Ex Parte Bruck et al

Patent Trial and Appeal Board

Jul 30, 2018

14071774 (P.T.A.B. Jul. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/071,774 11/05/2013
28524 7590 08/01/2018
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
3501 Quadrangle Blvd Ste 230
Orlando, FL 32817
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Gerald J. Bruck
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2013Pl4584US 5547
EXAMINER
HEVEY, JOHN A
ART UNIT PAPER NUMBER
1735
NOTIFICATION DATE DELIVERY MODE
08/01/2018 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):
ipdadmin.us@siemens.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GERALD J. BRUCK and AHMED KAMEL
Appeal2017-010719
Application 14/071, 77 4
Technology Center 1700
Before ROMULO H. DELMENDO, JAMES C. HOUSEL, and
WESLEY B. DERRICK, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants 1 appeal from the
Examiner's decision rejecting claims 1, 3---6, and 21. 2 We have jurisdiction
over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART, and enter NEW GROUNDS OF
REJECTION. 3
1 According to Appellants, the real party in interest is Siemens Energy, Inc.
Appeal Brief (Appeal Br.) 3, filed February 21, 2017.
2 Pending claims 7-20 have been withdrawn from consideration and are not
before us on appeal. Non-Final Office Action (Non-Final) 2, dated July 21,
2016.
3 Our Decision additionally refers to the Specification (Spec.) filed
November 5, 2013, the Examiner's Answer (Ans.) dated June 15, 2017, and
Appellants' Reply Brief (Reply Br.) filed August 15, 2017.
Appeal2017-010719
Application 14/071, 77 4
STATEMENT OF THE CASE
The invention relates to additive manufacturing apparatus using a
fluidized bed of powdered metal and powdered flux for forming or repairing
metal components (Spec. 1: 1-8). Appellants disclose that the use of energy
beams, such as lasers, has been used to melt pre-placed stainless steel
powder onto a carbon steel substrate with powdered flux material providing
shielding of the melt pool, wherein the flux powder may be mixed with the
stainless steel powder or applied as a separate covering layer (id. at 1 :25-
29). Appellants also disclose that it was known to shield the melt pool from
the atmosphere by applying an inert gas, such as argon, during laser heating
(id. at 3:7-10). In addition, Appellants disclose that it was known to cast a
part from a fluidized bed of powdered metal and selectively heating regions
of the powdered metal using a laser, wherein an inert gas is provided to
displace any atmospheric gases that react with molten metal to form oxides
(id. at 4:9-16). By fluidizing a bed of powdered metal and powdered flux,
Appellants disclose that the invention can form components continuously
without incrementally forming layers to build up a substrate and without the
need of introduction of expensive inert gases (id. at 5:22-26).
Sole independent claim 1, reproduced below from the Claims
Appendix to the Appeal Brief, is illustrative of the subject matter on appeal.
The limitation at issue is italicized.
1. An additive manufacturing apparatus comprising:
a chamber comprising a side wall and a bottom wall but
not a top wall, and an opening comprising a perimeter defined
at least in part by the side wall, the opening permitting
unrestricted fluid communication between an interior of the
chamber and atmospheric gases;
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a fluidized bed of powdered material including powdered
metal material and powdered flux material in the chamber;
a scanning system that is disposed in the atmospheric
gases and that emits an energy beam that selectively scans
portions of a surface of the bed of powdered material to heat
and melt the powdered material which then solidifies to form
metal deposits; and,
one or more controllers to control relative movement
between the energy beam and the metal deposits according to a
predetermined shape of a component.
REJECTIONS
The Examiner maintains, and Appellants request our review of, the
following grounds of rejection under 35 U.S.C. § 103:
1. Claims 1 and 4---6 as unpatentable over Arcella in view of
Brown;
2. Claim 3 as unpatentable over Arcella and Brown, further in
view of Bruck and Sassatelli; and
3. Claim 21 as unpatentable over Arcella and Brown, further in
view of Crump.
In addition, the Examiner maintains the following nonstatutory double
patenting rejection: 4
4. Claim 1 as unpatentable over claims 4--6 and 11 of copending
U.S. Patent Application No. 14/533,185 in view of Brown; and
5. Claims 1 and 4 as unpatentable over claims 1-11 of copending
U.S. Patent Application No. 14/480,688 in view of Brown.
4 The Examiner set forth these rejections as provisional (Ans. 2). For
reasons explained herein, we no longer designate these rejections as
provisional.
