Ex Parte Neilsen et al

Board of Patent Appeals and Interferences

Nov 12, 2008

10603896 (B.P.A.I. Nov. 12, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JEFFREY ALLEN NEILSEN,
STEVEN T. CASTLE, and
DAVID C. COLLINS
_____________

Appeal 2008-3876
Application 10/603,896
Technology Center 1700
______________

Decided: November 12, 2008
______________

Before CHUNG K. PAK, PETER F. KRATZ, and CATHERINE Q. TIMM,
Administrative Patent Judges.

TIMM, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1-19. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

Appeal 2008-3876
Application 10/603,896

I. STATEMENT OF THE CASE
The invention relates to a method for improving color quality in an
object created by a solid freeform fabrication system by causing a reaction
that keeps a colorant in an ejected material near a surface of the object.
(Spec. 3, ll. 3-6). Claim 1 is illustrative of the subject matter on appeal:

1. A method of improving color quality in an object created by a solid
freeform fabrication system that uses a fluid ejection process to build
successive layers of the object being fabricated, the method comprising:

ejecting a first material to form a layer of a three-dimensional
object, the first material containing a colorant; and

causing a reaction that keeps the colorant near a surface of the
object.

Appellants request review of the sole rejection maintained by the
Examiner, namely, the rejection of claims 1-19 under 35 U.S.C. § 103(a)
over U.S. Patent No. 6,401,002 B1, issued on June 4, 2002, to Jang et al.
(hereinafter “Jang”), in view of either U.S. Patent No. 5,181,045, issued on
January 19, 1993, to Shields et al. (hereinafter “Shields I”) or U.S. Patent
No. 5,428,383, issued June 27, 1995, to Shields et al. (hereinafter “Shields
II”).1
Appellants do not present separate arguments as to any particular
claim but rather address the claims as a group. Accordingly, we decide the

