Ex Parte Carbone

Board of Patent Appeals and Interferences

Jul 22, 2010

11054770 (B.P.A.I. Jul. 22, 2010)

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.
11/054,770 02/09/2005 Frank L. Carbone P-B111-CIP 2293
29222 7590 07/23/2010
W. THOMAS TIMMONS
1320 PRUDENTIAL DRIVE
SUITE 208
DALLAS, TX 75235-4117
EXAMINER
HEINRICH, SAMUEL M
ART UNIT PAPER NUMBER
3742
MAIL DATE DELIVERY MODE
07/23/2010 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte FRANK L. CARBONE
____________________

Appeal 2009-007542
Application 11/054,770
Technology Center 3700
____________________

Before JAMESON LEE, RICHARD TORCZON, and
SALLY C. MEDLEY, Administrative Patent Judges.

LEE, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
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A. STATEMENT OF THE CASE
This is a decision on appeal by an Appellant under 35 U.S.C. § 134(a)
from a final rejection of claims 1-7. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm-in-part.

References Relied on by the Examiner
Bredow 4,335,296 Jun. 15, 1982
Handke et al. (“Handke”) 5,006,694 Apr. 9, 1991
Rabinovich 5,578,227 Nov. 26, 1996
Islam et al. (“Islam”) 5,855,149 Jan. 5, 1999
Kaplan et al. (“Kaplan”) 5,932,119 Aug. 3, 1999
Kar et al. (“Kar”) US 6,203,861 B1 Mar. 20, 2001
White US 6,519,500 B1 Feb. 11, 2003
Stricklen US 6,610,958 B2 Aug. 26, 2003

The Rejections on Appeal
The Examiner rejected claims 1-3 under 35 U.S.C. § 103(a) as
unpatentable over Kar and Kaplan.
The Examiner rejected claim 4 under 35 U.S.C. § 103(a) as
unpatentable over Kar, Kaplan, and Stricklen.
The Examiner rejected claims 5 and 6 under 35 U.S.C. § 103(a) as
unpatentable over Kar, Kaplan, Stricklen, and either Bredlow or Handke.
The Examiner rejected claims 1-4 and 7 under 35 U.S.C. § 103(a) as
unpatentable over Rabinovich, Kaplan, and Islam.
The Examiner rejected claims 5 and 6 under 35 U.S.C. § 103(a) as
unpatentable over Rabinovich, Kaplan, Islam, and White.

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The Invention
The invention relates to a device for manufacturing three dimensional
objects. (Spec. 1:16.)
Claim 1 is reproduced below (App. Br. 12 Claims App’x.):
1. A system for working on a substrate to build up a workpiece,
comprising:

a material feed;

a generator for focusing a directed a densely focused energy
beam, with a diameter generally ranging from .025 inch to .25 inch
onto the substrate to apply the material from the material feed;

a three axis stage with unidirectional tooling; and

a controller capable of accommodating two additional rotational
axes.
B. ISSUES
1. Has the Appellant shown that the Examiner erred in
determining that the prior art accounts for the claim feature of a “three axis
stage with unidirectional tooling”?
2. Does the record reflect that the term “electronic beam”
appearing in claim 2 is definite within the meaning of 35 U.S.C. § 112,
second paragraph?
3. Has the Appellant shown that the Examiner erred in
determining that the prior art accounts for the “spool” feature of claim 4?
4. Has the Appellant shown any error in the Examiner’s
description of how the features of claims 5-7 are described in the prior art?
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C. FINDINGS OF FACT
1. Kar describes a one-step rapid manufacturing process that is
used to create three dimensional prototyping parts. (Kar Abstract.)
2. The manufacturing process includes a three-axis workstation
200 that moves in the X, Y, and Z directions. (Kar 5:52-55.)
3. Kar also describes that a laser 100/100’ directs an energy beam
towards optics 120, 130 located above the workstation and interacts with a
feed of powder material to form a layered structure 175 on the substrate 170
that is located on top of workstation 200. (Id. at 6:52-7:12; Fig. 1.)
4. Rabinovich discloses a rapid prototyping system that generates
a three-dimensional model by applying a laser beam to a material feed, such
as a wire. (Rabinovich 2:46-57.)
D. PRINCIPLES OF LAW
During examination, claim terms are given their broadest reasonable
interpretation consistent with the specification. In re Zletz, 893 F.2d 319,
321 (Fed. Cir. 1989).
E. ANALYSIS
The Examiner rejected claims 1-6 based on Kar. The Examiner
alternatively rejected claims 1-7 based on Rabinovich.
The rejections based on Kar
The Examiner rejected (1) claims 1-3 over Kar and Kaplan; (2) claim
4 over Kar, Kaplan, and Stricklen; and (3) claims 5 and 6 over Kar, Kaplan,
Stricklen, and either Bredlow or Handke. The Appellant argues each claim
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separately with the exception of claim 3 which is argued collectively with
independent claim 1.
Claims 1 and 3
The Appellant challenges the Examiner’s rejection based on Kar,
arguing the following (App. Br. 10:8-14):
The Kar et al. patent shows an apparatus to create prototypes, not
finished parts. Looking at Figure 1 of Kar et al. shows that it is the
workpiece on the XYZ workstage. The tools remain fixed. Claim 1
of the patent application at issue is clear that the “three axis stage” is
for the “unidirectional tooling.” Further, the Kar et al. patent just
shows a laser with a powder feeder. There is no simultaneous milling
shown in Kar et al. Claim 1 of the patent application at issue includes
“a three axis stage with unidirectional tooling.”

