Ex Parte Baumann et al

Patent Trial and Appeal Board

Sep 28, 2016

11587758 (P.T.A.B. Sep. 28, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111587,758 02/22/2007 Franz-Erich Baumann
22850 7590 09/30/2016
OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP,
1940 DUKE STREET
ALEXANDRIA, VA 22314
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
298274USOPCT 8398
EXAMINER
SMITH, JEREMIAH R
ART UNIT PAPER NUMBER
1723
NOTIFICATION DATE DELIVERY MODE
09/30/2016 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):
patentdocket@oblon.com
oblonpat@oblon.com
ahudgens@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANZ-ERICH BAUMANN, MAIK GREBE,
And SYLVIA MONSHEIMER
Appeal2014--008631
Application 11/587,758
Technology Center 1700
Before PETER F. KRATZ , BEYERL YA. FRANKLIN , and
JENNIFER R. GUPTA, Administrative Patent Judges.
FRANKLIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants request our review under 35 U.S.C. § 134 of the
Examiner's decision rejecting claims 27--42 and 46--49. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b). An oral hearing was
conducted on September 15, 2016.
STATEMENT OF THE CASE
Claim 27 is illustrative of Appellants' subject matter on appeal and is
set forth below:
Appeal2014--008631
Application 11/587,758
L 1. A process for producing a three-dimensional object, the
process companng:
a) providing a layer of a pulverulent substrate,
wherein the pulverulent substrate is a powder material which is
not coated, and wherein the pulverulent substrate comprises at
least one homo- or copolymer selected from the group
consisting of polyester, polyvinyl chloride, polyacetal,
polypropylene, polyethylene, polystyrene, polycarbonate,
polybutylene terephthalate, polyethylene terephthalate,
polysulfone, polyarylene ether, polyurethane, thermoplastic
elastomers, poly lactides, polyoxyalkylenes, poly(N-
methylmethacrylimides) (PMMI), polymethyl methacrylate
(PMMA), ionomer, polyamide, copolyester, copolyamides,
silicone polymers, terpolymers, acrylonitrile-butadiene-styrene
copolymers (ABS), polyether sulfone, polyaryl sulfone,
polyphenylene sulfide, polyaryl ether ketone, polyimide,
polytetrafluoroethylene, and a mixture of these,
b) controlling the temperature of a manufacturing
chamber,
c) selectively applying an absorber in a suspension or
of a liquid absorber via an inkjet to at least one region of the
layer to be sintered,
d) adjusting one or more functionalized layers by
application of appropriate substances,
e) selectively melting the at least one region of the
layer of the pulverulent substrate by applying electromagnetic
energy emitted by a radiative heater in the IR-A region, and/or a
radiative heater in the IR-B region, or emitted by a lamp in the
visible region or a lamp in the IR-A region, and/or a lamp in the
IR-B region,
t) cooling of the molten and non-molten regions
obtained in e) to a temperature which allows formed moldings
to be removed intact, and g) removing the moldings intact,
thereby obtaining the three-dimensional object.
g) removing the moldings intact, thereby obtaining
the three-dimensional object.
2
Appeal2014--008631
Application 11/587,758
REJECTIONS
1. Claims 27--42 and 46--49 are rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite.
2. Claims 27-32, 34--39, 41, 42, and 49 are rejected under
35 U.S.C. § 103(a) as being unpatentable over the combination of Podszun
(CA 2 371 181 Al; pub. Oct. 24, 2001), Hochsmann (US 6,147,138; iss.
Nov. 14, 2000), Larsson (US 6,531,086 Bl; iss. Mar. 11, 2003), and Beaman
(US 5,352,405; iss. Oct. 4, 1994). 1
3. Claims 30 and 32 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Podszun, Hochsmann, Larsson, and
Beaman, and further in view of Iskra (US 2004/0004303 Al; pub. Jan. 8,
2004).
4. Claim 33 is rejected under 35 U.S.C. §103(a) as being
unpatentable over the combination of Podszun, Hochsmann, Larsson, and
Beaman; and further in view ofNarang (US 5;980;813; iss. Nov. 9; 1999).
