Ex Parte Skszek

Board of Patent Appeals and Interferences

Jun 29, 2009

10116197 (B.P.A.I. Jun. 29, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TIMOTHY W. SKSZEK
____________

Appeal 2009-000662
Application 10/116,197
Technology Center 1700
____________

Decided:1 June 29, 2009
____________

Before: WILLIAM F. PATE, III, JENNIFER D. BAHR, and LINDA E.
HORNER, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-000662
Application 10/116,197

2
STATEMENT OF THE CASE
Timothy W. Skszek (Appellant) appeals under 35 U.S.C. § 134 from
the Examiner’s decision rejecting claims 1-10 and 12-36 under 35 U.S.C.
§ 112, first paragraph, as containing subject matter which is not described in
the Specification in such a way as to reasonably convey to one skilled in the
art that Appellant had possession of the claimed invention at the time the
present application was filed. We have jurisdiction over this appeal under
35 U.S.C. § 6 (2002).
This is the second time the present application has been before this
Board. In an earlier decision (hereinafter “Prior Decision”), in Appeal No.
2005-1870, a panel2 of this Board affirmed a rejection of claim 11 under 35
U.S.C. § 112, first paragraph, on the basis that the recited step of fabricating
the slices used to form the laminated object using a direct metal deposition
process lacked written description support. Prior Decision 5. The panel
further alerted the Examiner that the incorporation of “essential material” by
reference to a provisional application is not permitted by 37 C.F.R.
§ 1.57(c), and invited the Examiner to consider whether claims 1 and 14,
which contained a step of assembling slices of material, should also be
rejected under 35 U.S.C. § 112, first paragraph, as lacking written
description support. Prior Decision 6-7.

The Invention
Appellant’s claimed invention is directed to a method of fabricating a
component using a “direct metal deposition (DMDtm) process to fabricate

2 Judges Frankfort and Nase have retired from the Board.
Appeal 2009-000662
Application 10/116,197

3
tooling and other components featuring a laminated construction.” Spec.
1:10-12.
Claims 1 and 14, reproduced below, are the only independent claims
involved in this appeal, and are representative of the claimed subject matter.
1. In a method of fabricating a component by
assembling a plurality of material slices to form a
laminated object having a working surface, the
improvement comprising:
depositing a layer of a material having a
desired characteristic onto at least a portion of the
working surface using a laser-assisted direct metal
deposition process characterized in that material is
fed into a melt pool which solidifies to form the
material layer.
14. In a method of fabricating a component by
assembling a plurality of material slices to form a
laminated substrate, the improvement comprising:
completing the component by depositing a
layer of a material onto the substrate using a laser-
assisted, direct metal deposition (DMD) process,
characterized in that material is fed into a melt
pool which solidifies to form the layer of material
providing at least one desired property when
compared to the underlying laminated substrate.

SUMMARY OF DECISION
We AFFIRM.
ISSUES
The Examiner asserts that the limitation in independent claims 1 and
14 of “assembling a plurality of material slices” is not described in the
Specification of the present application so as to comply with the written
description requirement of 35 U.S.C. § 112, first paragraph. Ans. 3. The
Appeal 2009-000662
Application 10/116,197

4
Examiner additionally asserts that the limitation in claims 26 and 28 that
“the sheets are laser-cut prior to assembly,” the limitation in claims 29 and
30 that “the sheets are machined prior to assembly,” and the limitation in
claims 31 and 32 of “providing a bond coat before depositing the layer of
material” likewise are not described in the Specification of the present
application so as to comply with the written description requirement of 35
U.S.C. § 112, first paragraph. Id. According to the Examiner, each of these
limitations is supported in provisional application 60/281,157, but
incorporation by reference to a provisional application for such “essential
material” is not permitted under 37 C.F.R. § 1.57. Id.
Appellant points out that the claims are now drafted “in Jepson
format; that is, as ‘improvement’ claims.” App. Br. 3. Thus, Appellant is
admitting that the material characterized in the claims as being improved
constitutes known or prior art subject matter, and thus is not “essential.” Id.
In further support of the position that the limitations at issue are known or
prior art subject matter, Appellant quotes from a reference purportedly
attached to the Appeal Brief.3 Appellant additionally argues that the
“laminated” or “laminate” structures referred to numerous times in the
present Specification “are inherently constructed ‘by assembling a plurality
of material slices.’” Id.
Accordingly, the issues presented in this appeal are:

3 We find no reference attached to the Appeal Brief. The quote in the
Appeal Brief appears to be have been extracted from a reference (Rapid
Tooling Survey, http://home.att.net/~castleisland/tl_223.htm, hereinafter
“Rapid Tooling Survey”) submitted as an attachment to the Response to
Non-final Office Action filed September 4, 2007, which contains an
essentially verbatim discussion of the “attached” reference on pages 1-2.
Appeal 2009-000662
Application 10/116,197

5
(1) Has Appellant shown that the present Specification describes,
within its four corners, either explicitly or under the principles of
inherency, a method of fabricating a component by assembling a
plurality of material slices to form a laminated object or substrate,
as called for in the preambles of claims 1 and 14, so as to satisfy
the written description requirement of 35 U.S.C. § 112, first
paragraph, for the subject matter of claims 1 and 14?
(2) Has Appellant shown that Appellant’s admissions of what was
conventional in the art at the time of Appellant’s invention, and
Appellant’s incorporation of the entire content of provisional
application 60/281,157 into the Specification of the present
application, are sufficient to satisfy the written description
requirement of 35 U.S.C. § 112, first paragraph, for the subject
matter of claims 1-10 and 12-36?

FACTS PERTINENT TO THE ISSUES
1. The ordinary and customary meaning of the term “assemble” is “to fit
or put together the parts of (a machine, etc.).” Webster's New World
Dictionary 83 (David B. Guralnik ed., 2nd Coll. Ed., Simon &
Schuster, Inc. 1984).
2. The ordinary and customary meaning of the term “slice” is “a
relatively thin, broad piece cut from an object having some bulk or
volume.” Id. at 1339.
3. The Specification of the present application does not use the term
“assemble” or the term “slice,” outside of the claims, much less
Appeal 2009-000662
Application 10/116,197

6
explicitly define them in a manner other than their ordinary and
customary meaning.
4. The Specification of the present application does not explicitly
describe, within its four corners, forming a laminated object or
substrate by assembling (i.e., fitting or putting together) a plurality of
material slices (i.e., relatively thin, broad pieces cut from an object
having some bulk or volume), and depositing a layer of material onto
at least a portion of the object or substrate, as called for in the
preambles of claims 1 and 14. In particular, while the Specification
refers to “laminated construction” (Spec. 2:4), and providing a
“laminate substrate” onto which a layer of a material is deposited
using the DMD process (Spec. 4:15-17), the Specification does not
explicitly specify how the laminate substrate is formed.
5. Appellant’s description of achieving a “laminate structure” by using
closed loop DMD (CLDMD) to deposit desired alloys or metal/alloy
ceramic materials on an existing surface of a component (Spec. 8:3-5)
implies a usage of “laminate” that is sufficiently broad to encompass
formation of a laminate substrate using a process, such as deposition
of layers via a DMD process, that does not involve assembling a
plurality of material slices.
6. The Specification of the present application does not explicitly
describe, within its four corners, that “the sheets are laser-cut prior to
assembly.”
7. The Specification of the present application does not explicitly
describe, within its four corners, that “the sheets are machined prior to
assembly.”
Appeal 2009-000662
Application 10/116,197

7
8. The Specification of the present application does not explicitly
describe, within its four corners, “providing a bond coat before
depositing the layer of material.”
9. Appellant does not contend that the Specification of the instant
application explicitly describes, within its four corners, forming a
laminated object or substrate by assembling a plurality of material
slices, and depositing a layer of material onto at least a portion of the
object or substrate, as called for in the preambles of claims 1 and 14.
10. Appellant does not contend that the Specification of the present
application describes, within its four corners, laser-cutting the sheets
prior to assembly, machining the sheets prior to assembly, and
providing a bond coat before depositing the layer of material.
11. The ordinary and customary meaning of the terms “laminate” and
“laminated” is “composed of or built in thin sheets or layers, as of
fabric, wood, plastic, etc., that have been bonded or pressed together,
sometimes under heat.” Webster's New World Dictionary at 83.
12. Appellant’s Specification does not explicitly define the terms
“laminate” and “laminated.”
13. The Examiner finds that provisional application 60/281,157, the entire
contents of which are incorporated by reference in the first paragraph
on page 1 of the present Specification, describes laser-cutting the
sheets prior to assembly, machining the sheets prior to assembly, and
providing a bond coat before depositing the layer of material. Ans. 3.
Therefore, the Examiner’s characterization of the insertion of claim
limitations directed to these features as “new matter” (Ans. 3) is not
supported by the Examiner’s findings.
Appeal 2009-000662
Application 10/116,197