The Appellant’s arguments are unpersuasive. Kar describes a one-
step rapid manufacturing process that is used to create three dimensional
prototyping parts. (Kar Abstract.) The Appellant does not explain the
significance of his assertion that Kar “creates prototypes, not finished parts.”
The claims do not refer to “finished parts.” In any event, even if the claims
are interpreted as requiring “finished parts,” the Appellant does not provide
any rationale as to why Kar’s prototypes, once formed and completed, are
not themselves “finished parts.” The Appellant also does not explain the
relevance of the statement that “[t]here is no simultaneous milling shown in
Kar et al.” There is no “milling” requirement in the claims, much less any
milling that is “simultaneous” with some other operation.
The Appellant’s claims do require “a three axis stage with
unidirectional tooling.” During examination, claim terms are given their
broadest reasonable interpretation consistent with the specification. In re
Zletz, 893 F.2d at 321. As described in the Appellant’s specification, a
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“three axis stage” is a stage that moves in three directions. (Spec. 11:12-21.)
The term “unidirectional” means “involving, functioning, moving, or
responsive in one direction.” Merriam Webster’s Collegiate Dictionary
1292 (10th ed. 1996). That meaning is consistent with the Appellant’s
specification which describes that unidirectional tooling involves “building
depositing in one direction only.” (Spec. 21:6-8; 17-22.) The term “tooling”
is not defined in the Appellant’s specification. The term also does not
appear in the above-referenced dictionary. However, as set forth above, the
term “unidirectional tooling” in the context of the Appellant’s specification
is used to describe an arrangement of parts that allows for the deposition of
material that creates a structure upon the three axis stage in a single
direction. Thus, the Appellant’s claims require a stage that moves in three
directions and tooling associated within that stage that allows for application
of deposited material upon the stage in one direction.
Kar describes that its manufacturing process includes a three-axis
workstation 200 that moves in the X, Y, and Z directions. (Kar 5:52-55.)
Kar also describes that a laser 100/100’ directs an energy beam towards
optics 120, 130 located above the workstation and interacts with a feed of
powder material to form a layered structure 175 on the substrate 170 that is
located on top of workstation 200. (Id. at 6:52-7:12; Fig. 1.) The Examiner
determined that Kar’s workstation forms the claimed “three axis stage.”
(Ans. 3:18-20.) The Examiner also determined that substrate 170 located on
the workstation and which is acted upon by a laser located above the
workstation accounts for the “unidirectional tooling” feature of the claims.
(Id. at 9:13-16.) Those determinations are reasonable.
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The Appellant simply states that because Kar’s “tools remain fixed”
(App. Br. 10:10), that means it does not disclose a “three axis stage with
unidirectional tooling.” The Appellant, however, does not explain which of
Kar’s tools are “fixed.” The Appellant also does not explain why any tool
fixation in Kar means that Kar does not disclose a “three axis stage with
unidirectional tooling.” As discussed above, Kar discloses a workstation as
a stage that moves in three directions and a substrate on the stage that is
acted upon by a laser from a single direction above the stage to form a three
dimensional structure on the substrate. The Appellant does not set forth any
meaningful reasoning as to why that disclosure in Kar does not account for
the “three stage axis stage with unidirectional tooling” of the claims. No
error has been shown.
We sustain the rejection of claims 1 and 3 as unpatentable over Kar
and Kaplan.
Claim 2
Claim 2 is dependent on claim 1 and adds “wherein the directed
energy beam is an electronic beam.” (App. Br. 12 Claims App’x.) The
Examiner rejected claim 2 as unpatentable over Kar and Kaplan.
Claim 2 uses the term “electronic beam” (emphasis added). The term
“electronic beam” is non-standard and does not appear in the Specification.
Throughout the Specification, only the term “electron” is paired with the
term “beam” to describe the type of focused energy beam that makes up the
preferred embodiment of the Appellant’s invention. (See, e.g., Spec 5:1-5.)
Indeed, that usage is consistent with the disclosed prior art, which refers to
the term “electron beam.” (See Stricklen 4:23.) The Appellant does not
submit any objective evidence, such as declaration testimony, establishing
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that “electronic beam” and “electron beam” have the same meaning. On this
record, the meaning of “electronic beam” is unclear.
As set forth below, we enter a new ground of rejection to claim 2
under 35 U.S.C. § 112, second paragraph. The claim fails to particularly
point out and distinctly claim the subject matter which the Appellant regards
as his invention.
The analysis of a claim rejection based on prior art should not be
performed where it is necessary to engage in speculation as to the meaning
of claim terms and assumptions as to the scope of a claim. In re Steele, 305
F.2d 859, 862 (CCPA 1962). Because the meaning of the term “electronic
beam” is unclear and renders uncertain the scope of claim 2, the Examiner’s
prior art rejection is necessarily based on speculation as to the claim’s scope.
We do not reach the rejection of claim 2 as unpatentable of Kar and Kaplan.
Claim 4
Claim 4 is dependent on claim 1 and adds the limitation “wherein the
material feed comprises a spindle for dispensing a wire from a spool to be
melted by the directed energy beam, creating a workpiece.” (App. Br 12
Claims App’x.)
In rejecting claim 4 the Examiner relied on Kar, Kaplan, and
Stricklen. The dispute centers on the “spool” feature. The Examiner relied
on Stricklen as teaching a wire material feed for a welding torch where the
wire is fed to the torch from a spool 140. (Ans. 5:4-8.) The Examiner
reasoned that it would have been obvious to modify the material feed in Kar
to be a wire that is fed from a spool as taught in Stricklen. (Id. at 5:9-12)
The Appellant argues that Stricklen’s spool is instead a “gimbal” that does
not account for the spool of claim 4. (App. Br. 10:30-11:4.)
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We reject the Appellant’s argument. Stricklen describes its element
140 as a “supply spool” that delivers wire to the tip of its welding torch.
(Stricklen 6:44-50.) The Appellant does not explain why he characterizes
the disclosed supply spool as a “gimbal.” In any event, even if Stricklen’s
“supply spool” is a “gimbal,” the Appellant does not meaningfully explain
what structural characteristics of this gimbal render it distinct from a spool.
We are not persuaded that the spool disclosed in Stricklen does not account
for the spool of the Appellant’s claims.
We sustain the rejection of claim 4 as unpatentable over Kar, Kaplan,
and Stricklen.
Claims 5 and 6
Claims 5 and 6 are reproduced below (App. Br. 12 Claims App’x.):
5. A system according to Claim 4 further including a machining
tool for working on the workpiece as it is created.