5. Claim 40 is rejected under 35 U.S.C. §103(a) as being
unpatentable over the combination of Podszun and Hochsmann, and further
in view ofMelisaris (US 6,413,697 Bl; iss. July 2, 2002) and Kawasaki
(US 4,317,766; iss. Mar. 2, 1982).
6. Claim 46 is rejected under 35 U.S.C. §103(a) as being
unpatentable over the combination of Podszun, Hochsmann, Larsson and
Beaman, and further in view of Melisaris ' 232 (US 6, 177 ,232 B 1; iss. Jan.
23, 2001).
1 The Examiner inadvertently listed claim 44 in this rejection, but claim 44
has been cancelled. Therefore, it is not included in any listed rejection
herein.
3
Appeal2014--008631
Application 11/587,758
7. Claim 47 and 48 are rejected under 35 U.S.C. §103(a) as being
unpatentable over the combination of Podszun, Hochsmann, Larsson, and
Beaman, and further in view ofBredt (US 2001/0050031; pub. Dec. 13,
2001).
8. Claims 27-29, 34--42, and 46-49 are provisionally rejected on
the ground of nonstatutory obviousness-type double patenting as being
unpatentable over claims 28-30 and 36-50 of copending US Appln. Ser. No.
10/592,952; filed Sep. 15, 2006 ("Monsheimer") in view of US 6,531,086
Bl; iss. Mar. 11, 2003 ("Larsson").2
ANALYSIS
We select claim 27 as representative of all the claims on appeal, based
upon Appellants' presented arguments. 37 C.F.R. § 41.37(c) (1) (iv) (2014).
Because Appellants' arguments are directed toward claim 27 (Appeal Br.
27), we focus on the combination of references applied in Rejection 2 in
making our determinations herein. 3
Having considered the respective positions advanced by the Examiner
and Appellant in light of this appeal record, we affirm the Examiner's
rejections for the reasons set forth in the record, which we adopt as our own.
Nevertheless, we provide the following for emphasis.
2 On page 6 of the Appeal Brief, Appellants do not list Rejection 8.
Appellants also do not address Rejection 8 in the Appeal Brief. Appellants
provide remarks on page 8 of the Reply Brief, for the first time, and
therefore such argument is deemed waived for being untimely. We note that
Application No. 10/592,952 is now U.S. Patent 9,114,567.
3 Appellants do not argue the additional references applied in
Rejections 3-7 in the Appeal Brief. Appeal Br. 27. For the first time,
Appellants discuss these references on pages 7-8 of the Reply Brief. Such
untimely arguments are thus deemed waived.
4
Appeal2014--008631
Application 11/587,758
Rejection 1
The Examiner states that the following phrases recited in claim 27 are
indefinite: "controlling the temperature of a manufacturing chamber," "at
least one region of the layer to be sintered," and "adjusting one or more
functionalized layers by application of appropriate substance."
We agree with Appellants that the phrases "controlling the
temperature of a manufacturing chamber" and "at least one region of the
layer to be sintered" are definite for the reason provided on page 9 of the
Reply Brief.
However, with regard to the phrase "adjusting one or more
functionalized layers by application of appropriate substance," we are
unconvinced by Appellants' arguments made on pages 9-10 of the Reply
Brief. It is unclear what "appropriate substance" is applied and how the
functionalized layer is adjusted.
In view of the above, we affirm Rejection 1.
Rejections 2-7
The Examiner finds that Podszun teaches the claimed subject matter,
except for the claimed steps of c) selective application of an absorber in a
suspension or of a liquid absorber to the region to be sintered via inkjet
technology and e) selective melting of the region to be sintered by means of
introduction of EM energy via a lamp outputting in the visible, IR-A region,
and/or IR-B region. Ans. 2-3. The Examiner relies upon Hochsmann for
teaching a technique including use of an absorber and selective melting with
a form of EM energy. Ans. 3--4. The Examiner concludes that it would
have been obvious to have modified the method of Podszun by achieving
5
Appeal2014--008631
Application 11/587,758
selectivity by selectively applying the absorber and applying a blanket type
radiation, as taught by Hochsmann, for the benefit of improving upon the
deficiencies of laser sintering processes described by Hochsmann.
