Thomas Hess et al.

Patent Trials and Appeals Board

Dec 10, 2019

13822713 - (D) (P.T.A.B. Dec. 10, 2019)

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.
13/822,713 09/24/2013 Thomas Hess 6570-P50053 1381
13897 7590 12/10/2019
Abel Schillinger, LLP
8911 N. Capital of Texas Hwy
Bldg 4, Suite 4200
Austin, TX 78759
EXAMINER
SULTANA, NAHIDA
ART UNIT PAPER NUMBER
1743
NOTIFICATION DATE DELIVERY MODE
12/10/2019 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 THOMAS HESS,
ERWIN BAYER, MARKUS WALTEMATHE,
KLAUS BROICHHAUSEN, WILHELM SATZGER,
SIEGFRIED SIKORSKI, KARL-HEINZ DUSEL, and
HANS-CHRISTIAN MELZER
__________

Appeal 2019-001829
Application 13/822,713
Technology Center 1700
____________

Before MICHAEL P. COLAIANNI, GEORGE C. BEST, and
DEBRA L. DENNETT, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134(a) the final rejections of
claims 41–60. We have jurisdiction over the appeal pursuant to 35 U.S.C.
§ 6(b).
We REVERSE.

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).
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STATEMENT OF THE CASE
Appellant’s invention is directed to a device for producing or forming,
repairing, and/or replacing a vane element of an aircraft turbojet engine by
means of a powder (Spec. 1:6–9). The Specification describes that energy
radiation is used to melt or sinter the powder, which solidifies thereafter (id.
at 1:8–9; 1:11–13; 10:24–28).
Claims 41 and 60 are illustrative (emphasis added):
41. A device which is suitable for producing and/or repairing
a component by means of a powder that is capable of being
solidified by energy radiation from an energy radiation source,
wherein the device comprises an application unit which is
configured so that it is capable of applying powder to be
solidified onto a curved or arcuate surface in the form of at
least one curved or arcuate powder layer which can
subsequently be solidified by the energy radiation from an
energy radiation source.
60. A device which is suitable for producing and/or repairing
a component by means of a powder that is capable of being
solidified by energy radiation from an energy radiation source,
wherein the device comprises an application unit which is
configured so that it is capable of applying powder to be
solidified onto a non-moving curved or arcuate surface in the
form of at least one curved or arcuate powder layer which can
subsequently be solidified by energy radiation from an energy
radiation source, and wherein the application unit is configured
so that it is moveable on a path along a contour or a contour
profile of the curved or arcuate surface and is movable in one,
two or three directions in space by being connected to a drive
unit.
Appeal Br. 20, 22–23 (Claim App.) (emphasis added).
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Appellant appeals the following rejections:2
1. Claim 60 is rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement (Final Act.
2–3).
2. Claims 41, 42, 44–54, and 58–60 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Tsushi et al. (US 2006/0045981 A1,
published Mar. 2, 2006, “Tsushi”) (Final Act. 5–6).
3. Claims 41, 42, 44, 46–49, 54, 58, and 60 are rejected under 35
U.S.C. § 102(b) as anticipated by Ito et al. (US 4,103,406, issued Aug.
1, 1978, “Ito”) (Final Act. 7–8).
4. Claims 41 and 43 are rejected under 35 U.S.C. § 102(b) as
anticipated by Shiba et al. (US 5,429,046, issued July 4, 1995,
“Shiba”) (Final Act. 9).
5. Claims 55–57 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Tsushi in view of Schlatterbeck et al. (US
7,927,669 B2, issued Apr. 19, 2011, “Schlatterbeck”) (Final Act. 10–
11).