6. A system according to Claim 5 wherein the spindle and the
machining tool move together with respect to the workpiece.

In rejecting claims 5 and 6, the Examiner pointed to Kar, Kaplan,
Stricklen and Bredlow or Handke. The Applicant’s challenge to the
rejection of those claims amounts simply to a reproduction of the claims and
a general allegation that the references do not show the features added by the
claims. (App. Br. 11:5-12.) The Appellant’s statements are insufficient to
constitute an argument for the separate patentability of claims 5 and 6. See
37 CFR § 41.37(c)(1)(vii) (“A statement which merely points out what a
claim recites will not be considered an argument for separate patentability of
the claim.”).
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In any event, the Examiner provided a detailed description of how the
features of claim 5 and 6 are accounted for in the prior art. (Ans. 5:13-6:8.)
The Applicant does not address the Examiner’s description, much less show
how or why it is in error.
We sustain the rejection of claims 5 and 6 over Kar, Kaplan, Stricklen
and Bredlow or Handke.
The rejections based on Rabinovich
The Examiner rejected: (1) claims 1-4 and 7 over Rabinovich, Kaplan,
and Islam; and (2) claims 5 and 6 over Rabinovich, Kaplan, Islam, and
White.
With regard to claim 1, the Appellant challenges the Examiner’s
rejection by stating the following (App. Br. 10:15-17):
The Rabinovich patent also shows a prototyping system. Once
again, it moves the stage rather than the tools. It directs the laser
beam through the fixed wire spool, and does not show simultaneous
milling.

