Joel Landau

Patent Trials and Appeals Board

Apr 2, 2021

2020002216 (P.T.A.B. Apr. 2, 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.
13/626,239 09/25/2012 Joel G. Landau 375740; 67397-226 PUS1 8053
26096 7590 04/02/2021
CARLSON, GASKEY & OLDS, P.C.
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009
EXAMINER
HILL, STEPHANI A
ART UNIT PAPER NUMBER
1735
NOTIFICATION DATE DELIVERY MODE
04/02/2021 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):
cgolaw@yahoo.com
ptodocket@cgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOEL G. LANDAU
Appeal 2020-002216
Application 13/626,239
Technology Center 1700
Before KAREN M. HASTINGS, MICHAEL P. COLAIANNI, and
JAMES C. HOUSEL, Administrative Patent Judges.
HOUSEL, 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 17, 23, and 24. 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. Appellant identifies Aerojet Rocketdyne of DE, Inc. as the
real party in interest. Appeal Brief (“Appeal Br.”) filed September 23, 2019,
1.
Appeal 2020-002216
Application 13/626,239

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CLAIMED SUBJECT MATTER
The invention relates to a functionally graded additive manufacturing
process with in situ heat treatment. Specification (“Spec.”) filed September
25, 2012, Title.2 Appellant discloses an additive manufacturing process
which forms successive layers from fused powdered particles on a base that
is lifted relative to a transparent table as each layer is added by melting and
fusing by a laser underneath the table. Id. ¶¶ 12–17. Because the base is
lifted with each new layer, Appellant disclosed that it is possible to use
different compositions of powdered particles for each layer, thereby creating
a functionally graded cross-section in the formed component. Id. ¶¶ 15, 17.
In addition, because the exterior of the formed portion of the component is
exposed throughout the process, Appellant also discloses that it is possible to
heat treat the formed portion of the component, as desired, throughout the
manufacturing process. Id. ¶ 18. Appellant discloses that such heat treatment
may be accomplished by defocusing the laser and radiating the exposed
geometries of the component with periodic or continuous energy. Id.
Claim 17, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the claimed subject matter:
17. A manufacturing process comprising:
adding a layer of a first powder to a table, the first
powder including a plurality of first powdered particles, the
table made of a translucent material;

2 This Decision also cites to the Non-Final Office Action (“Final Act.”)
dated May 23, 2019, the Declaration under 37 C.F.R. § 1.132 of Joel G.
Landau (“Landau Declaration” or “Landau Decl.”) filed November 21,
2018, the Examiner’s Answer (“Ans.”) dated December 30, 2019, and the
Reply Brief (“Reply Br.”) filed January 23, 2020.
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Application 13/626,239

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disposing an external cross section of a partially formed
part in proximity with the layer of the first powder;
selectively micro-welding the first powder with the
partially formed part by transmitting energy from a laser
through the table, thereby providing the partially formed part
with a new external cross section;
lifting the part above a remainder of the layer of the first
powder;
removing the remainder of the layer of the first powder
from the table;
adding a layer of a second powder to the table, the
second powder including a plurality of second powdered
particles, wherein the first powdered particles and the second
powdered particles are metallic particles, and wherein the
second powdered particles have a chemical composition
different than the first powdered particles;
disposing the new external cross section of the partially
formed part in proximity with the layer of the second powder;
selectively micro-welding the second powder with the
partially formed part by transmitting energy from the laser
through the table, thereby again providing the partially formed
part with a new external cross section; and
heat treating an exposed portion of an exterior geometry
of the partially formed part before the partially formed part
becomes a completed end-use component, and by defocusing
the laser and radiating the exposed portion of the exterior
geometry of the partially formed part with the laser, and
wherein the heat treating step is initiated during at least one of
the steps of (a) selectively micro-welding the first powder with
the partially formed part and (b) selectively micro-welding the
second powder with the partially formed part.
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Application 13/626,239

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REFERENCES
The Examiner relies on the following prior art:
Name Reference Date
Pratt US 5,294,771 Mar. 15, 1994
Taylor US 7,094,988 B1 Aug. 22, 2006
Kurz et al. (“KurzUS”) US 2005/0028897 A1 Feb. 10, 2005
Twelves et al. US 2008/0201008 A1 Aug. 21, 2008
Longfield et al.
(“Longfield”)
US 2008/0257870 A1 Oct. 23, 2008
Schillen et al.
(“Schillen”)
US 2009/0020901 A1 Jan. 22, 2009
Kritchman US 2010/0215856 A1 Aug. 26, 2010
Kurz et al. (“KurzWO”) WO 03/031108 A1 Apr. 17, 2003

