EOS OF NORTH AMERICA, INC.

Patent Trials and Appeals Board

Oct 4, 2021

2021002300 (P.T.A.B. Oct. 4, 2021)

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.
15/380,652 12/15/2016 Damien Francis Gray 28506.00002 4875
42922 7590 10/04/2021
WHITAKER CHALK SWINDLE & SCHWARTZ PLLC
301 COMMERCE STREET
Suite 3500
FORT WORTH, TX 76102-4186
EXAMINER
PAIK, SANG YEOP
ART UNIT PAPER NUMBER
3761
NOTIFICATION DATE DELIVERY MODE
10/04/2021 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):
eofficeaction@appcoll.com
patents@whitakerchalk.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAMIEN FRANCIS GRAY
____________

Appeal 2021-002300
Application 15/380,652
Technology Center 3700
____________

Before MICHELLE R. OSINSKI, WILLIAM A. CAPP, and
BRANDON J. WARNER, Administrative Patent Judges.

WARNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–14 and 22–28, which are all the
pending claims. See Appeal Br. (Cover Page); Final Act. 1 (Office Action
Summary). We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to the “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as EOS of
North America, Inc. Appeal Br. 1.
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Application 15/380,652

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CLAIMED SUBJECT MATTER
Appellant’s disclosed invention relates generally to “additive
manufacturing systems and processes for printing or otherwise building
three-dimensional (3D) parts with layer-based, additive manufacturing
techniques,” and, in particular, to “systems and methods for building
3D parts with an additive manufacturing system that uses a plurality of
directed energy beams to selectively sinter or melt layers of powder-based
material in a layer-by-layer manner.” Spec. ¶ 2. Claims 1, 22, and 26 are
independent. Claim 1, reproduced below with emphasis added, is illustrative
of the subject matter on appeal.
1. A method of additive manufacturing for building a three-
dimensional part in a part bed, the method comprising:
providing a first scanner having a first field of view of
the part bed;
providing a second scanner having a second field of view
overlapping the first field of view of the part bed and wherein
the first and second scanners are positioned above the part bed;
applying a layer of one or more powder-based materials
onto or over the part bed;
providing a laser source for each scanner, each laser
source configured to produce a laser beam and direct its laser
beam to each corresponding scanner;
directing a first laser beam from the first scanner to pre-
heat the powder-based material to a temperature near but below
its melting temperature based on a sliced layer of a digital
model for the three-dimensional part along a first tool vector
path in a first selected pattern; and
directing a second laser beam from the second scanner to
melt the pre-heated powder-based material along a second tool
vector path in a second selected pattern to produce a layer of
the three-dimensional part.

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EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Benda ’489 US 5,508,489 Apr. 16, 1996
Benda ’764 US 6,007,764 Dec. 28, 1999
Shkolnik US 2010/0125356 A1 May 20, 2010
Dierkes US 2012/0237745 A1 Sept. 20, 2012
Green US 2013/0270750 A1 Oct. 17, 2013
Ljungblad US 2014/0348691 A1 Nov. 27, 2014
Buller US 2017/0304894 A1 Oct. 26, 2017

REJECTIONS
The following rejections are before us for review:
I. Claims 1–14, 22–26, and 28 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Green in view of Ljungblad,
Dierkes, Benda ’764, and Shkolnik or Buller. Final Act. 2–5.
II. Claim 27 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Green in view of Ljungblad, Dierkes,
Benda ’764, and Shkolnik or Buller, and further in view of
Benda ’489. Id. at 5–6.

