Ex Parte Hunter et al

Board of Patent Appeals and Interferences

Mar 31, 2010

10637271 (B.P.A.I. Mar. 31, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte SHAWN D. HUNTER
and ISAAC FARR
____________________

Appeal 2009-009255
Application 10/637,271
Technology Center 1700
____________________

Decided: March 31, 2010
____________________

Before MICHAEL P. COLAIANNI, LINDA M. GAUDETTE, and
KAREN M. HASTINGS, Administrative Patent Judges.

COLAIANNI, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1 through 14 and 25 through 41, which
are all of the claims pending in the above-identified application. We have
jurisdiction pursuant to 35 U.S.C. § 6.
We AFFIRM-IN-PART.
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STATEMENT OF THE CASE
The subject matter on appeal is directed to, inter alia, a closed loop
system. Claims 1, 25, and 28 are illustrative:
1. A closed loop system for separating materials of differing melting
points comprising:

an ultrasonic bath including a solution configured to supply thermal
energy and cavitation to said materials of differing melting points, wherein
said thermal energy has a temperature between said differing melting points;
and

a solution reservoir configured to adjust levels of said solution in said
ultrasonic bath.

25. A closed loop system for removing support material from a solid
freeform fabricated article comprising:

a bath configured to receive said solid freeform fabricated article; and

a cavitation means for inducing cavitation in said bath, said cavitation
being configured to remove said support material from said solid freeform
fabricated article.

28. The closed loop system of claim 25, further comprising a melting
means for melting said support material.

As evidence of unpatentability of the claimed subject matter, the
Examiner relies upon the following references:
Leyden 5,143,663 Sep. 1, 1992
Whalen 5,824,250 Oct. 20, 1998
Ronan 6,066,264 May 23, 2000

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The Examiner maintains the following rejections:
1) Claims 8-11 and 40 under 35 U.S.C. § 112, second paragraph, as
being indefinite for failing to particularly point out and distinctly claim the
subject matter which applicants regard as the invention;
2) Claims 1, 8-12, 25, 28-35, and 37-40 under 35 U.S.C. § 102(b) as
anticipated by Whalen;
3) Claims 1-3, 5-7, 14, 25, 26, 28-35, and 41 under 35 U.S.C. § 102(b)
as anticipated by Leyden; and
4) Claims 4, 13, 27, and 36 under 35 U.S.C. § 103(a) as unpatentable
over Leyden and Ronan.

REJECTION (1): The § 112, second paragraph rejection

ISSUE
Did the Examiner reversibly err in rejecting claims 8 and 40 under
35 U.S.C. § 112, second paragraph? We decide this issue in the affirmative.

FINDINGS OF FACT
1. The Specification at paragraphs [0001], [0022], and [0029]-[0034]
describes a solid free form fabrication (SFF) object, which is made
from a build material, and a support structure, which is made from a
support material. In this regard, the Specification states that "[a]
substantial majority of the support material . . . may then be melted
from the SFF article . . . or articles in the heated environment. Once
melted, the support material rises to the surface of the hot water
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solution . . ." (Spec. ¶ [0029]). In addition, the Specification at
paragraphs [0046] and [0047] describes removing support material
from a lens.

PRINCIPLE OF LAW
The test for definiteness under 35 U.S.C. § 112, second paragraph, is
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, Inc. v. Safety
Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986).

ANALYSES AND CONCLUSIONS
The Examiner determines that dependent claims 8 and 40 are
indefinite for failing to particularly point out and distinctly claim the subject
matter which Appellants regard as their invention. Specifically, the
Examiner states that these claims are indefinite because they "do[ ] not
further limit claim 1, as there is no additional physical structure given to the
apparatus . . . beyond that already indicated in [independent] claim 1." (Ans.
3).
We disagree. The test for definiteness is not whether additional
physical structure is given to an apparatus as stated by the Examiner but
whether “those skilled in the art would understand what is claimed when the
claim is read in light of the specification.” Orthokinetics, 806 F.2d at 1576.
In applying the proper test for definiteness under 35 U.S.C. § 112,
second paragraph, to dependent claims 8 and 40, it is clear that each of the
solid free form fabrication object and lens required by claims 8 and 40,
respectively, corresponds to the higher melting point material required by
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claim 1 and that each of the support structure and support material required
by claims 8 and 40, respectively, corresponds to the lower melting point
material.
Thus, it follows that the Examiner has reversibly erred in rejecting
claims 8 and 40 under 35 U.S.C. § 112, second paragraph.
Accordingly, for the reasons stated by Appellants in the Briefs and
above, we reverse the Examiner's decision rejecting claims 8-11 and 40
under § 112, second paragraph.

