Ex Parte Czerner et al

Patent Trials and Appeals Board

Mar 20, 2013

10556644 - (D) (P.T.A.B. Mar. 20, 2013)

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.
10/556,644 01/12/2006 INV001Stefan Oliver Czerner 5038.1018 8517
23280 7590 03/20/2013
Davidson, Davidson & Kappel, LLC
485 7th Avenue
14th Floor
New York, NY 10018
EXAMINER
HEINRICH, SAMUEL M
ART UNIT PAPER NUMBER
3742
MAIL DATE DELIVERY MODE
03/20/2013 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 PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte STEFAN OLIVER CZERNER and KLAUS EMILJANOW
____________________

Appeal 2010-011166
Application 10/556,644
Technology Center 3700
____________________

Before: LINDA E. HORNER, BRETT C. MARTIN, and
BART A. GERSTENBLITH, Administrative Patent Judges.

MARTIN, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Stefan Oliver Czerner and Klaus Emiljanow (Appellants) appeal
under 35 U.S.C. § 134 from the Examiner’s rejection of claims 11-21. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

THE INVENTION
Appellants’ invention is directed generally to “a method for heating
components prior to and/or during further processing.” Spec., para. [0001].
Claim 11, reproduced below, is illustrative of the claimed subject matter:
11. A method for processing one or more
components of gas turbines, comprising:
heating a component of a gas turbine with at
least one laser device; and
laser hardfacing the component with a
separate laser device, the heating occurring prior to
and/or during the laser hardfacing.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Plankenhorn
Duley
Miyamoto
Sexton
Strauch
Aoshima
Seimitsu
Geiger
US 4,539,462
US 4,857,699
US 5,080,474
US 5,493,445
US 6,883,405 B2
JP 58106836 A
JP 63149092 A
DE 4234339 A1
Sep. 3, 1985
Aug. 15, 1989
Jan. 14, 1992
Feb. 20, 1996
Apr. 26, 2005
Jun. 25, 1983
Jun. 21, 1988
Apr. 14, 1994

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THE REJECTIONS ON APPEAL
The Examiner made the following rejections:
Claims 11 and 12 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Applicant’s Admitted Prior Art (AAPA), Aoshima, and
Plankenhorn. Ans. 4.
Claims 13 and 14 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over AAPA, Aoshima, Plankenhorn, Duley, and Seimitsu.
Ans. 5.
Claim 15 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over AAPA, Aoshima, Plankenhorn, and Miyamoto. Ans. 5.
Claim 16 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over AAPA, Aoshima, Plankenhorn, Duley, Seimitsu, and
Miyamoto. Ans. 5.
Claims 17 and 19 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over AAPA, Aoshima, Plankenhorn, and Geiger. Ans. 6.
Claim 18 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over AAPA, Aoshima, Plankenhorn, Duley, Seimitsu, and
Geiger. Ans. 6.
Claim 20 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over AAPA, Aoshima, Plankenhorn, and Strauch. Ans. 6-7.
Claim 21 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over AAPA, Aoshima, Plankenhorn, and Sexton. Ans. 7.

