El-Wardany, Tahany Ibrahim. et al.

Patent Trials and Appeals Board

Jan 27, 2020

14202195 - (D) (P.T.A.B. Jan. 27, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/202,195 03/10/2014 Tahany Ibrahim El-Wardany 71024US03;
67097-2465PUS1
7035
54549 7590 01/27/2020
CARLSON, GASKEY & OLDS/PRATT & WHITNEY
400 West Maple Road
Suite 350
Birmingham, MI 48009
EXAMINER
SANCHEZ-MEDINA, REINALDO
ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
01/27/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
ptodocket@cgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TAHANY IBRAHIM EL-WARDANY, MATTHEW E. LYNCH,
DANIEL V. VIENS, and ROBERT A. GRELOTTI
____________

Appeal 2019-003485
Application 14/202,195
Technology Center 3700
____________

Before JENNIFER D. BAHR, MICHELLE R. OSINSKI, and
SEAN P. O’HANLON, Administrative Patent Judges.

O’HANLON, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1–5, 7–13, and 15–17. We have jurisdiction over
this appeal under 35 U.S.C. § 6(b). We REVERSE.
In explaining our Decision, we refer to the Specification filed March
10, 2014 (“Spec.”), the Final Office Action mailed April 19, 2018 (“Final
Act.”), the Appeal Brief filed October 11, 2018 (“Appeal Br.”), the

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as United Technologies
Corporation. Appeal Br. 1.
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Application 14/202,195

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Examiner’s Answer mailed February 8, 2019 (“Ans.”), and the Reply Brief
filed March 29, 2019 (“Reply Br.”).
SUMMARY OF THE INVENTION
Appellant’s claimed invention relates to gas turbine engines. Spec.
¶ 2. Claims 1 and 12 are independent. Claim 1, reproduced below from
page 9 (Claims Appendix) of the Appeal Brief, is illustrative of the claimed
subject matter:
1. A method of fabricating a functionally graded turbine
engine component comprising:
depositing layers of powder onto a base;
solidifying and fusing each layer with a first directed
energy beam to define a component; and
varying a process parameter between deposited layers to
define different material properties within the component,
further comprising varying the energy level from the first
directed energy beam to vary a density of a solidified layer of
powder.
REFERENCES
The Examiner relies on the following prior art references in rejecting
the claims on appeal:
El-Wardany US 2013/0195671 A1 Aug. 1, 2013
Neuhaeusler US 2013/0287590 A1 Oct. 31, 2013
REJECTIONS2
I. Claims 1–3, 7–13, 16, and 17 stand rejected under 35 U.S.C. § 102(a)
as being anticipated by Neuhaeusler.

2 The Final Action included a rejection of claims 1–5, 7–11, 13, 15, and 16
under 35 U.S.C. § 112(b) as being indefinite. Final Act. 4. Although the
Examiner did not expressly withdraw this rejection, the after-final
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II. Claims 4, 5, and 15 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Neuhaeusler and El-Wardany.
ANALYSIS
Rejection I – Anticipation by Neuhaeusler
Claims 1–3 and 7–11
Independent claim 1 recites, in relevant part, “varying the energy level
from the first directed energy beam to vary a density of a solidified layer of
powder.” Appeal Br. 9 (Claims App.). The Examiner finds that
Neuhaeusler discloses “varying the energy level (from an initial beam level
to a final beam level) from the first directed energy beam (24) to vary a
density (while being sintered by the beam the density is inherently varied) of
a solidified layer of powder.” Final Act. 5 (citing Neuhaeusler ¶ 31). The
Examiner explains that “the energy level of the laser beam is varied from an
initial energy level capable of being zero when the laser is initially off, to a
finishing energy level when the laser is sintering the powder.” Ans. 6 (citing
Neuhaeusler ¶ 31). According to the Examiner, “the density of the powder
is inherently varied by the sintering/heating of the laser beam to produce the
desired component.” Id.
Appellant persuasively asserts, however, that “[o]ne skilled in the art
would not understand the simply turning on of an energy beam as a variation
that provides a variation in a solidified layer.” Reply Br. 4. In particular,