ANALYSIS
Independent claim 1 recites, in relevant part, a method of additive
manufacturing that includes providing first and second scanners that each
have a respective field of view of a part bed, providing a laser source for
each scanner to produce a laser beam and direct it to each corresponding
scanner, “directing a first laser beam from the first scanner to pre-heat the
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powder-based material . . . along a first tool vector path in a first selected
pattern,” and “directing a second laser beam from the second scanner to
melt the pre-heated powder-based material along a second tool vector path
in a second selected pattern” to thereby produce a layer of the part. Appeal
Br., Claims App. 1 (emphasis added). Independent claims 22 and 26 include
the same relevant recitations. See id.
Accordingly, all the claims on appeal include a first laser beam that is
directed along a vector path in a pattern to pre-heat the material, and a
second laser beam that is also directed along a vector path in a pattern to
melt the pre-heated material, such that the only material melted by the
second directed laser beam is the pre-heated material that is heated by the
first directed laser beam. This combination logically implies at least some
synchronization between the directing of the pre-heating laser beam and the
directing of the melting laser beam (lest no material be melted to form a
layer of the part). See, e.g., Spec. ¶¶ 40–43.
In both rejections before us, the Examiner relies on a combination of
teachings from Green, Ljungblad, Dierkes, Benda ’764, and either Shkolnik
or Buller to render obvious the claimed subject matter. See Final Act. 2–6.
As the requisite articulated reasoning for combining teachings from these
references, the Examiner states that it would have been obvious to “adapt
Green” with first and second laser beams, each having a respective field of
view, where each of the laser beams is “controlled to respectively pre[-]heat
the powder-based material and melt/fuse the pre-heated powder-based
material part,” and where both laser beams “would travel” along a respective
vector path “to predictably yield” the desired layer of a part. Id. at 4–5.
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But beyond simply stating this seemingly scattered collection of
teachings, the Examiner fails to provide a rational basis for how or why a
person would combine these disparate teachings. For example, the
Examiner’s combination disregards the fact that the references cited for
pre-heating a material consistently heat the entirety of a layer of the material.
See, e.g., Dierkes ¶¶ 233–240 (as cited by the Examiner). Indeed, other than
Appellant’s disclosure, the Examiner does not identify any reason to apply a
directed laser beam—as is consistently shown in the cited references to be
used only to melt the material—to also direct an otherwise static pre-heating
laser beam.
Thus, we agree with Appellant that the rejections do not sufficiently
explain why a person of ordinary skill in the art would have combined these
disparate teachings. See Appeal Br. 14–19; Reply Br. 4–8. In other words,
the Examiner has not sufficiently articulated reasoning based on rational
underpinnings as to why one skilled in the art would have been prompted to
combine the teachings of Green, Ljungblad, Dierkes, Benda ’764, and either
Shkolnik or Buller (along with Benda ’489 in Rejection II) in the manner
proposed. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)
(stating that “[r]ejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness” (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006))).
In response to Appellant’s arguments, the Examiner reiterates the
individual teachings relied upon and alleges that the arguments are directed
to each reference individually. See Ans. 7–9. But the Examiner still does
not provide any explanation as to why this collection of individual
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teachings—particularly those of Green and Dierkes—would be combined to
arrive at the specific operative method as claimed. See id. And though the
Examiner simply states that the references are all “in the same field of
endeavor,” the mere existence of individual claimed features in the prior art,
without more, is not sufficient to sustain a rejection on obviousness grounds.
Ans. 9. Instead, the Examiner must articulate a reason why it would have
been obvious to a person of ordinary skill in the art to combine those
features in the manner claimed. See KSR Int’l Co., 550 U.S. at 418. The
Examiner did not do so here.
Rejections based on obviousness must rest on a factual basis; in
making such a rejection, the Examiner has the initial burden of supplying the
requisite factual basis and may not, because of doubts that the invention is
patentable, resort to speculation, unfounded assumptions, or hindsight
reconstruction to supply deficiencies in the factual basis. See In re Warner,
379 F.2d 1011, 1017 (CCPA 1967). Absent improper hindsight
reconstruction, we do not see a sufficient reasoned explanation based on a
rational underpinning as to why one of ordinary skill in the art would have
been led to modify Green with Ljungblad, Dierkes, Benda ’764, and either
Shkolnik or Buller, and a reason for such modification is not otherwise
evident from the record.
Although we appreciate that the individual findings relied upon from
each of the cited references appear to be supported by a preponderance of
the evidence, we note that a claim “composed of several [features] is not
proved obvious merely by demonstrating that each [feature] was,
independently, known in the prior art.” KSR Int’l Co., 550 U.S. at 418
(emphasis added). Rather, a sustainable obviousness rejection further needs
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to explain the reasoning by which those findings support the Examiner’s
conclusion of obviousness. Perfect Web Techs., Inc. v. InfoUSA, Inc., 587
F.3d 1324, 1328–30 (Fed. Cir. 2009). In this case, the rejections fail to meet
this required standard.
Accordingly, based on the record before us, the Examiner has not met
the burden of establishing a proper prima facie case of obviousness. On this
basis, we do not sustain Rejections I and II.

DECISION
We REVERSE the Examiner’s decision rejecting claims 1–14, 22–26,
and 28 under 35 U.S.C. § 103 as being unpatentable over Green in view of
Ljungblad, Dierkes, Benda ’764, and Shkolnik or Buller.
We REVERSE the Examiner’s decision rejecting claim 27 under
35 U.S.C. § 103 as being unpatentable over Green in view of Ljungblad,
Dierkes, Benda ’764, and Shkolnik or Buller, and further in view of
Benda ’489.

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CONCLUSION
In summary:

Claim(s)
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–14,
22–26, 28 103
Green, Ljungblad,
Dierkes, Benda ’764,
Shkolnik, Buller
1–14, 22–26, 28
27 103
Green, Ljungblad,
Dierkes, Benda ’764,
Shkolnik, Buller,
Benda ’489
27
Overall
Outcome
1–14, 22–28

REVERSED