Ex Parte Bruck et al

Patent Trial and Appeal Board

Feb 14, 2018

14045818 (P.T.A.B. Feb. 14, 2018)

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.
14/045,818 10/04/2013 Gerald J. Bruck 2013P14214US 5601
28524 7590 02/16/2018
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
3501 Quadrangle Blvd Ste 230
EXAMINER
PAIK, SANG YEOP
Orlando, EL 32817 ART UNIT PAPER NUMBER
3742
NOTIFICATION DATE DELIVERY MODE
02/16/2018 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):
ipdadmin.us@siemens.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GERALD J. BRUCK and AHMED KAMEL
Appeal 2017-005391
Application 14/045,818
Technology Center 3700
Before ANTON W. FETTING, PHILIP J. HOFFMANN, and
BRADLEY B. BAYAT, Administrative Patent Judges.
HOFFMANN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellants1 appeal from the
Examiner’s rejection of claims 1—20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM-IN-PART.
According to Appellants, their invention is directed “to an improved
laser cladding/repair process.” Spec. 1,1. 5. Claims 1, 11, and 17 are the
1 According to Appellants, the real party in interest is Siemens Energy, Inc.
Appeal Br. 3.
Appeal 2017-005391
Application 14/045,818
only independent claims on appeal. Below, we reproduce claim 1 as
illustrative of the appealed claims.
1. A method comprising:
traversing a laser beam across a target surface to
progressively melt local regions of the surface;
controlling an area of the laser beam at focus during the
step of traversing in response to a local shape of the target surface
at the respective local melt regions, wherein at least one local
shape is different from another local shape; and
controlling a power level of the laser beam in response to
the area of the laser beam at focus in order to provide a desired
power density of the laser beam across the target surface.
REJECTIONS AND PRIOR ART
The Examiner rejects claims 1—4, 8, 9, 11—15, and 17 under 35 U.S.C.
§ 103(a) as unpatentable over Qi (US 8,691,329 B2, iss. Apr. 8, 2014),
Kawasaki (US 4,725,708, iss. Feb. 16, 1988), and Mombo-Caristan
(US 5,595,670, iss. Jan. 21, 1997).
The Examiner rejects claims 5—7, 18, and 19 under 35 U.S.C. § 103(a)
as unpatentable over Qi, Kawasaki, Mombo-Caristan, and Haake
(US 2013/0105447 Al, pub. May 2, 2013).
The Examiner rejects claims 10, 16, and 20 under 35 U.S.C. § 103(a)
as unpatentable over Qi, Kawasaki, Mombo-Caristan, and Shishkovskij
(RU 2 217 266 C2, pub. Nov. 27, 2003).
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Application 14/045,818
ANALYSIS
Obviousness rejection of claims 1—4, 8, 9, 11—15, and 17
Initially, we note that Appellants argue each of claims 1—4, 8, 9, 11—
15, and 17 together as a group. See Appeal Br. 6—11. Thus, we may choose
a single claim from the group, and, generally, each of the remaining claims
would stand or fall with that claim. See 37 C.F.R. § 41.37 (c)(l)(iv) (“When
multiple claims subject to the same ground of rejection are argued as a group
or subgroup by [Ajppellant, the Board may select a single claim from the
group or subgroup^] and may decide the appeal as to the ground of rejection
with respect to the group or subgroup on the basis of the selected claim
alone.”). In this case, we choose independent claim 1.
However, we note that independent claims 11 and 17 do not recite
specific recitations that claim 1 recites and upon which Appellants rely to
show error in the Examiner’s rejection. Specifically, independent claim 1
recites “controlling an area of the laser beam at focus during the step of
traversing in response to a local shape of the target surface at the respective
local melt regions, wherein at least one local shape is different from another
local shape.” Appeal Br., Claims App. Appellants argue that the Examiner
errs in relying on a combination of references to show this recitation, and,
for the reasons detailed below, we agree with Appellants. See, e.g., id. at 8
(“[in Kawasaki] the beam diameter did not change in response to a local
area.”) (emphasis omitted), id. at 9 (“[Although] Kawasaki does disclose that
a beam diameter can be adjusted, there is no disclosure that it is adjusted in
response to a local shape as the claims require.”).
Thus, although we do not sustain the rejection of independent claim 1
and its dependent claims 2-4, 8, and 9 for the below reasons, inasmuch as
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Application 14/045,818
Appellants’ arguments are inapplicable to independent claims 11 and 17,
Appellants do not persuade us that the Examiner errs in rejecting claims 11
and 17. Therefore, we sustain the rejection of claims 11 and 17. However,
because claims 12—15, that depend from claim 11, each recite a recitation
similar to that argued with respect to claim 1, we also do not sustain the