Rabinovich discloses a rapid prototyping system that generates a
three-dimensional model by applying a laser beam to a material feed, such as
a wire. (Rabinovich 2:46-57.) The teachings of Rabinovich closely track
those of Kar. The above-noted arguments submitted by the Appellant are
effectively the same as those presented for Kar with respect to claim 1.
For the same reasons given above in connection with the rejection of
claim 1 based on Kar, we reject the Appellant’s arguments applied to
Rabinovich. The patentability of claim 3 is not argued apart from
independent claim 1.
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With respect to claim 4, the Appellant does not submit any argument
that is relevant to the Examiner’s rejection of that claim over Rabinovich,
Kaplan, and Islam. Rather, the Appellant simply contends that Stricklen
does not disclose the “spool” that is required by claim 4. In the context of
the rejection of claim 4 based on Rabinovich, Kaplan, and Islam, Stricklen is
not applied. The Examiner identified a wire feed spool 60 present in
Rabinovich. (Ans. 6:12-13.) We are not persuaded of any error in the
Examiner’s rejection of claim 4 over Rabinovich, Kaplan, and Islam.
With respect to claims 5-7, the Appellant simply reproduces the
features added by those claims and generally concludes that those features
are not found in the prior art. That is not an argument for the separate
patentability of any of those claims. See 37 CFR § 41.37(c)(1)(vii).
Moreover, the Appellant does not address the Examiner’s detailed
description of how the feature of claims 5-7 are accounted for by the prior
art. (See Ans. pp. 6-8; 11-12.) We are not persuaded of any error in the
Examiner’s rejections of claims 5-7.
For the foregoing reasons, we sustain the rejection of claims 1, 3, and
7 over Rabinovich, Kaplan, and Islam and claims 5 and 6 over Rabinovich,
Kaplan, Islam, and White.
As set forth below, claim 2 is indefinite. We do not reach the
Examiner’s rejection of claim 2 over Rabinovich, Kaplan, and Islam. See In
re Steele, 305 F.2d at 862.
New Ground of Rejection
Title 37 C.F.R. § 41.50(b) states “[s]hould the Board have knowledge
of any grounds not involved in the appeal for rejecting any pending claim, it
may include it its opinion a statement to that effect with its reasons for so
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holding, which statement constitutes a new ground of rejection of the claim.”
Pursuant to that section, we enter a new ground of rejection of claim 2.
Claim 2 is rejected under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the subject
matter which the Appellant regards as his invention. The meaning of the
term “electronic beam” in claim 2 is uncertain as explained above in the
context of the obviousness rejection of claim 2 over Kar and Kaplan.
F. CONCLUSION
1. The Appellant has not shown that the Examiner erred in
determining that the prior art accounts for the claim feature of a “three axis
stage with unidirectional tooling.”
2. The record does not reflect that the term “electronic beam”
appearing in claim 2 is definite within the meaning of 35 U.S.C. § 112,
second paragraph; accordingly, we do not reach the merits of the
obviousness rejection.
3. The Appellant has not shown that the Examiner erred in
determining that the prior art accounts for the “spool” feature of claim 4.
4. The Appellant has not shown any error in the Examiner’s
description of how the features of claims 5-7 are described in the prior art.
G. ORDER
The rejection of claims 1 and 3 under 35 U.S.C. § 103(a) as
unpatentable over Kar and Kaplan is affirmed.
The rejection of claims 2 under 35 U.S.C. § 103(a) as unpatentable
over Kar and Kaplan is moot.
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The rejection of claim 4 under 35 U.S.C. § 103(a) as unpatentable
over Kar, Kaplan, and Stricklen is affirmed.
The rejection of claims 5 and 6 under 35 U.S.C. § 103(a) as
unpatentable over Kar, Kaplan, Stricklen, and either Bredlow or Handke is
affirmed.
The rejection of claims 1, 3, 4 and 7 under 35 U.S.C. § 103(a) as
unpatentable over Rabinovich, Kaplan, and Islam is affirmed.
The rejection of claim 2 under 35 U.S.C. § 103(a) as unpatentable
over Rabinovich, Kaplan, and Islam is moot.
The Examiner rejected claims 5 and 6 under 35 U.S.C. § 103(a) as
unpatentable over Rabinovich, Kaplan, Islam, and White is affirmed.
This decision contains a new ground of rejection for claim 2 pursuant
to 37 C.F.R. § 41.50(b). Section 41.50(b) provides that “[a] new ground of
rejection . . . shall not be considered final for judicial review.”
Section 41.50(b) also provides that the Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground 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….

(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same
record….

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

W. THOMAS TIMMONS
1320 PRUDENTIAL DRIVE
SUITE 208
DALLAS TX 75235-4117