion, or motivation to
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`combine the elements in the prior art in order for the combination of those
`
`elements to be obvious. I understand that the following factors may be considered
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`in evaluating the existence of a reason to combine: (a) the interrelated teachings of
`
`multiple references; (b) the effects of demands known to the design community or
`
`present in the marketplace; and (c) the background knowledge possessed by one of
`
`ordinary skill in the art. I also understand that the combination of familiar
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`elements according to known methods may be obvious when it does no more than
`
`yield predictable results, but that the combination may not be obvious if its actual
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`application is beyond the abilities of a person of ordinary skill.
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`20.
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`I understand that when the prior art “teaches away” from combining
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`certain known elements, it suggests that a person of skill in the field would not
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`have had a reason to combine them. Thus, one question to be answered is whether
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`someone reading the prior art would be discouraged from following the path taken
`
`by the inventor.
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`21.
`
`I understand that so-called “secondary considerations of non-
`
`obviousness,” must be considered in an obviousness analysis. I understand that an
`
`analysis including these secondary considerations helps to prevent the forbidden
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`use of hindsight in determining whether a patent claim is obvious. I understand
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`that secondary considerations of non-obviousness include: (a) a long-felt but
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`unresolved need for the invention; (b) commercial success of the invention; (c)
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`copying of the invention by the accused infringer; (d) praise and recognition of the
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`invention by others; (e) licensing of the rights to the invention; and (f) unexpected
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`results.
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`V. LEVEL OF SKILL IN THE ART
`22.
`I understand validity must be determined from the perspective of a
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`person of ordinary skill in the art as of the invention date for the patent-in-suit. I
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`am informed that the invention date listed on the ’351 Patent is January 5, 1996,
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`and that Tiffany does not contest this date. I have adopted the level of ordinary
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`skill in the art advanced by Tiffany’s expert, Dr. Trumper, which I understand was
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`also applied in a prior litigation involving the ’351 Patent. Thus, a person of
`
`ordinary skill in the art would possess at least a bachelor’s degree in mechanical,
`
`electrical, manufacturing, or optical engineering, plus a few years of experience in
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`the design and control of machines involving precision motion, lasers, and optics.
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`VI. BACKGROUND OF THE TECHNOLOGY
`23. Historically, various techniques arose for inscribing gemstones, such
`
`as diamonds, with lasers. Two early examples were Gresser (Ex. 1010), filed by
`
`Lazare Kaplan & Sons, Inc., in 1980, and U.S. Patent No. 4,467,172 to Ehrenwald
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`et al. (“Ehrenwald”) (Ex. 2009), filed in 1983. During prosecution, the patent
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`examiner determined that the ’351 claims distinguished over both Gresser and
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`Ehrenwald, in combination. (Ex. 1002, 174, 179.)
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`24. According to Gresser, the value of a precious stone, such as a
`
`diamond, is determined by characteristics such as color, weight, degree of
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`perfection, and vendor of the stone. (Ex. 1010, 1:10-17.) Gresser recognized the
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`utility for these characteristics to be linked to the gemstone, to “follow the stone
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`through its travel from the original vendor to the eventual purchaser.” (Id., 1:14-
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`17.) But at the time of Gresser, it was not possible to mark these characteristics on
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`the stone without defacing the stone and reducing its value. (Id., 1:17-20.)
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`25. Gresser addressed this problem by using a laser to scribe an
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`identifying indicium in the stone. (Id., 1:41-46.) The laser could mark a very
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`small indicium on the gemstone imperceptible to the human eye, less than 100
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`microns, which did not reduce the value of the stone. (Id., 1:46-50; 2:43-49.)
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`Inscribing a stone with the vendor brand name, for example, actually increased the
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`value of the stone and also prevented misrepresentation about the stone’s origin
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`and value. (Id., 8:16-23.)
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`26. Like Gresser, Ehrenwald sought a “reliable detection procedure which
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`would verify the identity of precious stones such as diamonds.” (Ex. 2009, 1:16-
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`18.) Ehrewald provided “a laser system for providing a focussed spot of
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`electromagnetic radiation on or into a diamond for engraving selected indicia.”
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`(Id., Abstract, 2:16-19.) Thus, both Gresser and Ehrenwald recognized the value in
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`inscribing gemstones with identifying indicia and used lasers to meet this objective.
