Ex Parte Czerner et al

Patent Trial and Appeal BoardMar 20, 2013

10556644 (P.T.A.B. Mar. 20, 2013)

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. 10/556,644 01/12/2006 INV001Stefan Oliver Czerner 5038.1018 8517 23280 7590 03/20/2013 Davidson, Davidson & Kappel, LLC 485 7th Avenue 14th Floor New York, NY 10018 EXAMINER HEINRICH, SAMUEL M ART UNIT PAPER NUMBER 3742 MAIL DATE DELIVERY MODE 03/20/2013 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) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte STEFAN OLIVER CZERNER and KLAUS EMILJANOW ____________________ Appeal 2010-011166 Application 10/556,644 Technology Center 3700 ____________________ Before: LINDA E. HORNER, BRETT C. MARTIN, and BART A. GERSTENBLITH, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-011166 Application 10/556,644 2 STATEMENT OF CASE Stefan Oliver Czerner and Klaus Emiljanow (Appellants) appeal under 35 U.S.C. § 134 from the Examiner’s rejection of claims 11-21. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. THE INVENTION Appellants’ invention is directed generally to “a method for heating components prior to and/or during further processing.” Spec., para. [0001]. Claim 11, reproduced below, is illustrative of the claimed subject matter: 11. A method for processing one or more components of gas turbines, comprising: heating a component of a gas turbine with at least one laser device; and laser hardfacing the component with a separate laser device, the heating occurring prior to and/or during the laser hardfacing. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Plankenhorn Duley Miyamoto Sexton Strauch Aoshima Seimitsu Geiger US 4,539,462 US 4,857,699 US 5,080,474 US 5,493,445 US 6,883,405 B2 JP 58106836 A JP 63149092 A DE 4234339 A1 Sep. 3, 1985 Aug. 15, 1989 Jan. 14, 1992 Feb. 20, 1996 Apr. 26, 2005 Jun. 25, 1983 Jun. 21, 1988 Apr. 14, 1994 Appeal 2010-011166 Application 10/556,644 3 THE REJECTIONS ON APPEAL The Examiner made the following rejections: Claims 11 and 12 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Applicant’s Admitted Prior Art (AAPA), Aoshima, and Plankenhorn. Ans. 4. Claims 13 and 14 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over AAPA, Aoshima, Plankenhorn, Duley, and Seimitsu. Ans. 5. Claim 15 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over AAPA, Aoshima, Plankenhorn, and Miyamoto. Ans. 5. Claim 16 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over AAPA, Aoshima, Plankenhorn, Duley, Seimitsu, and Miyamoto. Ans. 5. Claims 17 and 19 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over AAPA, Aoshima, Plankenhorn, and Geiger. Ans. 6. Claim 18 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over AAPA, Aoshima, Plankenhorn, Duley, Seimitsu, and Geiger. Ans. 6. Claim 20 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over AAPA, Aoshima, Plankenhorn, and Strauch. Ans. 6-7. Claim 21 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over AAPA, Aoshima, Plankenhorn, and Sexton. Ans. 7. ANALYSIS Claims 11-21 are currently pending in this application, of which claim 11 is the only independent claim. See, e.g., App. Br., Cl. Appx. 1-2. With Appeal 2010-011166 Application 10/556,644 4 regard to the first ground of rejection, Appellants argue claims 11 and 12 as a group. App. Br. 4-5. We select claim 11 as representative, and claim 12 stands or falls with claim 11. See 37 C.F.R. § 41.37(c)(1)(vii) (2011). Appellants rely on the arguments presented for the patentability of claim 11 alone in rebutting the various rejections of dependent claims 13, 14, and 17- 21. App. Br. 4-5; Reply Br. 1-2. Accordingly, the disposition of the rejections of claims 13, 14, and 17-21 turns on our analysis of the rejection of claim 11. Appellants present additional arguments only for dependent claims 15 and 16. App. Br. 5-6; Reply Br. 2. Rejections of Claims 11-14 and 17-21 The Examiner makes numerous fact findings (“FF”) regarding the teaching of the prior art with respect to independent claim 11, including the following. FF1. Appellants’ Specification describes generally that preheating prior to hardfacing was well known. Ans. 4. FF2. Aoshima teaches “use of a plurality of laser light sources wherein one source is used for preheat and a second different laser is used for heating or fusing.” Id. FF3. Plankenhorn teaches that it was well known to use lasers for hardening and annealing operations. Id. FF4. Plankenhorn teaches that it was well known to use lasers for “surface cladding, hardening, and annealing processes.” Ans. 8 (citing to Plankenhorn, col. 1, ll. 11-20). Based upon these findings, the Examiner concludes that Appellants’ “particularly claimed heating and hardfacing steps would have been obvious in order to provide rapid processing.” Ans. 8. Appeal 2010-011166 Application 10/556,644 5 Appellants first challenge the Examiner’s rejection for allegedly failing to “state what part of the claim is not found in the APA [Admitted Prior Art].” App. Br. 5. From the above findings, it is clear that the Examiner’s position with respect to claim 11 is that Appellants have admitted that the general concept of preheating prior to hardfacing is known, but that the specific use of separate lasers for each of the preheating and hardfacing steps is not disclosed in the AAPA. Appellants next challenge that “laser hardfacing is not the same as hardening or annealing, and the Aoshima and Plankenhorn references also do not disclose laser hardfacing any component.” Id. We do not find this persuasive because we do not see the Examiner’s rejection as suggesting that hardening or annealing are the same as hardfacing. According to FF2, Aoshima teaches that it was known to use separate lasers, one to preheat, and one to perform a secondary heat treatment operation thereafter or simultaneously. Aoshima is clear that its purpose is “[t]o allow the simultaneous heat