HAMILTON SUNDSTRAND CORPORATION

Patent Trials and Appeals BoardMar 15, 2021

2020004316 (P.T.A.B. Mar. 15, 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. 15/217,340 07/22/2016 Eric Karlen 93867US01 (U380779US) 3112 114172 7590 03/15/2021 Cantor Colburn LLP - Power Controls, Sensing Systems 20 Church Street 22nd Floor Hartford, CT 06103-3207 EXAMINER TRAN, THIEN S ART UNIT PAPER NUMBER 3761 NOTIFICATION DATE DELIVERY MODE 03/15/2021 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): usptopatentmail@cantorcolburn.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ERIC KARLEN and WILLIAM LOUIS WENTLAND Appeal 2020-004316 Application 15/217,340 Technology Center 3700 Before EDWARD A. BROWN, BENJAMIN D. M. WOOD, and NATHAN A. ENGELS, Administrative Patent Judges. WOOD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s August 15, 2019 Final Action rejecting claims 1–13, and 19–20. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Hamilton Sundstrand Corp. Appeal Br. 4. Appeal 2020-004316 Application 15/217,340 2 CLAIMED SUBJECT MATTER The claims are directed to a method of additive manufacturing of metal articles. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method for making an article, comprising: inputting a digital model of the article into an additive manufacturing apparatus or system comprising an energy source; and repeatedly applying energy from the energy source to successively applied incremental quantities of a powder particles to fuse the powder particles together to form the article corresponding to the digital model, wherein the powder particles individually comprise a composite core comprising a first phase comprising a first metal and a second phase comprising a ceramic, and a first shell over the core comprising a second metal. REFERENCES Name Reference Date Wilson US 7,718,280 B2 May 18, 2010 Jabado US 2009/0202814 A1 Aug. 13, 2009 Mcenerney US 2013/0307201 A1 Nov. 21, 2013 Colin2 WO 2015/001241 A2 Jan. 8, 2015 Brooks3 WO 2015/092442 A1 June 25, 2015 2 The Examiner and Appellant cite to U.S. Pat. Appl. 2016/0175929 (June 23, 2016) as an English-language equivalent of Colin. Final Act. 5; Appeal Br. 10. We do likewise. 3 The Examiner and Appellant cite to U.S. Pat. Appl. 2016/0318257 (Nov. 3, 2016) as equivalent to Brooks. Final Act. 5; Appeal Br. 8. We do likewise. Appeal 2020-004316 Application 15/217,340 3 REJECTIONS4 Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis 1–9, 19 103 Colin, Brooks, McEnerney 10–13, 20 103 Colin, Brooks, McEnerney, Jabado OPINION Claims 1–9, 19: Rejected as Unpatentable over Colin, Brooks, and McEnerney Independent Claim 1 The Examiner finds that Colin teaches the method of claim 1, including the use of “powder particles individually compris[ing] a composite core comprising a first phase comprising a first metal and a second phase comprising a ceramic.” Final Act. 5 (citing Colin ¶¶ 9, 12, 20, 25, 26, 79, 80, 84, 86, 87, Figs. 1, 2, 6B, 6E, 6F, 6G). In finding that the second phase of Colin’s particles comprises a ceramic, the Examiner relies on paragraphs 84 and 86 and Figures 6E and 6F of Colin, as evidenced by paragraphs 14– 18 of McEnerney. Id. Paragraph 84 describes the powder particle depicted in Figure 6E as “comprising a ductile metal alloy and individual particles that are hard, in particular oxide particles.” Colin ¶ 84 (emphasis added). Similarly, paragraph 86 describes the particle depicted in Figure 6F as comprising “two ductile metal alloy[s]” and “dark individual particles . . . that are hard, and in particular that are particles of oxides.” Id. ¶ 86 (emphasis added). The Examiner finds that Colin’s “oxide particles [are] a ceramic as evidenced by McEnerney.” Final Act. 5 (citing McEnerney 4 The Examiner withdrew a rejection of claims 1–3 and 5 as unpatentable over Wilson and Brooks. Ans. 3. Appeal 2020-004316 Application 15/217,340 4 ¶¶ 14–18). The Examiner relies on Brooks to teach inputting a digital model of an article being manufactured into an additive manufacturing apparatus or system. Id. at 6 (citing Brooks ¶¶ 26, 27, 34, 35, Fig. 1). Appellant responds, inter alia, that “all oxides are not ceramics” (which we take to mean that not all oxides are ceramics). Appeal Br. 10. Appellant asserts, as an example, that “iron oxide is a non-ceramic oxide.” Id. The Examiner does not dispute Appellant’s contentions that not all oxides are ceramics, and that iron oxide is not a ceramic. Further, contrary to the Examiner’s finding, McEnerney does not appear to teach that all oxide particles are ceramic particles. McEnerney does refer to “oxide ceramic[s]” (McEnerney ¶¶ 14–16, 18), but this likely is meant to distinguish from “non- oxide ceramics[s]” (Colin ¶ 80), and only confirms that some