1 Appellants additionally requested review of a rejection under 35 U.S.C.
§112, second paragraph. (App. Br. 4-5). However, the Examiner withdrew
this rejection in the Examiner’s Answer. (Ans. 2).
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appeal on the basis of independent claim 1. See 37 C.F.R. § 41.37(c)(1)(vii)
(“When multiple claims subject to the same ground of rejection are argued
as a group by appellant, the Board may select a single claim from the group
of claims that are argued together to decide the appeal with respect to the
group of claims as to the ground of rejection on the basis of the selected
claim alone.”).
II. DISCUSSION
Appellants argue that the reactions taught by Shields I and Shields II
are not the same as the claimed reaction that keeps a colorant near a surface
of a three-dimensional object. (App. Br. 8-9 and 11). The Examiner
responds that the reactions taught by Shields I and Shields II inherently keep
a colorant near a surface of a three-dimensional object. (Ans. 7).
Thus, the contentions of Appellants and the Examiner raise the following
first issue: do Shield I and Shield II teach the claimed reaction which keeps
a colorant near a surface of a three-dimensional object?
The Examiner’s rejection states that one of ordinary skill in the art
would have combined the teachings of Jang and Shields I or Shields II “in
order to manufacture an object having a desired color and/or desired color
pattern.” (Ans. 5). Yet, Appellants also argue that the Examiner’s rejection
lacks motivation or suggestion “to modify and combine the references [i.e.,
Jang and either Shields I or Shields II] as suggested in the instant Office
Action.” (App. Br. 9 and 12). Thus, the contentions of Appellants and the
Examiner raise the following second issue: do the references provide a
reasonable rationale for combining the teachings of Jang and Shields I or
Shields II?
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Appellants also argue that one of ordinary skill in the art would not
have a reasonable expectation of success if the references were combined as
suggested by the Examiner because “2-D printing techniques (as taught by
Shields I, for example) are not necessarily useful or applicable to 3-D rapid
prototyping processes.” (App. Br. 9). The Examiner responds that one of
ordinary skill in the art would have had a reasonable expectation of success
because each of the references is “directed to making objects having color.”
Thus, the contentions of Appellants and the Examiner raise the following
third issue: would one of ordinary skill in the art have expected the
reactions taught by Shields I and Shields II to be successful in a three-
dimensional rapid prototype process as taught by Jang?
We answer these questions in the affirmative.
The evidence of record supports the following Findings of Fact (FF):
1. Shields I teaches causing a reaction between a first ink having a
carboxylated dye and a second ink having a relatively low pH. (Shields I,
col. 2, ll. 26-52).
2. Shields I teaches that at a border between the two inks, a
reaction occurs, such that the carboxylated dye of the first ink becomes
insoluble and precipitates. (Shields I, col. 2, ll. 32-38).
3. According to Shields I, “[b]y forcing the dye to become
insoluble on the page, migration of the dye is inhibited, thereby helping to
reduce bleed between different colors.” (Shields I, col. 2, ll. 5-8).
4. Shields II teaches causing a reaction between a first ink having
a carboxylated dye and a second ink having a multi-valent metal salt.
(Shields II, col. 3, ll. 23-30 and 40-41).
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5. Shields II teaches that, upon contact at a border between the
two inks, a reaction occurs, such that the carboxylated dye of the first ink
becomes insoluble and precipitates. (Shields II, col. 2, ll. 33-36).
6. According to Shields II, the “[p]recipitate formation prevents
migration of the coloring agent from the first ink composition into the
second ink composition.” (Shields II, col. 3, ll. 36-40).
7. Shields I also teaches that it was well known in the ink printing
art to utilize this same low pH /carboxylated dye reaction to achieve
waterfastness of a single ink constituent, when a paper substrate, rather than
a second ink, is a low pH material. (Shields I, col. 2, ll. 53 to col. 3, l. 6).
8. Appellants’ Specification teaches that
The colorant in the ejected material is caused to
remain near the surface of each layer of the object
by precipitating (or "crashing") the colorant out of
the ejected material as the object is formed.
Without subscribing to any particular theory,
applicants believe that by forcing a colorant to
become insoluble (and thereby precipitate out of
the ejected material) as the object is formed, the
migration of the colorant will be inhibited, thereby
reducing penetration of the colorant into the object
and improving the sharpness or crispness of
borders between different adjacent colors. The
"force" used to make the colorant crash or
precipitate out of solution may be, for example, a
pH reaction or a cationic-anionic reaction.
(Spec. 8, ll. 9-17).
9. Appellants’ Specification teaches that the pH reaction includes
the reaction of carboxylated dyes and a material having a low pH, where the
carboxylated dye is a colorant in a binder which is ejected into a low pH
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powder build material to form the solid object. (Spec. 8, ll. 19-26 and 9,
ll. 20-29).
10. Appellants’ Specification also teaches a general anionic-
cationic reaction, which includes the reaction of a colorant (e.g., in a binder
material) that is anionic with a powder build material that includes a cationic
