Anthony Davis et al.

Patent Trials and Appeals Board

Dec 24, 2021

2020005863 (P.T.A.B. Dec. 24, 2021)

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.
14/237,878 04/07/2014 Anthony Davis 2011P08691WOUS 4839
169607 7590 12/24/2021
Siemens Energy, Inc.
Intellectual Property Department, MC INT-244
3850 Quadrangle Blvd.
Orlando, FL 32817
EXAMINER
BRATLAND JR, KENNETH A
ART UNIT PAPER NUMBER
1714
NOTIFICATION DATE DELIVERY MODE
12/24/2021 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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
diane.hood@siemens-energy.com
ip-paralegal.us@siemens-energy.com
ipdadmin.us@siemens.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ANTHONY DAVIS and DETLEF HAJE

Appeal 2020-005863
Application 14/237,8781
Technology Center 1700
____________

Before MICHAEL P. COLAIANNI, DEBRA L. DENNETT, and
JENNIFER R. GUPTA, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 16–18, 20–29, 31–33, and 35–38. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 This application was the subject of Appeal No. 2017-007564 in which the
Board affirmed the Examiner.
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Siemens
Aktiengesellschaft. Appeal Br. 1.
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Appellant’s invention is directed to a method for manufacturing a
component from a single crystal or a directionally solidified material (Spec.
¶ 2).
Claim 16 is representative of the subject matter on appeal:
16. A method for manufacturing a component of a single
crystal or a directionally solidified material, said component
being manufactured having a predefined shape, comprising:
superimposing at least a powder layer of a powder of a
first material onto at least a surface of a substrate out of a
second, single crystal or directionally solidified, material;
placing the powder layer and substrate into a furnace to
maintain the temperature of the powder layer and substrate at a
process temperature that is greater than a room temperature and
less than a melting temperature of the first material and second
material;
transforming the powder layer into a substrate layer with
a new surface of the substrate by altering at least a physical
condition of the first material of the powder by applying energy
via an energetic beam to the powder layer with a first power per
unit area;
wherein said substrate layer is integrally formed with and
is a part of the substrate based on the transforming the powder
layer;
wherein the second, single crystal or directionally
solidified, material of the substrate has a grain orientation and
the material of the substrate layer has a grain orientation;
wherein the material of the substrate layer adopts the same
grain orientation as the grain orientation of the substrate during
the transforming process;
detecting the grain orientation of the material of the
substrate layer in situ;
determining, with a detection device, that the grain
orientation of the material of at least a section of the substrate
layer is different from the grain orientation of the substrate,
transforming said section of the substrate layer by
altering a physical condition of the material of the section by
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applying energy via the energetic beam with a second power
per unit area that is less than the first power per unit area to
correct the grain orientation of the section of the substrate layer
in situ, wherein said transforming step is based on the
determining step; and
wherein the steps are repeated until the component has
grown layer by layer into the predefined shape while the
process temperature is maintained below the melting
temperature of at least the first material.

Appeal Br. 18 (Claims Appendix)

Appellant appeals the following rejections:
1. Claims 16–18, 20, 21, 23–29, 31, 33, and 35–38 are rejected
under 35 U.S.C. § 103 as unpatentable over Morris (US
2011/0135952 A1, published June 9, 2011) in view of
Fernihough (US 2005/0067065 A1, published March 31, 2005),
Foster (US 6,054,672, issued April 25, 2000), Sun (Effect of
Laser Sintering on Ti-ZrB2 Mixtures, 94 J. AM. CERAM. SOC.
3282–3285 (2011)), and Tanabe (US 2004/0009632 A1,
published January 15, 2004).
2. Claims 22 and 32 are rejected under 35 U.S.C. § 103 as
unpatentable over Morris in view of Fernihough, Foster, Sun,
Tanabe, and Benda (US 5,508,489, issued April 16, 1996).
Appellant separately argues the subject matter of claims 16, 31, 33,
and 35 only (Appeal Br. 9–16). Any claims not argued separately in
rejection (1) will stand or fall with claim 16. Appellant relies on
arguments made with regard to claim 16 in addressing rejection (2) of
claims 22 and 32 (Appeal Br. 16). Therefore, the arguments made
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regarding rejection of claims 22 and 32 will be considered to the extent
they are separately argued.