I.Gibson et al., Additive Manufacturing Technologies: Rapid Prototyping to
Direct Digital Manufacturing (2010) (“Gibson”).
REJECTIONS
The Examiner maintains, and Appellant requests our review of, the
following rejections:
1) Claims 17, 23, and 24 under 35 U.S.C. § 112 (pre-AIA),
first paragraph, as failing to comply with the written
description requirement (“Rejection 1”);
2) Claims 17, 23, and 24 under 35 U.S.C. § 103(a) as
unpatentable over Schillen in view of Taylor (“Rejection
2”);
3) Claim 17 under 35 U.S.C. § 103(a) as unpatentable over
Kritchman in view of Taylor (“Rejection 3”);
4) Claim 17 under 35 U.S.C. § 103(a) as unpatentable over
Schillen in view Twelves and Taylor (“Rejection 4”);
5) Claim 17 under 35 U.S.C. § 103(a) as unpatentable over
Kritchman in view of Twelves and Taylor (“Rejection
5”);
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6) Claims 17, 23, and 24 under 35 U.S.C. § 103(a) as
unpatentable over Schillen in view of KurzUS, KurzWO,
Gibson, Pratt, and Longfield (“Rejection 6”); and
7) Claims 17, 23, and 24 under 35 U.S.C. § 103(a) as
unpatentable over Kritchman in view of KurzUS,
KurzWO, Gibson, Pratt, and Longfield (“Rejection 7”).
OPINION
We review the appealed rejections for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”)). After considering
Appellant’s arguments and the evidence of record, we are persuaded of
reversible error in written description Rejection 1 and obviousness
Rejections 6 and 7, but are not persuaded of reversible error in obviousness
Rejections 2–5. Therefore, we reverse the Examiner’s written description
rejection for the reasons explained below, and also reverse the obviousness
rejections over the combination of Schillen or Kritchen, in view of KurzUS,
KurzWO, Gibson, Pratt, and Longfield for substantially the reasons set forth
in the Appeal and Reply Briefs. However, we affirm the Examiner’s
obviousness rejections over Schillen or Kritchen, in view of Taylor alone, or
in view of Twelves and Taylor, for substantially the fact findings, reasoning,
and conclusions set forth in the Non-Final Office Action and the Examiner’s
Answer, which we adopt as our own. We offer the following for emphasis
only.
Rejection 1: Lack of Adequate Written Description
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The Examiner finds that initiating the step of heat treating an exposed
portion of the part during at least one of the step of selectively micro-
welding the first powder with the partially formed part and the step of
selectively micro-welding the second powder with the partially formed part
as recited in each of claims 17, 23, and 24 lacks adequate written description
in the original disclosure. Non-Final Act. 4. The Examiner finds that
although the Specification, paragraph 18, teaches that the heat treatment is in
situ because it takes place during other manufacturing steps, “in situ” is
associated with the manufacturing process, not any specific step of the
process. Id. The Examiner finds that “in situ” is not relevant when the heat
treatment is carried out using a defocused laser beam, as such would
necessarily require that the welding process is paused because the laser itself
performs these steps. Id. at 4–5. In other words, the Examiner determines
that the Specification fails to disclose how the welding and heat treatment
could be performed simultaneously as claims 17, 23, and 24 require when
the laser focus is used for welding, but the defocused laser is used for heat
treating. Id. at 5. The Examiner acknowledges that Figure 3 clearly supports
that heat treatment 48 is performed during step 26, but finds that this figure
does not support when the heat treatment is initiated. Id.
Appellant argues that Figure 3 supports that heat treatment step 48
may occur during selective micro-welding steps 26, 38. Appeal Br. 4.
Appellant contends that Specification paragraph 18 explains that the heat
treatment may be accomplished by defocusing the laser and irradiating the
exposed geometries of the part with periodic or continuous energy. Id. In
addition, Appellant contends that this paragraph also explains that it is
possible to heat treat as desired throughout the manufacturing process. Id. at
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4–5. Appellant asserts that one skilled in the art would readily appreciate
that the arrangement of the laser beneath the translucent table would allow
heat treatment of the exposed portion of the part during micro-welding by
defocusing the laser periodically, as mentioned in paragraph 18. Id. at 5.
Appellant directs attention to the Landau Declaration for an explanation that
in situ means that heat treatment is initiated during another manufacturing
process, such as micro-welding. Id.
The written description requirement provides that the specification
must “convey with reasonable clarity to those skilled in the art that, as of the
filing date sought, he or she was in possession of the invention.” Carnegie
Mellon Univ. v. Hoffmann-La Roche Inc., 541 F.3d 1115, 1122 (Fed. Cir.
2008) (quoting Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64 (Fed.
Cir. 1991)). In rejecting a claim under the first paragraph of 35 U.S.C. § 112
for lack of adequate descriptive support, it is incumbent upon the Examiner
to establish that the originally-filed disclosure would not have reasonably
conveyed to one having ordinary skill in the art that Appellant had
possession of the now claimed subject matter. Ariad Pharms., Inc. v. Eli
Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). Adequate
description under the first paragraph of 35 U.S.C. § 112 does not require
literal support for the claimed invention. In re Herschler, 591 F.2d 693, 701
(CCPA 1979); In re Edwards, 568 F.2d 1349, 1351–52 (CCPA 1978); In re
Wertheim, 541 F.2d 257, 262 (CCPA 1976). Rather, it is sufficient if the
originally-filed disclosure would have conveyed to one having ordinary skill
in the art that an appellant had possession of the concept of what is claimed.
In re Anderson, 471 F.2d 1237, 1242 (CCPA 1973).
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On the other hand, “[o]ne shows that one is ‘in possession’ of the
invention by describing the invention, with all its claimed limitations, not
that which makes it obvious.” Lockwood v. American Airlines Inc., 107 F.3d
1565, 1572 (Fed. Cir. 1997) (original emphasis not reproduced). “Although
the exact terms need not be used in haec verba . . . the specification must
contain an equivalent description of the claimed subject matter.” Id.
Similarly, “[t]he knowledge of ordinary artisans may be used to inform what
is actually in the specification, but not to teach limitations that are not in the
specification, even if those limitations would be rendered obvious by the
disclosure in the specification.” Rivera v. Int'l Trade Comm'n, 857 F.3d
1315, 1322 (Fed. Cir. 2017) (internal citation omitted).
