Ex Parte Sievers et al

Patent Trial and Appeal Board

Aug 31, 2016

12245140 (P.T.A.B. Aug. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/245,140 10/03/2008
131672 7590 08/31/2016
Whitmyer IP Group LLC
600 Summer Street
3rd Floor
Stamford, CT 06901
FIRST NAMED INVENTOR
Tim Sievers
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.
04087-POOOlB 3324
EXAMINER
TENTONI, LEO B
ART UNIT PAPER NUMBER
1742
MAILDATE DELIVERY MODE
08/31/2016 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 PA TENT TRIAL AND APPEAL BOARD
Ex parte TIM SIEVERS 1
and Andreas Lohner
Appeal2014-0072502
Application 12/245, 140
Technology Center 1700
Before ADRIENE LEPIANE HANLON, MARK NAGUMO, and
BRIAND. RANGE, Administrative Patent Judges.
NAGUMO, Administrative Patent Judge.
DECISION ON APPEAL
Tim Sievers and Andreas Lohner ("BU:ST") timely appeal
under 35 U.S.C. § 134(a) from a non-final rejection3' 4 of claims 1-6, which
1 The real party in interest is identified as BU:ST GmbH ("BU:ST").
(Appeal Brief, filed 3 February 2014 ("Br."), 3.)
2 Heard 25 August 2016. The Official Transcript, which was not available
when this Opinion was entered, will be made of record.
3 Office action mailed 1 May 2013 ("Office Action"; cited as "OA").
4 A Request for Continued Examination under 3 7 C.F .R. § 1.114 was filed
on 23 November 2010.
Appeal2014-007250
Application 12/245, 140
are all of the pending claims. We have jurisdiction. 35 U.S.C. § 6.
We reverse.
OPINION
A. Introduction5
The present application has a lengthy examination history, including
an appeal in parent application 10/719,585, in which the rejections, which
were based on most of the same references, were affirmed. 6 We assume
familiarity with the prior Opinion. Following the Board's decision, BU:ST
filed the present continuation application, presenting independent claims 1
and 6, which add additional limitations relating to the mechanical finishing
recited in the claims previously presented. In due course, the Examiner
entered a final rejection, whereupon BU:ST filed a Request for Continued
Examination. Subsequently, BU:ST filed a declaration by Mr. Tim Sievers,7
one of the inventors, as evidence supporting non-obviousness, but the
Examiner maintained the rejections of record and added three rejections
based in part on an additional reference, Abe (full cite at 5 n.15, infra.) This
appeal followed.
5 Application 12/245,140, Method and apparatus for the production of a
workpiece of exact geometry, filed 3 October 2008 as a continuation of
10/719,585, filed 21November2003, now abandoned, which was filed as a
continuation of PCT/EP02/05574, on 21May2002, claiming the benefit of
an application filed in Germany on 21 May 2001. We refer to the
'" 140 Specification," which we cite as "Spec."
6 Appeal 2008-2273, decided 6 August 2008 ("Op l ").
7 Tim Sievers, Declaration under 37 C.F.R. §1.132, filed 23 November 2010
("Sievers").
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Appeal2014-007250
Application 12/245, 140
The subject matter on appeal relates to a method "for the production
of a work piece with exact geometry and a high surface quality, a 'form tool'
in particular." (Spec 13, Abstract.) Figure 1, below right, illustrates a
device for carrying out the
method. Powdered starting
material 38 is provided via
dressing bar 4 with an exactly
predetermined layer thickness s on
movable working table 5, and is
compacted (melted or sintered) by
beam 18 under control of processing
unit 20 to form the "nth trace."
(Id. at 6 [00028]-7 [00029] 9.)
I
1
I
!.. - ,_
~
"'----0--------L
{Fig. 1 depicts a device for making a workpiece}
The deposition and compacting are repeated until enough layers have been
deposited and compacted that there is, in the words of claim 1, "substantially
no thermal impact [from the compacting step of the n + x th trace] having a
distorting effect on the subject (nth) layer trace."10 At least one of the
vertical side walls is then finished mechanically by mill tool 2.
(Id. at 7 [00029].)
8 Throughout this Opinion, for clarity, labels to elements are presented in
bold font, regardless of their presentation in the original document.
9 We cite both the page and paragraph number because the Specification at
page 7 follows [00029] with [001 OJ, etc.
10 The Specification explains that all layers previously deposited below
the nth layer are referred to as n - xth layers, and all layers positioned above
the nth layer are referred to as n + xth layers. (Spec. 3 [00098].)
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Appeal2014-007250
Application 12/245, 140
According to the '140 Specification, the claimed process differs from
the prior art, represented by Celiker (full cite at 6 n.13, infra), in that the
radiation-induced compaction and the mechanical finishing are conducted
while the compacted region (i.e., the trace), remains surrounded by the
powdered starting material. (Spec. 2 [0003].)