oxides are ceramics. It does not go so far as to equate oxides with ceramics. Because the rejection relies on the Examiner’s finding that “oxide particles [are] a ceramic,” which the evidence specifically relied on by the Examiner does not support, we reverse the rejection of independent claim 1, as well as claims 2–9, which depend therefrom, as unpatentable over Colin, Brooks, and McEnerney. Independent Claim 19 Independent claim 19 is drawn to a “metal-ceramic composite powder” comprising particles with “a composite core comprising a first phase comprising aluminum and a second phase comprising silicon carbide, silicon nitride, aluminum nitride, or aluminum oxide.” Appeal Br. 17 (Claims App.). The Specification explains that silicon carbide, silicon nitride, aluminum nitride, and aluminum oxide are examples of ceramics Appeal 2020-004316 Application 15/217,340 5 (Spec. ¶ 18). The Examiner finds that Colin teaches an embodiment having the composite core of the claimed metal-ceramic composite powder, relying in part on paragraph 161 and Figure 6I of Colin. Final Act. 7–8. As the Examiner notes, this paragraph teaches “an aluminum-based matrix reinforced with particles of SiC [Silicon Carbide].” Spec. ¶ 18. Appellant does not specifically address this finding, and therefore does not show it to be erroneous.5 The Examiner further finds that Colin describes another embodiment in which an aluminum-alloy shell covers a composite core. Final Act. 8 (citing Colin ¶¶ 87, 128, 129, Figs. 6B, 6G). The Examiner determines that it would have been obvious to one of ordinary skill in the art to apply to the composite core of the first embodiment the aluminum-alloy shell of the second embodiment “for the purpose of providing a known pre-alloyed powder that is made up of a plurality of chemical elements (0072) that is suitable for laser additive article manufacturing.” Id. (citing Colin ¶ 72). Appellant raises several argument in opposition to this rejection, none of which is persuasive of Examiner error. First, Appellant disagrees with the Examiner’s finding that Colin’s discloses “a two-phase composite” particle core. Appeal Br. 10. Appellant asserts that “[w]ith respect to Figs. 6E and 6F, Colin discloses at paragraphs 84–86 that the particle is ‘continuous’ and is formed by ‘intimate mixing’, which Appellant submits does not constitute a clear unambiguous disclosure of a composite with two discrete phases.” 5 In the event of further prosecution, the Examiner may wish to consider the relevance of paragraph 161 of Colin (and the relevance of the metal-matrix composite (MMC) “having a large volume fraction of non-oxide ceramic” discussed in paragraph 80) to the patentability of claim 1. Appeal 2020-004316 Application 15/217,340 6 Id. Appellant contends that “[a]lthough Colin discloses that second particles are ‘drawn dark’ to distinguish from the first particles, . . . the representations of dark and light in Figs. 6E/6F could be considered as schematic representations to show the different materials from which the particle is derived, not a technically rigorous depiction of a particle with two discrete phases as required by the claims.” Id. In response, the Examiner reiterates that paragraphs 84 and 86 of Colin describe the particles as composed of “different chemical compositions.” Ans. 4. This argument is not persuasive. Colin does describe the particles depicted in Figures 6E and 6F as “continuous,” but does not use this term in the sense that Appellant suggests, i.e., as homogeneous. On the contrary, Colin describes these particles as being “heterogeneous at ‘particle’ scale.” Colin ¶ 77. When read in the context of the paragraphs in which the term is used, and in view of the Figures being described, Colin uses “continuous” to mean the two phases are evenly distributed throughout the particle. Further, although Appellant is correct that Colin describes these particles as the result of “intimate mixing,” Appellant omits Colin’s teaching that (with respect to Figure 6E) the intimate mixing is of “two or more particles of original powders of very different sizes and of different chemical compositions,” the two powders depicted as “pale and dark portions,” the “pale particles being deformed plastically and being bonded at numerous locations with the hard [dark] particles of the second powder.” Id. ¶ 84; see id. ¶ 86 (describing the particles depicted in Figure 6F as “obtained by intimately mixing together three original powders of different chemical compositions.”). Appellant has not provided evidence or persuasive Appeal 2020-004316 Application 15/217,340 7 argument that “intimate mixing” of two or more precursor particles is antithetical to the existence of a plurality of phases in the resulting