Ex Parte El-Wardany et al

Patent Trial and Appeal Board

Oct 26, 2017

13360753 (P.T.A.B. Oct. 26, 2017)

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.
13/360,753 01/29/2012 Tahany Ibrahim El-Wardany 59326US01;
67097-1654US1
9394
54549 7590 10/30/2017
TART SON OASKFY fr OT DS/PR ATT fr WHTTNFY
EXAMINER
400 West Maple Road
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VERDIER, CHRISTOPHER M
Birmingham, MI 48009 ART UNIT PAPER NUMBER
3745
NOTIFICATION DATE DELIVERY MODE
10/30/2017 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.
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TAHANY IBRAHIM EL-WARD ANY, WENJIONG GU,
DANIEL A. MOSHER, DANIEL V. VIENS,
and CHANGSHENG GUO
Appeal 2017-000003
Application 13/360,753
Technology Center 3700
Before JOHN C. KERINS, EDWARD A. BROWN, and
LYNNE H. BROWNE, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Tahany Ibrahim El-Wardany et al. (Appellants) appeal under 35
U.S.C. § 134 from the rejection of claims 1—17.1 We have jurisdiction under
35 U.S.C. § 6(b).
1 We note that new claims 18 and 19 were proposed in the After-Final
Amendment filed December 17, 2015. However, the Amendment was not
entered. See Advisory Action mailed January 7, 2016. Accordingly, claims
18 and 19 are not before us.
Appeal 2017-000003
Application 13/360,753
We affirm-in-part, designate our affirmance as a NEW GROUND OF
REJECTION, and enter a NEW GROUND OF REJECTION pursuant to our
authority under 37 C.F.R. § 41.50(b).
CLAIMED SUBJECT MATTER
Claims 1 and 12 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method of forming an airfoil comprising the steps of:
depositing material to form the airfoil in a first layer, and
then depositing material in a second layer on said first layer; and
wherein said first and second layers have distinct densities.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Pratt US 5,038,014 Aug. 6, 1991
Tiemann US 2003/0047298 A1 Mar. 13, 2003
Prevey, III US 2010/0221118 A1 Sept. 2,2010
Mazzola US 2011/0217178 A1 Sept. 8,2010
REJECTIONS
I. Claims 16 and 17 stand rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written
description requirement.
II. Claims 1—3, 5, 8, 9, and 11—17 stand rejected under 35
U.S.C. § 102(b), as anticipated by Pratt.2
2 As discussed infra, we modify this rejection designating our affirmance of
the Examiner’s rejection under § 102(b) as a new ground of rejection. We
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III. Claims 4 and 6 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Pratt and Tiemann.
IV. Claim 7 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Pratt and Prevey.
V. Claim 10 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Pratt and Mazzola.
DISCUSSION
Rejection I
The Examiner determines that claims 16 and 17 contain subject matter
which was not described in the Specification in such a way as to reasonably
convey to one skilled in the relevant art that the inventors at the time the
application was filed, had possession of the claimed invention. Final Act. 4.
The Examiner identifies the limitation requiring distinct densities achieved
by variation of “at least one of laser intensity profiles, . . . and a rate of
cooling” as new matter. Id. (emphasis added). In support of this
determination, the Examiner explains that paragraph 53 of Appellants’
Specification is limited to all of the parameters recited in claims 16 and 17,
not at least one of or various combinations of the parameters. Id. at 4—5.
Paragraph 53 states:
The designer may then design laser intensity profiles,
temperature and velocity distribution, the amount of material to
be deposited at each layer, the required shape and size of the
powder to achieve a desired melt pool to result in the desired
shape would also be developed[.][sic] A power attenuation
factor and the rate of cooling would also be factors to be
additionally include an alternative new ground of rejection of the same
claims under §103(a).
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considered at this point along with any number of other factors
which may be appropriate.
Spec. para. 53. The Examiner asserts that because paragraph 53 recites
“and” and “also,” and when read in context and collectively taken as a
whole, paragraph 53 requires that all of the recited parameters are used to
achieve the desired densities. Ans. 4. The Examiner notes that the
Specification does not recite “at least one of’ or “or” concerning the listing
of the particular parameters. Id. at 5.
Noting that paragraph 53 recites a “designer may . . . design laser
intensity profiles,. . . the . . . shape and size of the powder,” and “[a] power
attenuation factor and the rate of cooling would also be factors to be
considered at this point along with any number of other factors which may
be appropriate” (emphasis added), Appellants contend that one of ordinary
skill in the art would recognize that the words “may,” “to be considered,”
and “any number of other factors” make it clear that not all listed parameters
are required to modify the density. Appeal Br. 2—3 (emphasis omitted).