8
14. Appellant does not contend that any of the other applications, the
entire contents of which are incorporated by reference in the first
paragraph on page 1 of the Specification of the present application,
describes forming a laminated object or substrate by assembling a
plurality of material slices, and depositing a layer of material onto at
least a portion of the object or substrate, laser-cutting the sheets prior
to assembly, machining the sheets prior to assembly, and providing a
bond coat before depositing the layer of material.
15. Appellant admits that the method of fabricating a component by
assembling a plurality of material slices to form a laminated object or
substrate was conventional, or known, in the prior art at the time of
Appellant’s invention. App. Br. 3. See 37 C.F.R. § 1.75(e) (2008).
16. The portion of the “Rapid Tooling Survey” document alluded to by
Appellant (App. Br. 3), at best, shows that a laminated tooling process
in which “profiles are cut using various means from metal strips or
sheets which are then either bonded layerwise or tightly held in a
frame to form injection molding, stamping or other tools” was known
in the art at the time of Appellant’s invention.
17. The “Rapid Tooling Survey” does not establish that persons of
ordinary skill in the art would understand that the terminology
“laminate tooling,” “laminated construction,” or “laminate substrate”
used in the Specification or claims of the present application
necessarily requires a step of assembling slices or sheets to form a
laminated object or substrate.

Appeal 2009-000662
Application 10/116,197

9
PRINCIPLES OF LAW
Claim Construction
In interpreting claim language, we apply the broadest reasonable
meaning of the words in their ordinary usage as they would be understood
by one of ordinary skill in the art, taking into account whatever
enlightenment by way of definitions or otherwise that may be afforded by
the written description. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997). See also In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004).

Written Description
The purpose of the written description requirement is to convey with
reasonable clarity to those skilled in the art that, as of the filing date sought,
the applicant was in possession of the invention as now claimed. Vas-Cath,
Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991). The possession
test alone, however, is not always sufficient to meet the written description
requirement. Enzo Biochem, Inc. v. Gen-Probe Inc., 323 F.3d 956, 969
(Fed. Cir. 2002). Rather, “the written description requirement is satisfied by
the patentee’s disclosure of ‘such descriptive means as words, structures,
figures, diagrams, formulas, etc., that fully set forth the claimed invention.’”
Id. (quoting Lockwood v. American Airlines, Inc., 107 F.3d 1565, 1572 (Fed.
Cir. 1997)). “The disclosure must allow one skilled in the art to visualize or
recognize the identity of the subject matter purportedly described.” Id. at
968 (citation omitted).
When an explicit limitation in a claim “is not present in the written
description whose benefit is sought it must be shown that a person of
Appeal 2009-000662
Application 10/116,197

10
ordinary skill would have understood, at the time the patent application was
filed, that the description requires that limitation.” Hyatt v. Boone, 146 F.3d
1348, 1353 (Fed. Cir. 1998).
To establish inherency, the extrinsic evidence
“must make clear that the missing descriptive
matter is necessarily present in the thing described
in the reference, and that it would be so recognized
by persons of ordinary skill. Inherency, however,
may not be established by probabilities or
possibilities. The mere fact that a certain thing
may result from a given set of circumstances is not
sufficient.”
In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations omitted).
The question of whether a modification is an obvious variant of that
which is originally disclosed is irrelevant insofar as the written description
requirement is concerned. See, e.g., Lockwood, 107 F.3d at 1571-72 and In
re Wohnsiedler, 315 F.2d 934, 937 (CCPA 1963). See also In re Barker,
559 F.2d 588, 593 (CCPA 1977) (“That a person skilled in the art might
realize from reading the disclosure that such a step is possible is not a
sufficient indication to that person that the step is part of appellants’
invention. Such an indication is the least that is required for a description of
the invention under the first paragraph of § 112.”).

