Bamberg, Joachim et al.

Patent Trials and Appeals Board

Dec 12, 2019

14346782 - (D) (P.T.A.B. Dec. 12, 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.
14/346,782 05/19/2014 Joachim Bamberg 6570-P50131 9515
13897 7590 12/12/2019
Abel Schillinger, LLP
8911 N. Capital of Texas Hwy
Bldg 4, Suite 4200
Austin, TX 78759
EXAMINER
MINSKEY, JACOB T
ART UNIT PAPER NUMBER
1748
NOTIFICATION DATE DELIVERY MODE
12/12/2019 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 JOACHIM BAMBERG, ERWIN BAYER, ABDREAS
JAKIMOV, HERBERT HANRIEDER, BERTRAM KOPPERGER,
WILHELM SATZGER, THOMAS HESS, KARL-HEINZ DUSEL,
and STEFAN SCHNEIDERBANGER

Appeal 2019-001116
Application 14/346,782
Technology Center 1700
____________

BEFORE BEVERLY A. FRANKLIN, MICHAEL G. McMANUS, and
JANE E. INGLESE, Administrative Patent Judges.

McMANUS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 seeks review of the
Examiner’s decision to reject claims 11–28, 31, and 32. 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 the real party in interest as MTU Aero
Engines AG. Appeal Br. 3.
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Application 14/346,782

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CLAIMED SUBJECT MATTER

The present application generally relates to a method of generative
production. Specification filed May 19, 2014 (“Spec.”) 1:8–9. More
specifically, the described method involves layer-by-layer deposition of a
powder component material and layer-by-layer melting or sintering. Id. at
1:21–24. The melting or sintering may result from the selective application
of a laser beam or electron beam. Id. at 1:24–26. It is conventionally known
that certain materials are prone to “heat cracks” when subject to such a
process. Id. at 2:10–15. It is additionally conventionally known to heat
components during manufacture in order to maintain a more homogenous
temperature. Id. at 1:27–29, 2:10–15.
The Specification describes a heating process where, “by the use of at
least two alternating voltages that have different frequencies, a selective
inductive heating of regions of the component produced is possible, so that
sufficiently high temperatures can be achieved in the corresponding regions
of the component.” Id. at 3:1–4.
Claim 11 is illustrative of the subject matter on appeal and is
reproduced below with certain limitations bolded for emphasis:
11. A method for producing a component, wherein the
method comprises selectively radiating a powder bed for
producing the component while at the same time inductively
heating the component, an excitation of induction being
brought about by an alternating voltage that comprises at
least two simultaneously applied different frequencies.

Appeal Brief filed May 30, 2018 (“Appeal Br.”) 14 (Claims App.) (emphasis
added).
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REFERENCES
The Examiner relies upon the following prior art:
Name Reference Date
Fishman US 7,087,870 B1 Aug. 8, 2006
Manetsberger US 2002/0158054 A1 Oct. 31, 2002

