Ex Parte Mazumder et al

Patent Trial and Appeal Board

Mar 21, 2013

11668752 (P.T.A.B. Mar. 21, 2013)

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