“[T]he test for [written description] sufficiency is whether the
disclosure of the application relied upon reasonably conveys to those skilled
in the art that the inventor had possession of the claimed subject matter as of
the time of the filing date.” Ariad Pharms., Inc. v. Eli Lilly & Co., 589 F.3d
1336, 1351 (Fed. Cir. 2010) (en banc). “In order to satisfy the written
description requirement, the disclosure as originally filed does not have to
provide in haec verba support for the claimed subject matter at issue.”
Purdue Pharma L.P. v. Faulding, Inc., 230 F.3d 1320, 1323 (Fed. Cir.
2000).
In this case, we agree with Appellants that based on the words “may,”
“to be considered,” and “any number of other factors” described in
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paragraph 53 of the Specification, one of ordinary skill in the art would
reasonably conclude that Appellants had possession of the claim limitation
reciting that distinct densities are achieved by variation of “at least one of
laser intensity profiles . . . and a rate of cooling” (emphasis added).
Accordingly, the Examiner’s decision rejecting claims 16 and 17 as
failing to comply with the written description requirement is not sustained.
Rejection II
Claims 1—3, 5, 8, 9, and 11—15
Appellants present the same arguments for both independent claims 1
and 12. See Appeal Br. 3; see also Reply Br. 2. Appellants do not present
separate arguments directed to dependent claims 2, 3, 5, 8, 9, 11, and 13—15.
Id. We, thus, regard claims 1—3, 5, 8, 9, and 11—15 to be argued as a group.
We take claim 1 as illustrative of this group, and claims 2, 3, 5, 8, 9, and 11—
15 stand or fall with claim 1. Appellants present arguments for the separate
patentability of dependent claims 16 and 17, which are addressed below
under separate subheadings.
The Examiner finds that Pratt discloses all of the limitations of claim
1 including a component comprising first and second layers having distinct
densities. Final Act. 5 (citing Pratt, col. 3,11. 65—68; col. 4,11. 1—3; col. 7,11.
9-24).
Appellants contend that Pratt’s layers having varied compositions of
materials, with different material properties for specific purposes, does not
necessarily result in varied densities. Appeal Br. 3; Reply Br. 2. According
to Appellants, the examples in Pratt’s disclosure imply that the density
would not be varied. Id.
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Application 13/360,753
The Examiner responds that composition variation would necessarily
result in density variation. Ans. 7. In support, the Examiner points out that
Pratt discloses a compression blade may have a strong, tough alloy
composition at its base and a hard, wear resistant or abrasive alloy at its tip.
Id. (citing Pratt, col. 3,11. 59-68; col. 4,11. 1—3; col. 7,11. 9-20).
“[A] prior art reference may anticipate without disclosing a feature of
the claimed invention if that missing characteristic is necessarily present, or
inherent, in the single anticipating reference.” Schering Corp. v. Geneva
Pharms., Inc., 339 F.3d 1373, 1377 (Fed. Cir. 2003) (citations
omitted). Pratt discloses varying the composition of the deposited material
to spatially vary the composition of an article in different regions. See, e.g.,
Pratt, col. 7,11. 9-12. An ordinarily skilled artisan would reasonably have
recognized that when Pratt’s different regions are made from different
material compositions, the regions inherently would have distinct densities
as well.
Pratt also discloses depositing different “materials” in successive
(different) layers. Pratt, col. 10,11. 47—51. Pratt further discloses that a
“wide variety of materials” may be deposited, including, for example,
metallic alloys, ceramics, and plastics. Id. at col. 4,11. 20-24. Accordingly,
Pratt appears to disclose that the deposition can comprise depositing two of
such different materials in successive, different layers. Ordinarily, Pratt’s
disclosed materials, such as different metal alloys will have distinct
densities.3 Therefore, an ordinarily skilled artisan would reasonably have
3 For example, Ti-6A1-4V titanium alloy has a density of 4.4 g/cm3
(MakeltFrom. com, https://www.makeitfrom.com/material-
properties/Grade-5-Ti-6Al-4V-3.7165-R56400-Titanium/ (last visited
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Application 13/360,753
recognized that when Pratt’s first and second layers are made from different
materials, the layers inherently would have distinct densities as well.
To the extent that it is determined that adjacent layers of Pratt’s
component do not inherently have distinct densities, and because we are
cognizant that it may be possible that different materials disclosed by Pratt
have the same density, we further conclude that it would have been obvious
in view of Pratt’s teachings to provide adjacent layers with distinct densities
and associated properties to produce an article with specific properties at
specific locations for meeting specific performance requirements, for
example, strength, in different regions, as taught by Pratt. See Pratt, col. 2,
11. 6—10; col. 3,1. 68—col. 4,1. 3. Based on Pratt’s teachings, the adjacent
layers with different densities could be formed by depositing a graded
composition of a material, or by depositing different metallic alloys,
ceramics, or plastics in adjacent layers.