REJECTION
The Examiner maintains the following rejection:
Claims 11–28, 31, and 32 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Manetsberger in view of Fishman. Final
Action mailed Jan. 4, 2018 (“Final Act.”) 4–6.
DISCUSSION
The Examiner rejects claims 11–28, 31, and 32 as obvious over
Manetsberger in view of Fishman. Id. The Examiner finds that
Manetsberger teaches “a method of selective laser sintering a power bed (see
abstract) to make a product by selectively radiating a powder bed [0003].”
Id. at 4. The Examiner further finds that Manetsberger teaches
simultaneously “heating the component [0007 - 0017], Manetsberger teaches
the advantages of controlling the heating of the powder bed during the laser
sintering operation to form the component.” Id. Manetsberger teaches a
homogenous temperature and a uniform temperature gradient as follows:
An object of the present invention is to provide a method
and a device for selective laser sintering in which the temperature
within a layer of the deposited powder cake is as homogenous as
possible and decreases as uniformly as possible, starting from the
sintered regions of the surface down to the bottom of the design
space.
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Manetsberger ¶ 7.
The Examiner finds that Fishman teaches “an induction heating
method and apparatus, and specifically discloses that it operates using AC
current (an alternating voltage) operating at two or more frequencies.” Final
Act. 5 (citing Fishman, Abstract, col. 2:5-7). Fishman teaches that different
frequencies result in different depths of induced eddy current heating in the
workpiece.” Id. at 5. Fishman states that “[m]ulti-frequency currents may
be applied (1) simultaneously or sequentially and (2) to a single or multiple
induction coils that are disposed around the workpiece.” Fishman, col.
1:25–28; see also Final Act. 5.
The Examiner further determines that one of ordinary skill in the art
would have had reason to use the induction heating method of Fishman in
conjunction with the laser sintering method of Manetsberger. Final Act. 5–
6. More specifically, the Examiner determines that Manetsberger teaches
that it is desirable to heat “the layers in a controllable manner where they
can be heated at different regions separately or focused to create an
optimized temperature distribution.” Id. at 5. The Examiner additionally
determines that “Fishman discloses that multiple frequencies can result in
different depths of penetration of the heating.” Id. The Examiner concludes
that “the heating devices of the Fishman reference would have been a simple
substitution of one known element for another (inductive heating where
multiple frequencies are utilized simultaneously for a radiant heater) with a
high expectation of success and without defeating the purpose of the primary
reference.” Id.
Appellant alleges error on several bases. Appeal Br. 4–12.
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First, Appellant argues that there is no evidence that a supervisory
patent examiner has approved the reopening of prosecution and the entrance
of a new ground of rejection in response to the filing of an earlier appeal
brief. Id. at 7.
An Examiner may make a new ground of rejection on appeal.
37 C.F.R. § 41.39(a)(2) (2010). The new ground should be designated as
such, which designation triggers procedural options for the Appellant. Id.
§ 41.39(b). If an Examiner has procedurally erred (i.e., not properly
designating a new ground of rejection), the remedy lies exclusively in
petitioning the Director for supervisory review. 37 C.F.R. § 1.181; cf.
35 U.S.C. § 6(b) (giving substantive review powers directly to the Board).
The Director of the United States Patent and Trademark Office, not the
Board, supervises examination and examiners. 35 U.S.C. §§ 3(a)(2)(A),
132(a). Accordingly, the proper channel for review of any impropriety in
the entrance of a new ground of rejection is petition to the Director. See
MPEP § 1002.02(d), 8th Ed., Rev. 9 (August 2012) (in effect as of claimed
priority date). Thus, the Board lacks jurisdiction over the foregoing matter.
Second, Appellant argues that Manetsberger does not teach a radiant
heater. Appeal Br. 7–8. The Examiner, however, does not find that
Manetsberger teaches a radiant heater. Final Act. 4. Rather, the Examiner
finds that Manetsberger teaches a preferred embodiment of a ringed jacket
heater. Id. Accordingly, Appellant’s argument is not responsive to the
rejection.
Third, Appellant additionally argues that the Examiner is in error in
concluding that Manetsberger “teaches that other conventional temperature
control devices can be used.” Appeal Br. 8–9. Appellant may be correct
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that Manetsberger does not include an explicit teaching to this effect, but this
does not show reversible error in the rejection if the limitations of the claim
are taught by the prior art and there is reason to combine the teachings of the
references. See In re Watts, 354 F.3d 1362, 1369 (Fed. Cir. 2004) (“[T]o
prevail the appellant must not only show the existence of error, but also
show that the error was in fact harmful because it affected the decision
below.”); Answer 3–4.
Fourth, Appellant additionally argues that one of ordinary skill would
not have been motivated to combine the teachings of Manetsberger and
Fishman. Appeal Br. 9–12; Reply Br. 2–4. Appellant argues that there is
inadequate reason to apply different frequencies simultaneously to the
component of Manetsberger. Id. Although Appellant concedes that
Fishman teaches the simultaneous application of multiple frequencies, it
argues that such teaching is merely introductory in nature and Fishman does
not teach any advantage when applied to the process of Manetsberger. Id. at
10.
An Examiner may rely upon the full teaching of a cited reference. See
Merck & Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989)
(“[A]ll disclosures of the prior art, including unpreferred embodiments, must
be considered.”) (citation omitted); In re Fulton, 391 F.3d 1195 (Fed. Cir.
2004) (The prior art need not “teach that a particular combination is
preferred or ‘optimal,’ for the combination to be obvious.”). The Examiner
relies on Fishman as teaching that the simultaneous use of different
frequencies to heat a workpiece by induction is conventional. See Answer
5–6. This teaching is not negated by placement in the “Background of the
Invention” portion of Fishman’s disclosure.
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Further, Fishman’s lack of an explicit teaching of an advantage in the
context of Manetsberger is not indicative of error. Fishman teaches that
multifrequency inductive heating is conventional. Fishman col. 1:20–29. It
need not teach every possible use of such heating technique. In re Fout, 675
F.2d 297, 301 (CCPA 1982) (“Express suggestion to substitute one
equivalent for another need not be present to render such substitution
obvious.”). The Examiner finds that the use of the heating method of
Fishman with the sintering method of Manetsberger is the mere substitution
of one known element for another. “The combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
416 (2007). Appellant has not shown error in this regard.
Fifth, Appellant argues that Manetsberger teaches away from the use
of two different frequencies because this would result in an inhomogeneous
temperature distribution within a layer. Appeal Br. 11. Manetsberger
teaches as follows:
An object of the present invention is to provide a method
and a device for selective laser sintering in which the temperature
within a layer of the deposited powder cake is as homogenous as
possible and decreases as uniformly as possible, starting from the
sintered regions of the surface down to the bottom of the design
space.

Manetsberger ¶ 7. Appellant argues that, because Fishman teaches
“[d]ifferent frequencies result in different depths of induced eddy current
heating,” (Fishman col. 1:20–21), Manetsberger teaches away from the
combination as it would have resulted in an inhomogeneous temperature
distribution within a layer. Appeal Br. 11.
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Prior art may teach away if it “criticize[s], discredit[s], or otherwise
discourage[s] the solution claimed.” In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004). Here, Appellant does not cite to any specific criticism
within Manetsberger of multifrequency inductive heating as taught by
Fishman.
Further, it is not apparent that the cited teachings are inconsistent.
Fishman teaches differential heating at different depths. It does not teach
differential heating within a layer. Fishman’s teaching is similar to
Manetsberger’s teaching, supra, that the temperature of the lower region of
the powder cake is lower than that of the surface layer. See Answer 7.
Sixth, Appellant argues that the rejection is inadequate as to
dependent claims 14, 15, 17, 19, 20, 22, 24, 26, and 28. Appeal Br. 12.
Appellant, however, does not identify any specific deficiency in any
particular claim. See In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“it
has long been the Board’s practice to require an applicant to identify the
alleged error in the examiner’s rejections”)); see also In re Lovin, 652 F.3d
1349, 1357 (Fed. Cir. 2011) (“[W]e hold that the Board reasonably
interpreted Rule 41.37 to require more substantive arguments in an appeal
brief than a mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art.”). Accordingly,
Appellant has not shown error with regard to such claims.

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CONCLUSION

The Examiner’s rejection is affirmed.
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
11–28, 31,
32
103(a) Manetsberger,
Fishman
11–28, 31,
32

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED