Ex Parte Bruck et al

Patent Trial and Appeal Board

Apr 28, 2017

14017337 (P.T.A.B. Apr. 28, 2017)

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.
14/017,337 09/04/2013 Gerald J. Bruck 2013P09943US 5062
28524 7590 05/02/2017
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
3501 Quadrangle Blvd Ste 230
EXAMINER
MCCLURE, CHRISTINA D
Orlando, EL 32817 ART UNIT PAPER NUMBER
1718
NOTIFICATION DATE DELIVERY MODE
05/02/2017 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):
ipdadmin.us@siemens.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GERALD J. BRUCK and AHMED KAMEL
Appeal 2016-003395
Application 14/017,337
Technology Center 1700
Before ADRIENE LEPIANE HANLON, GEORGE C. BEST, and
SHELDON M. McGEE, Administrative Patent Judges.
McGEE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
decision to reject claims 1—4, 7, 8, and 11—22. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal 2016-003395
Application 14/017,337
BACKGROUND
The subject matter on appeal relates to methods of preparing
anchoring structures on a surface designed to enhance adherence of thermal
barrier coatings thereon. Specification, hereinafter “Spec.,” 1:5—10.
Independent claims 1 and 16 are representative and are reproduced
from pages 23 and 24 of the Appeal Brief (Claims Appendix), as follows:
1. A method comprising:
applying a laser beam to a surface of a solid material to form a
liquefied bed on the surface of the solid material;
applying a pulse of laser energy to at least a portion of the
liquefied bed to cause a splash of liquefied material outside the
liquefied bed; and
forming on the surface of the solid material a three-dimensional
anchoring structure upon solidification of the splash of liquefied
material;
wherein the applying of the pulse of laser energy to the portion
of the liquefied bed is performed subsequent to the applying of the laser
beam to the surface of the solid material.
16. A method comprising:
delivering a pattern of energy scanning a surface of a solid
material to create a moving pool of liquefied material which re­
solidifies along a trailing edge; and
repeatedly impacting the moving pool of liquefied material with
respective pulses of energy effective to create a respective plurality of
anchoring structures across the surface as the pool moves and the
surface re-solidifies.
REFERENCES
The Examiner relies on the following references as evidence of
unpatentability:
Jackson, et al. US 4,884,820 Dec. 5, 1989
(hereinafter “Jackson”)
Skelly, et al. US 5,419,971 May 30, 1995
2
Appeal 2016-003395
Application 14/017,337
(hereinafter “Skelly”)
Murison, etal. US 2012/0111841 A1 May 10, 2012
(hereinafter “Murison”)
REJECTIONS
The following rejections are before us on appeal:
I. Claims 1—4, 7, 8, and 20 under 35 U.S.C. § 103 as unpatentable
over Jackson in view of Murison (Final Act. 3—9; Ans. 2—7);
II. Claims 11—15 under 35 U.S.C. § 103 as unpatentable over Jackson
in view of Murison (Final Act. 9—13; Ans. 7—12);
III. Claims 16—19 under 35 U.S.C. § 103 as unpatentable over Skelly
in view of Jackson (Final Act. 13—17; Ans. 12—15);
IV. Claim 22 under 35 U.S.C. § 103 as unpatentable over Skelly in
view of Jackson, and further in view of Murison (Final Act. 17—19;
Ans. 15—18); and
V. Claims 1, 20, and 21 under 35 U.S.C. § 103 as unpatentable over
Skelly in view of Jackson, and further in view of Murison (Final
Act. 19-24; Ans. 18-23).
ANAFYSIS
Rejection I
The Examiner finds that Jackson teaches the claimed method except
for the step requiring “applying the laser energy to form the liquefied pool
prior to applying the laser pulse to splash the material.” Final Act. 4; Ans. 3.
The Examiner finds that “Jackson teaches applying a pulse of laser energy to
the surface of the substrate to both melt the solid material to form the
liquefied bed and also to cause the material to splash outside of the liquefied
bed ... in one processing step.” Id.
3
Appeal 2016-003395
Application 14/017,337
The Examiner finds that “Murison teaches a method of employing a
series of laser pulses” to drill holes in a substrate, “where one or more
characteristics of the laser pulses is changed in series in order to optimize the
drilling process for the hole.” Final Act. 5; Ans. 3. The Examiner finds
further that “Murison teaches that laser parameters such as pulse width,
pulse energy, temporal pulse shape, peak power, average power, and
repetition rate can be optimized to obtain the most desirable hole attributes
for the desired application.” Final Act. 5, Ans. 23 (citing Murison 17); see
also Ans. 3. The Examiner also finds that Murison teaches “that material
melted by a long pulse may be more prone to splattering on to the surface
near the entrance hole [] indicating that melted material is more easily
splashed up and recast around the formed hole,” and teaches that “an
operator will perform a series of experiments where values are chosen for
the laser operating characteristics.” Ans. 24, (citing Murison || 55, 58).
The Examiner concludes that it would have been obvious to the
ordinary skilled artisan “to modify the teachings of Jackson to use multiple
laser pulses” because such modification would “optimize the formation of
the recesses and the splashing of the molten material to form the roughened
surface” of the three-dimensional anchoring structure. Final Act. 6; Ans. 4—
5. The Examiner concludes further that because
Murison teaches optimizing laser parameters such as laser energy
and power to control hole formation and material build up around
the hole, that melted material is more prone to splashing out of
the hole to be recast around the hole, and that it is known to
perform experiments with various laser parameters to obtain the
desired hole attributes, [including] the amount of material built
up around the holes as well as the debris or residue formed
around the hole[,] and [because] Jackson teaches a method of
forming land areas and depressions] to roughen a surface using
laser processing[,] it would have been obvious to a person having
4
Appeal 2016-003395
Application 14/017,337
ordinary skill in the art... to modify the teachings of Jackson to
determine by routine experimentation optimal laser settings to
form the roughened surface such that the process of forming the
land areas and depressions will result in using multiple laser
pulses to optimize the degree of splashing such that a laser pulse
will first melt the material, which is more prone to splashing as
taught by Murison and then use a second laser pulse directed at
the liquefied bed to thus form the raised land areas and
depressions.
Ans. 24.
Appellants argue claims 1—3 and 8 as a group (Appeal Br. 3—7; Reply
Br. 1—3) and argue claims 4, 7, and 20 separately (Appeal Br. 7—10; Reply
Br. 3—4). We therefore decide the propriety of this rejection on the basis of
claims 1, 4, 7, and 20. Dependent claims 2—3 and 8 will stand or fall with
independent claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
Claim 1
Appellants present several arguments that neither Jackson nor
Murison, either alone or in combination, teach the claimed limitations.
Appeal Br. 3—7; Reply Br. 1—3. Specifically, Appellants contend that MPEP
§2143 I. A. “requires that at least one of the references (Jackson or Murison)
teaches applying a pulse of laser energy to a portion of a liquefied bed
subsequent to applying a laser bean to a surface of the solid material to form
the liquefied bed.” Appeal Br. 5.
These arguments are not persuasive of reversible error. First, we note
that MPEP § 2143 I. A. outlines one of several exemplary, but non-
exhaustive, rationales that may support a conclusion of obviousness. The
rationale set forth in MPEP § 2143 I. A. (combining prior art elements
according to known methods to yield predictable results), however, is not the
rationale relied upon by the Examiner to conclude that claim 1 is obvious.
5
Appeal 2016-003395
Application 14/017,337
Rather, the Examiner repeatedly relies upon the doctrine of optimization to
arrive at this conclusion. Final Act. 6, Ans. 4—5, 24—25.
Appellants’ arguments focus on how the references individually teach
away from, or fail to teach, one or more claim limitations. Appeal Br. 3—7;
Reply Br. 1—3. Importantly, however, Appellants do not address in their
Reply Brief the Examiner’s finding (Ans. 24) regarding Murison’s
disclosure of using a longer laser pulse to melt the surface material, making
it more prone to splattering (Murison | 58). Appellants’ arguments also fail
to address, and, thus, fail to identify error in, the Examiner’s conclusion that
it would have been obvious “to modify the teachings of Jackson to determine
by routine experimentation optimal laser settings to form the” claimed
anchoring structures by using “multiple laser pulses to optimize the degree
of splashing such that a laser pulse will first melt the material, which is more
prone to splashing as taught by Murison and then use a second laser pulse
directed at the liquefied bed to thus form the” anchoring structures. Ans. 24
(emphasis added).
The obviousness analysis “need not seek out precise teachings
directed to the specific subject matter [but] can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). “A
person of ordinary skill is also a person of ordinary creativity, not an
automaton.” Id. at 421.
Upon consideration of the combined teachings of Jackson and
Murison identified in the Final Action and the Answer, we agree with the
Examiner that it would have been obvious to the ordinary skilled artisan
to use a first set of laser parameters to melt and vaporize some of
the material to form the liquefied bed and provide vaporization
6
Appeal 2016-003395
Application 14/017,337
of some of the material and then use a second set [of] laser
parameters to recast material from the liquefied bed to form the
land areas [because] melted material is more prone to splattering.
Ans. 24—25. We determine that this would have been obvious to a person of
ordinary skill seeking to create the claimed three-dimensional anchoring
structures because the cited references teach one how to optimize laser
parameters to melt surface material to make it more prone to splashing or
splattering, i.e., using a laser pulse of sufficient duration to achieve an
adequate degree of surface material melt. See, Murison | 58. Such ordinary
skilled artisan would have known that applying a subsequent laser pulse
having sufficient energy to the melted material would cause it to splash (i.e.,
move) to an area outside of the melted material and then be recast as a three-
dimensional anchoring structure. Armed with this knowledge, the skilled
artisan would have employed no more than ordinary creativity to optimize
the laser parameters as taught by Murison, to modify Jackson’s one-step
process of “melting, moving and recasting” using one laser pulse (Jackson
6:58—60) to comprise two distinct applications of laser energy as claimed.
Therefore, because Appellants’ arguments regarding claim 1 (Appeal
Br. 3—7; Reply Br. 1—3) fail to identify reversible error, we sustain the
Examiner’s rejection of claims 1—3 and 8.
Claim 4
Claim 4 depends from claim 1 and requires that “the applying of the
laser beam to the surface of the solid material comprises a scanning by the
laser beam over the surface of the solid material.” Appeal Br. 23. The
Examiner determines that Jackson’s “relative motion between the laser and
the substrate” results in the claimed scanning over the substrate surface
7
Appeal 2016-003395
Application 14/017,337
because the claim “does not require that the laser is continuously applied
during the scanning.” Ans. 30. The Examiner also finds that Murison
“teaches that the laser is moved relative to the substrate.” Final Act. 7.
Appellants contend that, contrary to the Examiner’s assertion, “claim
4 expressly requires that the laser is scanned over the surface while it is
being applied.” Reply Br. 4. Appellants argue that neither Jackson nor
Murison teach or suggest this claim limitation because the laser in both
references “is only applied at specific locations (i.e.[,] where holes are to be
drilled)” and is thus not applied continuously during the surface scan.
Appeal Br. 8.
This argument is persuasive of reversible error. In this regard, we first
note that the plain language of claim 4 supports Appellants’ position that
claim 4 requires continuous application of the laser during scanning. Claim
4 depends from claim 1, which recites “applying a laser beam to a surface of
solid material to form a liquefied bed on the surface.” Claim 4 specifies that
“the applying . . . comprises a scanning by the laser beam over the surface of
the solid material” (emphasis added). Thus, the plain language of claim 4
recites that while the laser beam is being applied, “a scanning” of said laser
beam “over” the substrate occurs.
This construction is furthermore supported by Appellants’
Specification which describes the scanning of a substrate with a laser beam.
Specifically, it states that “laser beam 10 may be applied to a surface 12 of
solid material 14 by way of a beam-scanning technique (e.g., two-
dimensional scanning) of laser beam 10 of the surface of the solid material,
as represented by scanning grids 28.” Spec. 4:26—5:2. Turning to Fig. 1,
scanning grids 28 extend along one plane of the liquefied bed 16 which is
created by application of laser beam 10 to surface 12. This suggests that the
8
Appeal 2016-003395
Application 14/017,337
laser beam 10 is applied in an uninterrupted fashion during scanning of
surface 12, thus allowing liquefied bed 16 to form along the elongated
scanning grid pattern 28.
To establish a prima facie case of obviousness, the Examiner must
show that each and every limitation of the claim is described or suggested by
the prior art or would have been obvious based on the knowledge of those of
ordinary skill in the art or the inferences and creative steps a person of
ordinary skill in the art would have employed. In re Fine, 837 F.2d 1071,
1074 (Fed. Cir. 1988); KSR, 550 U.S. at 417.
Because the Examiner fails to establish that Jackson or Murison
describes or suggests continuous application of the laser during the scanning
over its substrates, or that such continuous application of the laser would
have been obvious based on the combination of Jackson and Murison, we do
not sustain the rejection of claim 4.
Claim 7
Separately argued claim 7 depends from claim 1 and recites that “the
applying of the pulse of laser energy comprises focusing the pulse of laser
energy onto the portion of the liquefied bed.” The Examiner cites Murison’s
disclosure regarding the focusing of the laser 6, 7, 74; Final Act. 8) and
concludes that it would have been obvious to focus the laser beam “on the
liquefied bed during [the] second pulse.” Ans. 32.
Appellants contend that neither Jackson nor Murison, individually or
combined, teach the limitation requiring focusing a pulse of laser energy
onto a portion of a liquefied bed. Appeal Br. 8—9; Reply Br. 4. As with the
rejection of claim 1, however, Appellants fail to address the Examiner’s
finding regarding Murison’s disclosure of using a longer laser pulse to melt
9
Appeal 2016-003395
Application 14/017,337
the surface material, making it more prone to splattering (Murison 158).
Appellants also do not address the Examiner’s rationale for modifying
Jackson’s method with the teachings of Murison, and thus fail to account for
what the ordinary skilled artisan would have done when confronted with the
teachings of these references.
Here, the Examiner established that it was well-known to focus a laser
beam (Ans. 31, citing Murison H 6, 7, 74) and concluded that the ordinary
skilled artisan would have been motivated to focus a laser on the desired
spot on the substrate to be melted and upon melting “the laser beam will
then be focused on the liquefied bed during the second pulse in the process.”
Ans. 32.
Thus, because Appellants fail to address the full scope of the
Examiner’s rejection, Appellants fail to identify reversible error in the
obviousness conclusion. We, therefore, sustain the rejection of claim 7.
Claim 20
Separately argued claim 20 depends from claim 1 and recites that “the
three-dimensional anchoring structure is formed of the solid material.” The
Examiner finds that Jackson teaches this limitation at 3:4—8. Final Act. 9.
Appellants contend that the Examiner’s statement in the Advisory
Action1 that Jackson’s “recast material differs considerably from the original
coating” distinguishes the claimed subject matter because the recast material
“is ‘denser and less porous than the original material and may have a
different atomic structure’.” Appeal Br. 9—10 (citing Jackson 6:55—60).
1 Advisory Action mailed June 29, 2015.
10
Appeal 2016-003395
Application 14/017,337
This argument is not persuasive of reversible error. First, we note that
Appellants selectively restate only a portion of the Examiner’s statement in
the Advisory Action, and omit a key statement—that Jackson’s recast
material “is still understood to be formed from the coating materialAdv.
Act. 9 (emphasis added). We furthermore observe that claim 20 does not
require the anchoring structure formed of the solid material to have identical
density, porosity or atomic structure as the original coating material. Rather,
claim 20 merely requires the “anchoring structure [to be] formed of the solid
material.” In re Self 671 F.2d 1344, 1348 (CCPA 1982) (“[Appellant’s
arguments fail from the outset because . . . they are not based on limitations
appearing in the claims.”).
We, therefore, sustain the Examiner’s rejection of claim 20.
Rejection II
The Examiner rejects claims 11—15 under 35 U.S.C. § 103 as
unpatentable over the same Jackson and Murison references relied upon in
Rejection I. Final Act. 9—13; Ans. 7—12.