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ANALYSIS
Rejection 4: Nonstatutory Obviousness-type Double Patenting over
copending US. Patent Application No. 14/533,185
Although the Examiner maintains this rejection, we note that, at the
time of this Decision, U.S. Patent Application No. 14/533,185 is in
abandoned status and is no longer pending. Therefore, this rejection is moot.
Rejection 5: Nonstatutory Obviousness-type Double Patenting over
copending US. Patent Application No. 14/480, 688
We note that U.S. Patent Application No. 14/480,688 has issued as
U.S. Patent No. 10,029,417 on July 24, 2018. Thus, this nonstatutory double
patenting rejection is no longer provisional. Further, although the Examiner
maintains this rejection, Appellants neither request our review of, nor submit
argument against, this rejection. Accordingly, we summarily affirm this
rejection.
Rejection 1: Obviousness over Arcelia and Brown
After review of the opposing positions articulated by Appellants and
the Examiner, the applied prior art, and Appellants' claims and Specification
disclosures, we determine that Appellants' arguments are sufficient to
identify reversible error in the Examiner's obviousness rejection over the
combination of Arcella and Brown. In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011 ). Appellants argue that the combination of Arcella and Brown
fails to teach a fluidized bed of powdered material including powdered metal
material and powdered flux material as required by claim 1 (Appeal Br. 6).
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The Examiner finds that the recitation, "powdered metal material and
powdered flux material," is directed to the material worked upon by the
apparatus as claimed and, therefore, is not accorded patentable weight (Non-
Final 3, citing MPEP 2115). The Examiner notes that claim 1 recites a
scanning system which emits an energy beam that heats and melts the
powdered materials to form a component comprised of solidified metal
deposits (Ans. 3). Therefore, the Examiner finds that the ordinary artisan
would understand that, as the apparatus is operated, the powdered material is
worked upon and eventually removed in the form of a solidified article, and
a new supply of powdered material is introduced into the chamber to
continue operation (id.). Because the powdered materials are not only
consumed in the process of using the apparatus, but also make up the
additively manufactured article produced by the apparatus, the Examiner
finds these powdered materials constitute the material to be worked upon by
the apparatus (id. at 3--4).
As MPEP 2115 states, "[ c ]laim analysis is highly fact-dependent" and
"[a] claim is only limited by positively recited elements." Further, MPEP
2115 cites to In re Otto, 312 F.2d 937 (CCPA 1963) and In re Young, 75
F .2d 996 ( CCP A 193 5), which are discussed by the Examiner and
Appellants, and to In re Casey, 370 F.2d 576 (CCPA 1967). Appellants
contend Otto's claims were directed to an article of manufacture which
failed to recite any means by which the core member could be attached to
hair, thereby rendering its intended use as a curler for hair to be of no
significance (Appeal Br. 8). With respect to Young, Appellants contend that
the claims were directed to a machine for making concrete beams and
limitations to the concrete reinforced members made by the machine did not
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make the claims patentable (id.). On the other hand, the Examiner
determines that, in Young, the specific composition of the material worked
upon, i.e., "a concrete and reinforcing beam composite," was not accorded
patentable weight (Ans. 4).
At the outset, we agree that claim analysis is highly fact dependent
and claims are to be limited only to positively recited elements (MPEP
2115). Thus, in any determination of controlling case law, the statutory
category of invention and positively recited elements of the claims at issue
are critical to determining whether the facts here find corollary in, or are
divergent from, any particular decision. In re Hiniker Co., 150 F.3d 1362,
1369 (Fed. Cir. 1998) ("the name of the game is the claim.").
In Otto, the relevant claims were directed to, as an article of
manufacture, a core member for hair curlers comprising an elastically
resilient foam body carrying in its pores a hair waving lotion in non-liquid
form. Otto, 312 F.2d at 937-938. The Otto court noted that the recitation
involving the hair being wound directly on the foam body was irrelevant to
the claims' patentability as "inclusion of the material or article worked upon
by a structure being claimed does not impart patentability to the claims." Id.
at 940. The court further noted that no means for attaching hair to the body
was recited in the claims. Id. at 941. Thus, in Otto, the material being
worked upon was hair which was not positively recited as an element of the
claims, but was instead directed to the intended use of the article of
manufacture.
In Young, the claims were directed to machines for making concrete
beams, wherein one of the claims, claim 6, recited "concrete reinforced
structures." Young, 75 F.2d at 996. The Examiner in Young rejected claim 6
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on the ground that it improperly included, as an element, the material being
worked upon, which rejection the Board approved. Id. at 998. The Young
court further stated that "its inclusion may not lend patentability" to the
claim which was otherwise not allowable. Id.