component. (Spec. 8, ll. 27-32 and 10, ll. 13-19).
11. Jang teaches that “[t]here are a broad array of liquid droplet
deposition devices that can be incorporated in the presently invented
apparatus. One type of deposition devices [sic] is a thermal ink jet print-
head.” (Jang, col. 11, ll. 20-23).
12. Jang also teaches “fabricating a three-dimensional object on a
layer-by-layer basis” by “co-deposition of ejected liquid droplets and solid
powder particles” in which “[l]iquid droplets may also contain desired color
dyes for building a multi-color object.” (Jang, col. 5, ll. 47-54).
13. Jang teaches that “[f]or making colored objects, preferably each
composition also contains a color-making ingredient (referred to as a
colorant or ink), which may be a dye, pigment, color concentrate (commonly
used in coloring of plastics), or combinations thereof.” (Jang, col. 8, ll. 35-
39).
14. Jang teaches “a plurality of separate droplet deposition devices
with each device being supplied with possibly different liquid compositions
containing different colorants and being capable of ejecting the liquid
compositions in the form of droplets on demand.” (Jang, col. 7, ll. 30-35).
15. Shields I and Shields II are directed to thermal ink-jet printing
techniques. (Shields I, col. 1, ll. 6-11; Shields II, col. 1, ll. 7-11).
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16. Appellants’ Specification discloses that “[b]ecause color can be
primarily a surface property, the color projection of the object does not need
to proceed very far into the interior of the object being fabricated.” (Spec. 7,
ll. 19-21).
17. Appellants’ Specification discloses that “[t]he colorant in the
ejected material is caused to remain near the surface of each layer of the
object by precipitating (or ‘crashing’) the colorant out of the ejected material
as the object is formed.” (Spec. 8, ll. 9-11).
18. Appellants’ Specification discloses that
[c]olorant in the ejected material (either an ejected
binder or an ejected build material) is caused to
remain near the surface of the layer being
fabricated, such that the color accuracy of the
layer, and thus the completed object, is improved
by, for example, reducing ‘washed out’ colors and
maintaining sharp and crisp borders between
different colors in the object.
(Spec. 8, ll. 3-8).
19. Appellants’ Specification states that
The color of a point on a layer of the object is
determined by the color at that point and the colors
of the points adjacent to that point in the same
layer of the object (half toning). The color of the
point is also affected by the color of points nearby
in layers above and below. The fact that the color
at any given point is affected by the color of all
surrounding points is specific to the three-
dimensional nature of rapid prototyping.
(Spec. 7, ll. 26-32).
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20. Shields I discloses that thermal ink-jet printers print “in various
colors on bond paper, copier paper, and other media.” (Shields I, col. 1, ll.
45-47).
21. Shields II discloses causing the disclosed reaction “on a
substrate (e.g. paper).” (Shields II, col. 2, ll. 50-51).
Much of our decision rests on what is meant by the language of claim
1. Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567-1568 (Fed.
Cir. 1987)(“Analysis begins with a key legal question -- what is the
invention claimed? . . . Claim interpretation . . . will normally control the
remainder of the decisional process.”) (footnote omitted). In our
interpretation, the claims, not the specification, measure the protected patent
right to exclude others. Novo Nordisk of North America Inc. v. Genentech
Inc., 77 F.3d 1364, 1369 (Fed. Cir. 1996); Phillips v. AWH Corp., 415 F.3d
1303, 1314 (Fed. Cir. 2005)(“To begin with, the context in which a term is
used in the asserted claim can be highly instructive.”).
Our reviewing court has repeatedly emphasized that it is not
appropriate to read desired embodiments into the claim language. Phillips,
415 F.3d at 1323 (“[A]lthough the specification often describes very specific
embodiments of the invention, we have repeatedly warned against confining
the claims to those embodiments.”). Further, the claim language must be
given its broadest reasonable meaning. In re Morris, 127 F.3d 1048, 1054
(Fed. Cir. 1997)(“[A]s an initial matter, the PTO applies to the verbiage of
the proposed claims the broadest reasonable meaning of the words in their
ordinary usage as they would be understood by one of ordinary skill in the
art, taking into account whatever enlightenment by way of definitions or
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otherwise that may be afforded by the written description contained in the
applicant's specification.”).
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727,
1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966). See also KSR, 127 S. Ct. at 1734 (“While the sequence of these
questions might be reordered in any particular case, the [Graham] factors
continue to define the inquiry that controls.”).
In considering a reasonable rationale for combining the teachings of
prior art references, the problem examined is not the specific problem solved
by the invention but a general problem that confronted the inventor before
the invention was made. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006);
see KSR, 127 S. Ct. at 1742 (“One of the ways in which a patent's subject
matter can be proved obvious is by noting that there existed at the time of
invention a known problem for which there was an obvious solution
encompassed by the patent's claims.”). “[I]f 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