rejection of claims 12—15 for the same reasons that we do not sustain
claim 1 ’s rejection.
Returning to independent claim 1, as set forth above, the claim recites
“controlling an area of the laser beam at focus during the step of traversing
in response to a local shape of the target surface at the respective local melt
regions, wherein at least one local shape is different from another local
shape.” Appeal Br., Claims App. Based on our review, the Examiner does
not establish that any reference or combination of references discloses or
renders obvious controlling an area of a laser beam in response to a local
shape of a target surface. See Appeal Br. 6—11; see also Reply Br. 4—7.
In the rejection, the Examiner finds that although “Qi does not
explicitly show controlling an area of the laser beam,” “Kawasaki shows it is
known to control an area of laser beam,” and “Mombo-Caristan shows it is
known to . . . control an area of the laser beam as the laser beam takes a form
of a rectangular, linear, or an oblong shape.” Answer 2. However, none of
these findings addresses adequately the recitation of controlling a laser-beam
area in response to a target-surface local shape.
The Examiner then determines “[i]n view of Kawasaki or Mombo-
Caristan, it would have been obvious ... to adapt Qi with the laser
parameters including varying degrees of laser beam focus area, power
density, and time exposure to also effectively melt the targeted regions
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Application 14/045,818
including varying shapes, widths and heights shown in Qi.” Id. To the
extent that this is a determination by the Examiner that it would have been
obvious to modify Qi to control an area of a laser beam in response to a
local shape of a target surface, the Examiner does not explain adequately
why it would have been obvious.
The Examiner further determines that
[a] target surface having different shape from . . . another is
shown by . . . Qi . . .[, which] shows a target surface . . . having
melt regions . . .[,] wherein the local shapes are different from
one another as the melted regions of the target surface have
different shapes, widths, and heights .... It is also noted that
Kawasaki and Mombo-Caristan are applied to teach that it is
known to control an area of laser beam including different shapes
and forms with a laser power density as stated in the ground of
rejection. Thus, [Appellants’] arguments are not deemed
persuasive.
Answer 4. This determination, however, also is insufficient to establish that
it would have been obvious to control an area of a laser beam in response to
a local shape of a target surface. At most, the Examiner finds that different
target shapes are known, and varying laser beam shapes are known, but not
that an area of a laser beam is controlled in response to a target shape area.
Thus, based on the foregoing, we do not sustain the rejection of
claims 1—4, 8, 9, and 12—15, each of which recites controlling an area of a
laser beam in response to a local shape of a target surface. However,
because claims 11 and 17 do not include such a recitation, we sustain the
rejection of these claims.
Obviousness rejections of claims 5—7, 10, 16, and 18—20
Appellants’ arguments for each of these dependent claims is that
neither Haake nor Shishkovskij “teaches or suggests . . . controlling an area
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Application 14/045,818
of a laser beam at focus ... in response to a local shape of a target surface.”
Appeal Br. 11 (emphasis omitted). Claims 5—7, 10, and 16 depend from
claim 1, the rejection of which we do not sustain. Thus, we also do not
sustain the rejection of claims 5—7, 10, and 16. Cf. In re Fritch, 972
F.2d 1260, 1266 (Fed. Cir. 1992) (“dependent claims are nonobvious if the
independent claims from which they depend are nonobvious”).
Claims 18—20 depend from claim 17. Id. at Claims App. As
discussed above, independent claim 17 does not recite “controlling an area
of a laser beam at focus ... in response to a local shape of [a] target surface”
(id. at 11), and, therefore, Appellants’ arguments are inapplicable to
claims 18—20. Further, it is not clear whether claims 18—20 include
recitations similar in scope to the argued recitation. Thus, Appellants do not
persuade us of Examiner error, and, therefore, we sustain the rejections of
claims 18—20.
DECISION
We AFFIRM the Examiner’s obviousness rejection of claims 11
and 17—20.
We REVERSE the Examiner’s obviousness rejections of claims 1—10,
and 12—16.
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Application 14/045,818
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)(l)(iv).
AFFIRMED-IN-PART
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