Ex Parte Steingart et alDownload PDFPatent Trial and Appeal BoardMar 16, 201713208992 (P.T.A.B. Mar. 16, 2017) Copy Citation 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. 2010508-0075 (GEO-030) 9146 EXAMINER LAUGHLIN, NATHAN L ART UNIT PAPER NUMBER 2126 MAIL DATE DELIVERY MODE 13/208,992 08/12/2011 22514 7590 3D Systems, Inc. 3D Systems, Inc. 333 Three D Systems Circle Rock Hill, SC 29730 03/16/2017 Robert Steingart 03/16/2017 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 PATENT TRIAL AND APPEAL BOARD Ex parte ROBERT STEINGART and DAVID TZU-WEI CHEN Appeal 2016-008027 Application 13/208,992 Technology Center 2100 Before BRUCE R. WINSOR, LINZY T. McCARTNEY, and NATHAN A. ENGELS, Administrative Patent Judges. PER CURIAM. DECISION ON APPEAL Appellants1 appeal under 35 U.S.C. § 134(a) from the non-final rejection of claims 1—4, 6—11, and 15—26. We have jurisdiction under 35 U.S.C. § 6(b). Claims 5 and 12—14 are canceled. See App. Br. 24—25 (Claims App’x). We affirm. 1 Appellants identify 3D Systems, Inc. as the real party in interest. App. Br. 2. Appeal 2016-008027 Application 13/208,992 STATEMENT OF THE CASE The Invention Appellants’ invention “relates generally to rapid prototyping (additive manufacturing) systems. More particularly, in certain embodiments, the invention relates to systems for manufacture of non-homogeneous articles using 3D voxel-based models and a rapid prototyping device.” Spec. 12. Claims 1 and 21 are independent. Claim 1 is illustrative of the subject matter on appeal: 1. A method for manufacturing a non-homogeneous object, the method comprising the steps of: (a) creating, via a voxel-based modeling system, a 3D voxel representation of the nonhomogeneous object, wherein the 3D voxel representation comprises a multi dimensional array of voxel elements, wherein each voxel element of the multi-dimensional array of voxel elements is assigned one or more respective values representing one or more prescribed physical properties M, wherein a first value of the one or more respective values is assigned one of the following prescribed physical properties: color, translucency, and hardness; (b) modifying, via the voxel-based modeling system, in accordance with feedback from a user interface associated with the voxel-based modeling system, a geometric shape of the 3D voxel representation of the non-homogeneous object; (c) using the modified 3D voxel representation to: define, by a processor of a computing device, a set of 3D dots to produce a shape of each of a plurality of successive Z- layers of the non-homogenous object, and define, by the processor, for each 3D dot of each set of 3D dots of each Z-layer of the plurality of successive Z-layers, 2 Appeal 2016-008027 Application 13/208,992 one or more respective prescribed physical properties from the one or more assigned physical properties M of a plurality of respective voxel elements corresponding to the 3D dot; (d) defining, by the processor, for each 3D dot of the set of 3D dots of each Z-layer of the plurality of successive Z- layers, a respective transfer function T(M) that identifies at least one of a pigment, an ink, and a resin to produce a material having the one or more respective prescribed physical properties; and (e) providing instructions to a 3D printer to produce the non-homogenous object, wherein producing the non- homogenous object comprises depositing, for each dot of the set of 3D dots of each layer of the plurality of successive Z- layers of the non-homogenous object the at least one of the pigment the ink, and the resin identified by the respective transfer function. See App. Br. 23—24 (Claims App’x). Rejections on Appeal2 Claims 1, 4, 6—8, 11, 16—18, 20—22, 25, and 26 stand rejected under 35 U.S.C. § 103(a)3 as unpatentable over Campbell et al. (US 2003/0175410 Al; published Sept. 18, 2003) (“Campbell”), Steingart et al. (US 2008/0261165 Al; published Oct. 23, 2008) (“Steingart”), and Gubkin et al. (US 2005/0151734 Al; published July 14, 2005) (“Gubkin”). See Non-Final Act. 5—16. 2 A rejection of claims 1—4, 6—11, and 15—26 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement, is withdrawn. See Ans. 2. 3 All rejections are under the provisions of 35 U.S.C. in effect prior to the effective date of the Leahy-Smith America Invents Act of 2011. Non-Final Act 2. 3 Appeal 2016-008027 Application 13/208,992 Claims 2 and 3 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Campbell, Steingart, Gubkin, and Xiao J. Wu et al., Heterogeneous Object Slicing with Geometric Contour Constraint, 6(1) Computer-Aided Design and Applications 137-45 (2009) (“Wu”). See id. at 17-18. Claims 8, 17, and 18 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Campbell, Steingart, Gubkin, and Tochimoto et al. (US 2002/0167101 Al; published Nov. 14, 2002) (“Tochimoto”). See id. at 18— 19. Claim 9 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Campbell, Steingart, Gubkin, Tochimoto, and Brodkin et al. (US 2010/0323328 Al; published Dec. 23, 2010) (“Brodkin”). See id. at 19-20. Claim 10 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Campbell, Steingart, Gubkin, and Silverbrook (US 2007/0150088 Al; published June 28, 2007). See Non-Final Act. 20-21. Claim 15 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Campbell, Steingart, Gubkin, and Nikolskiy et al. (US 6,633,789 Bl; issued Oct. 14, 2003) (“Nikolskiy”). See id. at 21—22. Claims 23 and 24 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Campbell, Steingart, Gubkin, and Shih et al. (US 6,421,048 Bl; issued July 16, 2002) (“Shih”). See id. at 22. 