Hess, Thomas et al.

Patent Trials and Appeals Board

Apr 8, 2020

13989270 - (R) (P.T.A.B. Apr. 8, 2020)

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 04/08/2020
Abel Schillinger, LLP
5929 Balcones Drive
Suite 300
Austin, TX 78731
EXAMINER
GRUN, ROBERT J
ART UNIT PAPER NUMBER
1744
NOTIFICATION DATE DELIVERY MODE
04/08/2020 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 MICHELLE N. ANKENBRAND, CHRISTOPHER L. OGDEN, and
LILAN REN, Administrative Patent Judges.
REN, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellant timely requests rehearing1 under 37 C.F.R. § 41.52 of our
Decision, entered December 26, 2019 (“Decision” or “Op.”), affirming the
anticipation rejection of claims 11–21 and 27–35.2
We have reconsidered our Decision in light of Appellant’s comments
in the Request for Rehearing, and we find no error in the disposition of the
rejection.

1 Request for Rehearing, filed February 25, 2020 (“Request”).
2 We reversed the Examiner’s indefiniteness rejections in the Decision.
Op. 3–4.
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Anticipation of claims 11–16, 18–21, and 27–353
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). We affirmed the rejection and Appellant raises eight arguments
in the Request for Rehearing. We address each in turn below.
Appellant first argues that when we stated Appellant had not explicitly
argued that the preamble language “for the layered manufacturing of a
structural component” is limiting, we did not consider Appellant’s argument
in the Appeal Brief that “DORSCHEID does not disclose a method for the
layered manufacturing of a structural component from powder.” Request 2
(citing Appeal Br. 7–8). Appellant urges that this argument – directed to the
prior art – “can only be interpreted to mean that Appellants did rely (also)
upon what is stated in the preamble of claim 11 and even expressly referred
to the specification to make it perfectly clear what the meaning of the term
‘layered manufacturing of a structural component’ is.” Id. at 3. Appellant
cites Specification 1:7–14 as support for the argument. Id.
As we explained in the Decision, the relevant issue here is whether the
preamble is limiting to the recited steps. Op. 5. That is, the relevant inquiry
is whether the preamble is “necessary to give life, meaning, and vitality to
the claims.” Kropa v. Robie, 187 F.2d 150, 152 (CCPA 1951). “If the
preamble adds no limitations to those in the body of the claim, the preamble
is not itself a claim limitation and is irrelevant to proper construction of the

3 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 as we did in the Decision. Op. 4; see
37 C.F.R. § 41.37(c)(1)(iv).
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claim.” IMS Tech., Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1434 (Fed.
Cir. 2000). In our Decision, we determined that the preamble is not limiting.
Op. 5. Although we considered Appellant’s argument that the prior art does
not disclose the preamble, that argument does not explain why the preamble
is a limiting step rather than an intended purpose of the method.
Appellant’s argument that the Specification provides a definition of
the preamble also does not address the issue of whether the preamble is
limiting. Request 2 (citing Spec. 1:7–14).
If the claim preamble, when read in the context of the
entire claim, recites limitations of the claim, or, if the claim
preamble is ‘necessary to give life, meaning, and vitality’ to the
claim, then the claim preamble should be construed as if in the
balance of the claim. . . . If, however, the body of the claim
fully and intrinsically sets forth the complete invention,
including all of its limitations, and the preamble offers no
distinct definition of any of the claimed invention’s limitations,
but rather merely states, for example, the purpose or intended
use of the invention, then the preamble is of no significance to
claim construction because it cannot be said to constitute or
explain a claim limitation.