FINDINGS OF FACT & ANALYSIS
The Examiner’s findings regarding the § 103 rejection of claim 16
over Morris, Fernihough, Sun, Foster, and Tanabe are located on pages 6 to
11 of the Final Office Action.
Appellant argues none of the applied prior art references teaches the
steps of: (1) detecting the grain orientation of the material of the substrate
layer, (2) determining, with a detection device, that the grain orientation of
the material of at least a section of the substrate layer is different from the
grain orientation of the substrate, and (3) transforming the section of the
substrate layer by altering a physical condition of the material of the section
by applying energy via an energetic beam with a second power per unit area
that is less than the first power per unit area to correct the grain orientation
of the section of the substrate layer in situ where the transforming step is
based on the determining step (Appeal Br. 8–9). Appellant argues a person
skilled in the art would not have modified Morris’ layer-by-layer
manufacturing process that uses laser sintering and teaches away from
casting, to use Fernihough’s method of repairing casting defects (Appeal Br.
9). Appellant contends that Morris teaches away from a casting process
such that a person of ordinary skill in the art would not have looked to
Fernihough’s process of repairing casting defects to modify Morris (Appeal
Br. 9–10; see also Reply Br. 1–2). Appellant argues that Fernihough is non-
analogous art because it is directed to a casting process and Appellant’s
Specification teaches away from casting techniques (Appeal Br. 11).
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Appellant contends that Fernihough is directed to a repair process which is
excluded from the meaning of manufacturing in paragraph 15 of the
Specification (Appeal Br. 11). Appellant contends that Fernihough would
not have commended itself to Appellant’s attention in considering the
problem in the Specification (Appeal Br. 12).
The Examiner finds that Fernihough is in the same field of endeavor
as Morris because they are each directed to articles for turbine engines
which possess directionally solidified microstructure (Ans. 3–4). Although
Fernihough discloses correcting grain defects in cast articles, Fernihough
also discloses, more broadly, a method to repair defects in single crystal or
columnar grained articles to restore the full strength of the defect-free
material without compromising quality of the material (Fernihough ¶ 7).
Fernihough may focus on repair of cast components in the disclosure, but
also broadly teaches repairing single crystal articles without restriction on
how they were made. The Examiner reasonably finds that Fernihough’s
teaching on using laser heating to correct grain defects would have been
relevant to other single crystal formation processes such as Morris’ layer-by-
layer technique in addition to casting (Ans. 6).
Moreover, an objective of the invention is to provide a method of
manufacturing a component where homogenous grain orientation is ensured
(Spec. ¶ 8). Fernihough is concerned with a similar problem/objective in
that single crystals are repaired to restore the full strength of the defect-free
material (i.e., a homogenous crystal structure) (¶ 7). Therefore, Fernihough
is both in the same field of endeavor and is reasonably pertinent to
Appellant’s problem/objective. Accordingly, we find Fernihough is
analogous and relevant to Appellant’s claimed method. Appellant’s
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argument about repair processes being excluded from the invention is not
persuasive (Appeal Br. 11). Appellant characterizes their invention as
correcting a defect in the grain structure (Spec. ¶ 31). We do not see and
Appellant does not explain the distinction between a process that corrects a
defect versus a process that repairs a defect. The end result is the same: a
product having the desired structure. We are unpersuaded by Appellant’s
argument.
Appellant argues none of the references teaches the detecting,
determining and transforming steps recited in claim 16 (Appeal Br. 10).
Appellant contends that Morris, Sun, and Fernihough as combined fail to
teach the detecting, determining and transforming steps (Appeal Br. 11). In
assessing the disclosures of the prior art it is important to take into account
not only the specific teachings of the reference but also the inferences which
a person of ordinary skill in the art is expected to draw therefrom. In re
Preda, 401 F.2d 825, 826 (CCPA 1968). The combined teachings of
Morris, Sun, Fernihough, Foster and Tanabe would have suggested the
method of claim 16 including the detecting, determining and transforming
steps. The Examiner finds that Sun teaches using X-ray diffraction to
monitor the structural transformations occurring in the layers during a laser
sintering process (Final Act. 8). The Examiner finds that Morris teaches a
layer-by-layer molding process that uses laser sintering (Final Act. 6–7).
Therefore, we agree that Sun would have suggested using x-ray diffraction
to monitor structural transformations in the layers as they are sintered and
deposited.
The Examiner relies on Fernihough to disclose a method for removing
defects from an article (Final Act. 8). The Examiner finds Fernihough
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teaches detecting the presence and location of a defect using suitable means
and then using a locally acting heat source such as a laser to reheat the area
containing the defect to repair it (Final Act. 8). The Examiner finds that the
combined teachings of Morris, Fernihough, and Sun would have suggested
using x-ray diffraction to monitor the structural transformations in the layers
and use local laser heating of an area that is defective due to improper grain
alignment (Final Act. 8–9).
Regarding the requirement that second power per unit area is less than
the first power per unit area, the Examiner finds that Morris does not
explicitly teach this limitation, but Morris does teach the laser may have a
first power per unit area of between 50 to 300 watts and the second power
per unit area may be between 100 to 500 watts (Final Act. 10). The
Examiner finds that Morris’ ranges overlap such that the laser’s first power
per unit area maybe higher than the second power per unit area (Final Act.
10). The Examiner finds that Morris teaches a third set of laser modulation
parameters that includes using a reduced laser power and that follows the
first set of modulation parameters (Final Act. 10). The Examiner finds that
the laser power is a result effective variable (Final Act. 10). The Examiner
determines that it would have been within the capabilities of an ordinary
artisan to apply a first laser power to melt or sinter the powder followed by a
second and lower laser power in order to account for microstructural and/or
dimensional changes (Final Act. 10). The Examiner alternatively finds
Tanabe teaches laser-based recrystallization wherein a first high intensity
pulse which melts the target and a second lower intensity pulse controls the
solidification rate of the material (Final Act. 11). The Examiner finds that
based on Tanabe’s teachings it would have been obvious to use a second
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laser pulse with a lower intensity to provide greater control over the cooling
rate and achieve the desired microstructure (Final Act. 11). The Examiner
explains the combination of Morris’, Sun’s, Fernihough’s and Tanabe’s
teachings is merely a combination of known methods to yield predictable
results (Final Act. 11).
Appellant does not specifically dispute or otherwise show reversible
error with the Examiner’s finding that Morris teaches that the laser power is
a result-effective variable that would have been readily optimized (Appeal
Br. generally). We find that Morris broadly discloses that the second set of
modulation parameters are “different” than those of the first set of
modulation parameters (Morris ¶ 36). Morris exemplifies that the second set
of modulation parameters “may include” a laser power greater than the laser
power of the first set of modulation parameters (Morris ¶ 36). In other
words, Morris includes a broader disclosure and does not require that the
second power level is necessarily higher than the first power level. Rather,
the second power level is result effective, such that it would have been
obvious for the ordinarily skilled artisan to optimize the power level. The
overlapping laser power level ranges include having a second power level
less than the first laser power level as found by the Examiner (Final Act. 10;
Morris ¶ 36).
Regarding Tanabe, Appellant contends that the combination is based
on hindsight because Morris requires a second laser power level that is
higher than the first power level to fully melt the powder layer (Appeal Br.
12). Appellant contends that Morris teaches away from using a second laser
power lower than the first laser power level (Appeal Br. 12). Appellant
argues that a person of ordinary skill in the art would not have modified
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Morris’ second pulse such that there are two pulses, a higher energy first
pulse and a lower energy second pulse, because doing so would frustrate
Morris’ simple to perform process (Appeal Br. 12). Regarding Morris’
teaching to use a third set of modulation parameters for the laser, Appellant
argues the third set of modulation parameters is not disclosed as being used
in addition to the second set of modulation parameters (Appeal Br. 13).
Appellant contends that Morris’ third set of modulation parameters are
disclosed as being used for thinner metal powder depositions (Appeal Br.
13).
Appellant’s arguments regarding Tanabe are not persuasive for the
same reasons discussed above regarding the undisputed Examiner finding
that Morris teaches that the laser power level is a result-effective variable.
We add that Morris discloses in paragraph 40 that the first set of modulation
parameters may be set to sinter or melt the metal powder. Morris further
discloses using a third set of modulation parameters for the laser that are
different than the first and second set and may include a reduced laser power
(¶ 40). We agree with Appellant that the third set of modulation parameters
is not disclosed as being used in addition to the second set of modulation
parameters (Appeal Br. 13). Rather, Morris teaches using the third set of
modulation parameters is used in place of the second set. Our understanding
of Morris is supported by the disclosure in paragraph 40 that “in another
embodiment, the first and third sets of modulation parameters may be
substantially equal to each other.” Based on this disclosure, Morris teaches
in paragraph 40 that the first and third set of modulation parameters may be
used together and the laser power values may be tailored to suit a particular
material. Tanabe further teaches using a first laser power level that is higher
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than a second laser power level to first melt the target material and then
control solidification of the melt (Final Act. 11). The use of Tanabe’s
second lower power level in Morris’ process would have been obvious given
Morris’ teachings to use a reduced power level as a third modulation
parameter and to help control the solidification rate of the melt formed by
the first laser pulse in forming a crystal structure (Morris ¶ 40). The
Examiner has not engaged in impermissible hindsight, but rather is merely
using the teachings of the references in combining the references.

