Hess, Thomas et al.Download PDFPatent Trials and Appeals BoardDec 26, 201913989270 - (D) (P.T.A.B. Dec. 26, 2019) Copy Citation 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. 13/989,270 06/21/2013 Thomas Hess 6570-P50075 8262 13897 7590 12/26/2019 Abel Schillinger, LLP 8911 N. Capital of Texas Hwy Bldg 4, Suite 4200 Austin, TX 78759 EXAMINER GRUN, ROBERT J ART UNIT PAPER NUMBER 1744 NOTIFICATION DATE DELIVERY MODE 12/26/2019 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): hmuensterer@abel-ip.com mail@Abel-IP.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte THOMAS HESS and ERWIN BAYER Appeal 2019-003307 Application 13/989,270 Technology Center 1700 Before BRADLEY R. GARRIS, CHRISTOPHER L. OGDEN, and LILAN REN, Administrative Patent Judges. REN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 11–21 and 27–35. Final Act. 2–4. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “Applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as “MTU Aero Engines AG of Munich, Germany.” Appeal Br. 3. Appeal 2019-003307 Application 13/989,270 2 CLAIMED SUBJECT MATTER “The present invention provides a method for the layered manufacturing of a structural component and a device for the layered manufacturing of a structural component.” Spec. 1:4–5. Claim 11, reproduced below, is illustrative of the claimed subject matter: 11. A method for the layered manufacturing of a structural component from powder, wherein the method comprises: detecting at least one parameter of a depression in a formed layer of the structural component; smoothing the depression if the at least one parameter exceeds a predetermined value; and filling the smoothed depression with powder. Claims Appendix (Appeal Br. 14). REFERENCE The prior art relied upon by the Examiner is: Dorscheid WO 2009/019645 A2 Feb. 12, 2009 REJECTION The Examiner rejects claims 11–21 and 27–35 under 35 U.S.C. § 112, second paragraph as being indefinite. Final Act. 2. The Examiner rejects claims 11–21 and 27–35 under 35 U.S.C. § 102(b) as being anticipated by Dorscheid. Final Act. 3.2 2 In paragraph 6c of the Final Rejection, the Examiner states that claim 19 is rejected for anticipation along with claims 11–18, 20, 21 and 27–35. Final Act. 3. Appeal 2019-003307 Application 13/989,270 3 OPINION Indefiniteness of claims 11–18, 20, 21, and 27–35 The Examiner rejects claim 11 finding that the limitation “if the at least one parameter exceeds a predetermined value” is contingent and therefore ambiguous failing to meet the definiteness requirement under section 112. Final Act. 2; Ans. 5. Appellant, on the other hand, argues that, when read in light of the Specification, a skilled artisan would understand the limitation to mean that the depression is filled when the recited condition is met. Appeal Br. 6 (citing Spec. 2:20–27, 6:4–27). Under the broadest reasonable interpretation, a method claim having contingent limitations requires only those steps required to be performed when the condition precedent is met. See Ex parte Schulhauser, Appeal 2013-007847, slip op. at 10 (PTAB April 28, 2016) (precedential) (“If the condition for performing a contingent step is not satisfied, the performance recited by the step need not be carried out in order for the claimed method to be performed.”); see also MPEP § 2111.04 (9th ed. Rev. 08.2017, Jan. 2018) (“The broadest reasonable interpretation of a method (or process) claim having contingent limitations requires only those steps that must be performed and does not include steps that are not required to be performed because the condition(s) precedent are not met.”). “It is of course true that method steps may be contingent. If the condition for performing a contingent step is not satisfied, the performance recited by the step need not be carried out in order for the claimed method to be performed.” Cybersettle, Inc. v. Nat’l Arbitration Forum, Inc., 243 Fed. App’x. 603, 607 (Fed. Cir. 2007). We accordingly do not sustain the indefiniteness rejection of claim Appeal 2019-003307 Application 13/989,270 4 11. The indefiniteness rejection of claims 12–18, 20, 21, and 27–35, based on their dependency from claim 11, is likewise reversed. Indefiniteness of claim 19 Claim 19 depends from claim 11 and additionally recites: “wherein the at least one parameter is detected concurrently with forming the layer.” The Examiner rejects claim 19 under section 112, second paragraph because “[i]t is unclear how a recess could be in existence prior to the layer being formed.” Final Act. 2. Appellant argues, on the other hand, that a skilled artisan would “understand claim 19 to mean that during the period of time required for forming the layer also a detection of depressions in the part of the layer that has already been formed during the process is carried out.”3 Appeal Br. 6. We do not sustain the indefiniteness rejection of claim 19 because the Examiner’s reasoning (Final Act. 2) is not based on the limitations (e.g., a recess in existence prior to forming the layer (Final Act. 2)) recited in the claim. Anticipation of claims 11–16, 18–21, and 27–354 The Examiner finds that claim 11 is anticipated by Dorscheid. Final Act. 3 (citing Dorscheid Abstract, 7:11–19, 12:27–30, 6:23, 13:27–30, 8:10– 17, Fig. 2a). 3 We note that Appellant has not directed us to the record (e.g., the Specification) to support this argument. See Appeal Br. 6 (arguing without providing citation support). In the event that persecution continues, we encourage both Appellant and the Examiner to analyze whether claim 19 meets the written description requirement under section 112, first paragraph. 