11378933 - (D) (B.P.A.I. Jun. 17, 2011)

Ex Parte Barr et al

Board of Patent Appeals and InterferencesJun 17, 2011

11378933 - (D) (B.P.A.I. Jun. 17, 2011)

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. 11/378,933 03/17/2006 Robert K. Barr 52183-2 CON 8085 53884 7590 06/17/2011 ROHM AND HAAS ELECTRONIC MATERIALS LLC 455 FOREST STREET MARLBOROUGH, MA 01752 EXAMINER JOHNSON, CONNIE P ART UNIT PAPER NUMBER 1722 MAIL DATE DELIVERY MODE 06/17/2011 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte ROBERT K. BARR, JAMES T. FAHEY, COREY O’CONNOR, and JAMES G. SHELNUT ____________ Appeal 2009-011916 Application 11/378,933 Technology Center 1700 ____________ Before TERRY J. OWENS, JEFFREY T. SMITH, and JEFFREY B. ROBERTSON, Administrative Patent Judges. ROBERTSON, Administrative Patent Judge. Appeal 2009-011916 Application 11/378,933 2 DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of pending claims 1, 2, and 11-17. (Examiner’s Answer mailed January 16, 2009, hereinafter “Ans.”). We have jurisdiction pursuant to 35 U.S.C. § 6(b). Appellants describe a method whereby an imaging composition including one or more sensitizers is applied to a work piece, a 3-D image is projected onto the imaging composition at 5mW or less to affect a color or shade change to form an image. (Spec. 6, 24). Claim 1, the only independent claim on appeal, is representative and recites: 1. A method comprising: a) applying an imaging composition comprising one or more sensitizers to a work piece; and b) projecting a 3-D image onto the imaging composition at 5mW or less to affect a color or shade change in the imaging composition to form an image. The prior art relied upon by the Examiner in rejecting the claims on appeal is: Telfer 5,681,676 Oct. 28, 1997 Neckers 5,942,370 Aug. 24, 1999 Kaufman 6,547,397 B1 Apr. 15, 2003 Admitted Prior Art from Appellants’ Specification, p. 3 (“APA”) Appeal 2009-011916 Application 11/378,933 3 The Examiner rejected claims 1, 2, and 11-17 under 35 U.S.C. § 103(a) as being unpatentable over Telfer in view of Kaufman, further in view of Neckers and APA. In rejecting the claims on appeal, the Examiner found that Telfer discloses “applying a 3-D imaging composition comprising a sensitizer to a substrate (workpiece).” (Ans. 3). The Examiner found that Telfer does not teach that the 3-D image is projected onto the imaging composition. (Ans. 4). The Examiner found that “Kaufman teaches a 3-D imaging method comprising applying an imaging composition to a workpiece, providing a 3- D imaging system, positioning the workpiece and applying energy to the imaging composition to affect color change.” (Ans. 4). The Examiner concluded that it would have been obvious to use the 3-D imaging system of Kaufman on the imaging system of Telfer to accurately measure placement of the 3-D image on the imaging composition.” (Ans. 4). The Examiner found that “Neckers, in analogous art, teaches a method of producing a 3-D object by selectively irradiating one or more portions of a cross-sectional pattern of the object.” (Ans. 5). The Examiner relies on Neckers for the specific color-forming compounds disclosed therein and the APA for a laser power of 5mW or less. (Ans. 5). Appellants contend that the applied prior art does not teach or suggest all the elements of the claimed method. (App. Br. 8). Appellants argue that Telfer teaches forming two-dimensional images on an imaging medium with a laser, and that Telfer is silent on projecting a 3-D image with a laser onto an imaging medium. (App. Br. 8). Appellants contend that Kaufman fails to make up for the deficiencies of Telfer, where Kaufman fails to disclose applying an image composition to a workpiece. (App. Br. 8-9). Appellants Appeal 2009-011916 Application 11/378,933 4 argue that Neckers fails to make up for the deficiencies of Telfer and Kaufman because Neckers does not disclose projecting a 3-D image onto an imaging composition to affect a color or shade change, but rather Neckers discloses employing lasers at different wavelengths or intensities to initiate polymerization or color a model. (App. Br. 10.) ISSUE The issue is: Did the Examiner err in determining that the method of projecting a 3-D image onto an imaging composition to affect a color or shade change would have been obvious to one of ordinary skill in the art in view of Telfer, Kaufman, and Neckers? FINDINGS OF FACT The record supports the following Findings of Fact (FF) by a preponderance of the evidence. 