Pitney Bowes Inc. v. Hewlett Packard Co., 182 F.3d 1298, 1305 (Fed. Cir.
1999). In this case, Appellant made no argument as to why the
Specification’s disclosure shows that the preamble is “necessary to give life,
meaning, and vitality” to the claim. See id. We further note that Appellant
cites a different portion of the Specification as written description support
for claim 11, which further frustrates Appellant’s argument for the preamble.
See Appeal Br. 3 (“Summary of Claimed Subject Matter” citing Spec. 2:8–
12, instead of Spec. 1:7–14 as written description support for claim 11).
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Appellant next argues that we “overlooked that the ‘wherein’ clause
of claim 11 refers to the method recited in the preamble of this claim” and
that “the entire preamble of claim 11 is also a part of the ‘wherein’ clause
thereof.” Request 3.
We decline to consider this untimely argument because the Examiner
did not have an opportunity to consider and respond to the argument. See Ex
parte Borden, 93 USPQ2d 1473, 1477 (BPAI 2010) (informative)
(“Properly interpreted, the Rules do not require the Board to take up a
belated argument that has not been addressed by the Examiner, absent a
showing of good cause.”); Ex parte Nakashima, 93 USPQ2d 1834 (BPAI
2010) (explaining that arguments and evidence not timely presented in the
principal Brief will not be considered when filed in a Reply Brief, absent a
showing of good cause explaining why the argument could not have been
presented in the Principal Brief). Arguments in rehearing requests are
limited to those made in the record unless the argument is in response to a
new ground of rejection or the argument concerns a recent relevant decision
of the Board or a federal court, and neither exception applies here. See 37
CFR § 41.52(a) (2019).
Appellant’s third argument is that the preamble is necessary for claim
11. Request 3. This argument likewise is untimely and we decline to
consider it because the Examiner did not have an opportunity to consider
and respond to the argument. See Borden, 93 USPQ2d at 1477; 37 CFR §
41.52(a) (2019).
Appellant next argues that the Board incorrectly “alleged that
‘Appellant does not propose a definition of the term ‘manufacturing,’ nor
does Appellant sufficiently explain why ‘manufacturing’ excludes
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repairing.’” Request 4. Appellant repeats the argument that the Specification
provides a definition of “layered manufacturing.” Id. (citing Appeal Br. 8;
Spec. 1:7–14).
We addressed this argument previously in the Decision. As the
Decision states, we find unpersuasive “Appellant’s argument that the
method in Dorscheid repairs instead of manufactures a structural
component” because Appellant does not explain why claim 11 excludes
“repairing.” Op. 5; see also Appeal Br. 8 (“DORSCHEID itself clearly does
not disclose any method for manufacturing the anode, let alone a layered
manufacturing of the anode.”).
Appellant’s fifth argument is that our finding that “Appellant does not
dispute that Dorscheid describes the recited actions” is “without merit.”
Request 5 (citing Op. 6). Appellant argues that the Decision in fact
acknowledges that Appellant argued “Dorscheid does not disclose the
smoothing step.” Id.
The relevant statement from the Decision is reproduced below in its
entirety:
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.

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Op. 6. That is, Appellant’s argument is not based on the claim language and,
therefore, fails to dispute the Examiner’s finding that Dorscheid discloses
the recited steps.
Appellant’s sixth argument is that Appellant “disagree[s] with the
Board” regarding whether the smoothing step must occur before the filling
step. Request 5. As we explained in the Decision, even if we were to agree
with Appellant’s position that the smoothing step occurs before the filling
step:
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 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 . . . .”

Op. 6–7. As the Examiner finds, Dorscheid discloses that
once a defect is found (pg. 13 lines 27–30) a first thin layer of
material having a thickness of a few micrometer (specifically a
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fluid which can be a powder (pg. 6 line 23)) may be applied to a
damaged surface, then be sintered (thus corresponding to the
smoothing step) and then a next layer of repair material can be
applied and sintered to repair the defect (corresponding to the
filling the smoothed depression with powder) (pg. 8 lines 10–
17).

Final Act. 3; see Ans. 7–8. To prevail in its appeal, Appellant must
adequately explain or identify reversible error in the Examiner’s § 103(a)
rejections. See 37 C.F.R. § 41.37(c)(1) (iv) (2012); see also In re Jung, 637
F.3d 1356, 1365 (Fed. Cir. 2011). Similar to the Appeal Brief, the Request
does not identify reversible error in the Examiner’s finding and the record
before us, therefore, supports the Examiner’s finding that Dorscheid
discloses both the “smoothing” and “filling” steps as recited in claim 11.
Appellant’s seventh argument is a statement disagreeing with the
Examiner’s findings that we analyzed with regard to Appellant’s sixth
argument supra. Request 5–6. Appellant repeats arguments previously made
in the Appeal Brief which we considered and found unpersuasive. Compare
id., with Appeal Br. 10–12; see Op. 6–7. The evidence of record supports the
Examiner’s finding and Appellant does not identify reversible error in the
finding.
Appellant’s final argument repeats arguments previously raised in the
Appeal Brief, which we considered and found unpersuasive with regard to
claim 17. Compare Request 6–7, with Appeal Br. 12–13; see Op. 7. The
evidence of record supports the Examiner’s determination that Dorscheid
discloses the limitations of claim 17.
We adhere to our Decision for the reasons discussed above.
Appellant’s rehearing request is denied.
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Outcome of Decision on Rehearing
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
11–21, 27–
35
102(b) Dorscheid 11–21, 27–
35

Overall
Outcome
11–21, 27–
35

Final Outcome of Appeal After Rehearing
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

DENIED