Satzger, Wilhelm et al.

Patent Trials and Appeals Board

Apr 21, 2020

14359657 - (D) (P.T.A.B. Apr. 21, 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.
14/359,657 06/09/2014 Wilhelm Satzger 6570-P50143 6538
13897 7590 04/21/2020
Abel Schillinger, LLP
5929 Balcones Drive
Suite 300
Austin, TX 78731
EXAMINER
JENNISON, BRIAN W
ART UNIT PAPER NUMBER
3761
NOTIFICATION DATE DELIVERY MODE
04/21/2020 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 WILHELM SATZGER, SIEGFRIED SIKORSKI,
THOMAS HESS, KARL-HEINZ DUSEL, and
HANS-CHRISTIAN MELZER
____________________

Appeal 2019-0052431,2
Application 14/359,657
Technology Center 3700
____________________

Before PHILLIP J. KAUFFMAN, TARA L. HUTCHINGS, and
ALYSSA A. FINAMORE, Administrative Patent Judges.

FINAMORE, Administrative Patent Judge.

DECISION ON APPEAL

1 The citations herein refer to the Specification filed June 9, 2014 (“Spec.”),
Final Office Action mailed August 3, 2018 (“Final Act.”), Appeal Brief filed
December 28, 2018 (“Appeal Br.”), Examiner’s Answer mailed May 1, 2019
(“Ans.”), and Reply Brief filed June 28, 2019 (“Reply Br.”).
2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies MTU Aero Engines AG as the real party in interest. Appeal Br. 3.
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STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 31–36, 38, 40, 42, 44–48, and 50.3 We
have jurisdiction under § 6(b).
We AFFIRM IN PART.

CLAIMED SUBJECT MATTER
Claims 31 and 47 are independent. Appeal Br., Claims App.
Independent claim 31, reproduced below, is illustrative of the claimed
subject matter.
31. A method for the generative production of a component
from a material, wherein the method comprises at least one of
(i) bonding material selectively together within a layer cross
section, (ii) bonding material to a layer beneath the material and
(iii) bonding material to a substrate, and wherein the method
further comprises exposing the material before, during and after
the bonding to radiation from a first, pulsed laser to at least one
of generate structure-borne sound waves in the material and
sublime a part of the material.
Id.

3 The Examiner lists claim 39 as rejected. Final Act. 1. Although the
Examiner objects to claim 39 (id. at 2), none of the Examiner’s rejections
includes claim 39. Accordingly, we understand claim 39 is not subject to a
rejection, and, therefore, not before us on appeal. See In re Hengehold, 440
F.2d 1395, 1403 (CCPA 1971) (“There are a host of various kinds of
decisions an examiner makes in the examination proceeding—mostly
matters of a discretionary, procedural or nonsubstantive nature—which have
not been and are not now appealable to the [B]oard.”). Furthermore, our
understanding of the claims on appeal is consistent with that of Appellant.
Appeal Br. 6–19.
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REJECTIONS
Claim(s)
Rejected 35 U.S.C. § Reference(s)/Basis
44, 484 112, ¶ 2 Indefiniteness
31–36, 38, 40 103(a) Clark,5 Yang6
42, 44–46 103(a) Clark, Yang, Chen7
47, 48, 50 103(a) Clark, Yang, Bostanjoglo8

ANALYSIS
Indefiniteness
Claim 44
The Examiner determines that claim 44 is indefinite because there is
insufficient antecedent basis for “the same laser device.” Final Act. 5. More
specifically, the Examiner determines it is unclear whether “the same laser
device” refers to the previously recited first, second, or third laser, or to a
fourth laser. Id. The Examiner also determines it is unclear whether a
second and third laser would be present in claim 44, or whether Appellant is