Incorporation by Reference
The Director of the USPTO has the authority to issue a patent upon an
application wherein the disclosure incorporates, by reference, and relies on,
certain portions of a disclosure of an existing document, provided that such
document is easily available to the public and to the USPTO. General Elec.
Appeal 2009-000662
Application 10/116,197

11
Co. v. Brenner, 407 F.2d 1258, 1262 (D.C. Cir. 1968). In exercising that
authority, the Director has promulgated 37 C.F.R. § 1.57.
37 C.F.R. § 1.57 (2008) provides, in relevant part:
…
(c) “Essential material” may be incorporated
by reference, but only by way of an incorporation
by reference to a U.S. patent or U.S. patent
application publication, which patent or patent
application publication does not itself incorporate
such essential material by reference. “Esssential
material” is material that is necessary to:
(1) Provide a written description of the
claimed invention, and of the manner and process
of making and using it, in such full, clear, concise,
and exact terms as to enable any person skilled in
the art to which it pertains, or with which it is most
nearly connected, to make and use the same, and
set forth the best mode contemplated by the
inventor of carrying out the invention as required
by the first paragraph of 35 U.S.C. 112;
…
(d) Other material (“Nonessential material”)
may be incorporated by reference to U.S. patents,
U.S. patent application publications, foreign
patents, foreign published applications, prior and
concurrently filed commonly owned U.S.
applications, or non-patent publications. An
incorporation by reference by hyperlink or other
form of browser executable code is not permitted.
…
(f) Any insertion of material incorporated by
reference into the specification or drawings of an
application must be by way of an amendment to
the specification or drawings. Such an amendment
must be accompanied by a statement that the
Appeal 2009-000662
Application 10/116,197

12
material being inserted is the material previously
incorporated by reference and that the amendment
contains no new matter.
(g) An incorporation of material by
reference that does not comply with paragraphs
(b), (c), or (d) of this section is not effective to
incorporate such material unless corrected within
any time period set by the Office, but in no case
later than the close of prosecution as defined by §
1.114(b), or abandonment of the application,
whichever occurs earlier. …

ANALYSIS
Inasmuch as Appellant has not explicitly defined the terms
“assembling” and “slices” in the present Specification (Fact 3), we construe
these terms in claims 1 and 14 by giving them their ordinary and customary
meanings. Each of independent claims 1 and 14 requires a step of
assembling (i.e., fitting or putting together) a plurality of material slices (i.e.,
relatively thin, broad pieces cut from an object having some bulk or volume)
to form a laminated object or component, and a step of depositing a layer of
material onto the substrate using a DMD process. Dependent claims 26 and
28-30 further require a step of laser-cutting, or machining, the slices4 prior to
assembly. Dependent claims 31 and 32 further require a step of providing a
bond coat before depositing the layer of material.

4 The “sheets” in claims 26 and 28-30 lack clear antecedent basis in the
claims. For purposes of this appeal, we understand the “sheets” to refer back
to the “slices” recited in claims 1 and 14. This informality should be
corrected in the event of any further prosecution of the subject matter of
those claims.
Appeal 2009-000662
Application 10/116,197

13
Appellant does not point to, and we do not find, any portion of the
Specification of the present application that explicitly describes the subject
matter of Appellant’s claims identified by the Examiner as lacking written
description support (Facts 4-10). Appellant argues that the “laminated” or
“laminate” structures referred to numerous times in the present Specification
“are inherently constructed ‘by assembling a plurality of material slices.’”
App. Br. 3. This argument is not persuasive, however, because it is not
adequately supported by evidence in the record.5 The ordinary and
customary meaning of “laminate” or “laminated” does not require a structure
formed by assembling (i.e., fitting or putting together) a plurality of slices
(i.e., relatively thin, broad pieces cut from an object having some bulk or
volume) (see Fact 11), and the present Specification does not explicitly
define the term “laminate” or “laminated” (Fact 12). In fact, the present
Specification implies a usage of “laminate” that is sufficiently broad to
encompass formation of a laminate substrate using a process, such as
deposition of layers via a DMD process, that does not involve assembling a
plurality of material slices (Fact 5). Furthermore, neither Appellant’s
admissions of what was conventional in the art at the time of Appellant’s
invention (Fact 15), nor the portion of the “Rapid Tooling Survey” alluded
to by Appellant (Facts 16 and 17), establishes that persons of ordinary skill
in the art would understand that the terminology “laminate tooling,”
“laminated construction,” or “laminate substrate” used in the Specification
or claims of the present application necessarily requires a step of assembling
slices or sheets to form a laminated object or substrate. Simply that a person

