Ex Parte Notenboom

Board of Patent Appeals and Interferences

Aug 30, 2002

08834410 (B.P.A.I. Aug. 30, 2002)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 16
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte GERARDUS J.A.M. NOTENBOOM
_____________
Appeal No. 2000-0477
Application No. 08/834,410
______________
ON BRIEF
_______________
Before GARRIS, PAK, and TIMM, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the refusal of the
examiner to allow claims 6-10 as amended subsequent to the final
rejection. These are all of the claims remaining in the
application.
The subject matter on appeal relates to a method of
manufacturing a sintered structure which comprises providing a
substrate with layers of a liquid charged with particles by means
of an ink jet printer, evaporating the liquid from each layer and
then by means of a laser sintering the particles in the layer
Appeal No. 2000-0477
Application No. 08/834,410
1The final office action includes an alternative Section 103
rejection of these claims over Masters. Because the answer does not
include this ground of rejection under Section 103, we consider the
rejection to have been dropped by the examiner. See Manual of Patent
Examining Procedure (MPEP) § 1208, especially the paragraph bridging
pages 1200-16 and 1200-17 (8th Ed., August 2001).
2
before providing a succeeding layer. This appealed subject
matter is adequately illustrated by claims 6 and 7 which read as
follows:
6. A method of manufacturing a sintered structure formed of
layers of sintered particles on a substrate, said method
comprising providing said substrate with layers of a liquid
charged with particles by means of an ink jet printer,
evaporating the liquid from each layer and then by means of
a laser sintering the particles in said layer before
providing a succeeding layer.
7. A method as claimed in Claim 6, wherein the liquid is
evaporated by means of a laser.
The references set forth below are relied upon by the
examiner in the Section 102 and Section 103 rejections before us:
Masters 4,665,492 May 12, 1987
Drummond et al. (Drummond) 5,132,248 Jul. 21, 1992
Claims 7 and 8 are rejected under the second paragraph of
35 U.S.C. § 112 for failing to particularly point out and
distinctly claim the subject matter which the appellant regards
as his invention.
Claims 6-8 are rejected under 35 U.S.C. § 102(b) as being
anticipated by Masters.1
Appeal No. 2000-0477
Application No. 08/834,410
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Claim 10 is rejected under 35 U.S.C. § 103 as being
unpatentable over Masters.
Claim 9 is rejected under 35 U.S.C. § 103 as being
unpatentable over Masters in view of Drummond.
Finally, claims 6-10 are rejected under 35 U.S.C. § 103 as
being unpatentable over Drummond in view of Masters.
We refer to the brief and reply brief and to the answer for
a complete discussion of the opposing viewpoints expressed by the
appellant and by the examiner concerning the above noted
rejections.
OPINION
We cannot sustain any of these rejections.
Concerning the Section 112, second paragraph, rejection, the
examiner has incorrectly determined that the claim 7 phrase “a
laser” renders this claim (as well as claim 8 which depends
therefrom) indefinite as to whether the recited laser is the same
as or different from the laser recited in parent claim 6. From
our perspective, claim 7 is properly interpreted as encompassing
either of these embodiments. Therefore, the claim is merely
broad, and it is well settled that breadth is not indefiniteness.
In re Gardner, 427 F.2d 786, 788, 166 USPQ 138, 140 (CCPA 1970).
Appeal No. 2000-0477
Application No. 08/834,410
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In light of the foregoing, the examiner’s Section 112,
second paragraph, rejection of claims 7 and 8 cannot be
sustained.
As for the Section 102 rejection, it is the examiner’s
position that Masters discloses each of the features recited in
rejected claims 6-8. In this regard, the examiner points out,
for example, that patentee teaches providing particles in the
form of a slurry, using inkjet printing technology to deliver
particles to a desired point, and fusing particles with a laser.
The examiner then argues that the here claimed evaporating and
sintering steps would be inherently practiced when using a laser
to fuse particles delivered in the form of a slurry via an ink
jet printer.
Even assuming Masters discloses each of the features
referred to by the examiner, it is clear that the examiner’s
finding of anticipation is improper. We here emphasize that, for
a Section 102 rejection to be proper, the applied reference must
clearly and unequivocally disclose the claimed invention or
direct those skilled in the art to the invention without any need
for picking, choosing, and combining various disclosures not
directly related to each other by the teachings of the reference.
In re Arkley, 455 F.2d 586, 587-88, 172 USPQ 524, 526
Appeal No. 2000-0477
Application No. 08/834,410
5
(CCPA 1972). Here, the several features referred to by the
examiner are not clearly and unequivocally disclosed by Masters
as a combination of method steps in accordance with the rejected
claims. Similarly, these various disclosed features are not
directly related to each other by patentee’s teachings. Thus, it
is apparent that the features in question are combinable, if at
all, only from the perspective of an artisan with ordinary skill
at the time the appellant’s invention was made via the exercise
of selectively picking, choosing and combining various
disclosures of the Masters reference. Such an exercise may fall
within the scope of obviousness but certainly not anticipation.
Id.
For these reasons, we cannot sustain the examiner’s Section
102 rejection of claims 6-8 as being anticipated by Masters.
The above discussed deficiency of Masters vis-à-vis
anticipation is not cured in the Section 103 rejections of claim
10 over Masters or of claim 9 over Masters in view of Drummond.
This is because the conclusions of obviousness made by the
examiner in these rejections unquestionably do not relate to the
issue of combining various features disclosed in the Masters
reference in such a manner as to achieve the method defined by
Appeal No. 2000-0477
Application No. 08/834,410
2For clarification purposes, we point out that the now-dropped
alternative Section 103 rejection of claims 6-8 over Masters also did
not involve a conclusion of obviousness with respect to combining
certain of patentee’s disclosed features such as an inkjet printer,
particles in the form of a slurry and a laser for fusing particles in
order to sinter them together. Instead, this now-dropped rejection,
in essence, replaced the examiner’s previously mentioned inherency
theory (i.e., regarding the appellant’s claimed evaporating and
sintering steps) with an alternative theory based on obviousness.
6
independent claim 6.2 It follows that we also cannot sustain the
Section 103 rejection of claim 10 as being unpatentable over
Masters or the Section 103 rejection of claim 9 as being
unpatentable over Masters in view of Drummond.
Finally, the Section 103 rejection of claims 6-10 as being
unpatentable over Drummond in view of Masters likewise cannot be
sustained. This is because the rejection is fatally flawed by
the examiner’s position that the laser annealing step of Drummond
corresponds to the laser sintering step of the appealed claims.
Utterly no support for this position has been presented by the
examiner. On the other hand, the appellant has attached to his
reply brief definitions of the terms “anneal” and “sintering”
which unquestionably reflect that an annealing step may be
completely unrelated to the here claimed sintering step. On this
record, the examiner quite plainly has failed to carry her burden
of establishing a prima facie case for her previously mentioned
position.
Appeal No. 2000-0477
Application No. 08/834,410
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The decision of the examiner is reversed.
REVERSED
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHUNG K. PAK ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
CATHERINE TIMM )
Administrative Patent Judge )
BRG:hh
Appeal No. 2000-0477
Application No. 08/834,410
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U.S. PHILIPS CORP.
580 WHITE PLAINS RD.
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