The '140 Specification explains that the basic trace width corresponds
to the "sphere of action" of the radiation, and that wider traces are made by
overlapping individual traces. (Spec. 4 [00010].) The Specification teaches
that the material characteristics of the edge contour can be adjusted by
precise control of the compacting beam. (Id. at [00012].) Moreover, "[w]ith
increasing beam power or energy supplied per area unit, the proportion of
molten phase of the material increases, which results in a high compacting of
the material and thus in good mechanical properties." (Id. at [00013].)
However, "[a] disadvantage of a high beam intensity is the thermal effect,
which may lead to a subsequent powder adherence in the n - 1st or in further
layers. By the respectively repeated thermal impact of the n - x1h layers
already formed, a so-called distortion of the contour of the work piece may
occur." (Id.)
The Specification reveals that the invented method
takes this thermal influence of the work piece contour into
account by performing the mechanical finishing after the
completion of a certain number of layers only. In accordance
with the invention, the finishing is only performed with
layers which are, by their distance to the currently produced
layer, not subject to a thermal impact effecting a distortion of
the work piece.
(Id. at 5 [00014].)
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Appeal2014-007250
Application 12/245, 140
Claim 1 is representative and reads:
A method for the production of a work piece
by the successive compacting, by means of
electromagnetic radiation or particle radiation, of
powdered starting material that has been applied
horizontally in layers, so that each layer consisting of at
least one trace comprises
substantially vertical lateral faces and
two one substantially horizontal upper face which, in tum,
forms the basis for a possible subsequent layer,
wherein at least one of the two vertical side walls is
subject to mechanical finishing subsequent to the
compacting of said powdered starting material that has
been applied horizontally in layers, and
wherein the work piece to be formed is surrounded by
said powdered starting material during its production and
during the mechanical finishing,
wherein the mechanical finishing of a vertical side wall of
a subject (nth) layer is performed after the generation of at
least one subsequent (n + xth) layer only and
\"/herein mechanical finishing of the at least one
subsequent (n + xth) layer is not performed at the same
time as mechanical finishing of the subject (nth) layer, and
wherein mechanical finishing of the subject (nth) layer is
started only after a sufficient enough number of
subsequent (n +xth) layers are created
such that a distance between the subject (nth) layer and
a most recently formed one of the at least one
subsequent (n + xth) layer is sufficiently great that there
exists substantially no thermal impact having a
distorting effect on the subject (nth) layer.
(Claims App., Br. 25; indentation, paragraphing, and emphasis added;
see 37 C.F.R. § l.75(i) (2014): "[w]here a claim sets forth a plurality
of elements or steps, each element or step of the claim should be
separated by a line indentation.")
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Appeal2014-007250
Application 12/245, 140
The Examiner maintains the following grounds of rejection11 :
A. Claims 1, 2, 4, and 5 stand rejected under 35 U.S.C. § 103(a)
in view of the combined teachings of Benda 12 and Celiker. 13
Al. Claim 3 stands rejected under 35 U.S.C. § 103(a) in view of
the combined teachings of Benda, Celiker, and Prinz. 14
A2. Claim 3 stands rejected under 35 U.S.C. § 103(a) in view of
the combined teachings of Benda, Celiker, and Abe. 15
A3. Claim 6 stands rejected under 35 U.S.C. § 103(a) in view of
the combined teachings of Benda and Celiker.
B. Claims 1-5 stand rejected under 35 U.S.C. § 103(a) in view
of the combined teachings of Abe and Celiker.
B2. Claim 6 stands rejected under 35 U.S.C. § 103(a) in view of
the combined teachings of Abe and Celiker.
B. Discussion
Findings of fact throughout this Opinion are supported by a
preponderance of the evidence of record.
The claims are rejected in view of the same prior art relied on in the
previous appeal, with the addition of Abe. 16 The thrust of the rejections, and
11 Examiner's Answer mailed 16 April 2014 ("Ans.").
12 John A. Benda and Aristotle Parasco, Method for performing
temperature-controlled laser sintering, U.S. Patent No. 5,427,733 (1995).
13 Tanju Celiker et al., Method and device to produce metallic workpieces,
DE 195 33 960 Al (1997) (USPTO translation).
14 Fritz B. Prinz and Lee E. Weiss, Method and apparatus for fabrication of
three-dimensional metal articles by weld deposition, U.S. Patent
No. 5,207,371 (1993).
15 Satoshi Abe et al., Method of making sintered object, U.S. Patent
Application Publication 2003/0185698 Al (2 October 2003), based on an
application filed 27 November 2002.
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Application 12/245, 140
the focus of BU:ST's appeal remain the same: whether Celiker teaches or
suggests processes in which unmelted powder is blown off or vacuumed
away from a working region after melting by laser irradiation and before
machine finishing of at least one vertical side of the trace.
The Examiner finds (OA 4, 1. 17, through 5), as did the Board in the
previous appeal (Opl 5, item (3)), that Celiker teaches, in numerous cited
places, preferred embodiments in which, after laser processing of metal-
containing powder layers, "unmelted powder is blown off and/or vacuumed
away from a working region." (Celiker 5, 11. 6-7.) Such preferred
embodiments, the Examiner and the Board found, are also claimed by
Ce liker in claim 19, which reads, " [ m] ethod according to at least one of
Claims 1-18, characterized in that unmelted powder is blown off and/or
vacuumed away from a working region." The Examiner reasons that it
would have been obvious to combine the unpreferred methods in which the
powder is not blown off or vacuumed away, with the processes taught by
Benda or by Abe.