REJECTION (2): The § 102 rejection over Whalen
With respect to rejection (2), Appellants argue the claims in six
groups: (1) claim 12, (2) claim 1; (3) claim 28; (4) claim 37; (5) claims 38
and 39; and (6) claim 40. (App. Br. 11-15 and Reply Br. 4-9). For reasons
evident below, the rejection of claims 37-40 (i.e., claim groups (4) through
(6)) stands or falls with our decision regarding the rejection of claim 1 in
rejection (1). Accordingly, we address Appellants' arguments regarding the
rejection with respect to claims 1, 12, and 28. See 37 C.F.R. § 41.37(c)(1)
(vii).
In addition, for reasons evident below, we address the rejection of
claims 25 and 29-35.

ISSUES
Did the Examiner err in finding that Whalen teaches a closed loop
system comprising, inter alia, an ultrasonic bath configured to supply
thermal energy and cavitation, wherein the thermal energy has a temperature
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between the differing melting points of the materials as required by claims 1
and 12?
Did the Examiner err in finding that Whalen teaches a closed loop
system comprising a melting means as required by claim 28?
We decide these issues in the affirmative.

ADDITIONAL FINDING OF FACT
2. Whalen teaches that the support structure is removed using a solvent
in an ultrasonic bath. (Whalen, col. 6, ll. 10-12).

PRINCIPLE OF LAW
Under 35 U.S.C. § 102, “[a] claim is anticipated only if each and
every element as set forth in the claim is found, either expressly or
inherently described, in a single prior art reference.” Verdegaal Bros., Inc.
v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987).

ANALYSIS AND CONCLUSION
Claims 1 and 12
The Examiner states that
Applicant has claimed that the ultrasonic bath is
“configured to supply thermal energy and cavitation….” Such a
limitation does not impart any structural delineation to the
apparatus beyond a jetting head and an ultrasonic bath. The
apparatus of Whalen, et al. has a jetting head (or two nozzles) to
lay down a build and a support material and an ultrasonic bath
and thus, meets the structural limitations of the claim and is
capable of functioning as claimed. Regardless of how the bath
is configured is merely describing the function of the bath and
its intended use. The ultrasonic bath of Whalen, et al. is
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inherently capable of supplying thermal energy and cavitation
to remove the support material.

(Ans. 11).
We begin by noting that Appellants' use of the claim limitation
"configured to supply thermal energy and cavitation" in claims 1 and 12 is a
structural limitation that requires that the ultrasonic bath be “configured”
(i.e., structured) to supply both thermal energy and cavitation. Stated
differently, this claim limitation is not a functional limitation that "does not
impart any structural delineation to the apparatus beyond a jetting head[s]
[i.e., nozzles to lay down build and support material] and an ultrasonic bath"
as stated by the Examiner.
Turning our attention to the rejection, while it is true that Whalen
teaches an ultrasonic bath, which is known to be configured to supply
cavitation, the Examiner directs us to no express teaching in Whalen that its
ultrasonic bath is configured to supply cavitation and thermal energy at the
claimed temperature.
Nor does the Examiner adequately explain why Whalen's ultrasonic
bath would inherently have a structure configured to supply cavitation and
thermal energy at the claimed temperature. In this regard, while the
Examiner states at page 11 of the Answer that "one of ordinary skill is well
aware that typical ultrasonic bath devices are configured with heat and
cavitation to dissolve material from an object placed within the bath," this
statement by the Examiner is based on the mere possibility of Whalen's
ultrasonic bath structure and thus is speculative and insufficient to establish
the inherency of such structure.
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Moreover, it is not clear to us whether these "typical" ultrasonic bath
devices referred to by the Examiner are the same as the one described in
Whalen. The Examiner does not explain whether Whalen's ultrasonic bath is
a "typical" one or a non-typical one.
Thus, it follows that the Examiner erred in finding that Whalen
teaches a closed loop system comprising, inter alia, an ultrasonic bath
configured to supply thermal energy and cavitation, wherein the thermal
energy has a temperature between the differing melting points of the
materials as required by claims 1 and 12.
Accordingly, we reverse the Examiner's decision to reject claims 1,
8-12, and 37-40 under 35 U.S.C. § 102(b) over Whalen.

Claim 28

The Examiner states that
According to Applicant's di[s]closure, the melting means is a
heater (item 308, page 8 of the specification). Though the
apparatus of Whalen, et al. may not explicitly teach a heater, the
apparatus inherently includes and/or is capable of incorporating
some type of heating element to maintain a heated solution, for
the purpose of melting or removing the support material.