amendment filed June 14, 2018, which was entered by the Advisory Action
dated July 9, 2018, removed the allegedly indefinite claim language, and the
Examiner did not reproduce the rejection in the Answer. See Ans. 3–6.
Thus, we consider the rejection under 35 U.S.C. § 112(b) to have been
effectively withdrawn, and not before us for review.
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Neuhaeusler discloses an electron or laser beam impinging on a layer of
powder on a base, and melting the powder such that it is locally sintered
together to form a component. Neuhaeusler ¶ 31. Then, the base is lowered,
a new powder layer is applied, and the new powder layer is sintered by the
electron or laser beam in a continued process until the component is
finished. Id. To the extent that turning on and off the laser involves varying
the energy level of the laser (i.e., from zero to a value greater than zero), as
posited by the Examiner (see Ans. 6), the Examiner does not point to, nor do
we find, any evidence on the record to support a finding that turning on and
off the laser also would inherently “vary a density of a solidified layer of
powder,” as recited in claim 1. Even assuming, arguendo, that “the density
of the powder is inherently varied by the sintering/heating of the laser beam”
of Neuhaeusler (id. (emphasis added)), the Examiner has not explained
adequately how sintering also would inherently vary the density of a
solidified layer of powder. To understand what claim 1 means by “to vary a
density of a solidified layer of powder” (Appeal Br. 9 (Claims App.)
(emphases added)), we need look no further than the preceding language
recited in this method step of claim 1. Specifically, claim 1 recites “varying
a process parameter between deposited layers to define different material
properties within the component,” and this “varying” step further comprises
“varying the energy level from the first directed energy beam to vary a
density of a solidified layer of powder.” Id. (emphases added). Thus,
claim 1 recites varying the energy level between deposited layers to vary a
density of a solidified layer of powder relative to other solidified layers of
the component.
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“[T]here are strict requirements before a finding of inherent
anticipation is made. Indeed, inevitability is at the heart of inherency . . . .”
Howmedica Osteonics Corp. v. Zimmer, Inc., 640 F. App’x 951, 957 (Fed.
Cir. 2016). In other words, “that a certain thing may result from a given set
of circumstances is not sufficient.” In re Robertson, 169 F.3d 743, 745 (Fed.
Cir. 1999) (citations and quotation marks omitted). Here, the Examiner has
not provided sufficient evidence or technical reasoning that varying the
density of a solidified layer of powder would necessarily or inevitably result
from Neuhaeusler’s sintering. In short, the Examiner has not established a
finding supported by a preponderance of the evidence that Neuhaeusler
discloses, either expressly or inherently, varying the energy level of the laser
to vary the density of a solidified layer of powder.3
For the foregoing reasons, we are persuaded that the Examiner erred
in finding that Neuhaeusler discloses all of the limitations of claim 1.
Accordingly, we do not sustain the rejection of claim 1, or its dependent
claims 2, 3, and 7–11, as being anticipated by Neuhaeusler.
Claims 12, 13, 16, and 17
Independent claim 12 recites, in relevant part, “heat treating a
solidified layer using a second directed energy beam to induce compressive
residual stress into solidified layers of powder.” Appeal Br. 10 (Claims

3 The Examiner states, in the Answer, that “there are several examples of
prior art that teach treating turbine engine components by varying the
electron beam from a level above zero power to another level above zero
power in order to vary the density.” Ans. 6–7 (citing US 2015/0064407
¶ 15; US 5,837,960, 22:1–10). However, the Examiner does not rely on
these references in any rejection before us for review. As such, these
additional references have not been considered in this Decision.
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App.). The Examiner finds that finds that Neuhaeusler discloses “heat
treating a solidified layer (paragraph 31) using a second (Fig. 1) directed
energy beam (24) to induce compressive residual stress into solidified layers
of powder (laser beam sintering the layer will inherently induce residual
stress in the same manner as the inventors[’] invention).” Final Act. 6. The
Examiner explains that, “in Figure 1 of the drawings[,] the laser cited as 24
is clearly illustrated as two different laser beams and in paragraph 31
Neuhaeusler . . . disclose[s] the new powder layer being sintered again by
‘beams.’” Ans. 8.
Appellant argues that “Neuhaeusler discloses that multiple beams
could be utilized to speed up the fabrication process . . . , [but] nothing in
Neuhaeusler discloses any type of heat treating to a solidified layer.”
Appeal Br. 7. In particular, Appellant asserts that “the Examiner’s reading
of the melting process common to all additive manufacturing processes as
the recited heat treating step is not a reasonable interpretation of
Neuhaeusler.” Id.; see also id. (asserting that “the Examiner is reading the
same step in Neuhaeusler as both the initial melting step and a heat treating
step”). We agree with Appellant.
Although Neuhaeusler discloses that multiple electron or laser beams
can be used to sinter layers of powder (see Neuhaeusler ¶¶ 31, 40), the
Examiner does not point to, nor do we find, adequate disclosure in
Neuhaeusler to support a finding that a second laser is used to heat treat a
solidified layer of powder, as required by claim 12. To the extent that
Neuhaeusler’s sintering involves heating layers of powder (see Ans. 7–8),
the Examiner has not provided sufficient evidence or technical reasoning to
establish that Neuhaeusler discloses using a second electron or laser beam to
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heat treat a solidified layer of powder (i.e., a layer solidified and fused by a
first electron or laser beam).
For the foregoing reasons, the Examiner fails to establish by a
preponderance of the evidence that Neuhaeusler anticipates the subject
matter of claim 12. Accordingly, we do not sustain the rejection of claim 12,
or its dependent claims 13, 16, and 17, as being anticipated by Neuhaeusler.
Rejection II – Obviousness based on Neuhaeusler and
El-Wardany
The Examiner’s rejection of claims 4, 5, and 15 relies on the same
findings as to the disclosure of Neuhaeusler that we find deficient for the
reasons discussed above in connection with Rejection I. See Final Act. 7–8.
The Examiner relies on El-Wardany for teaching additional recited features,
but does not articulate any findings or reasoning that would cure the
aforementioned deficiencies in the disclosure of Neuhaeusler. See id.
Accordingly, for the same reasons discussed above, we do not sustain the
rejection of claims 4, 5, and 15 as being unpatentable over Neuhaeusler and
El-Wardany.

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Conclusion
In summary:
Claims
Rejected 35 U.S.C. § Reference(s) Affirmed Reversed
1–3, 7–13,
16, 17
102(a) Neuhaeusler 1–3, 7–13, 16,
17
4, 5, 15 103(a) Neuhaeusler,
El-Wardany
4, 5, 15
Overall Outcome 1–5, 7–13, 15–
17
REVERSED