Ex Parte Mazumder et alDownload PDFPatent Trial and Appeal BoardMar 21, 201311668752 (P.T.A.B. Mar. 21, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JYOTI MAZUMDER, JUN NI, and ALBERT SHIH ____________ Appeal 2011-001236 Application 11/668,752 Technology Center 3700 ____________ Before JENNIFER D. BAHR, GAY ANN SPAHN, and ADAM V. FLOYD, Administrative Patent Judges. SPAHN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Jyoti Mazumder et al. (Appellants) seek our review under 35 U.S.C. § 134 of the Examiner’s rejection of claims 1-3, 6, and 7. Appellants cancelled claims 4 and 5. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. Appeal 2011-001236 Application 11/668,752 2 The Claimed Subject Matter The claimed subject matter relates to “rapid prototyping and, in particular, to a high-throughput manufacturing station that integrates high- speed, ultra-precision direct metal deposition (DMD) and electrical discharge machining (EDM) for complex tool and die manufacturing with unique and controlled mechanical properties.” Spec. 1, para. [0002]. Claim 1 (the sole independent claim on appeal), reproduced below, is representative of the appealed subject matter. 1. A high-throughput manufacturing station, comprising in combination: a direct-metal deposition (DMD) processing stage for fabricating a component in accordance with a computer-aided design (CAD) description; and an electrical discharge machining (EDM) stage for performing surface finishing operations on the component, the EDM stage being a 5DOF (degree of freedom) dry EDM stage using an inert gas with appropriate dielectric properties. The Rejections The following Examiner’s rejections, under 35 U.S.C. § 103(a), are before us for review: I. claims 1, 6, and 7 as unpatentable over Mok (US 2002/0147521 A1, published Oct. 10, 2002), Schwefel (US 4,564,912, issued Jan. 14, 1986), Nagai (JP 2002-273625 A, published Sep. 25, 2002), and Beckley (US 4,924,052, issued May 8, 1990); II. claim 2 as unpatentable over Mok, Schwefel, Nagai, Beckley, and Mazumder (US 2002/0065573 A1, published May 30, 2002); and III. claim 3 as unpatentable over Mok, Schwefel, Nagai, Beckley, Keicher (US 6,811,744 B2, issued Nov. 2, 2004), and Mazumder. Appeal 2011-001236 Application 11/668,752 3 OPINION Rejection I – Obviousness based on Mok, Schwefel, Nagai, and Beckley Appellants argue claims 1, 6, and 7 as a group and we select independent claim 1 as the representative claim. See App. Br. 2-3; see also 37 C.F.R. § 41.37(c)(1)(vii) (2011). Claims 6 and 7 fall with claim 1. The Examiner finds that Mok discloses “a material deposition apparatus (stage) and a material removal apparatus (stage),” and “using a laser cladding apparatus for metal powder deposition and fusion (i.e.[,] direct-metal deposition) and . . . an ‘electric discharge machine’ which is used for direct material removal, as well as a table (stage) for supporting a pallet.” Ans. 3-4 (citing Mok, paras. [0034], [0035], [0128], [0133], and [0134] and Figs. 11a and 11b). The Examiner also finds that Mok fails to “disclose that the EDM stage is a 5DOF (degrees of freedom) dry EDM stage using an inert gas with appropriate dielectric properties.” Ans. 4. To cure the deficiencies of Mok, the Examiner turns to Schwefel to teach “an apparatus useable in eroding machines . . . with 2 degrees of freedom for movement of the workpiece by sliding the table in the X and Y directions” and “3 degrees of movement for the electrode . . . so that Schwefel discloses a total of 5 degrees of freedom for the apparatus.” Id (citing Schwefel, col. 1, ll. 10-27 and col. 2, ll. 27-28 and 35-37). The Examiner also turns to Beckley to teach “spark (electric discharges between an electrode and a workpiece with a gas medium of nitrogen gas or argon gas . . . ).” Id (citing Beckley, col. 1, ll. 46-65). The Examiner concludes that it would have been obvious to one of ordinary skill in the art “to adapt Mok . . . in view of Schwefel, Nagai . . . , and Beckley . . . to provide a stage with five degrees of freedom to flexibly machine a complex shaped workpiece and an inert gas Appeal 2011-001236 Application 11/668,752 4 instead of dielectric liquid which would [sic, alleviate] the problem of handling and disposal of the liquid.” Id. Appellants argue that “prima facie obviousness has not been established since the references comprising the proposed combination set forth disparate processes not intended to be used with one another.” App. Br. 2. Appellants also argue that “the Examiner’s rationale for combining the references is “inadequate,” “too vague,” “difficult to understand,” and “not directly applicable to the proposed combination,” and “even if the proposed combination were made, it does not read upon all of