(Ans. 12). We disagree with the Examiner's statement that the Whalen's
apparatus meets the claimed invention because Whalen's apparatus
inherently includes and/or is capable of incorporating some type of heating
element (i.e., it is a functional limitation).
We begin by noting that dependent claim 28 requires that the closed
loop system comprise, inter alia, a melting means. This claim limitation
"melting means" is not a functional limitation as stated by the Examiner but
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rather a structural one that requires that the closed loop system have a
melting means, which may be a resistive element heater as disclosed at
paragraphs [0023] and [0024] in the Specification.
Turning our attention to the rejection, in reference to our above
discussion, while it is true that Whalen teaches a solvent in an ultrasonic
bath, the Examiner directs us to no express teaching in Whalen that its
closed loop system has a melting means as required by dependent claim 28.
Nor does the Examiner adequately explain why Whalen's ultrasonic
bath would inherently have a melting means. In this regard, while the
Examiner states at page 12 of the Answer that Whalen's machine "inherently
includes . . . some type of heating element to maintain a heated solution, for
the purpose of melting or removing the support material," the portion of
Whalen relied upon by the Examiner does not teach a heated solution for
removing the support material, much less a melting means. Instead, this
portion of Whalen relied upon by the Examiner teaches that the support
structure is removed using a solvent in an ultrasonic bath. (FF 2). Thus, the
Examiner's statement that Whalen's machine inherently has a heating
element in order to melt or remove support material is based on mere
speculation that a melting means could be used in combination with a
solvent in an ultrasonic bath to remove the support structure and thus, is
insufficient to establish the inherency of such structure.
Thus, it follows that the Examiner erred in finding that Whalen
teaches a closed loop system comprising a melting means as required by
claim 28.
Accordingly, we reverse the Examiner's decision to reject claim 28
under 35 U.S.C. § 102(b) over Whalen.
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Claims 25 and 29-35
Appellants' arguments are directed to a melting means feature recited
in dependent claim 28, however, independent claim 25 and dependent claims
29-35 do not require this feature. (App. Br. 13). Moreover, Appellants do
not specifically dispute the Examiner's finding that Whalen teaches all of the
features recited in claims 25 and 29-35. (Compare Ans. 6-8 with App. Br.
11-15 and Reply Br. 2-12). Accordingly, Appellants have not identified
reversible error in this rejection. We affirm the Examiner’s §102(b)
rejection of claims 25 and 29-35 over Whalen.

REJECTION (3): The § 102 rejection over Leyden
With respect to rejection (3), Appellants focus their arguments on
claims 1, 28, and 7. (App. Br. 15-17 and Reply Br. 9-12). For reasons
evident below, the rejection of claim 7 stands or falls with our decision
regarding the rejection of claim 1. Accordingly, we address Appellants'
arguments regarding the rejection with respect to claims 1 and 28. See 37
C.F.R. § 41.37(c)(1)(vii).
In addition, for reasons evident below, we separately address the
rejection of claims 25, 26, 29-35, and 41.

Claim 1
ISSUE
Did the Examiner err in finding that Leyden teaches a closed loop
system comprising an ultrasonic bath configured to supply thermal energy
and cavitation, wherein the thermal energy has a temperature between
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differing melting points of separating materials as required by claim 1? We
decide this issue in the affirmative.

ADDITIONAL FINDING OF FACT
3. Leyden states that a "heater (not shown) is provided for heating the
boil sump." (Leyden, col. 10, ll. 50-51).

ANALYSIS AND CONCLUSION
The Examiner finds that Leyden teaches the "ultrasonic bath . . .
configured to supply thermal energy and cavitation" feature required by
claim 1. (Ans. 4-6 and 13-14). In doing so, the Examiner provides two
reasons for making this finding: (1) the disputed claim feature is an intended
use that does not "provid[e] any structural element(s) beyond that which is
already claimed. Structurally, Applicants' apparatus is comprised of an
ultrasonic bath and a solution reservoir" and (2) since Leyden teaches a
heater in the boil sump, which "heat[s], clean[s] and recycle[s] [spent
solvent] back to the rinse tank for re-use. . . . [Leyden's] rinse tank is
capable of operating and maintaining a solution which is heated and thus,
possesses a thermal energy." (Ans. 13-14).
In reference to our above discussion, Appellants' use of the claim
limitation "configured to supply thermal energy and cavitation" in claim 1 is
a structural limitation that requires that the ultrasonic bath be “configured”
(i.e., structured) to supply both thermal energy and cavitation. Thus,
contrary to the Examiner's reason (1) (i.e., that this claim limitation is an
intended use that does not "provid[e] any structural element(s) beyond that
which is already claimed [i.e., an ultrasonic bath and a solution reservoir]"),
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this claim limitation requires that the ultrasonic bath be “configured” (i.e.,
structured) to supply both thermal energy and cavitation.
Given this proper construction of the disputed claim limitation, the
Examiner directs us to no credible teaching in Leyden that expressly or
inherently discloses an ultrasonic bath configured to supply both thermal
energy and cavitation.
In this regard, with respect to the Examiner's reason (2), the Examiner
does not adequately explain why Leyden's ultrasonic bath would have a
structure that is capable of supplying thermal energy and cavitation. While
Leyden teaches (FF 4) a heater for heating the boil sump, Leyden does not
teach that this heater is configured or structured to supply heat to the
ultrasonic bath as required by claim 1. Indeed, as correctly stated by
Appellants at page 10 of the Reply Brief, "the rinse tank (76) of Leyden may
be considered an ultrasonic bath. However, there is no heater or source of
thermal energy in the rinse tank (76)."
Thus, it follows that the Examiner erred in finding that Leyden
teaches a closed loop system comprising an ultrasonic bath configured to
supply thermal energy and cavitation, wherein the thermal energy has a
temperature between different melting points of separating materials as
required by claim 1.
Accordingly, we reverse the Examiner's decision to reject claims 1-3,
5-7, and 14 under 35 U.S.C. § 102(b) under Leyden.