Claim 31
Appellant argues the Examiner’s rejection of claim 31 is improper
because the Examiner relies on Morris alone to teach the steps detecting and
transforming of claim 31 after finding that Morris does not teach the
detecting and transforming steps in claim 16 from which claim 31 depends
(Appeal Br. 14). Appellant argues the Examiner has not established a prima
facie case of obviousness (Appeal Br. 14).
Contrary to Appellant’s arguments, the Examiner relies on Morris,
Fernihough and Sun to teach the subject matter of claim 31 (Final Act. 14–
15). The Examiner finds that Morris teaches using a laser to transform a
powder layer into the substrate layer (Final Act. 14). The Examiner finds
that Morris does not explicitly teach the detecting step is performed after the
transforming of the powder layer step (Final Act. 14). To meet this
requirement of claim 31, the Examiner relies on Sun’s teaching to use x-ray
diffraction to monitor structural transformations that occur during laser
sintering (Final Act. 14–15). The Examiner finds Fernihough teaches that
surface defects are not detected until after the article has been formed (Final
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Act. 15). Based on these findings, the Examiner finds that in order to
analyze the crystal structure, the x-ray diffraction analysis must necessarily
be performed after the sample has been irradiated with a laser (Final Act. 15;
Ans. 7).
Appellant’s argument does not establish reversible error with the
rejection of claim 31.