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obvious unless its actual application is beyond that person’s skill.” KSR,
127 S. Ct. at 1740.
Applying the preceding legal principles to the Factual Findings in the
record of this appeal, we determine that the Examiner has established a
prima facie case of obviousness.
Claim 1 recites “causing a reaction that keeps the colorant near a
surface of the object.” (Claim 1). The phrase “near the surface of the object”
is not defined in Appellants’ Specification. (See Spec.). Rather, the
Specification clearly indicates that color is a “surface property,” which is
provided in each layer of the multi-layer process. (FF 16-19). Shields I and
Shields II teach the same reactions involving carboxylated dyes as taught by
the present invention. (FF 1-6 and 8-10). To the extent that the reactions
taught in Appellants’ Specification “keep a colorant near a surface of the
object”, so do the reactions taught by Shields I and Shields II inherently
keep the colorant near a surface of the object.
Since claim 1 is a method claim, the step claimed in this portion of
claim 1 merely involves “causing a reaction.” Claim 1 is silent as to how the
reaction is caused. As instructed by Phillips, 415 F.3d at 1323, we decline
to require that the reaction occur by the mode suggested in Appellants’
Specification, i.e., precipitating a colorant in an ink upon contact with a low
pH or cationic powder build material. (FF 9 and 10). Claim 1 also uses the
open “comprising” language, meaning that any reasonable additional
additive, including another ink or colorant, may be present and still fall
within the scope of the claim. Thus, claim 1 is not precluded from the
reaction being “caused” by contacting two ink compositions, precisely as
described in Shields I and Shields II. (FF 2 and 4).
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Thus, addressing our first issue, we determine that the reactions of
Shield I and Shield II teach reactions which keep a colorant near a surface of
a three-dimensional object, as required by claim 1.
Regarding our second issue, Shields I and Shields II both teach
causing this reaction to avoid having the colorant in a first ink bleed or
migrate into a second ink. (FF 3 and 6). Shields I also teaches that it was
well known in the art to use the same reaction taught in Shields I to achieve
waterfastness of an ink upon contact with a treated paper substrate. (FF 7).
Even if one of ordinary skill in the art did not appreciate that the
reactions taught by Shields I and Shields II would have kept the colorant
near the surface of a three dimensional object, such a skilled artisan would
have appreciated the benefits of waterfastness and/or prevention of having
colors bleed into one another, as taught by Shields I and Shields II.
Therefore, one of ordinary skill in the art would have caused one of the
reactions taught by Shields I or Shields II in the process taught by Jang for
the advantages to waterfastness and/or color bleeding. It is not necessary
that the prior art acknowledge the same benefits or address the same
problem as Appellants’ invention. Kahn, 441 F.3d at 988. Thus, regarding
the second issue, we determine that the references provide a reasonable
rationale for combining the teachings of Jang and Shields I or Shields II.
Regarding the third issue, Jang teaches that colored droplets are used
for forming a three dimensional object “layer-by-layer,” or one layer at a
time. (FF 12). As such, one of ordinary skill in the art would have
understood that a reaction to inhibit migration of inks on a single layer
substrate or media (e.g. paper) by an ink-jet printer, as taught by Shields I
and Shields II (FF 20 and 21), would have been directly applicable to ink
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applied to a single layer of a multi-layer object of a solid freeform
fabrication process, as taught by Jang.
Further, Jang teaches that thermal ink-jet printheads may be used for
solid freeform processing. (FF 11). Jang also teaches the use of multiple
colorants or inks in a liquid composition in solid freeform fabrication for
building a multi-color object. (FF 12-14). Jang provides sufficient evidence
that one of ordinary skill in the art would have been directed to the art of
thermal ink-jet printing regarding problems associated with dyes, inks and
other types of colorants used in the solid free form technology taught by
Jang. Likewise, the reactions disclosed in Shields I and Shields II are
particularly designed for thermal ink-jet printing. (FF 15). Since one of
ordinary skill in the art would have recognized that the colorant reactions
taught by Shields I and Shields II would have likely improved waterfastness
and inhibited bleeding for similar colorants in a solid freeform fabrication
system, the combination would have been obvious. KSR, 127 S. Ct. at 1740.
Therefore, regarding the third issue, we determine that one of ordinary
skill in the art would have reasonably expected the reactions taught by
Shields I and Shields II to be successful in a three-dimensional rapid
prototype process as taught by Jang.
III. CONCLUSION
Based on the totality of record, including due consideration of the
Appellants’ arguments, we determine that the preponderance of evidence
weighs most heavily in favor of obviousness within the meaning of
35 U.S.C. § 103. Accordingly, we sustain the Examiner’s rejection of the
claims 1-19.

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IV. DECISION
The decision of the Examiner is affirmed.
V. TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED

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