4 Appellant’s argument is solely based on claim 11 without arguing claims 12–16, 18–21, and 27–35 separately. See Appeal Br. 7–12. We accordingly analyze claim 11 as representative. See 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2019-003307 Application 13/989,270 5 Appellant argues that the anode of an X-ray source to which Dorscheid’s material is applied is not “a structural component” as recited in claim 11. Appeal Br. 8. We are not persuaded by this argument because Appellant does not sufficiently explain why the recited “structural component” excludes the prior art anode. Appellant does not propose a definition of the recited “structural component” to exclude the prior art structure, nor does Appellant refer to the Specification to the argument. We are also not persuaded by the argument that the Examiner reversibly erred for failing to provide evidence that the prior art anode “would necessarily have been manufactured” by Dorscheid’s method. Id. Claim 11 is a method claim requiring no more than the “detecting,” “smoothing,” and “filling” steps. To the extent that Appellant attempts to argue that the preamble “for the layered manufacturing of a structural component” is an additional step of the claim, Appellant does not explicitly make this argument. See Appeal Br. 8 (arguing instead that the prior art does not inherently manufacture a structural component). It is long established that a preamble– such as the one recited in claim 11– that is “only a statement of purpose and intended result” and “does not result in a manipulative difference in the steps of the claim,” is not limiting. Bristol- Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1376 (Fed. Cir. 2001). Appellant’s argument that the method in Dorscheid repairs instead of manufactures a structural component is not persuasive. Appellant does not propose a definition of the term “manufacturing,” nor does Appellant sufficiently explain why “manufacturing” excludes repairing. Appellant instead argues that recited “formed layer” is absent in the anode of Dorscheid but does not provide evidence supporting the structural Appeal 2019-003307 Application 13/989,270 6 distinction. Appeal Br. 9. Again, method claim 11 recites three steps which the Examiner has found to be described in Dorscheid. Appellant does not dispute that Dorscheid describes the recited actions. See id. (arguing instead that “it is not even known by which method the anode of DORSCHEID has been manufactured”). No reversible error has therefore been identified in the Examiner’s findings in support of the rejection. Appellant next argues that Dorscheid does not teach the “smoothing” step because “there clearly is no ‘smoothing’ of the recess before the recess is filled with powder.” Appeal Br. 10. Appellant’s argument is not persuasive as it is incommensurate in scope with the claim. Claim 11 requires only a method step of “smoothing the depression” but does not limit the smoothing step to be applied to an unfilled depression. In other words, claim 11 requires “filling the smoothed depression” but does not require the “smoothing the depression” step to occur before the filling step as Appellant argues. Claim 11 is also open ended and does not preclude, for example, a preliminary filling of the depression followed by “smoothing the depression” as well as a subsequent step of “filling the smoothed depression with powder” as recited. As the Examiner finds, Dorscheid discloses applying a preliminary layer of material to a damaged surface followed by sintering which corresponds to the “smoothing the depression” step. Final Act. 3 (citing Dorscheid 8:10–17, 13:27–30, 6:23); Dorscheid 8:10–14 (describing applying “a thin layer of repair material . . . to a damaged surface”); see also Dorscheid 8:23–25 (cited in Appeal Br. 13) (“In order to only locally melt the pre-sintered repair material, a focused beam of electrons or light may be applied to the respective damaged regions of the anode’s surface which have previously been filled with repair material.”). Appellant does not address the Appeal 2019-003307 Application 13/989,270 7 Examiner’s fact findings but instead argues that Dorscheid “does not disclose the smoothing or melting of a recess or depression in the surface of an anode of an X-ray source by a laser beam or electron beam.” Appeal Br. 11–12. We are not persuaded by this argument again because the argument is not commensurate in scope with the claim language which requires no more than “smoothing the depression . . . .” Anticipation of claim 17 Claim 17 depends from claim 11 and additionally recites: “wherein smoothing is performed by repeatedly melting the depression.” Appellant argues that the Examiner reversibly erred because Dorscheid 8:10–17 “does not relate to the depression (recess) that is to be repaired (filled with repair material) but to the repair material (powder) itself.” Appeal Br. 12–13. Appellant, however, acknowledges that Dorscheid 8:18–27 “mentions that the sintered repair material may be melted” while arguing that Dorscheid 8:18–27 does not describe “repeatedly melting” as recited. Id. We are not persuaded that Dorscheid has been patentably distinguished. As Appellant acknowledges, Dorscheid 8:18–27 – particularly Dorscheid 8:23–25 – provides: “In order to only locally melt the pre-sintered repair material, a focused beam of electrons or light may be applied to the respective damaged regions of the anode’s surface which have previously been filled with repair material.” The record before us therefore supports the Examiner’s conclusion that claim 17 is anticipated. CONCLUSION The Examiner’s rejection of claims 11–21, 27–35 is affirmed. Appeal 2019-003307 Application 13/989,270 8 DECISION SUMMARY Claims Rejected 35 U.S.C. § Basis Affirmed Reversed 11–21, 27– 35 112, second paragraph Indefiniteness 11–21, 27– 35 11–21, 27– 35 102(b) Dorscheid 11–21, 27– 35 Overall Outcome 11–21, 27– 35 TIME PERIOD AND 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 Copy with citationCopy as parenthetical citation