For these reasons, we sustain the Examiner’s decision rejecting claim
1, and claims 2, 3, 5, 8, 9, and 11—15 which fall therewith, as being
anticipated by Pratt. As our reasoning supplements the Examiner’s, we
designate our affirmance as a new ground of rejection under 37 C.F.R.
§ 41.50(b).
October 26, 2017)), Inconel 718 alloy has a density of 8.19 g/cm3
(ASM Aerospace Specification Metals Inc. com,
http://asm.matweb com/search/SpecificMaterial.asp?bassnum=
NINC34 (last visited October 26, 2017)), and Rene 95 alloy has a
density of 8.22 g/cm3 (Azo Materials.com
https://www.azom.com/article.aspx?ArticleID=7736 (last visited
October 26, 2017)).
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Application 13/360,753
Alternatively, we enter a new ground of rejection of claims 1—3, 5,8,
9, and 11—15 under 35 U.S.C. § 103(a) as unpatentable over Pratt for the
reasons discussed supra.
Claims 16 and 17
In regard to claims 16 and 17, the Examiner finds that Pratt’s different
layers have different densities due to changes in the amount of material
resulting from the change in composition, or due to changes in the power
attenuation factor of a laser. Final Act. 6 (citing Pratt, col. 8,11. 49—52). The
Examiner explains that column 5, lines 43 49 of Pratt provides support that
density variation is achieved by the amount of material deposited at each
layer. Ans. 8. The Examiner also asserts that Pratt’s disclosure of applying
laser energy with a power density of from about 103 to about 106 watts per
square centimeter to melt a pool of material supports the position that
density variation is achieved by a different power attenuation factor of a
laser. Id. at 8—9.
Appellants contend that column 5, lines 43—49, of Pratt relates to the
width of the layers instead of density of the layers. Reply Br. 2. Appellants
also contend that column 8, lines 49—52 of Pratt merely speaks of laser
energy, not variation of that energy. Appeal Br. 3.
Appellants’ contentions are persuasive. The description at column 5,
lines 43 49 of Pratt discloses the number of beads applied per layer to
determine the width of the layer, which does not necessarily affect the
layer’s density. Additionally, while Pratt discloses that a range in a laser’s
power attenuation factor can be used to melt a material, Pratt does not
disclose using a different range of a laser’s power attenuation factor to
change the density of a material.
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Application 13/360,753
Accordingly, we do not sustain the Examiner’s decision rejecting
claims 16 and 17 as being anticipated by Pratt.
Rejections III—V
Claims 4, 6, 7, and 10 depend from claim 1. Appellants do not contest
the rejections of claims 4, 6, 7, and 10 as unpatentable over the combinations
of Pratt and Tiemann, Pratt and Prevey, and Pratt and Mazzola. See,
generally, Appeal Br.; Reply Br. Accordingly, we sustain the Examiner’s
decisions rejecting claims 4 and 6 as unpatentable over Pratt and Tiemann,
claim 7 as unpatentable over Pratt and Prevey, and claim 10 as unpatentable
over Pratt and Mazzola. As our reasoning differs from or supplements the
Examiner’s decision rejecting claim 1, we also designate our affirmance of
the rejections of claims 4, 6, 7, and 10 as new grounds of rejection under 37
C.F.R. §41.50(b).
DECISION
The Examiner’s rejection of claims 16 and 17 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement, is REVERSED.
The Examiner’s rejection of claims 1—3, 5, 8, 9, and 11—15 under 35
U.S.C. § 102(b), as being anticipated by Pratt, is AFFIRMED and
designated as a NEW GROUND OF REJECTION.
The Examiner’s rejection of claims 16 and 17 under 35 U.S.C.
§ 102(b), as being anticipated by Pratt, is REVERSED.
We enter a NEW GROUND OF REJECTION of claims 1-3, 5, 8, 9,
and 11—15 under 35 U.S.C. § 103(a) as being unpatentable over Pratt.
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Application 13/360,753
The Examiner’s rejection of claims 4 and 6 under 35 U.S.C. § 103(a),
as unpatentable over Pratt and Tiemann, is AFFIRMED and designated as a
NEW GROUND OF REJECTION.
The Examiner’s rejection of claim 7 under 35 U.S.C. § 103(a), as
unpatentable over Pratt and Prevey, is AFFIRMED and designated as a
NEW GROUND OF REJECTION.
The Examiner’s rejection of claim 10 under 35 U.S.C. § 103(a), as
unpatentable over Pratt and Mazzola, is AFFIRMED and designated as a
NEW GROUND OF REJECTION.
FINALITY OF DECISION
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review.” Section
41.50(b) also provides:
When the Board enters such a non-final decision, 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 prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under §41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
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and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01 (9th
Ed., Rev. 07.2015, Nov. 2015).
AFFIRMED-IN-PART; 37 C.F.R, $ 41.50(b)
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