Applying these principles to the facts before us in this appeal, we
determine that Appellant had possession of the claimed invention at the time
of filing, but that which they possessed was not described in the manner
which Appellant now advocates. There is no dispute that Figure 3 and
Specification paragraph 18 clearly support heat treatment step 48 may be
performed during any manufacturing step, and specifically, during micro-
welding steps 26 and 38. Although neither Figure 3 nor paragraph 18 teach
that heat treatment may be initiated during each of these steps, one skilled in
the art would have recognized that if the heat treatment can be performed
during any step, then it also must be able to be initiated at any step. As such,
we determine that, at the time of filing, Appellant was in possession of the
invention of claims 17, 23, and 24, in particular initiation of heat treatment
during either or both of the selective micro-welding steps.
However, in so finding, we do not agree that Appellant possessed the
specific manner in which they advocate such simultaneous performance of
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the selective micro-welding and heat treatment could be performed. Nor do
we agree that which Appellant possessed necessarily excludes other
possibilities for simultaneous performance such as the Examiner’s proposed
broadest reasonable interpretation. See Non-Final Act. 5; Ans. 6.
Appellant urges that laser beam micro-welding and initiation of heat
treatment by defocusing the laser beam could be performed alternatively,
wherein the focused laser beam for micro-welding could be defocused
periodically for heat treatment. Appeal Br. 5; Landau Decl. ¶¶ 7, 8.
However, Appellant fails to direct our attention to any support for this
specific possibility in the original disclosure, nor do we find any. At best,
such a possibility might have been obvious to one skilled in the art, but
obviousness is not sufficient for possession. Lockwood, 107 F.3d at 1572.
Conversely, Appellant argues that the Examiner’s interpretation of
initiation of heat treatment using a defocused laser beam during the laser
micro-welding step is unreasonable because the laser is required for micro-
welding and either pre-heat treating or post-heat treating using the defocused
laser beam, by definition, does not entail initiation during micro-welding.
Appeal Br. 3, 6. The problem with Appellant’s position in this regard is that
the Specification does not clearly define the selective micro-welding step in
a manner so as to exclude initiation of a pre-heat treatment or post-heat
treatment during this step. Indeed, the evidence in the record before us
clearly supports that the selective micro-welding step involves a number of
actions or sub-steps, including heating the powdered particles and at least a
portion of base 28 to melting such that the particles and portion of the base
form a micro-weld pool of material and then cooling the micro-weld pool of
material to fuse into a single unitary part. Spec. ¶ 12. The Specification does
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not describe in any detail how the heating for melting is carried out, other
than that it may be performed by a laser beam. Id. ¶ 10. In other words, the
heating for melting could include pre-heat treatment using a defocused laser
beam followed by a focused laser beam for final melting of selected areas of
powdered particles and base. Moreover, because the micro-welding is
“selective,” an ordinary artisan would understand that at least some
directional control is provided to ensure that only areas within the
component’s design are irradiated by the laser beam sufficiently to melt the
powdered particles and base in those areas. As for cooling the micro-weld
pool to fuse into a single unitary part, the Specification does not describe in
any detail how this is carried out. As such, heat treatment could be initiated
using a defocused laser beam to control the rate of cooling.
Accordingly, we do not sustain the Examiner’s rejection of claims 17,
23, and 24 for lack of written description support. In finding that the
Specification adequately supports that Appellant was in possession of claims
17, 23, and 24, we also find that the Specification only broadly describes
selective micro-welding and heat treatment that can be initiated at any step
in the process, and does not otherwise describe or limit what these steps are
or how they can be simultaneously performed.
Rejections 2–5: Obviousness over Schillen or Kritchen, Taylor, and Twelves
Appellant argues that each of these obviousness rejections is flawed
due to an overly broad claim construction in which the Examiner reads the
claimed heat treatment, which occurs during the micro-welding step, on pre-
or post-welding heat treatments, which by definition do not occur during
welding. Appeal Br. 3. In particular, Appellant contends that Taylor, though
performing pre- and post-heat treating on a component using the laser, does
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not initiate pre- or post-heat treating during the micro-welding steps. Id. at 6;
Landau Decl. ¶¶ 4, 5, 9.
Appellant’s argument is not persuasive of reversible error because this
argument depends on an unreasonably narrow claim construction. As
explained above, the Specification only broadly describes the selective
micro-welding steps and the heat treatment steps. The Specification does not
describe or otherwise limit simultaneous performance of selective micro-
welding and heat treatment using the laser so as to exclude use of a
defocused laser beam to pre-heat the powdered particles and base as part of
the heating of these particles and base to melting. Nor does the Specification
describe or otherwise limit simultaneous performance so as to exclude use of
the defocused laser beam to post-heat the micro-weld pool in a manner to
control cooling.
There is no dispute that Taylor teaches both of these pre- and post-
heat treatments. Taylor’s post-heat treatment is specifically applied to
control the rate of cooling of the melted weld material, which means that this
heat treatment was initiated during the micro-weld step, consistent with
Appellant’s description of the micro-weld step as including heating to
melting and cooling to fuse. Because we determine that the broadest
reasonable interpretation of initiating heat treatment during the selective
micro-welding steps broadly encompasses such pre- and post-heat treatment,
we find no error in the Examiner’s finding that Taylor teaches initiation of
heat treatment during the micro-welding step.
Appellant does not otherwise challenge the propriety of the
Examiner’s findings, reasoning, and conclusion of obviousness based on
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Schillen or Kritchen, Taylor, and Twelves. Accordingly, we sustain each of
these obviousness rejections.