treatment of different kind[s] of substances” and that “heat treatment before and after the laser annealing can be simultaneously performed.” Aoshima translated Abstract. Accordingly, the Examiner has merely pointed out that given the AAPA’s general teaching of preheating prior to hardfacing, which is a form of heat treatment, it would have been obvious to obtain the stated benefits in Aoshima to achieve “rapid processing” and “simultaneous use of both preheat and heating beams” by using separate lasers to perform preheat and heat treatment operations. Ans. 4. As for Appellants’ assertion that neither Plankenhorn nor Aoshima teaches laser hardfacing (see, e.g., App. Br. 5, Reply Br. 2), we do not find Appeal 2010-011166 Application 10/556,644 6 this to be accurate given FF4. Although Plankenhorn does not refer specifically to laser hardfacing, we understand laser surface cladding to be analogous. Plankenhorn specifically teaches that “[h]igh powered lasers are ideally suited to be used as a source of heat in various metal processing applications,” which would include “procedures, such as welding or surface cladding of metals” as well as “hardening and annealing operations.” Col. 1, ll. 11-20. Given this teaching in Plankenhorn, laser surface cladding, or hardfacing, as well as annealing and hardening, are known common laser heat treatment processing applications. Therefore, contrary to Appellants’ assertion, Plankenhorn does teach laser hardfacing. As such, we find that Appellants’ arguments do not apprise us of error in the Examiner’s combination of the known preheating and hardfacing of the AAPA, with the use of separate lasers to perform preheating and heat treatment as taught in Aoshima, and Plankenhorn’s teaching that surface cladding, annealing, and hardening are known uses of lasers. Accordingly, we affirm the rejection of independent claim 11. Appellants rely on this alleged deficiency in the combination of AAPA, Aoshima, and Plankenhorn with respect to claim 11 as the sole basis for overturning the various rejections of dependent claims 12-14 and 17-21, and for the same reasons, we affirm the rejections of claims 12-14 and 17- 21. Rejection of Claim 15 Claim 15, which depends from claim 11, further recites “adjusting angles of incidence at which laser radiation hit a surface of the component to the contour of said surface.” The Examiner rejects claim 15 over AAPA, Aoshima, and Plankenhorn as applied to claim 11 and further in view of Appeal 2010-011166 Application 10/556,644 7 Miyamoto for the teaching of “adjustment of the incident angle of a laser and the use thereof.” Ans. 5. Appellants admit that Miyamoto teaches shaping of beams, but assert that Miyamoto’s beams “are not adjusted ‘to the contour of said surface’” ostensibly because Miyamoto teaches adjusting an angle of incidence to a flat surface. App. Br. 5. As the Examiner points out, however, “Applicant[s’] claim 15 broadly describes ‘adjusting angles of incidence at which laser radiation hit a surface of the component[,’] but do not specify any particular change of surface contour” and “[t]he surface being processed could be limited in contour to a simple flat outline feature.” Ans. 8. Appellants’ argument with respect to claim 15 does not appear to be commensurate with the scope of claim 15. We do not read claim 15 as requiring adjustment to a changing contour as Appellants appear to read claim 15; rather, claim 15 requires adjusting the angle of incidence to the contour of the surface, which is taught by Miyamoto’s adjustment of the angle of incidence to the flat (i.e., contour) of surface 105. We agree with the Examiner that adjusting an angle of incidence as taught in Miyamoto, even to a flat surface, is sufficient to meet the broad claim language of “adjusting angles of incidence . . . to the contour of said surface.” Accordingly, we affirm the Examiner’s rejection of claim 15. Rejection of Claim 16 Claim 16, which depends from claim 14, further recites “adjusting angles of incidence at which laser radiation from the plurality of laser devices hit a plurality of surfaces of the component to the contour of each surface.” Appellants repeat their argument with respect to claim 15 regarding the adjustment “to the contour of each surface,” which we have Appeal 2010-011166 Application 10/556,644 8 already found unpersuasive supra. See App. Br. 6; Reply Br. 3. Appellants then assert that the rejection is deficient because “Miyamoto does not disclose this feature even for a single surface, much less a plurality of surfaces.” App. Br. 6. The Examiner, however, does not assert that Miyamoto teaches angle of incidence adjustment for a plurality of surfaces. Claim 14 introduces “irradiating the components on all sides from multiple irradiation directions using laser radiation.” The Examiner finds that Seimitsu “describes opposite side processing” as meeting this claimed processing on a plurality of sides. Ans. 5. With regard to claim 16, the Examiner then applies Miyamoto’s angle of incidence adjustment individually to each of the opposite side processing operations from Seimitsu in a similar fashion to claim 15. Ans. 5-6. This is what the Examiner refers to when he states that “[a]djusting angle of incidence for plural lasers does not impart patentability.” Ans. 8. Accordingly, and contrary to Appellants’ arguments, the Examiner does not rely on Miyamoto for teaching adjustment of “plural lasers,” but merely to individually modify the plural lasers taught in Seimitsu, the teaching of which Appellants have not challenged. Accordingly, we do not find Appellants’ arguments persuasive and affirm the Examiner’s rejection of claim 16. Appeal 2010-011166 Application 10/556,644 9 DECISION For the above reasons, we AFFIRM the Examiner’s decision to reject claims 11-21. 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). AFFIRMED Klh