ANALYSIS
Claims 11-21 are currently pending in this application, of which claim
11 is the only independent claim. See, e.g., App. Br., Cl. Appx. 1-2. With
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regard to the first ground of rejection, Appellants argue claims 11 and 12 as
a group. App. Br. 4-5. We select claim 11 as representative, and claim 12
stands or falls with claim 11. See 37 C.F.R. § 41.37(c)(1)(vii) (2011).
Appellants rely on the arguments presented for the patentability of claim 11
alone in rebutting the various rejections of dependent claims 13, 14, and 17-
21. App. Br. 4-5; Reply Br. 1-2. Accordingly, the disposition of the
rejections of claims 13, 14, and 17-21 turns on our analysis of the rejection
of claim 11. Appellants present additional arguments only for dependent
claims 15 and 16. App. Br. 5-6; Reply Br. 2.
Rejections of Claims 11-14 and 17-21
The Examiner makes numerous fact findings (“FF”) regarding the
teaching of the prior art with respect to independent claim 11, including the
following.
FF1. Appellants’ Specification describes generally that preheating
prior to hardfacing was well known. Ans. 4.
FF2. Aoshima teaches “use of a plurality of laser light sources
wherein one source is used for preheat and a second different laser is used
for heating or fusing.” Id.
FF3. Plankenhorn teaches that it was well known to use lasers for
hardening and annealing operations. Id.
FF4. Plankenhorn teaches that it was well known to use lasers for
“surface cladding, hardening, and annealing processes.” Ans. 8 (citing to
Plankenhorn, col. 1, ll. 11-20).
Based upon these findings, the Examiner concludes that Appellants’
“particularly claimed heating and hardfacing steps would have been obvious
in order to provide rapid processing.” Ans. 8.
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Appellants first challenge the Examiner’s rejection for allegedly
failing to “state what part of the claim is not found in the APA [Admitted
Prior Art].” App. Br. 5. From the above findings, it is clear that the
Examiner’s position with respect to claim 11 is that Appellants have
admitted that the general concept of preheating prior to hardfacing is known,
but that the specific use of separate lasers for each of the preheating and
hardfacing steps is not disclosed in the AAPA.
Appellants next challenge that “laser hardfacing is not the same as
hardening or annealing, and the Aoshima and Plankenhorn references also
do not disclose laser hardfacing any component.” Id. We do not find this
persuasive because we do not see the Examiner’s rejection as suggesting that
hardening or annealing are the same as hardfacing. According to FF2,
Aoshima teaches that it was known to use separate lasers, one to preheat,
and one to perform a secondary heat treatment operation thereafter or
simultaneously. Aoshima is clear that its purpose is “[t]o allow the
simultaneous heat treatment of different kind[s] of substances” and that
“heat treatment before and after the laser annealing can be simultaneously
performed.” Aoshima translated Abstract. Accordingly, the Examiner has
merely pointed out that given the AAPA’s general teaching of preheating
prior to hardfacing, which is a form of heat treatment, it would have been
obvious to obtain the stated benefits in Aoshima to achieve “rapid
processing” and “simultaneous use of both preheat and heating beams” by
using separate lasers to perform preheat and heat treatment operations. Ans.
4.
As for Appellants’ assertion that neither Plankenhorn nor Aoshima
teaches laser hardfacing (see, e.g., App. Br. 5, Reply Br. 2), we do not find
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this to be accurate given FF4. Although Plankenhorn does not refer
specifically to laser hardfacing, we understand laser surface cladding to be
analogous. Plankenhorn specifically teaches that “[h]igh powered lasers are
ideally suited to be used as a source of heat in various metal processing
applications,” which would include “procedures, such as welding or surface
cladding of metals” as well as “hardening and annealing operations.” Col. 1,
ll. 11-20. Given this teaching in Plankenhorn, laser surface cladding, or
hardfacing, as well as annealing and hardening, are known common laser
heat treatment processing applications. Therefore, contrary to Appellants’
assertion, Plankenhorn does teach laser hardfacing. As such, we find that
Appellants’ arguments do not apprise us of error in the Examiner’s
combination of the known preheating and hardfacing of the AAPA, with the
use of separate lasers to perform preheating and heat treatment as taught in
Aoshima, and Plankenhorn’s teaching that surface cladding, annealing, and
hardening are known uses of lasers. Accordingly, we affirm the rejection of
independent claim 11.
Appellants rely on this alleged deficiency in the combination of
AAPA, Aoshima, and Plankenhorn with respect to claim 11 as the sole basis
for overturning the various rejections of dependent claims 12-14 and 17-21,
and for the same reasons, we affirm the rejections of claims 12-14 and 17-
21.
Rejection of Claim 15
Claim 15, which depends from claim 11, further recites “adjusting
angles of incidence at which laser radiation hit a surface of the component to
the contour of said surface.” The Examiner rejects claim 15 over AAPA,
Aoshima, and Plankenhorn as applied to claim 11 and further in view of
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Miyamoto for the teaching of “adjustment of the incident angle of a laser
and the use thereof.” Ans. 5. Appellants admit that Miyamoto teaches
shaping of beams, but assert that Miyamoto’s beams “are not adjusted ‘to the
contour of said surface’” ostensibly because Miyamoto teaches adjusting an
angle of incidence to a flat surface. App. Br. 5. As the Examiner points out,
however, “Applicant[s’] claim 15 broadly describes ‘adjusting angles of
incidence at which laser radiation hit a surface of the component[,’] but do
not specify any particular change of surface contour” and “[t]he surface
being processed could be limited in contour to a simple flat outline feature.”
Ans. 8.
Appellants’ argument with respect to claim 15 does not appear to be
commensurate with the scope of claim 15. We do not read claim 15 as
requiring adjustment to a changing contour as Appellants appear to read
claim 15; rather, claim 15 requires adjusting the angle of incidence to the
contour of the surface, which is taught by Miyamoto’s adjustment of the
angle of incidence to the flat (i.e., contour) of surface 105. We agree with
the Examiner that adjusting an angle of incidence as taught in Miyamoto,
even to a flat surface, is sufficient to meet the broad claim language of
“adjusting angles of incidence . . . to the contour of said surface.”
Accordingly, we affirm the Examiner’s rejection of claim 15.
Rejection of Claim 16
Claim 16, which depends from claim 14, further recites “adjusting
angles of incidence at which laser radiation from the plurality of laser
devices hit a plurality of surfaces of the component to the contour of each
surface.” Appellants repeat their argument with respect to claim 15
regarding the adjustment “to the contour of each surface,” which we have
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already found unpersuasive supra. See App. Br. 6; Reply Br. 3. Appellants
then assert that the rejection is deficient because “Miyamoto does not
disclose this feature even for a single surface, much less a plurality of
surfaces.” App. Br. 6. The Examiner, however, does not assert that
Miyamoto teaches angle of incidence adjustment for a plurality of surfaces.
Claim 14 introduces “irradiating the components on all sides from
multiple irradiation directions using laser radiation.” The Examiner finds
that Seimitsu “describes opposite side processing” as meeting this claimed
processing on a plurality of sides. Ans. 5. With regard to claim 16, the
Examiner then applies Miyamoto’s angle of incidence adjustment
individually to each of the opposite side processing operations from
Seimitsu in a similar fashion to claim 15. Ans. 5-6. This is what the
Examiner refers to when he states that “[a]djusting angle of incidence for
plural lasers does not impart patentability.” Ans. 8. Accordingly, and
contrary to Appellants’ arguments, the Examiner does not rely on Miyamoto
for teaching adjustment of “plural lasers,” but merely to individually modify
the plural lasers taught in Seimitsu, the teaching of which Appellants have
not challenged. Accordingly, we do not find Appellants’ arguments
persuasive and affirm the Examiner’s rejection of claim 16.

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DECISION
For the above reasons, we AFFIRM the Examiner’s decision to reject
claims 11-21.
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

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