Hess, Thomas et al.Download PDFPatent Trials and Appeals BoardApr 8, 202013989270 - (R) (P.T.A.B. Apr. 8, 2020) 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. 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. Appeal 2019-003307 Application 13/989,270 2 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). Appeal 2019-003307 Application 13/989,270 3 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). Appeal 2019-003307 Application 13/989,270 4 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 Appeal 2019-003307 Application 13/989,270 5 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. Appeal 2019-003307 Application 13/989,270 6 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 Appeal 2019-003307 Application 13/989,270 7 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. Appeal 2019-003307 Application 13/989,270 8 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 Copy with citationCopy as parenthetical citation