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`27. Both Gresser and Ehrenwald disclose similar techniques for setting up
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`a gemstone for inscription by adjusting the starting point and focus before
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`beginning the inscription process.
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`28. For example, Gresser discloses the gemstone on a table system that
`
`includes four stacked tables. (Ex. 1010, 2:63-3:3.) The four tables enable
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`movement in the x, y, z, and rotational directions. (Id., 3:4-13.) The tables are
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`driven by stepping motors, which are controlled by either a microprocessor or
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`manually by a joystick. (Id., 3:14-19.)
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`29. Gresser further discloses two microscopes for viewing the diamond,
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`one located above the diamond and one in front of the diamond. (Id., 4:46-48.) As
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`part of determining the proper focus, the operator looks at the microscope above
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`the diamond, and moves the table using the joystick “such that a point on the
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`profile of the girdle is brought to the intersection of the cross-hairs of the
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`microscope.” (Id., 5:1-6). The operator also looks through the microscopes and
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`uses the crosshairs to make various measurements of the diamond and inputs these
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`measurements into a computer. (Id., 4:61-68, 5:22-44.) These setup techniques
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`would have been labor-intensive and slow, because they would have required a
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`skilled operator to make measurements and other manual adjustments using a
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`microscope, and then, in some cases, separately input the measurements into the
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`computer.
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`30. Similarly, Ehrenwald also discloses a positioning table for the
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`diamond that can move in multiple directions. (Ex. 2009, 5:9-14.) Ehrenwald also
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`discloses “a binocular viewing system to allow accurate positioning and focusing
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`of the laser beam on the diamond.” (Id., 2:40-43, see also id., 4:47-53.) These
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`setup techniques would also have been labor-intensive and slow, because they
`
`would have required a skilled operator to make manual adjustments to the stage in
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`order to bring the gemstone into focus and to identify its starting point.
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`31.
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`In addition to the binocular viewing system, Ehrenwald discloses a
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`television camera for viewing the gemstone during the engraving process. (Id.,
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`4:56-58.)
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`32. Both Gresser and Ehrenwald further disclose processor control,
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`allowing a user to enter an inscription into a computer and for the processor of the
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`computer to cause the inscription to occur on the stone.
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`33. Finally, both Gresser and Ehrenwald disclose allowing an operator to
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`enter an inscription into a computer and for the processor of the computer to cause
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`the inscription to occur on the gemstone. In Gresser, the operator inputs the
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`inscription content to a computer control system with a microprocessor. (Ex. 1010,
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`4:52-68, 5:22-44.) The operator also looks through the microscopes and uses the
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`crosshairs to make various measurements of the gemstone and inputs these
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`measurements separately into the computer control system. (Id., 4:61-68, 5:22-44.)
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`Once the microprocessor has these two separate inputs, the operator instructs the
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`microprocessor to commence the inscription process. (Id., 6:7-10.) The
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`microprocessor provides the appropriate signals to beam deflectors, which deflect
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`the laser beam appropriately to create an indicium on the stone. (Id., 6:11-59.) If
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`additional indicia are to be inscribed, the processor causes the table to move to a
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`non-inscribed area to inscribe another indicium. (Id., 6:60-7:10.)
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`34. Like Gresser, Ehrenwald also discloses that once the laser beam is
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`accurately positioned and focused on the diamond gemstone, a computer moves
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`the table to cause the inscription of the stone. (Ex. 2009, 5:9-21.)
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`35. Although both Gresser and Ehrenwald disclose microscopes and video
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`cameras to be used by an operator to view the gemstone, neither reference
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`discloses feeding back a captured gemstone image to the computer to aid with the
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`computer control of the inscription process.
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`VII. SUMMARY OF THE ’351 PATENT
`A.
`Specification
`36. Like Gresser and Ehrenwald, the ’351 Patent discloses a laser marking
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`system for inscribing indicia on a gemstone. (Ex. 1001, 15:1-6.) The stone may be
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`inscribed with identification and security features, such as a logo, serial number,
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`and barcode. (Id., 25:59-26:18.)