In Casey, the claims were directed to a taping machine, but failed to
positively recite the tape. Casey, 370 F.2d at 577. Casey argued that the
claims fundamentally differed from the prior art in the intended use of the
devices; Casey's was a tape dispenser while the prior art was a perforating
device. Id. at 942. The Casey court held that this difference related to the
method of intended use of Casey's device and, therefore, did not distinguish
the device over the prior art. Id. The Casey decision further discusses the
proper weight to be accorded preambles as positive structural limitations,
finding in this case that the preamble did not recite more than the intended
use. Id. at 943.
Neither Otto nor Casey actually positively recited the feature
identified in these decisions as the material worked upon, i.e., the hair in
Otto and the tape in Casey. Instead, Otto and Casey argued features of the
method of using the claimed article or machine which were directed to the
intended uses thereof. Further, while Young appears to have attempted to
positively recite the final product made by the claimed apparatus, the court
therein acknowledged that this was material being worked upon which could
not lend patentability to a claim to the apparatus for making that product.
Unlike Otto, Young, and Casey, the claims here positively recite, as a
structural element of the claim, a fluidized bed of powdered material,
wherein the powdered material includes powdered metal material and
powdered flux material. Further, the fluidized bed of powdered material is
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not the final product. Although the Examiner is correct that a small amount
of the powdered material of the fluidized bed is consumed in the process of
using the apparatus for forming or repairing a component, as Appellants
disclose, the fluidized bed actively functions as part of the apparatus (Reply
Br. 9). Appellants disclose that "by fluidizing a bed of powdered material
that includes both metal powdered materials and flux powdered materials[,]
substrates can be formed continuously without incrementally forming layers
to build up a substrate and without the need of introduction of expensive
inert gases" (Spec. 5:22-26). In addition, Appellants disclose that
adequately fluidizing the bed so that a sufficient amount of powdered
material will settle for processing depends on a number of inter-related
parameters including, among others, the size and density of the powdered
materials (id. at 6:7-11). Thus, the powdered materials are necessary
parameters of the fluidized bed, which itself is a structural element of the
apparatus.
We recognize that whether a claim recites material worked upon, like
the analysis of preambles discussed in the Otto and Casey decisions, requires
a fact-based case by case analysis that, in some cases, present close
questions. However, here the apparatus claim positively recites a structural
element, the fluidized bed of powdered material, and there is sufficient
disclosure to support that this fluidized bed and the particular powdered
materials therein are structural limitations of the apparatus, rather than
merely material worked upon by the apparatus. Accordingly, the
Examiner's determination that "powdered metal material and powdered flux
material" is merely directed to material being worked on by the apparatus
and is not entitled to patentable weight is harmful error. Because the
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Examiner's obviousness rejection relies on this erroneous determination, the
Examiner's conclusion of obviousness lacks sufficient rational
underpinning. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)
("[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."), quoted with approval in KSR Int 'l Co. v. Teleflex Inc., 550
U.S. 398,418 (2007). We will not sustain the Examiner's decision to reject
claim 1, and claims 4---6 which depend therefrom, over the combination of
Arcella and Brown.
Rejection 2: Obviousness over Arcelia and Brown, further in view of Bruck
and Sassatelli
The Examiner finds that Arcella fails to teach the use of a powdered
flux material or a slag removal tool (Non-Final 5). However, the Examiner
finds that Bruck teaches a method of laser beam welding, wherein a powder
flux is incorporated at the point of heating to enhance control of the
melt/weld pool, improve wetting properties, alter the melt composition, and
to prevent atmospheric contaminants (id.). In addition, the Examiner finds
Bruck teaches that the flux, once incorporated into the melt pool, forms a
slag on the surface thereof (id.). The Examiner concludes that it would have
been obvious to use a mixture of powdered metal with powdered flux in
Arcella to obtain the benefits of the flux taught by Bruck (id.).
With regard to the slag removal tool, the Examiner finds Sassatelli
teaches a method of additive welding comprising a tool adjacent to a
component to remove slag at the completion of each welded layer (Non-
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Final 5). The Examiner concludes that it would have been obvious to
include a slag removal tool adjacent to a component being formed in
Arcella, as modified in view of Bruck, to remove slag formations on the
surface of material solidified on the component (id.). The Examiner further
finds that because the component is located in the opening of Arcella's
chamber 2, it would have been obvious to locate the slag removal tool
adjacent to the component through the opening in order to efficiently reach
the component (id. at 6).