4 The Examiner also rejects claims 37, 41, 43, and 49 under 35 U.S.C. § 112,
second paragraph, as indefinite. Final Act. 3. The Examiner, however, has
withdrawn these claims from consideration. Id. at 1. Consequently,
claims 37, 41, 43, and 49 are not before us on appeal, which is consistent
with Appellant’s understanding of the claims on appeal. Appeal Br. 7.
Furthermore, the heading of the rejection does not list claim 48 among the
rejected claims, but the Examiner considers the claim in the body of the
rejection. Final Act. 3, 6. Accordingly, we treat claim 48 as rejected under
35 U.S.C. § 112, second paragraph, which is consistent with Appellant’s
understanding of the claims subject to this rejection. Appeal Br. 9.
5 Clark et al., US 2007/0176312 A1, published Aug. 2, 2007 (“Clark”).
6 Yang et al., US 2005/0288813 A1, published Dec. 29, 2005 (“Yang”).
7 Chen, US 2007/0095800 A1, published May 3, 2007.
8 Bostanjoglo et al., US 2005/0268998 A1, published Dec. 8, 2005
(“Bostanjoglo”).
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attempting to claim an embodiment with a single laser performing the
functions of the second and third lasers. Id.
Appellant argues a person of ordinary skill in the art would
understand that “the same laser device” recited in claim 44 is used as the
previously recited first, second, and third lasers. Appeal Br. 8. According to
Appellant, claim 44 recites a laser device, as opposed to a laser, and the
Specification makes clear that a laser device can function as a first, second,
and/or third laser. Id. (citing Spec. 4:9–21, 5:18–23, 7:17–23); Reply Br. 2.
Appellant’s argument is persuasive.
Claim 44 recites “wherein the same laser device is alternately
employed as the first, second, and third laser.” Appeal Br., Claims App.
(emphasis added). From the claim language itself, there is a difference
between a laser device and a laser, whereby a laser device is an alternative to
a plurality of individual lasers. Moreover, the Specification describes an
embodiment that uses a plurality of individual lasers to perform different
functions, as well as an alternate embodiment that uses a single laser device
to perform different functions. Spec. 4:9–21, 5:18–23, 7:17–23. For
example, the Specification describes:
A laser arrangement comprises a bonding laser 2 and at least one
of the two additional lasers 1A, 1B. For a more compact
representation of embodiments described in more detail
hereinbelow, these two are represented together in one figure, it
being possible in variants which are not shown for the laser
arrangement to have only the lasers 1A and 2, only the lasers 1B
and 2 or only the laser 2, which is then alternately operated as
the laser for bonding and as the laser for the additional exposure.
Spec. 5:18–23 (emphasis added). Accordingly, in view of the claim
language and the Specification, a person of ordinary skill in the art would
understand claim 44 requires that the first, second, and third lasers are
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combined into the same laser device. More simply put, “the same laser
device” recited in claim 44 is a device that includes the previously recited
first, second, and third lasers. The Examiner, therefore, has not shown
sufficiently that the meaning of “the same laser device” is unclear, and we
do not sustain the rejection of claim 44.
Claim 48
The Examiner determines that claim 48 is indefinite because there is
insufficient antecedent basis for “a second laser which is capable of
bonding.” Final Act. 6. More particularly, the Examiner determines it is
unclear whether “a second laser which is capable of bonding” refers to the
prior recited bonding device. Id.; Ans. 5.
Appellant contends it is clear that the second laser device corresponds
to the previously recited bonding device. Appeal Br. 9. We disagree.
Claim 48 depends from independent claim 47, and recites “wherein
the device further comprises a second laser which is capable of bonding the
material.” Appeal Br., Claims App. (emphasis added). Independent
claim 47, however, recites two devices, namely, a “device for the generative
production of a component” and a “bonding device.” Id. Although both the
bonding device in independent claim 47 and the second laser of claim 48 are
capable of bonding material, it remains unclear whether the second laser is
part of the device for the generative production of a component or the
bonding device. In light of this uncertainty, Appellant does not apprise us of
error in the Examiner’s rejection, and we sustain the rejection of claim 48.

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Obviousness Based on Clark and Yang
Appellant contends Clark fails to teach or suggest “exposing the
material before, during and after the bonding to radiation,” as recited in
independent claim 31. Appeal Br. 10–13; Reply Br. 2–4. According to
Appellant, Clark discloses exposing the material to radiation only after
bonding. Appeal Br. 10–11. Appellant’s argument is persuasive.
Clark discloses a method for forming objects, including depositing
layers of material, consolidating one layer upon another layer to form the
object, and non-destructively testing the formed object. Clark ¶ 4. As
shown in Figure 1, reproduced below, Clark’s deposition apparatus 1
includes both consolidation device 5 and non-destructive testing device 8.