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Claim 28
Appellants argue that claim 28 requires that the bath must have "both
'a cavitation means' and a 'melting means . . . for melting said support
material.'" (Reply Br. 11; see also App. Br. 16). We disagree.
Claim 28, which depends from independent claim 25, requires that a
closed loop system further comprise a melting means. It does not require, as
urged by Appellants, that the bath further comprise a melting means.
Turning our attention to the Examiner's rejection, Appellants do not
specifically dispute the Examiner's finding that Leyden teaches a closed loop
system having, inter alia, a rinse tank and a heater (melting means) "used to
heat the solvent in the boil sump." (Compare Ans. 4-6 and 13 with App. Br.
16-17 and Reply Br. 11-12).
Accordingly, Appellants' argument is unpersuasive of reversible error.
We affirm the Examiner’s § 102(b) rejection of claim 28 over Leyden.
Claims 25, 26, 29-35, and 41
Appellants' arguments are directed to a melting means feature,
however, independent claim 25 and dependent claims 26, 29-35, and 41
do not require a melting means feature. Moreover, Appellants do not
specifically dispute the Examiner's finding that Leyden teaches all of the
features recited in claims 25, 26, 29-35, and 41. (Compare Ans. 4-6 with
App. Br. 16-17 and Reply Br. 11-12). Accordingly, Appellants have not
identified reversible error. We affirm the Examiner’s § 102(b) rejection of
claims 25, 26, 29-35, and 41 over Leyden.

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REJECTION (4): The § 103 rejection over Leyden and Ronan

Claims 4 and 13
With respect to claims 4 and 13, because the Examiner relies on the
same factual findings and determinations discussed above to meet the
disputed claim feature recited in claim 1 and does not provide any findings
as to how Ronan would satisfy the disputed claim feature, we reverse the
Examiner's decision to reject claims 4 and 13 under § 103 over Leyden and
Ronan.

Claims 27 and 36
In reference to our above discussion, Appellants' arguments are
directed to a melting means feature recited in claim 28, however, neither
claim 27 nor claim 36 requires this feature. Moreover, Appellants neither
specifically dispute the Examiner's findings regarding Leyden and Ronan
nor specifically dispute the Examiner's reasons for combining Leyden and
Ronan to arrive at the inventions recited in claims 27 and 36 under § 103
over Leyden and Ronan. (Compare Ans. 8-9 with App. Br. 17 and Reply Br.
12).
Accordingly, Appellants have not identified any reversible error. We
affirm the Examiner’s § 103 rejection of claims 27 and 36 over Leyden in
view of Ronan.

ORDER
In summary,
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1) The § 112, second paragraph rejection of claims 8-11 and 40 is
reversed;
2) The § 102(b) rejection of claims 1, 8-12, 28, and 37-40 over
Whalen is reversed;
3) The § 102(b) rejection of claims 25 and 29-35 over Whalen is
affirmed;
4) The § 102(b) rejection of claims 1-3, 5-7, and 14 over Leyden is
reversed;
5) The § 102(b) rejection of claims 25, 26, 28-35, and 41 over Leyden
is affirmed;
6) The § 103(a) rejection of claims 4 and 13 over Leyden and Ronan
is reversed; and
7) The § 103(a) rejection of claims 27 and 36 over Leyden and Ronan
is affirmed.
Accordingly, the Examiner's decision is affirmed-in-part.

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)(1) (2009).
AFFIRMED-IN-PART

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