Appellant[s’] claim limitations.” App. Br. 2-3. Appellants also argue that “the Schwefel reference, insofar as it discloses a conventional 6DOF system,” does not disclose an EDM stage having five degrees of freedom. Ans. 3. We are not persuaded by Appellants’ arguments. First, it is speculation on Appellants’ part that the references comprising the proposed combination set forth disparate processes not intended to be used with one another. Mok’s invention, like Appellants’, is related to a “rapid prototyping (RP) system.” Mok, p. 1, para. [0002]; see also Spec. 1, para. [0002]. As pointed out by the Examiner, Mok contemplates both “a material deposition apparatus,” and “a material removal apparatus.” Mok, p. 2, para. [0034]. Mok also contemplates machining apparatuses in the form of “a laser cladding system,” and “an electrode discharge machine.” Mok, p.2, para. [0035]. Further, Mok’s Figure 11b shows a multiple palletizing system integrating a profiling station (material removal) and deposition station (adding material) onto a single conveyor system. Mok, p. 3, para. [0070], p. 5, para. [0110], and p.7, para. [0134]. Thus, Mok appears to suggest a DMD processing stage and EDM stage at a single manufacturing station. Appeal 2011-001236 Application 11/668,752 5 Second, we do not agree that the Examiner’s rationale is “inadequate,” “too vague,” “difficult to understand” or “not directly applicable to the proposed combination.” The Examiner has articulated a reason for combining the references, i.e., “to provide an inert gas for the dielectric medium instead of a dielectric liquid which would require handling of the liquid,” and Appellants have failed to show that the Examiner’s reasoning does not have a rational underpinning. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (holding that “rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”). Third, although Appellants argue the Examiner’s combination does not set forth all of the claim limitations, Appellants have failed to identify a single claim limitation which is not addressed by the Examiner’s rejection. Finally, we are not persuaded by Appellants’ argument that Schwefel discloses a conventional 6DOF system, because we note that if Schwefel discloses six degrees of freedom, then it meets the claim limitation for five degrees of freedom. Accordingly, we sustain the Examiner’s rejection of independent claim 1, and claims 6 and 7 which fall therewith, under 35 U.S.C. § 103(a) as unpatentable over Mok, Schwefel, Nagai, and Beckley. Rejection II – Obviousness based on Mok, Schwefel, Nagai, Beckley, and Mazumder The Examiner finds that the combination of Mok, Schwefel, Nagai, and Beckley fail to disclose the subject matter of claim 2; however, to cure the deficiency, the Examiner turns to Mazumder to “teach[] using optical feedback with a direct metal deposition apparatus for dimensional control.” Appeal 2011-001236 Application 11/668,752 6 Ans. 4 (citing Mazumder, para. [0025] and Abstr.). The Examiner concludes that it would have been obvious to one of ordinary skill in the art to “adapt Mok . . . in view of Schwefel, Nagai . . . , Beckley and Mazumder . . . to provide this to enhance dimensional control during direct metal deposition.” Ans. 4-5. Appellants argue that “the Examiner’s rationale for the combination is too broad to be persuasive,” “is . . . inexact,” and “does not take the teachings of the various references into account.” App. Br. 3-4. Appellants also argue that “even if it did [take the teachings of the various references into account], it does not read on all of Appellant[s’] claim limitations.” App. Br. 4. Appellants also argue that “there is no stated need in the primary reference of Mok . . . to have a dry EDM stage with an inert gas and appropriate dielectric properties, nor is there any stated requirement for feedback to ‘enhance dimensional control,” and “only Appellant[s] ha[ve] discovered that the combination of these two particular processes represents a symbiotic relationship specifically applicable to direct-metal deposition.” Id. We are not persuaded by Appellants’ arguments. We do not agree that the Examiner’s reason for combining Mazumder with the Mok, Schwefel, Nagai, and Beckley references is too broad, is inexact, or does not take into account the teachings of the various references. Appellants have not alleged that the Examiner’s reasoning has no rational underpinning, and we find that the Examiner’s articulated reasoning, i.e., to provide enhanced directional control during direct metal deposition, has a rational underpinning as to why it would have been obvious to one of ordinary skill in the art to modify the combination of Mok, Schwefel, Nagai, and Beckley Appeal 2011-001236 Application 