Clark’s Figure 1 is a schematic depiction of deposition apparatus 1 including
device 2 for depositing a layer of material 3, consolidation device 5, and
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non-destructive testing device 8. Id. ¶¶ 33, 42–43, 45. Consolidation
device 5, via laser beam 7, interacts with the layer of material 3 to
consolidate that material and other layers of material subsequently laid
thereupon to create object 6. Id. ¶ 43. During the consolidation process,
malformation may occur, resulting in impurities, inclusions, or cracks within
the profile of object 6. Id. ¶ 44. Non-destructive testing device 8 analyzes
object 6 for malformations and uses a number of processes, including
ultrasound inspection. Id. ¶ 45. Non-destructive testing device 8, through
analytical interrogation beam 9, generally acts at inspection site 10, which is
about a consolidation zone 11. Id. ¶ 46, Fig. 1. More specifically, as shown
in Figure 1, inspection site 10 is displaced a few centimeters from
consolidation zone 11 so that consolidation is essentially complete prior to
inspection. Id. By appropriate positioning of inspection site 10 and
consolidation zone 11, deposition apparatus 1 allows for continuous
non-destructive testing and analysis of object 6 as it is formed by
consolidation of layers 3. Id. ¶ 47.
The Examiner finds Clark’s non-destructive testing discloses the
disputed limitation, i.e., “exposing the material before, during and after the
bonding to radiation.” Final Act. 7 (citing Clark ¶ 47). The Examiner
acknowledges Clark discloses consolidating one area of material while
testing another area. Final Act. 7–8; Ans. 5. The Examiner, however,
determines that the claim term “material” means the material as a whole and
is not limited to only the instant area being bonded. Final Act. 7; Ans. 5, 7.
According to the Examiner, Clark discloses operating consolidation device 5
and non-destructive testing device 8 simultaneously and continuously,
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thereby exposing the material as a whole to radiation from non-destructive
testing device 8 before, during, and after bonding. Final Act. 8; Ans. 5–6.
The Examiner’s broad interpretation of “material” to encompass
different areas, however, renders other claim terms in the disputed limitation
meaningless. See, e.g., Bicon, Inc. v. Straumann Co., 441 F.3d 945, 950
(Fed. Cir. 2006) (“[C]laims are interpreted with an eye toward giving effect
to all terms in the claim.”). The disputed limitation recites “exposing the
material before, during and after the bonding to radiation.” Appeal Br.,
Claims App. (emphasis added). This limitation refers to the material and
bonding recited in the prior limitation, namely “at least one of (i) bonding
material selectively together within a layer cross section, (ii) bonding
material to a layer beneath the material and (iii) bonding material to a
substrate.” Id. In light of the reference to the prior recited material and
bonding, we agree with Appellant that the disputed limitation requires the
same material to be both bonded and exposed to radiation before, during,
and after the bonding thereof. Appeal Br. 13 (“One of ordinary skill in the
art reading the instant specification will understand that the material that is
exposed to radiation from a first pulsed laser before, during and after
bonding . . . is not just any part of the material but is the material at the site
of bonding.” (citing Spec. 3:1–4:14)). Simply put, “the material” recited in
the disputed limitation refers to the bonded material.
As set forth above, the Examiner acknowledges Clark discloses
consolidating one area of material while testing another area. Final
Act. 7–8; Ans. 5. As shown in Clark’s Figure 1, the area being consolidated,
i.e., bonded, by consolidation device 5 in consolidation zone 11 is different
from the area being tested, i.e., exposed to radiation, by non-destructive
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testing device 8 in inspection site 10. Clark further discloses that the
spacing between consolidation zone 11 and inspection site 10 allows
continuous inspection of object 6 after consolidation. Clark ¶¶ 46–47. As
Clark discloses exposing the bonded material to radiation after bonding, the
Examiner has not shown that Clark discloses “exposing the material before,
during and after the bonding to radiation,” as independent claim 31 requires.
In view of the foregoing, the Examiner has not demonstrated that the
subject matter of independent claim 31 would have been obvious over the
combination of Clark and Yang. We, therefore, do not sustain the rejection
of independent claim 31 and claims 32–36, 38, and 40 depending therefrom.

Obviousness Based on Clark, Yang, and Chen
Claims 42 and 44–46 depend from independent claim 31. Appeal Br.,
Claims App. The Examiner does not rely on Chen in any manner that cures
the deficiency in the rejection of independent claim 31, and the rejection of
claims 42 and 44–46 suffers from the same deficiency as the rejection of
independent claim 31. Final Act. 8–9. Thus, we similarly do not sustain the
rejection of claims 42 and 44–46.