5 An attorney's arguments in a brief cannot take the place of evidence. In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
Appeal 2009-000662
Application 10/116,197

14
of ordinary skill in the art might realize that such steps are possible in
forming the laminate substrate or structure is not a sufficient indication to
that person that such a step is part of Appellant’s invention.
The only one of the related applications, the contents of which are
incorporated by reference in the first paragraph on page 1 of the
Specification of the present application, identified by either the Examiner or
Appellant as describing the claimed subject matter at issue is provisional
application 60/281,157 (Facts 13 and 14).
In order to satisfy the written description requirement of 35 U.S.C.
§ 112, first paragraph, the Specification of the present application must
describe the invention so as to convey to those of ordinary skill in the art that
Appellant was in possession of the claimed invention, that is, all elements of
each of the claims, combined as called for in the claims, at the time the
present application was filed. Thus, description of each of the claim
limitations at issue, in combination with the other limitations called for in
the claims, is necessary to provide a written description of the claimed
invention, as required by the first paragraph of 35 U.S.C. § 112.
Accordingly, description of each of these claim limitations is “essential
material,” and cannot be incorporated by reference to a provisional
application. 37 C.F.R. § 1.57(c)(1). Therefore, Appellant’s incorporation of
this material by reference to provisional application 60/281,157 is
ineffective to incorporate such material unless corrected within any time set
by the USPTO, but in no case later than the close of prosecution of the
application as defined by 37 C.F.R. § 1.114(b), or abandonment of the
application, whichever occurs earlier. 37 C.F.R. § 1.57(g). The
requirements for insertion of material incorporated by reference are set forth
Appeal 2009-000662
Application 10/116,197

15
in 37 C.F.R. § 1.57(f). The Examiner’s findings (Fact 13) suggest that
Appellant’s improper incorporation by reference may be correctable in
accordance with 37 C.F.R. § 1.57 (f) and (g), upon the filing of a request for
continued prosecution (RCE).
Even accepting Appellant’s admission that the method of fabricating a
component by assembling a plurality of material slices to form a laminated
object or substrate was conventional, or known, in the prior art at the time of
Appellant’s invention (Fact 15), that fact does not render such material
“nonessential material,” as defined in 37 C.F.R. § 1.57(d). Likewise, even
accepting that the steps of laser-cutting or machining slices prior to
assembling the slices to form a laminated object or substrate were known in
the art at the time of Appellant’s invention, as urged by Appellant (App. Br.
3), that fact would not render such material “nonessential material,” as
defined in 37 C.F.R. § 1.57(d). As required elements of the claims, their
description in the Specification, in combination as called for in the claims, is
required to provide written description support for the claims. Appellant’s
re-drafting of claims 1 and 14 to place the step of assembling the slices to
form a laminated object or substrate in the preamble, followed by the phrase
“the improvement comprising,” therefore, is of no relevance to the issue of
whether such a step is “essential material.”

CONCLUSION
(1) Appellant has not shown that the present Specification describes,
within its four corners, either explicitly or under the principles of
inherency, a method of fabricating a component by assembling a
plurality of material slices to form a laminated object or substrate,
Appeal 2009-000662
Application 10/116,197

16
as called for in the preambles of claims 1 and 14, so as to satisfy
the written description requirement of 35 U.S.C. § 112, first
paragraph, for the subject matter of claims 1 and 14.
(2) The description of the claim limitations identified by the Examiner
as lacking written description support in Appellant’s Specification
is “essential subject matter,” as defined in 37 C.F.R. § 1.57(c)(1),
and thus cannot be incorporated by reference to a provisional
application. Therefore, Appellant has not shown that Appellant’s
admissions of what was conventional in the art at the time of
Appellant’s invention, and Appellant’s incorporation of the entire
content of provisional application 60/281,157 into the
Specification of the present application, are sufficient to satisfy the
written description requirement of 35 U.S.C. § 112, first paragraph,
for the subject matter of claims 1-10 and 12-36.

DECISION
The Examiner’s decision is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).
AFFIRMED

mls

Appeal 2009-000662
Application 10/116,197

17
GIFFORD, KRASS, SPRINKLE, ANDERSON & CITKOWSKI, P.C
PO BOX 7021
TROY, MI 48007-7021