Claim 33
Appellant argues that none of the references disclose the “language of
claim 33.” (Appeal Br. 14). Appellant contends there is no reason to use
Sun’s x-ray diffraction used in investigating structural transformations
during laser sintering of multi-layered components to identify casting defects
in Fernihough’s cast article (Appeal Br. 15).
Appellant’s arguments are misplaced because the Examiner’s
rejection proposes monitoring Morris’ laser sintered multilayered structure
using Sun’s x-ray diffraction to determine structural transformation in the
layers (Final Act. 15–16; Ans. 8). The Examiner relies on Fernihough to
teach it was known to use laser reheating of the defective area to fix the
article (Final Act. 16). Therefore, the Examiner is not proposing to combine
Sun’s x-ray diffraction monitoring with Fernihough’s casting process.
Appellant has not shown reversible error in the Examiner’s section 103
rejection of claim 33.

Claim 35
Appellant argues Morris, Sun and Tanabe fail to teach the steps
recited in claim 35 (Appeal Br. 15–16). Appellant argues that when a
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rejection is based on a combination of references, at least one of the
references must disclose the limitations in the claim (Appeal Br. 16).
Appellant argues that neither Morris nor any of the other references teaches
forming a melt pool of the material (Appeal Br. 16). Appellant argues that
Tanabe fails to teach cooling a melt pool by applying energy with a second
power per unit area applied to correct the grain orientation of the section
(Appeal Br. 16).
Appellant’s arguments are not persuasive because they attack the
references individually instead of addressing what the combined teachings of
the prior art would have suggested to a person of ordinary skill in the art. In
re Keller, 642 F.2d 413, 425 (CCPA 1981). The Examiner finds Morris
teaches heating the powder to form a melt pool of the melted powder and
substrate (Ans. 8). Morris teaches allowing the melted powder and substrate
to recrystallize to assume the crystal structure of the substrate (Ans. 8). The
Examiner finds Tanabe teaches controlling the solidification rate using a
reduced power laser produces a desirable crystalline material instead of a
microcrystalline material (Ans. 8). The Examiner correctly finds that the
combined teachings of Morris and Tanabe would have suggested the steps
recited in claim 35 (Ans. 8–9).
On this record, we affirm the Examiner’s § 103 rejection of claims
16–18, 20, 21, 23–29, 31, 33, and 35–38 over Morris in view of Sun,
Fernihough, Foster and Tanabe. For the same reasons, we affirm the § 103
rejection of claims 22 and 32 over Morris in view of Sun, Fernihough,
Foster, Tanabe, and Benda.
CONCLUSION
In summary:
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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
16–18, 20,
21, 23–29,
31, 33, 35-38
103 Morris, Sun,
Fernihough, Foster,
Tanabe
16–18, 20, 21,
23–29, 31, 33,
35–38

22, 32 103 Morris, Sun,
Fernihough, Foster,
Tanabe, Benda
22, 32
Outcome 16–18, 20–29,
31–33, 35–38

TIME PERIOD FOR RESPONSE
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). See 37
C.F.R. § 41.50(f).

AFFIRMED