Appellants first argue that nothing in Bruck or Sassatelli teaches or
suggests a scanning system disposed in atmospheric gases as recited in claim
1 (Appeal Br. 12). Moreover, Appellants contend that no motivation to
combine Bruck with Arcella exists (id.). Appellants argue that the
Examiner's motivation to combine is merely a conclusory statement without
the proper rational underpinning to support the obviousness conclusion (id.).
Appellants urge that Arcella clearly discloses an enclosure that surrounds the
casting chamber so that an inert environment may be maintained therein in
order to protect the component from environmental gases (id.). Appellants
further urge, in contrast, Bruck' s process inherently protects itself from the
environment, thereby dispensing with the need for an inert atmosphere (id.).
Appellants argue that the ordinary artisan would readily identify these
distinctions and not be motivated to perform a process in a protected
enclosure, where the enclosure provides protection from the atmosphere,
when the process dispenses with the need for that protection from the
atmosphere (id.).
With regard to Sassatelli, Appellants argue that the Examiner
mischaracterizes what is disclosed therein (Appeal Br. 13). In particular,
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Appellants contend that nothing in Sassatelli teaches or suggests a slag tool
disposed in atmospheric gases (id.). According to Appellants, Sassatelli
merely describes that the component can be rotated against a wire brush to
knock off slag and that slag can be removed at the completion of each layer
(id.). Appellants contend that the Examiner's mischaracterization of
Sassatelli is based on improper hindsight relying on information gleaned
solely from Appellants' Specification (id. at 13-14).
Appellants' arguments are not persuasive of reversible error. Initially,
we note that the Examiner relies on Bruck for a limitation, the use of
powdered flux material, which exists in claim 3 by virtue of its dependency
on claim 1. Indeed, as set forth above, the absence of this feature in the
combination of Arcella and Brown led to reversible error in the Examiner's
obviousness conclusion as to claim 1. The addition of Bruck to the
combination of Arcella and Brown remedies this deficiency in Rejection 1.
Further, although Appellants argue that nothing in the combination of
Arcella, Brown, and Bruck teaches or suggests a scanning system disposed
in atmospheric gases (see also Appeal Br. 9), we disagree. To begin, we
note Appellants suggest that, based on the teaching of Bruck, the ordinary
artisan would not be motivated to perform a process using flux material in a
protected enclosure, where the enclosure provides protection from the
atmosphere, when Brock's process dispenses with the need for that
protection from the atmosphere. Thus, Appellants' suggestion readily leads
to the apparent conclusion that the ordinary artisan would have found it
obvious to have foregone any special enclosure and inert atmosphere over
Arcella's chamber 2 when using flux powder in the fluidized bed because
the ordinary artisan would readily recognize that flux material inherently
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protects itself from the environment and dispenses with the need for an inert
protective atmosphere. In doing so, the scanning system would necessarily
be disposed over the opening of the chamber without an enclosure or an inert
environment around the chamber.
Moreover, the Examiner construes "atmospheric gases" as "whatever
gas(es) exist adjacent to the claimed opening of [the] chamber, which may
include for example, air or inert gas" (Non-Final 2). Further, the Examiner
notes that claim 1 does not preclude the chamber and scanning system from
being disposed in an enclosure or the enclosure from having a controlled
inert atmosphere around the chamber (Ans. 5). Appellants fail to dispute or
otherwise address the Examiner's construction of claim 1 and "atmospheric
gases" (see id. at 5---6).
The Examiner also finds Brown teaches that the laser emitting means
may be located either inside or outside an enclosure (Non-Final 4). The
Examiner concludes it would have been obvious to locate Arcella's laser
scanning system outside the enclosure (id.). Appellants argue that Brown
merely teaches that "other heating means" may be disposed outside the
enclosure (Appeal Br. 9). However, Appellants mischaracterize Brown's
teaching. Brown teaches that a laser system may be the means for melting
the material within the chamber, but teaches "[ o ]ther means for melting the
material contemplated herein includes but is not limited to ultrasound, x-ray,
and microwave" (Brown 6:20-22). Brown further teaches "[t]he means for
melting the material ... could be external to the chamber" (id. at 6:31-33).
Clearly, contrary to Appellants' characterization, Brown includes the laser
system as one of the means that could be external to the chamber.