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`37. Similar to Gresser and Ehrenwald, the ’351 Patent discloses locating a
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`gemstone on a translatable stage. (Id., 4:46-65.) The ’351 Patent further discloses
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`two video cameras for viewing the gemstone to assist the operator with focusing
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`and adjustments during setup as well as for viewing the gemstone during the
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`inscription process. (Id., 16:51-17:8, 18:14-18.)
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`38. Like Gresser and Ehrenwald, the ’351 Patent discloses moving the
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`translatable stage with a computer based on a user-entered inscription and other
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`measurements. (Id., 18:33-42.)
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`39. But unlike Gresser and Ehrenwald, the ’351 Patent discloses feedback
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`of the gemstone image to the processor for image processing. Specifically,
`
`the ’351 Patent discloses combining the inscription content entered by the operator
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`with gemstone image information fed back to the processor to generate the
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`inscription. Fig. 9, for example, illustrates the video from vertical camera 28 and
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`side camera 32 sent to computer 52 via video-graphics card 56.
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`40. The ’351 Patent discusses the optical feedback provided by the two
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`cameras (id., 2:61-3:1) and further states that:
`
`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., 3:14-17, see also 11:6-10.)
`
`41. A gemstone is mounted, and then adjusted so that the location of the
`
`inscription (e.g., the girdle) is brought into view of the cameras. (Id., 16:62-17:4.)
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`The cameras provide this girdle image information to computer screen 57 of
`
`computer 52 via video-graphics card 56 as shown in red in annotated Fig. 9 above.
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`Once the operator can see the magnified girdle on the computer screen, the user
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`enters an inscription into the machine, such as a logo via keyboard 58, to paint the
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`inscription onto the image. (Id., 17:9-13.) For example, the inscription content is
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`displayed on computer screen 57, superimposed or overlaid on the girdle. (Id.,
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`17:13-16.) The operator then moves and sizes the inscription, using mouse 59, for
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`example, to correctly locate the inscription on the workpiece girdle. (Id., 17:16-18;
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`see also 20:52-58.) The use of the keyboard 58, computer screen 57 and mouse 59
`
`in this manner is shown in blue in annotated Fig. 9 above. Computer screen 57 is
`
`shown in both red and blue, since both the inscription data and gemstone are
`
`combined and displayed simultaneously.
`
`42. Next, the computer takes the inscription, the size and location of the
`
`inscription with respect to the imaged gemstone girdle, and other measurements,
`
`and processes this data together to create a G-code file. (Id., 17:36-37.) G-code is
`
`a series of instructions that directs the movement of the translatable stages. The G-
`
`code instructions embody the detailed sequence of motions that the translatable
`
`stages must perform so that the fixed laser spot is moved across the desired portion
`
`of the gemstone to draw the inscription. The computer transfers the G-code file to
`
`the stage controller, which then moves the stages in order to perform the selected
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`inscription. (Id., 17:38-40.) This is shown in green in annotated Fig. 9 above.
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`43. Therefore, unlike the Gresser and Ehrenwald prior art, the ’351 Patent
`
`discloses more than making measurements using a microscope or camera and
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`manually entering those measurements into a computer with the inscription.
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`The ’351 Patent also discloses more than rudimentary manual focus adjustments
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`and starting point determinations at setup. Instead, the ’351 Patent discloses
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`feedback of the digitized camera image to the computer so that the image and the
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`inscription content can be combined to generate a marking. By viewing the
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`relationship of the inscription content with image, the operator is able to correctly
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`and accurately position and size the inscription content on the gemstone in a way
`
`that was not disclosed in the prior art. This technique is less labor-intensive than
`
`the setup techniques in Gresser and Ehrenwald, and would also permit an operator
`
`to perform an inscription more quickly.
`
`B. Claims
`44. The two claims at issue in this proceeding are claims 1 and 7 of
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`the ’351 Patent, reproduced below.
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`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:
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`mounting a gemstone in a mounting system;
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`directing the focused laser energy onto a desired portion
`of the gemstone;
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`imaging the gemstone from at least one vantage point;
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`receiving marking instructions as at least one input; and
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`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.