particle. Appellant next argues that one of ordinary skill in the art would not have been motivated to dispose the metal shell of the particle depicted in Figure 6B on the particles depicted in Figures 6E and 6F. Appellant asserts that: Colin Fig. 6B fails to disclose any metal content in the core of the particle, and it provides a metal shell to provide enhanced properties of the fabricated article such as ductility. However, the particles in Figs. 6E/6F/6I already include a “ductile metal alloy” as disclosed in paragraphs 84, 86, and 101, so there would be no reason for the skilled person to add an outer layer of ductile metal as proposed by the Examiner. Appeal Br. 10–11. In response, the Examiner correctly observes that the particle depicted in Figure 6G includes both the composite core of the particle depicted in Figure 6D—which is formed by mixing two constituent powders comprising “ductile metal alloys”—with the metallic outer covering of the particle depicted in Figure 6B. Ans. 4 (citing Colin ¶ 87, Figs. 6B, 6D, 6G); see Colin ¶ 83. Thus, the premise on which Appellant’s argument is based, that Colin does not disclose a particle having a metal- containing core with a metallic shell, is incorrect. In sum, we are not persuaded that the Examiner erred in rejecting claim 19 as unpatentable over Colin, Brooks, and McEnerney. Accordingly, the rejection is sustained. Claims 10–13 and 20: Rejected as Unpatentable over Colin, Brooks, and Jabado Claims 10–13 ultimately depend from claim 1 and additionally recite limitations directed to the composition of the first shell (claim 10), and the Appeal 2020-004316 Application 15/217,340 8 presence and composition of a second shell (claims 11–13). Appeal Br. 15– 16 (Claims App.). Claim 20 depends from claim 19 and additionally recites limitations directed to the composition of the first shell, and limitations directed to the existence and composition of a second shell. Id. at 17. The Examiner relies on Jabado as teaching these additional limitations. Final Act. 8–9. The Examiner determines that it would have been obvious to one of ordinary skill in the art to add a second shell, as taught by Jabado, to the Colin/Brooks particle “to provide for a longer surface layer effect.” Id. at 9 (citing Jabado ¶ 9). The Examiner adds in the Answer that several of the rationales found in KSR Int’l Co. v. Teleflex, Inc. provide reasons for the combination. Ans. 6 (citing KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007). Appellant responds, inter alia, that “Jabado discloses particles for embedding into a coating or a substrate in a sacrificial metal corrosion protection scheme, and does not disclose or suggest particles being fused together as required by the claims.” Appeal Br. 12. According to Appellant, “there would be no motivation for the skilled person to use Jabado’s particles in a powder fusion additive manufacturing process such as Brooks,” as they are required to be dispersed in “a matrix of a different material” rather than fused together as specified” in the claims at issue. Id. “[R]ejections 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.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). The Examiner’s articulated reason for combining Jabado with Colin and Brooks, “to provide Appeal 2020-004316 Application 15/217,340 9 for a longer surface layer effect,” is unclear. The Examiner relies on paragraph 9 of Jabado, which reads: “It is therefore an object of the invention to provide a matrix and a layer system, which have a longer protective effect.” Jabado ¶ 9. Jabado discloses elsewhere that the invention is to provide protection against oxidation and corrosion to components exposed to high-temperature applications, such as turbine blades. Id. ¶ 3. As Appellant notes, this object is achieved by distributing particles, such as those depicted in Figure 6, in a protective layer of MCrAlX to replenish the aluminum that has been consumed in that layer by oxidation. Id. ¶¶ 46–50. The Examiner has not explained how particles used for this purpose are relevant to particles used in additive-article manufacturing. Nor has the Examiner explained how any of the KSR rationales apply here. Accordingly, we are not persuaded that the Examiner has provided the requisite reason to combine, and therefore do not sustain this rejection. CONCLUSION The Examiner’s rejections are affirmed-in-part. DECISION SUMMARY Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–9, 19 103 Colin, Brooks, Mcenerney 19 1–9 10–13, 20 103 Colin, Brooks, Jabado 10–13, 20 Overall Outcome 19 1–13, 20 Appeal 2020-004316 Application 15/217,340 10 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). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED IN PART