16 We evaluate the rejection solely on the substantive issues raised by
BU:ST, which has not challenged the status of Abe as prior art.
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Application 12/245, 140
BU:ST argues, inter alia, that Celiker describes processes in which a
metal-containing powder "is supplied into the melt region [of the laser]
coaxial to the melt beam." (Br. 12, 11. 13-14.) The left
hand portion of Celiker Fig. 2, shown right, illustrates a
combined laser head 4 and powder head 5. (Metal cutting
head 7, immediately adjacent to the right of the Figure, is
not shown here.) Laser light is brought to laser head 4
via optical fiber 22. (Id. at 10, 11. 25-26.) "Powder is
guided coaxially to the laser beam 17 into its melt
region through outlet openings of the powder ducts 20
located concentric to the laser beam 17 and is melted
in the melt region." (Id. at 9, 11. 29-31.) Inert gas
ducts (not illustrated) supply inert gas for the melting
process and to "bundle" the powder beam.
(Id. at 11. 31-33.)
{ Celiker Fig. 2 (left portion) illustrates combined laser head 4 and powder head 5}
Thus, rather than irradiating a pre-formed layer of powder (as do
Benda17 and Abe18), Celiker sprays powder into the focus of a laser beam.
BU:ST urges that "[f]rom Figure 1 [not reproduced here], it can also be seen
that the excess powder (which is not sintered) from the powder head will not
accumulate around the working piece [l ], but will be dispersed over the
cooling plate 24 driven by the momentum provided by the powder head."
17 Benda col. 3, 1. 60, to 4, 1. 2, describing spreading powder 64 across
powder bed 38 by roller 68.
18 Abe 1 [0004] describes a layer of metallic powder is deposited, forming a
metallic bed, which is then sintered by an optical sintering beam.
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Appeal2014-007250
Application 12/245, 140
(Br. 13, 11. 2-5.) BU :ST concludes that "even a combination of Benda and
Celiker neither suggests nor renders the feature obvious that each layer is
mechanically finished while the laser is still surrounded by powdered
starting material." (Br. 13, 11. 11-13.)
It has not escaped our attention that a similar argument was deemed
non-persuasive by the Board in the previous Opinion for lack of "conclusive
evidence" that the excess powder would be dispersed over the cooling plate
and not surround the work piece (Opl 7, 1st full para., citing the Reply Brief
at 3). There has never been any dispute that the evidence of record indicates
that the powder that surrounds the workpiece in Benda, Abe, and in the
claimed method, is easily removed by vacuuming or blowing. Moreover,
there is no credible evidence that the non-sintered powder in any of the
processes changes in any significant way, as a result of the sintering of the
powder within the active region of the sintering beam. Based on the
additional arguments referring to Figures 1 and 2 of Celiker, and the
descriptions of those Figures in Celiker, we conclude that the preponderance
of the evidence supports BU:ST's characterization that the excess, non-
sintered powder would not pile up and surround the workpiece.
In this regard, we note that the term "surround," as it appears in the
appealed claims, describes the powder layer in the areas not exposed by the
laser beam. The non-exposed layers are not significantly altered by the
exposed region (here we neglect edge effects, e.g., some melting or sintering
of particles immediately adjacent to the exposed particles). Thus, the
exposed trace is surrounded by a full-height layer of powder. To be clear, in
the context of the appealed claims, a workpiece having a light coat of
starting material particles on its sides is not "surrounded" by powdered
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Application 12/245, 140
starting material. Consistent with the ordinary meaning of "surround" and
consistent with how "surrounded" is used in the claims and in the context of
the specification, "surrounded by said powdered starting material during its
production and during the mechanical finishing" requires that the workpiece
be enclosed by powder on all sides during production and mechanical
finishing.
With this understanding of the teachings of Celiker, it becomes clear
that the optional vacuuming of residual powder refers to removing at most a
relatively light coat of powder from the workpiece. The Examiner has not
come forward with evidence and argument indicating why such an optional
teaching would apply to the work pieces of Benda or Abe, which are fully-
surrounded by powdered starting material. Put another way, even if Celiker
teaches that, in non-preferred embodiments, powder removal prior to
completion of production and finishing is not required, the preponderance of
the evidence set forth by the Examiner in the record does not establish that
removal of powder is also not required when the work piece is completely
surrounded by powder (as in claim 1).
The Examiner's findings regarding the remaining references do not
cure the deficiencies of Celiker.
Because the premise has been shown to be incorrect, that the
teachings of Celiker regarding the optional removal of excess starting
material powder can be applied reasonably to the processes taught by Benda
or Abe, we reverse the rejections of record.
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Application 12/245, 140
C. Order
It is ORDERED that the rejection of claims 1-6 is reversed.
REVERSED
11