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Likewise, the Examiner finds that Sassatelli's slag removal tool is
disposed adjacent to the component receiving additive weld material (Ans.
9). The Examiner further determines that it would have been obvious to
locate a slag removal tool adjacent the opening of Arcella's chamber 2 in
order to reach the component which would necessarily dispose this tool in
the same atmospheric gases as the chamber (id.). We are apprised of no
error in this determination because, as properly applied, "the [obviousness]
analysis need not seek out precise teachings directed to the specific subject
matter of the challenged claim, for a court can take account of the inferences
and creative steps that a person of ordinary skill would employ." KSR, 550
U.S. at 418; see also In re Preda, 401 F.2d 825, 826 (CCPA 1968) ("[I]t is
proper to take into account not only specific teachings of the reference but
also the inferences which one skilled in the art would reasonably be
expected to draw therefrom.").
Accordingly, we sustain the Examiner's obviousness rejection of
claim 3 based on the combination of Arcella, Brown, Bruck, and Sassatelli.
In addition, because we find that Bruck remedies the deficiencies in the
Examiner's obviousness rejection of claim 1, we also conclude that claim 1
and dependent claims 4--6, which were not separately argued, would have
been obvious over the combination of Arcella, Brown, and Bruck.
Therefore, claims 1 and 4--6 are rejected under 35 U.S.C. § 103 as
unpatentable over Arcella in view of Brown and Bruck. We designate this
rejection as a new ground of rejection pursuant to 37 C.F.R. § 4I.50(b)
(2016).
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Rejection 3: Obviousness over Arcelia, Brown, and Crump
Claim 21 depends from claim 1, and further requires a piston and a
superalloy plate disposed thereon. As set forth above with regard to the
rejection of claim 1, the Examiner's combination of Arcella and Brown is
deficient because neither Arcella nor Brown teach or suggest the use of flux
powdered material in the chamber as required by claim 1. The Examiner
does not rely on Crump to remedy this deficiency. Thus, the Examiner's
rejection of claim 21 as obvious over the combination of Arcella, Brown,
and Crump is likewise deficient. We, therefore, do not sustain this rejection.
Nonetheless, as set forth with regard to Rejection 2, Bruck remedies
the deficiency. Accordingly, claim 21 is rejected under 35 U.S.C. § 103 as
unpatentable over Arcella in view of Brown and Bruck, and further in view
of Crump. We designate this rejection as a new ground of rejection pursuant
to 37 C.F.R. § 4I.50(b) (2016).
DECISION
Upon consideration of the record, and for the reasons given above and
in the Non-Final Office Action and the Examiner's Answer, the decision of
the Examiner rejecting claims 1 and 4 under the nonstatutory ground of
double patenting over claims 1-11 of copending U.S. Patent Application No.
14/480,688 in view of Brown, and rejecting claim 3 under 35 U.S.C. § 103
as unpatentable over the combination of Arcella, Brown, Bruck, and
Sassatelli is affirmed. The decision rejecting claim 1 under the nonstatutory
ground of double patenting over claims 4--6 and 11 of copending U.S. Patent
Application No. 14/533,185 in view of Brown is moot.
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However, for the reasons given above and in the Appeal and Reply
Briefs, the decision of the Examiner rejecting, under 35 U.S.C. § 103, claims
1 and 4---6 as unpatentable over the combination of Arcella and Brown, and
claim 21 as unpatentable over the combination of Arcella, Brown, and
Crump, is reversed.
Nonetheless, under 35 U.S.C. § 103, we newly reject claims 1 and 4---6
as unpatentable over Arcella in view of Brown and Bruck, and claim 21 as
unpatentable over Arcella in view of Brown and Bruck, further in view of
Crump.
Because our decision may be viewed as including new rationale, and
to ensure Appellants are provided a fair opportunity to respond, we
designate these new rejections as NEW GROUNDS OF REJECTION
pursuant to 37 C.F.R. § 4I.50(b).
This decision contains a new ground of rejection pursuant to 37 CPR
§ 4I.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960 (August 12,
2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37 CPR§
4I.50(b) provides "[a] new ground of rejection pursuant to this paragraph
shall not be considered final for judicial review."
37 CPR § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected,
or both, and have the matter reconsidered by the examiner, in which
event the proceeding will be remanded to the examiner ....
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(2) Request rehearing. Request that the proceeding be reheard under§
41.52 by the Board upon the same record ....
AFFIRMED-IN-PART
NEW GROUNDS OF REJECTION, 37 C.F.R. § 4I.50(b)
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