4 Appeal 2016-008027 Application 13/208,992 The Record Rather than repeat the arguments here, we refer to the Appeal Brief (“App. Br.” filed Dec. 1, 2015),4 5Reply Brief (“Reply Br.” filed Aug. 24, 2016) and the Specification (“Spec.” filed Aug. 12, 2011) for the positions of Appellants and the Non-Final Office Action (“Non-Final Act.” mailed May 19, 2015) and Examiner’s Answer (“Ans.” mailed June 24, 2016) for the reasoning, findings, and conclusions of the Examiner. Only those arguments actually made by Appellants have been considered in this decision. Arguments that Appellants did not make in the Appeal Brief have not been considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2015). ISSUES The issues presented by Appellants’ contentions are as follows: Issue 1: Does the Examiner err in finding that Campbell teaches or suggests a “3D dot,” as recited in limitations (c), (d), and (e) of claim 1? Issue 2\ Does the Examiner err because Campbell does not teach or suggest using voxels for detailed modification of models and printing of said modified voxel-based models, as recited in limitation (b) of claim 1 ? 4 The Appeal Brief numbers each page (except for the title page), including appendix, as page 22. We refer to the pages of the Appeal Brief and its appendix as if numbered consecutively from 1 to 27, with the title page being referred to as “App. Br. 1” and the final page of the “Claims Appendix” being referred to as “App. Br. 27.” 5 Appeal 2016-008027 Application 13/208,992 ANALYSIS We have reviewed the Examiner’s findings and explanations in light of Appellants’ arguments and contentions. We agree with the Examiner’s findings and explanations, and we adopt them as our own. The following discussion, findings, and conclusions are for emphasis. Issue 1 Appellants contend the Examiner errs in finding that Campbell teaches or suggests a “3D dot,” as recited in limitations (c), (d), and (e) of claim 1. See App. Br. 12—17. More specifically, Appellants argue because Campbell divides its model into layers based on . . . the droplet diameter . . . and deposits bio-ink based on the properties of each voxel, it cannot. . . disclose the set of 3D dots of claim 1, in which each 3D dot comprises one or more physical properties of a plurality of respective voxel elements corresponding to the 3D dot. App. Br. 15. We find Appellants’ argument unpersuasive because the argument is not commensurate with the broadest reasonable interpretation of the claimed “3D dot” and the cited teachings of Campbell. Claim 1 recites, in relevant part, “a plurality of respective voxel elements corresponding to the 3D dot.” Appellants’ Specification discloses that “[a] 3D dot can be any 3D structure that corresponds to one or more voxels” (Spec. 133). Appellants’ Specification also describes a “3D voxel representation” wherein each of a plurality of voxels is assigned one or more values representing one or more prescribed physical properties (Spec. 117), but the Specification does not explicitly disclose the term “voxel element'’ (emphasis added). See, e.g., Spec. Tflf 17—19, 33, 35, 44, 45. The Examiner 6 Appeal 2016-008027 Application 13/208,992 finds “[t]he term ‘voxel element’ is only defined in the claim as an element having physical properties and being some part of the representation” (Ans. 5). Accordingly, the Examiner finds “the interpretation of ‘voxel element’ can range from anything such as a portion of a voxel, one or more voxels or merely a property of a voxel” (Id.). Appellants argue the Examiner’s interpretation of “voxel element” is erroneous because it is overly broad and inconsistent with the term’s usage in the Specification and the prosecution history. See Reply Br. 4—5. Appellants assert that, instead, “[cjlaim 1 . . . makes clear what is meant by the term ‘voxel element’ — a voxel element is a unit (voxel) making up the multi-dimensional array of the 3D voxel representation” (Id. at 4). We find Appellants’ argument unpersuasive. Even if we adopt arguendo, and without deciding, Appellants’ proposed interpretation of the claimed “voxel element,” Appellants’ do not demonstrate error in the Examiner’s rejection. In other words, even if “voxel element” is limited to a voxel (one or more of which make up the multi-dimensional array of a 3D voxel representation), the claimed “voxel elements” encompass Campbell’s voxels. There is no disagreement between the Examiner and Appellants that the term “voxel element” encompasses a voxel. See Reply Br. at 4 (“[A] voxel element is a unit (voxel) making up the multi-dimensional array of the 3D voxel representation.”); Ans. 5 (“The interpretation of ‘voxel element’ can [include]. . . one or more voxels.”). Therefore, as the claim recites “a plurality of respective voxel elements corresponding to the 3D dot,” we conclude a broad but reasonable interpretation of “3D dot” encompasses any 3D structure that corresponds to two or more voxels. 