Appellants discuss the references of Podszun, Hochsmann, Larson,
and Beaman, separately, on pages 8-13 of the Appeal Brief, and also argue
that none of the applied references teach steps c) and e) of claim 27. Appeal
Br. 13-14. Appellants additionally argue that there would not have been a
reasonable likelihood of success in making the proposed modifications as
demonstrated in Examples 1--4 on pages 23-25 of the Specification and in
the Declarations submitted on May 12, 2011, March 25, 2013, and October
10, 2013.4 Appeal Br. 14. Appellants further argue that the uncoated
particles of Podszun are used in a completely different method, while
Hochsmann requires that coated particles be used. Appeal Br. 14.
With regard to the argument that none of the applied references teach
steps c) and e) of claim 27, we are in agreement with the Examiner's stated
reply made on page 17 of the Answer, and note that the test for obviousness
is what the combined teachings of the references would have suggested to
those of ordinary skill in the art; one cannot show non-obviousness by
attacking references individually where the rejections are based on
combinations of references. In re Young, 927 F.2d 588, 591 (Fed. Cir.
1991); In re Merck & Co., Inc., 800 F.2d 1091, 1097-98 (Fed. Cir. 1986); In
re Keller, 642 F.2d 413, 425 (CCPA 1981).
With regard to the argument that the uncoated particles of Podszun are
used in a completely different method, while Hochsmann requires that
4 We carefully reviewed Appellants' arguments regarding these
Declarations, made throughout the Appeal Brief and those repeated in the
Reply Brief.
6
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Application 11/587,758
coated particles be used, and that there would not have been a reasonable
likelihood of success in making the proposed modifications, we are in
agreement with the Examiner's reply made on pages 17-18 of the Answer.
Therein, the Examiner states that the coated particles of Hochsmann would
be expected to behave in the same manner as uncoated particles with respect
to the bonding of adjacent particles, and that one would have expected the
uncoated particles to be bindable together by selectively applying absorber
and exposing the absorber-coated particles to radiation to melt the surfaces.
We agree and note that the prior mi can be modified or combined to reject
claims as primafacie obvious as long as there is a reasonable expectation of
success. Jn re !vierck & Co., Inc., 800 F.2d l 091 (Fed. Cir. 1986).
Obviousness does not require absolute predictability, however5 at least some
degree of predictability is required. Evidence showing there was no
reasonable expectation of success may support a conclusion of
non obviousness. In re Rinehart, 531 F.2d l 048 (CCP A 197 6). In the
instant case, Appellants have not fun1ished sufficient evidence fi..)r the
reasons stated by the Examiner in the record. See, e.g., Ans. 19----23.
With regard to Appellants' arguments involving a showing of
unexpected results, we are in agreement with the Examiner's response made
on pages 20-23 of the Answer, and with the Examiner's stated position in
the record regarding each submitted Declaration. We add that the burden
rests with Appellants to establish (1) that the alleged unexpected results
presented as being associated with the claimed invention are, in fact,
unexpected, (2) that the comparisons are to the disclosure of the closest prior
art, and (3) that the supplied evidentiary showing is commensurate in scope
with the claimed subject matter. See In re Klosak, 455 F.2d 1077, 1080
7
Appeal2014--008631
Application 11/587,758
(CCPA 1972). To show unexpected advantages, Appellants must show "that
differences in results are in fact unexpected and unobvious and of both
statistical and practical significance." Ex parte Gelles, 22 USPQ2d 1318,
1319 (Bd. Pat. App. & Inter. 1992). In the instant case, Appellants have not
adequately provided such a showing for the reasons provided by the
Examiner in the record.
In view of the above, we affirm Rejection 2. We also affirm
Rejections 3-7 for the same reasons because Appellants do not provide
separate argument in the Appeal Brief regarding these rejections (see
footnote 2, supra). Appeal Br. 27.
Rejection 8
As mentioned in footnote 1, supra, Appellants do not address
Rejection 8 in the Appeal Brief. For the first time, Appellants discuss
Rejection 8 on page 8 of the Reply Brief, and therefore, such argument is
deemed waived as being untimely.
We thus summarily affirm Rejection 8.
DECISION
Each rejection is affirmed.
TIME PERIOD
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).
AFFIRMED
8