1. Telfer describes a three-dimensional imaging technique, where “a plurality of two-dimensional images of the object from various positions are determined . . . each of these two-dimensional images is separated into a plurality of strips . . . and one strip from each two-dimensional image . . . is placed in each of the image areas.” (Col. 5, ll. 24-36). 2. Telfer discloses that the composite image formed from the image strips is written into a radiation sensitive layer. (Col. 14, ll. 40-56; col. 22, ll. 27-56). Appeal 2009-011916 Application 11/378,933 5 3. Telfer discloses that an orthoscopic three dimensional image is observed by viewing the composite image appearing behind a plane of a radiation sensitive layer. (Col. 22, ll. 55-62). 4. Kaufman discloses a laser projector for projecting a 3-D image onto an object having contoured surfaces. (Col. 1, ll. 6-18). 5. Kaufman is silent as to applying an imaging composition to a workpiece. (See Kaufman, generally). 6. Neckers discloses a stereolithographic method for producing colored 3-D models by stacking a plurality of two-dimensional layers (X-Y layers), where the X-Y layers may be selectively colored as result of photosensitive material incorporated into a photohardenable composition used to form the X-Y layers. (Col. 2, ll. 9-16; col. 3, ll. 25-65). PRINCIPLES OF LAW “‘[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’” KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007), (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). ANALYSIS We agree with Appellants, that the Examiner erred in finding that Telfer discloses projecting a 3-D image onto an imaging composition. Contrary to the Examiner’s position, Telfer discloses that two-dimensional images are applied to an imaging medium, and that a 3-D image appears Appeal 2009-011916 Application 11/378,933 6 behind the plane of an imaging medium. (FF 1-3). We also agree with Appellants that the Examiner erred in finding that Kaufman discloses or suggests applying an imaging composition to a work piece. We, like Appellants, are unable to find any such disclosure in Kaufman. (FF 5). The Examiner has failed to identify a specific embodiment in Kaufman where an imaging composition is applied to a work piece. Accordingly, the Examiner has not provided a sufficient reason why one of ordinary skill in the art would have employed the 3-D projection method of Kaufman to apply the two-dimensional images of Telfer to an imaging medium. In addition, the Examiner has not provided sufficient rational underpinning to support the position that Kaufman must have an imaging composition on a work piece in the area where the energy from the 3-D imaging system falls. As discussed supra, Kaufman is silent as to the presence of an imaging composition and the Examiner does not provide additional sufficient support for the addition of an imaging composition to Kaufman’s method. Further, although Neckers discloses selectively coloring a 3-D object formed by stereolithography, Neckers is silent as to selectively projecting a 3-D image onto an imaging composition. Rather, Neckers discloses that each area of the two dimensional image is selectively colored. (FF 6). CONCLUSION The Examiner erred in determining that the method of projecting a 3- D image onto an imaging composition to affect a color or shade change would have been obvious to one of ordinary skill in the art in view of Telfer, Kaufman, and Neckers. Appeal 2009-011916 Application 11/378,933 7 DECISION We reverse the Examiner’s decision rejecting claims 1, 2, and 11-17 under 35 U.S.C. § 103(a) as being unpatentable over Telfer in view of Kaufman, Neckers, and APA. REVERSED cu