7 Appeal 2016-008027 Application 13/208,992 Accordingly, we find no error in the Examiner’s broad but reasonable interpretation of the claimed “3D dot” as encompassing Campbell’s disclosure of a plurality of voxels of a pass during which bio-ink(s) or solution(s) are deposited to create a layer (or part of a layer) of a 3D biomimetic scaffold. See Non-Final Act. 5—7 (citing Campbell Tflf 151—56, 233); Ans. 5. More specifically, Campbell divides the volume of the scaffold into discrete cube units, i.e., voxels, each of which has properties and a composition that can be used to determine bio-ink(s) and/or other solution(s) to be dispensed in that voxel. See Campbell 151, 152 (“[A] mixture-planning module 114 configured to determine a volume of bio-ink and/or other solution to be dispensed in each voxel based on the properties and/or components of the each voxel.”). Furthermore, Campbell discloses a plurality of passes, during each of which a plurality of voxels having one or more bio-ink(s) or solution(s) can be deposited to form part or all of a layer of the scaffold. See id. 1155 (“For example, one deposition strategy may be to deposit every other voxel in a layer in one pass over the surface 22 and in a second pass over the surface 22, deposit the remaining voxels. . . . [A] deposition strategy may specify that one or more bio-inks or solutions are deposited for a layer in a first pass and additional bio-inks are deposited in one or more subsequent passes.”). Accordingly, Campbell’s plurality of voxels in a pass satisfies the claimed “3D dot” because it forms a layer (or portion of a layer) of a biomimetic scaffold and corresponds to two or more voxels. In addition, contrary to Appellants’ argument that Campbell does not disclose one or more physical properties of the plurality of respective voxel elements corresponding to the 3D dot, a single pass in Campbell satisfies this limitation by depositing one or more bio-inks or solutions in the 8 Appeal 2016-008027 Application 13/208,992 plurality of respective voxels based on the voxels’ properties and/or composition. See, e.g., Campbell H 152, 155. Appellants further argue that by dividing the model into a corresponding number of voxels based on the identified droplet diameter, “Campbell discloses STL-like5 techniques, which, as described in the Specification as filed, are remedied by the present claims” (App. Br. 15). We find Appellants’ argument unpersuasive because it is not commensurate with the claim scope. “The invention disclosed in [Appellants’] written description may be outstanding in its field, but the name of the game is the claim,” In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (quoting Giles Sutherland Rich, Extent of Protection and Interpretation of Claims— American Perspectives, 21 Inf 1 Rev. Indus. Prop. & Copyright L. 497, 499 (1990)). As is the case here, “[although operational characteristics of [an invention] may be apparent from the specification, we will not read such characteristics into the claims when they cannot be fairly connected to the [language] recited in the claims,” Id. at 1368; see In re Self, 671 F.2d 1344, 1348 (CCPA 1982). In view of the foregoing, Appellants’ arguments have not persuaded us the Examiner errs in finding that Campbell broadly but reasonably teaches or suggests limitations (c), (d), and (e) of claim 1, including the recited “3D dot.” Issue 2 Appellants further argue “Campbell’s voxels are merely used for printing objects and not, as in the claimed invention, for detailed 5 “STL” is an acronym for Stereo Lithography File. Spec. 112. 9 Appeal 2016-008027 Application 13/208,992 modification of models and printing of said modified voxel-based models” (App. Br. 14). Appellants’ argument improperly attacks Campbell individually and fails to substantively address what a person of ordinary skill would have understood from the combined teachings of Campbell, Steingart, and Gubkin. See In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“one cannot show non-obviousness by attacking references individually where, as here, the rejections are based on combinations of references”); Ans. 5. Contrary to Appellants’ arguments, “Campbell was not used to shows detailed modifications of a voxel model” (Ans. 5). Rather, the Examiner relies on Gubkin to teach or suggest the limitation at issue. See id.', Non-Final Act. 8— 9 (citing Gubkin || 11, 13, 14, 18, 40). Accordingly, because Appellants’ argument does not specifically address or rebut the Examiner’s findings as to Gubkin or the combined teachings of Campbell, Steingart, and Gubkin, we find the argument unpersuasive. Summary For the reasons stated above, Appellants have not persuaded us the Examiner errs in the rejection of claim 1. Accordingly, we sustain the Examiner’s rejection of claim 1, as well as the rejection of independent claim 21 and dependent claims 2-4, 6—11, 15—20, and 22—26, which were not argued separately with particularity beyond the arguments advanced for claim 1. See App. Br. 17—21; Reply Br. 3—5. 10 Appeal 2016-008027 Application 13/208,992 DECISION The decision of the Examiner to reject claims 1—4, 6—11, and 15—26 is affirmed. 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). See 37 C.F.R. §§ 1.136(a)(l)(iv), 41.50(f), 41.52(b). AFFIRMED 11 Copy with citationCopy as parenthetical citation