Hess, Thomas et al.

Patent Trials and Appeals Board

Dec 26, 2019

13989270 - (D) (P.T.A.B. Dec. 26, 2019)

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.
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Application 13/989,270
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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.
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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
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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).
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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
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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
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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
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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