Bamberg, Joachim et al.Download PDFPatent Trials and Appeals BoardDec 12, 201914346782 - (D) (P.T.A.B. Dec. 12, 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. 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. Appeal 2019-001116 Application 14/346,782 2 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). Appeal 2019-001116 Application 14/346,782 3 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. Appeal 2019-001116 Application 14/346,782 4 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. Appeal 2019-001116 Application 14/346,782 5 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 Appeal 2019-001116 Application 14/346,782 6 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. Appeal 2019-001116 Application 14/346,782 7 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. Appeal 2019-001116 Application 14/346,782 8 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. Appeal 2019-001116 Application 14/346,782 9 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 Copy with citationCopy as parenthetical citation