Obviousness Based on Clark, Yang, and Bostanjoglo
Independent claim 47 and claim 48
Appellant argues independent claim 47 and claim 48 as a group.
Appeal Br. 18–19. We select independent claim 47 as representative, and
claim 48 stands or falls with independent claim 47. 37 C.F.R.
§ 41.37(c)(1)(iv).
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In rejecting independent claim 47, the Examiner finds Clark discloses
the invention substantially as claimed. Final Act. 9–10. The Examiner
acknowledges that it is not clear whether Clark discloses the material
undergoing sublimation. Id. at 10. The Examiner finds Yang teaches
sublimation of material during a generative production process, and
determines it would have been obvious to adapt Clark in view of Yang to
provide the sublimation for forming a porous structure. Id. The Examiner
also acknowledges Clark does not disclose a container, as recited in the
claim. Id. The Examiner finds Bostanjoglo discloses a material container,
and concludes it would have been obvious to adapt Clark’s disclosure to
include Bostanjoglo’s container for containing the material to be bonded. Id.
At the outset, we note independent claim 47 does not include the
limitation at issue for independent claim 31. Rather, independent claim 47
recites “irradiating the material before, during and/or after the bonding.”
Appeal Br., Claims App. Unlike independent claim 31, which requires
exposing the bonded material to radiation before, during, and after the
bonding, independent claim 47 encompasses exposing the bonded material
to radiation before, during, or after the bonding. As set forth above with
respect to independent claim 31, Clark discloses testing, i.e., irradiating, an
object after consolidation. Clark ¶¶ 46–47. Consequently, the Examiner’s
rejection of independent claim 47 does not suffer from the same deficiency
as the rejection of independent claim 31, and we turn to Appellant’s
remaining argument.
Appellant argues that the Examiner has not articulated an adequate
reason why one of ordinary skill in the art would have added a container to
Clark’s disclosed device. Final Act. 18–19. Appellant’s argument does not
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apprise us of error in the rejection. “[A] 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). Similarly, “if a technique has been used to improve one device,
and a person of ordinary skill in the art would recognize that it would
improve similar devices in the same way, using the technique is obvious
unless its actual application is beyond his or her skill.” Id. at 417. As the
Examiner explains, a container is known to hold or transport something,
thereby providing the benefit of containment. Ans. 10. The Examiner’s
proposed combination is simply the combination of Clark’s device with
Bostanjoglo’s container to yield the predictable and beneficial result of
containing the material to be bonded. Being unapprised of error in the
Examiner’s rejection, we sustain the rejection of independent claim 47, with
claim 48 falling therewith.
Independent Claim 50
Independent claim 50 includes all of the limitations of independent
claim 31. Appeal Br., Claims App. The rejection of claim 50 suffers from
the same deficiency as the rejection of independent claim 31. Final Act. 10.
Accordingly, for the reasons set forth above for independent claim 31, we do
not sustain the rejection of independent claim 50.

CONCLUSION
We do not sustain the rejection of claim 44 under 35 U.S.C. § 112,
second paragraph, but we sustain the rejection of claim 48 under 35 U.S.C.
§ 112, second paragraph. We do not sustain the rejection of claims 31–36,
38, and 40 under 35 U.S.C. § 103(a) as unpatentable over Clark and Yang,
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nor do we sustain the rejection of claims 42 and 44–46 under 35 U.S.C.
§ 103(a) as unpatentable over Clark, Yang, and Chen. We sustain the
rejection under 35 U.S.C. § 103(a) premised on Clark, Yang, and
Bostanjoglo with respect to claims 47 and 48, but not with respect to
claim 50.

DECISION SUMMARY
Claim(s)
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
44, 48 112, ¶ 2 Indefiniteness 48 44
31–36,
38, 40 103(a) Clark, Yang
31–36, 38,
40
42,
44–46 103(a) Clark, Yang, Chen 42, 44–46
47, 48,
50 103(a)
Clark, Yang,
Bostanjoglo 47, 48 50
Overall
Outcome 47, 48
31–36, 38,
40, 42,
44–46, 50

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED IN PART