Rejections 5 and 6: Obviousness over Schillen or Kritchen, KurzUS,
KurzWO, Gibson, Pratt, and Longfield

Appellant argues that each of these obviousness rejections is flawed
because the Examiner suggests modifying the references in a manner that is
contrary to the teachings of Pratt. Appeal Br. 4. In particular, Appellant
contends that Pratt teaches away from heat treating by defocusing a laser. Id.
at 7. Appellant asserts that Pratt explains that such heat treating has
disadvantages from a process control point of view and includes problems of
distortion and product assurance. Id. Appellant further asserts that Pratt,
therefore, describes heat treatment without using a defocused laser. Id.
Appellant’s arguments are persuasive of reversible error. Although the
Examiner finds that Pratt’s disclosure of defocused laser heat treatment
indicates what is known in the art, Pratt nonetheless criticizes such heat
treatment and discourages its use for the reasons Appellant asserts above.
Pratt 1:40–46. “A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a direction
divergent from the path that was taken by the applicant.” In re Gurley, 27
F.3d 551, 553 (Fed. Cir. 1994). We recognize that a reference does not teach
away if it merely expresses a general preference for an alternative invention,
but here Pratt criticizes and discourages investigation into the invention
claimed. DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d
1314, 1327 (Fed. Cir. 2009) (citing In re Fulton, 391 F.3d 1195, 1201 (Fed.
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Cir. 2004)). Thus, Pratt teaches away from the Examiner’s proposed
modification of Schillen and Kritchen’s methods to include heat treatments
by defocusing a laser beam.
Accordingly, we do not sustain these obviousness rejections based, in
part, on Pratt.
CONCLUSION
Upon consideration of the record and for the reasons set forth above
and in the Non-Final Office Action and the Examiner’s Answer, the
Examiner’s decision to reject claims 17, 23, and 24 is affirmed.
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
17, 23, 24 112 ¶ 1 Written
Description
17, 23, 24
17, 23, 24 103(a) Schillen, Taylor 17, 23, 24
17 Kritchman, Taylor 17
17 103(a) Schillen, Twelves,
Taylor
17
17 103(a) Kritchman,
Twelves, Taylor
17
17, 23, 24 103(a) Schillen, KurzUS,
KurzWO, Gibson,
Pratt, Longfield
17, 23, 24
17, 23, 24 103(a) Kritchman,
KurzUS, KurzWO,
Gibson, Pratt,
Longfield
17, 23, 24
Overall
Outcome
17, 23, 24

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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