2 In the Final Office Action, the Examiner rejected claims: (i) 58 and 59
under 35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement; (ii) 41–60 under 35 U.S.C. § 112, second
paragraph, as indefinite; and (iii) 41, 49–51, and 60 under 35 U.S.C.
§ 102(b) as anticipated by Sliker et al. (US 5,107,790, issued Apr. 28, 1992,
“Sliker”) (Final Act. 2–4, 9). In the Advisory Action dated May 4, 2018, the
Examiner has withdrawn the § 112, first paragraph, rejection of claims 58
and 59 and the § 102(b) rejection of claims 41, 49–51, and 60 as anticipated
by Sliker (Adv. Act. 3, 5). The Examiner also indicated that an amendment,
filed April 4, 2018, would be entered and that the amendment overcame
the § 112, second paragraph, rejection (id. at 3, 8).
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FINDINGS OF FACT & ANALYSIS
After review of the respective positions provided by Appellant and the
Examiner, we REVERSE the Examiner’s rejections of claims 41–60 for the
reasons presented by Appellant. We add the following.
A. Rejection of claim 60 under 35 U.S.C. § 112, first paragraph, as
lacking written description support
The Examiner finds that the limitation “a non-moving curved or
arcuate surface,” as recited in independent claim 60, has inadequate support
in the original disclosure (Final Act. 3). The Examiner finds that the
Specification as filed fails to recite the disputed limitation verbatim (id.).
Appellant argues, inter alia, that the only reasonable interpretation of
the Specification is that the moving application unit 24 described therein
applies powder to a stationary surface (Appeal Br. 9 (citing Spec. 8:21–
9:3)). Relying on claim 53, Appellant contends that one of ordinary skill in
the art would necessarily consider that a non-moving surface “is easier to
implement in the instant context than a moving surface” (Appeal Br. 9).
The preponderance of the evidence favors Appellant’s arguments of
written descriptive support. For example, the Examiner responds to
Appellant’s arguments by asserting that the working surface is always
movable in “SLS (selective laser sintering) or SLM (selective laser melting)
technology” (Ans. 4). The Examiner’s assertion, however, is not supported
by any evidence. Even if the evidence in the record supported the
Examiner’s position, the instant apparatus claims are not limited for use in
SLS or SLM methods.
The Examiner, moreover, argues that nothing in the Specification,
including claim 53, describes that the working surface is stationary (id.). We
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note, however, that the Examiner’s argument ignores Figure 4b from the
original disclosure. Figure 4b illustrates a device producing a component by
means of a powder:

The Specification’s Figure 4b illustrates an application unit 24, which
deposits powder layer 34 while moving in the X and Z directions or the X,
Z, and Y directions above non-planar support platform 40 (Spec. 9:16–18;
9:28).
As described in the original disclosure, “movement path 32 of the
application unit 24 is represented in Fig. 4b by a dashed line and extends in
accordance with the curved surface 22” (id. at 8:24–26). No such
representation of movement is depicted for non-planar support platform 40,
produced component 10, or the powder layer 34 dispensed thereon. In other
words, the Specification demonstrates that Appellant was in possession of
the subject matter recited in claim 60, i.e., “a non-moving curved or arcuate
surface,” at the time of filing. See Lockwood v. American Airlines Inc., 107
F.3d 1565, 1572 (Fed. Cir. 1997) (holding that “[o]ne shows that one is ‘in
possession’ of the invention by describing the invention, with all its claimed
limitations, . . . by such descriptive means as words, structures, figures,
diagrams, formulas, etc.”).
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On this record, we reverse the Examiner’s rejection of claim 60 under
35 U.S.C. § 112, first paragraph, as lacking written description.
B. Rejection of claims 41, 42, 44–54, and 58–60 as anticipated by Tsushi
The Examiner’s findings and conclusions regarding Tsushi are located
on pages 5–6 of the Final Office Action.
The Examiner finds that the limitations “a powder that is capable of
being solidified by energy radiation from an energy radiation source” and
“an application unit which is configured so that it is capable of applying
powder to be solidified,” as recited in independent claims 41 and 60, merely
indicate an intended use of the claimed devices (Final Act. 5–6; Adv. Act.
2). The Examiner also finds that the limitations “onto a curved or arcuate
surface,” including such surfaces that are “non-moving,” merely recite the
intended specific surfaces worked upon (Final Act. 6). Thus, the Examiner
concludes that the subject matter recited in the independent claim(s) “only
includes a device which is suitable for repairing/reproducing, and comprises:
an application unit, and a repairing surface” (Adv. Act. 3).
The Examiner finds that Tsushi discloses a coating device, which is
suitable for repairing or producing a moving or stationary surface (Final Act.
5). The Examiner finds that Tsushi’s coating device includes: (i) an
application unit having contours capable of applying material onto a non-
planar surface and (ii) a support platform having a curved or arcuate surface
(id. at 6).
Appellant argues that Tsushi does not disclose that the described
curved-surface roller coating device 72 is “capable of applying . . . a solid
coating material (i.e., a powder) onto any surface, let alone a curved or
arcuate surface” (Appeal Br. 10). Appellant argues that the Examiner has
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failed to provide a reason why Tsushi’s device “is necessarily capable of
applying a powder onto a curved or arcuate surface” (id. at 11).
We note that claims 41 and 60 define the structure of the claimed
device in functional language, indicating that the application unit is
configured so that it is capable of applying powder to be solidified onto a
curved or arcuate surface, which is moving or stationary, respectively. In re
Swinehart, 439 F.2d 210, 212 (CCPA 1971) (“[T]here is nothing
intrinsically wrong with [defining something by what it does rather than
what it is] in drafting patent claims.”).
We understand Appellant to argue that the claimed device is
structurally different than Tsushi’s coating device because the latter
dispenses an aqueous coating material having high viscosity (see, e.g., Spec.
Figs. 3–4b; 6:11–10:7; compare with Tsushi ¶ 60). We find that the
Examiner has not established that Tsushi’s curved-surface roller coating
device 72 is capable of applying a powder coating material onto a surface.
See, e.g., In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (court found
no dispute that claimed and prior art product had the same structure so that
the prior art structure is capable of performing the recited function); Intel
Corp. v. U.S. Int’l. Trade Comm’n, 946 F.2d 821, 832 (Fed. Cir. 1991)
(courts have interpreted functional language in an apparatus claim as
requiring that the prior art apparatus possess the capability of performing the
recited function). The Examiner has not shown that the structure recited in
claim 1 as construed in light of the Specification includes Tsushi’s pressure-
fed coating roller structure that dispenses liquid coating. In other words, the
Examiner has not established identity between the prior art structure and that
required by claim 1 to support a finding that Tsushi’s pressure-fed roller
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structure is capable of dispensing powder as recited in claim 1 (see, e.g.,
Tsushi ¶¶ 4, 343–49, 357). The Examiner has not established that Tsushi
anticipates claims 41 and 60.
On this record, we reverse the Examiner’s § 102(b) rejection over
Tsushi.
C. Rejection of claims 41, 42, 44, 46–49, 54, 58, and 60 as anticipated by
Ito
The Examiner’s findings and conclusions regarding Ito are located on
pages 7–8 of the Final Office Action.
The Examiner finds that claims 41 and 60 only require a device
comprising an application unit that is capable of applying powder onto a
surface (Final Act. 7, 8). The Examiner finds that Ito’s rolls 1 and 2 disclose
the requisite: (i) application unit and (ii) surface, onto which the component
is formed (id.).
Appellant argues that Ito does not disclose that convexed roll 1
“would be able to apply a powder onto the (moving) surface of the concaved
roll 2 in the form of at least one curved or arcuate powder layer” (Appeal Br.
13 (citing Ito Fig. 1)). According to Appellant, Ito’s device is directed to
forming strips into a desirable shape by compressing high alloyed steel
through a gap between rolls 1 and 2 (Appeal Br. 14; see also Ito 1:9–10; Fig.
1). Appellant asserts that any powder applied to a rotating concaved roll 2
would fall off of roll 2’s surface before it could be solidified (Appeal
Br. 14).
In response to these arguments, the Examiner, inter alia, asserts that
the instant claims’ recitations of the “material worked upon or the process of
using the apparatus are viewed as recitation[s] of intended use” (Ans. 8–9).
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Such recitations, however, do not absolve the Examiner of the burden of
showing that the prior art apparatus possesses the capability of performing
the functional language recited in the instant apparatus claims. See, e.g.,
Intel Corp., 946 F.2d at 832. We find that the Examiner has not adequately
explained how Ito’s roll 1 is capable of applying powder onto roll 2 in the
form of a powder layer, which is capable of being solidified by energy
radiation. Ito, therefore, does not anticipate claims 41 and 60.
On this record, we reverse the Examiner’s § 102(b) rejection over Ito.
D. Rejection of claims 41 and 43 as anticipated by Shiba
The Examiner’s findings and conclusions regarding Shiba are located
on page 9 of the Final Office Action.
The Examiner finds that Shiba’s device comprising dampening roller
1: (i) discloses the application unit recited in claim 41 and (ii) is capable of
producing or repairing a component (Final Act. 9; see Shiba 4:24–25).
We find, however, that these bare findings do not adequately explain
how Shiba’s dampening roller 1 is capable of applying powder in the form
of a powder layer which is curved or arcuate. See, e.g., Intel Corp., 946 F.2d
at 832. Shiba, therefore, does not anticipate claim 41.
On this record, we reverse the Examiner’s § 102(b) rejection over
Shiba.
E. Rejection of claims 55–57 as unpatentable over Tsushi in view of
Schlatterbeck.
The Examiner’s findings and conclusions regarding Tsushi in view of
Schlatterbeck are located on pages 10–11 of the Final Office Action.
The Examiner’s § 103(a) rejection of dependent claims 55–57 over
Tsushi in view of Schlatterbeck does not cure the deficiencies discussed
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above with respect to the § 102(b) rejection over Tsushi alone. Therefore,
we reverse the Examiner’s § 103(a) rejection.
CONCLUSION
In summary:
Claims
Rejected 35 U.S.C. § Basis Affirmed Reversed
60 112(a) Written Description 60
41, 42, 44–54,
58–60 102(b) Tsushi
41, 42, 44–
54, 58–60
41, 42, 44,
46–49, 54, 58,
60
102(b) Ito
41, 42, 44,
46–49, 54,
58, 60
41, 43 102(b) Shiba 41, 43
55–57 103(a) Tsushi, Schlatterbeck 55–57
Overall
Outcome 41–60
REVERSED