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`7. A laser energy microinscribing system, for gemstones,
`said system comprising:
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`a laser energy source;
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`a gemstone mounting system, allowing optical access to a
`mounted workpiece;
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`an optical system for focusing laser energy from the laser
`energy source, onto the gemstone to create an ablation
`pattern thereon;
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`means for directing said focused laser energy onto a
`desired portion of the gemstone, having a control input;
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`an imaging system for viewing the gemstone from at
`least one vantage point and obtaining image information
`from the gemstone;
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`an input for receiving marking instructions; and
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`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.
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`C. The claims require electronic image information
`45. A person of ordinary skill in the art (POSITA) at the time of the ’351
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`Patent, after reviewing the claims and specification, would understand that the
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`ordinary and customary meaning of both claims 1 and 7 require electronic image
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`information fed back from the imaging step/system.
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`46. For example, claim 1 recites that the “controlling” step be performed
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`based on “the marking instructions and the imaging.” The claimed “imaging”
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`refers back to the step of “imaging the gemstone from at least one vantage point,”
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`which a POSITA would understand as capturing electronic image information
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`Because the “controlling” is based on the “imaging” step, a POSITA would
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`interpret the “controlling” as based on image information captured in the “imaging
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`step,” which would be electronic image information.
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`47. Similarly, claim 7 recites that the processor’s “controlling” is based
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`on “said marking instructions and said imaging system.” The imaging system is
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`for “viewing the gemstone from at least one vantage point and obtaining image
`
`information from the gemstone.” The obtained image information, moreover,
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`would be electronic. Thus, in order for the “controlling” to be based on the
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`“imaging system,” a POSITA would interpret the “controlling” as based on the
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`electronic “image information” fed back to the “processor” from the “imaging
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`system.”
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`48. The specification also discloses providing electronic image
`
`information fed back to a computer processor. Under the “SUMMARY OF THE
`
`INVENTION” section, the specification states that “[o]ptical feedback of the
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`process is possible through one or more video cameras, e.g., 2 CCD imagers….”
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`(Ex. 1001, 2:61-62.) Both Figs. 9 and 10 of the ’351 Patent also show two cameras,
`
`with outputs to one computer system. The specification states that operator control
`
`is possible “through use of the video cameras which are directed at the workpiece,
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`which display a real time image on a computer monitor.” (Id., 6:1-4.) From my
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`review of the specification, it consistently describes electronic image data collected
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`by a camera and fed back to the computer. (Id., 6:23-33, 12:39-49, 16:51-17:8,
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`18:27-33, 20:47-62, 22:52-56.)
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`D. The claims require marking instructions and electronic image
`information combined to perform laser inscription
`49. A POSITA, after reviewing both the claims and specification, would
`
`further understand that both claims 1 and 7 require that the “controlling”
`
`limitations are based on a combination of the marking instructions and electronic
`
`image information.
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`50.
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`In claim 1, the conjunction “and” links the “marking instructions”
`
`with the electronic image information. Both are used by the “controlling” step as
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`part of the same task “to selectively generate a marking based on the instructions.”
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`By using two inputs (“marking instructions” and electronic image information) to
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`produce one output (“selectively generate a marking”), a POSITA would interpret
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`the claim as requiring two inputs combined in the “controlling” step to accomplish
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`the output of generating a marking.
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`51. Claim 7 also includes a conjunction, that the processor’s “controlling”
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`be based on “said marking instructions and said imaging system” to “selectively
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`generate a marking based on said instructions and a predetermined program.” This
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`would inform a POSITA that both the “marking instructions” and electronic image
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`information are inputs that are processed in combination to perform the task of
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`selectively generating a marking. The use of “a predetermined program” in claim
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`7 further makes clear that a program takes the inputs of “marking instructions” and
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`electronic image information and combines them to produce an output that
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`generates a marking.
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`52. The specification of the ’351 Patent also consistently discloses that the
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`marking instructions and electronic image information are used in combination to
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`generate a marking. From my review, there is only one “Mode of Operation.” (Ex.
`
`1001, 16:43.) The ’351 Patent explains that the “Mode of Operation” allows the
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`operator to perform a type of “painting,” by superimposing inscription content onto
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`a gemstone image that is fed back to the computer. (Id., 17:9-16.) Either the
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`operator or computer then manipulates the inscription content to locate the
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`inscription content on the gemstone image. (Id., 17:16-18; see also id., 17:33-36;
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`20:52-58.)
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`53. The “Mode of Operation” also specifies