11/668,752 7 to include the optical feedback within a direct metal deposition apparatus as taught by Mazumder. See KSR at 418. It is not required that the primary reference, Mok, have a stated need in order to include the optical feedback control loop for the diode laser based DMD system as taught by Mazumder therein. We also do not agree that the Examiner’s combination does not address all of the claim limitations, and we note that Appellants have failed to identify a single claim limitation which is not addressed by the Examiner’s rejection. Finally, with respect to Appellants’ statement that only they discovered that the combination of direct metal deposition and dry EDM/5 DOF processes represents a symbiotic relationship specifically applicable to direct-metal deposition, we note that the Supreme Court in KSR found that “[c]ommon sense teaches . . . that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill in the art will be able to fit the teachings of multiple patents like pieces of a puzzle.” KSR, 550 U.S. at 420. In the present case, the Examiner has found the various teachings with respect to direct metal deposition (DMD), electric discharge machining (EDM), and five degrees of freedom (5 DOF) within the various references and has articulated a reason with a rational underpinning for combining their teachings. Without more, we are not persuaded that the Examiner erred. Accordingly, we sustain the Examiner’s rejection of claim 2 under 35 U.S.C. § 103(a) as unpatentable over Mok, Schwefel, Nagai, Beckley, and Mazumder. Appeal 2011-001236 Application 11/668,752 8 Rejection III – Obviousness based on Mok, Schwefel, Nagai, Beckley, Keicher, and Mazumder The Examiner finds that the combination of Mok, Schwefel, Nagai, and Beckley fail to disclose the subject matter of claim 3; however, to cure the deficiency, the Examiner turns to Keicher to “teach[] using an optical fiber to deliver the laser energy in a DMD apparatus) and to Mazumder to “teach[] using a diode laser with a fast response for direct metal deposition.” Ans. 5 (citing Keicher, col. 26, l. 55, and Mazumder, paras. [0022] and [0023]). The Examiner concludes that it would have been obvious to one of ordinary skill in the art to “adapt Mok . . . in view of Schwefel, Nagai . . . , Beckley, Keicher . . . and Mazumder . . . to provide this to use a diode laser for its quick response time and to easily deliver the laser beam by using an optical fiber instead of a complicated mirror system.” Ans. 4-5. Appellants argue that “[t]he Examiner’s rationale to . . . replace a ‘complicated mirror system’ is without support or foundation.” App. Br. 4. The Examiner responds that “[r]egarding the rejection of claim 3, it is known to the skilled artisan to use an optical fiber to send the laser beam to the workpiece as being significantly less complicated than using mirrors to send the laser beam.” Ans. 6. In reply, Appellants argue “the Examiner’s argument that this would be ‘significantly less complicated than using mirrors to send a laser beam’ is without support,” because “[t]here really is no way to know which technology would be more or less complicated.” Reply Br. 2. We are persuaded by Appellants’ arguments because, on the basis of the record before us, the Examiner’s articulated reason, namely, “to easily deliver the laser beam by using an optical fiber instead of a complicated mirror system” does not have a rational underpinning. The Examiner does Appeal 2011-001236 Application 11/668,752 9 not point to any disclosure in Mok of a complicated mirror system that would be replaced by an optical fiber, and provides no evidence to support the assertion that it is known to the skilled artisan to use an optical fiber to send the laser beam to the workpiece as a significantly less complicated alternative to using mirrors. Keicher’s optical fiber 430 is part of a laser beam delivery system 420, depicted in Figure 33, which uses a folding mirror 438. Keicher, col. 26, l. 42 through col.28, l. 26 and Fig. 33. Thus, the Examiner has failed to explain how it would have been obvious to one of ordinary skill in the art to modify the combination of Mok, Schwefel, Nagai, and Beckley to include the optical fiber as taught by Keicher instead of a mirror system when Keicher’s system 420 uses a mirror 438. See KSR at 418. Accordingly, we do not sustain the Examiner’s rejection of claim 3 under 35 U.S.C. § 103(a) as unpatentable over Mok, Schwefel, Nagai, Beckley, Keicher, and Mazumder. DECISION We affirm the Examiner’s decision to reject claims 1, 2, 6, and 7. We reverse the Examiner’s decision to reject claim 3. 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). AFFIRMED-IN-PART Klh Copy with citationCopy as parenthetical citation