Appellants present many of the same arguments against Rejection II
as they do against Rejection I. Appeal Br. 10—12. Specifically, Appellants
argue that neither Jackson nor Murison, alone or in combination, teach the
claimed limitations. Id. As with Rejection I, however, Appellants fail to
address the Examiner’s additional findings regarding Murison’s teachings at
| 58, as well as the Examiner’s rationale for modifying Jackson’s method
with the teaching of Murison, to arrive at the claimed subject matter.
Because Appellants focus their arguments on only a portion of the
Examiner’s findings, and also fail to address the Examiner’s obviousness
11
Appeal 2016-003395
Application 14/017,337
rationale, Appellants fail to identify reversible error in the Examiner’s
obviousness conclusion.
We also observe that Appellants make purported “additional
arguments ... in support of the patentability of dependent claim 13” and
simply state the limitations of claim 13 followed by what is believed to be an
attempt at incorporating arguments already made with respect to claim 1.
We do not consider such statements to be separate arguments in accordance
with our Rules. Specifically, we emphasize that “arguments shall explain
why the examiner erred as to each ground of rejection contested.” 37 C.F.R.
§ 41.37(c)(l)(iv) (emphasis added). Skeletal arguments or arguments
merely amounting to assertions that the references do not disclose or suggest
certain claim limitations are not arguments for separate patentability in
compliance with our Rule 41.37(c)(l)(iv). See In re Lovin, 652 F.3d 1349,
1356-57 (Fed. Cir. 2011).
We, therefore, sustain Rejection II.
Rejections III V
In each of Rejections III and IV, the Examiner relies on Jackson’s
disclosure to establish the formation of a moving liquefied pool which re­
solidifies along a trailing edge, as well as the repeated impact of the moving
pool with respective pulses to create a plurality of anchoring structures
across the surface as the pool moves and the surface re-solidifies. Final Act.
14—15, 17; Ans. 13, 15. In Rejection V, the Examiner relies on Jackson’s
disclosure to establish the formation of the liquefied bed on the surface of
the solid material. Final Act. 20—22.
With respect to Rejections III and IV, Appellants argue that Jackson’s
single pulse “simultaneously melts and recasts material. . . and thus does not
12
Appeal 2016-003395
Application 14/017,337
disclose delivering a pattern of energy scanning a surface of a solid material
to create a moving pool of liquefied material which re-solidifies along a
trailing edge as recited in independent claim 16.” Appeal Br. 13—14.
Regarding Rejection V, Appellants urge that “Jackson fails to disclose . . .
(1) applying a laser bean to form a liquefied bed and (2) applying a pulse of
laser energy to cause a splash of liquefied material outside of the liquefied
bed.” Id. at 19.
Appellants’ arguments persuade us of reversible error. In each of
Rejections III—V, the Examiner states that “Jackson teaches applying a pulse
of laser energy to the surface of the substrate to both melt the solid material
to form the liquefied bed and also to cause the material to splash outside of
the liquefied bed such that it is in one processing step” Final Act. 15, 17,
21 (emphasis added). The Examiner fails to provide, however, any technical
reasoning or evidence establishing that, after Jackson’s single pulse of laser
energy, there is any liquefied material remaining that is not moved and
recast, so as to form a liquefied pool.
The Examiner does not rely on the teachings of Skelly (Rejection III)
or Murison (Rejections IV—V) to satisfy the claim limitations requiring the
formation of “a moving pool of liquefied material” (claim 16) or “a liquefied
bed” (claim 1). Nor does the Examiner establish in Rejections III—V that
these claim limitations would have been obvious based on the knowledge of
the ordinarily skilled artisan or based on the inferences and creative steps
such artisans would have employed. KSR, 550 U.S. at 417.
We, therefore, do not sustain Rejections III—V.
13
Appeal 2016-003395
Application 14/017,337
DECISION
We affirm the Examiner’s rejections of claims 1—3, 7, 8, 11—15, and
20 under 35 U.S.C. § 103(a).
We reverse the Examiner’s rejections of claims 4, 16—19, 21, and 22
under 35 U.S.C. § 103(a).
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-IN-PART
14