Ex Parte Stiles et al

Patent Trial and Appeal Board

Feb 19, 2013

12008354 (P.T.A.B. Feb. 19, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/008,354 01/10/2008 Eric Stiles Fraunhofer 4.1-2 9273
7590 02/20/2013
Butzel Long
Suite 1100
110 W. Michigan Ave.
Lansing, MI 48933
EXAMINER
HORNING, JOEL G
ART UNIT PAPER NUMBER
1712
MAIL DATE DELIVERY MODE
02/20/2013 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)
1
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL
AND APPEAL BOARD
____________

Ex parte ERIC STILES, THOMAS HIMMER,
JAMES E. HERBISON, and ANJA TECHEL
____________

Appeal 2011-011602
Application 12/008,354
Technology Center 1700
____________

Before CHARLES F. WARREN, LINDA M. GAUDETTE, and
MICHAEL P. COLAIANNI, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appeal 2011-011602
Application 12/008,354

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This is in response to a Request, filed January 28, 2013, for rehearing
of our Decision, dated November 27, 2012.
Appellants argue that the Board misapprehended the claims and the
applied prior art (Req. 1). Specifically, Appellants argue that the Board’s
reliance on the Examiner’s finding that Nowotny’s coating is disclosed by
Appellants as being a preferred coating head structure to find that the prior
art teaches the recited apparatus structure improperly reads preferred
embodiments into the claims (id. at 2). Appellants argue that Nowotny’s
and Lin’s coating heads are coaxial and do not satisfy the claim requirement
that the separate powder nozzle is at an angle to the laser beam. Id.
Contrary to Appellants’ arguments, we adhere to our reasoning on
page 5 of the Decision. Our reliance on Appellants’ disclosure that
Nowotny’s coating head arrangement is a preferred coating head structure
for use with the claimed process is not an impermissible reading of
limitations into the claims. Rather, we are interpreting the claims using the
broadest reasonable interpretation in light of the Specification. In so doing,
we find that “an apparatus which delivers a laser beam on one axis with a
separate nozzle which delivers a composition for producing the coating on
the substrate at a second angle to the one axis of the laser beam” recited in
the claims includes a structure such as Nowotny’s or Lin’s coating head as
disclosed by Appellants. Nowotny’s or Lin’s coating head has powder
providing areas that are separate from the laser providing part of the nozzle.
The powder is ejected at an angle that includes a vector perpendicular and
parallel to the laser as argued by Appellants (App. Br. 14). Though
Appellants conclude that the net contribution of the vectors would have been
zero, we are not persuaded as Appellants have no evidence of that other than
Appeal 2011-011602
Application 12/008,354

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mere attorney argument and Appellants disclose that Nowotny’s coating
head is a suitable structure for practicing the claimed process.
Indeed, Nowotny’s Figure 1 shows that powder channel 14 ejects
powder at an angle to the laser beam and discloses that the channels 14 taper
conically to direct the powder in a small diameter, preferably at its focal
point (see the lines extending from the powder nozzle 14 hole and the laser
beam 7 hole directed toward the workpiece in Figure 1; Nowotny col. 6, ll.
50-57). In other words, Nowotny teaches that the powder emerges from the
coating head at an angle relative to the axis of the laser. We see no reason to
limit the claim language solely to the Figure 7 coating apparatus
embodiment as argued by Appellants.
For the above reasons, we adhere to our decision. Appellants’ request
for rehearing is granted to the extent that we have considered the arguments,
but the request is denied to the extent that the decision will not be modified.

DENIED

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