Ex Parte Tow

Patent Trial and Appeal Board

Aug 29, 2017

13761272 (P.T.A.B. Aug. 29, 2017)

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.
13/761,272 02/07/2013 Adam Perry Tow 384097.20001 1019
26418 7590 08/31/2017
RFFD SMTTH T T P
EXAMINER
P.O. BOX 488 (NYC)
PITTSBURGH, PA 15230-0488
LE, NINH V
ART UNIT PAPER NUMBER
1744
NOTIFICATION DATE DELIVERY MODE
08/31/2017 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):
ptoipinbox @reedsmith.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ADAM PERRY TOW
Appeal 2016-007722
Application 13/761,2721
Technology Center 1700
Before DONNA M. PRAISS, MONTE T. SQUIRE, and
BRIAN D. RANGE, Administrative Patent Judges.
RANGE, Administrative Patent Judge.
DECISION ON APPEAL
SUMMARY
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 7—17 and 19. We have jurisdiction. 35 U.S.C.
§ 6(b).
We REVERSE.
1 According to Appellant, the real party in interest is Mr. Adam Perry Tow.
Appellant states that “Mr. Tow is the CEO and co-founder of Seraph
Robotics Inc.” Appeal Br. 3.
Appeal 2016-007722
Application 13/761,272
STATEMENT OF THE CASE2
Appellant describes the invention as relating to advancements in the
field of three-dimensional fabrication also known as 3D printing. Appeal
Br. 3. In particular, according to Appellant’s Specification, the invention
makes use of a pellet based cartridge system to avoid problems of other 3D
printers. Spec. 16. Claims 7, 14, and 19, reproduced below with emphasis
added to certain key recitations, are the only independent claims on appeal
and are illustrative of the claimed subject matter:
7. A three dimensional fabricator comprising:
a control unit for receiving instructions from a fabrication
command unit and operating a material deposition tool head;
a cartridge bay configured to receive material cartridges;
a build surface configured to receive material deposited by
the material deposition tool head;
a first material heating chamber configured to receive
a plurality of materials or colors from the cartridge bay, mix
or fuse the plurality of materials or colors into a first mixture,
and extrude the first mixture to the material deposition tool
head for deposition on the build surface to form a three
dimensional structure according to a prescribed order and
prescribed pattern,
wherein the material deposition tool head comprises a
second material heating chamber and a deposition tip.
2 In this opinion, we refer to the Final Office Action dated May 8, 2015
(“Final Act.”), the Appeal Brief filed October 7, 2015 (“Appeal Br.”), the
Examiner’s Answer dated June 15, 2016 (“Ans.”), and the Reply Brief filed
August 8, 2016 (“Reply Br.”).
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Appeal 2016-007722
Application 13/761,272
14. A three dimensional fabricator comprising:
a material deposition tool head comprising a first deposition tip that is
mechanically or magnetically attached;
a control unit for receiving instructions from a fabrication command
unit and operating the material deposition tool head;
a second non-identical deposition tip;
a build surface for receiving material deposited by the material
deposition tool head;
wherein the control unit is configured to operate the material
deposition tool head to mechanically or magnetically disengage the first
deposition tip and mechanically or magnetically engage the second
deposition tip without user interaction during fabrication of a three
dimensional structure, to deposit material through at least two deposition tips
onto the build surface and form the three dimensional structure according to
a prescribed order and prescribed pattern.
19. A three dimensional fabricator comprising:
a control unit for receiving instructions from a fabrication command
unit and operating a material deposition tool head;
a build surface for receiving material deposited by the material
deposition tool head; and
at least one deposition tip attached to the material deposition tool
head with a portion of the tip being mechanically, electronically or
magnetically adjustable without user interaction to modify the tip
opening in shape or size during fabrication of a three dimensional
structure according to a prescribed order and prescribed pattern.
Appeal Br. 37, 38—39 (Claims App’x).
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Suenaga US 3,553,371 Jan. 5, 19713
3 The Examiner refers to this reference as “Taro.” See, e.g., Ans. 19.
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Appeal 2016-007722
Application 13/761,272
Barlage III et al.
(hereinafter “Barlage”)
Yang et al.
(hereinafter “Yang”)
Jang et al.
Sachs et al.
(hereinafter “Sachs”)
Fujiwara
Gothait et al.
US 2005/0139123 Al June 30, 2005
US 2006/0111807 Al May 25, 2006
US 5,784,279
US 6,280,784 B1 Aug. 28, 2001
US 6,405,095 B1 June 11, 2002
US 2004/0217186 Al Nov. 4, 2004
July 21, 1998
(hereinafter “Gothait”)
Kidu et al. US 2009/0170230 Al July 2, 2009
(hereinafter “Kidu”)
Menchik et al.
(hereinafter “Menchik”)
US 2010/0208016 Al Aug. 19, 2010
REJECTIONS
The Examiner maintains the following rejections on appeal:
Rejection 1. Claims 7—13 under 35 U.S.C. § 103(a) as unpatentable
over Menchik in view of Jang or Yang and in further view of Barlage.
Ans. 4.
Rejection 2. Claims 14—17 under 35 U.S.C. § 103(a) as unpatentable
over Menchik in view of Gothait and in further view of Sachs. Id. at 13.
Rejection 3. Claim 19 under 35 U.S.C. § 103(a) as unpatentable over
Menchik in view of Gothait or Kidu or Fujiwara and in further view of
Suenaga. Id. at 17.
Rejection 4. Claims 14—17 and 19 under 35 U.S.C. § 112(a) as failing
to comply with the written description requirement. Id. at 21.
Rejection 5. Claims 14—17 and 19 under 35 U.S.C. § 112(b) as
indefinite. Id. at 22.
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Application 13/761,272
ANALYSIS
Rejection 1. The Examiner rejects claims 7—13 as obvious over
Menchik in view of Jang or Yang and in further view of Barlage. We focus
on independent claim 7.
We understand the Examiner’s rejection as presenting three
alternatives: combining Menchik and Barlage; or combining Menchik, Jang,
and Barlage; or combining Menchik, Yang, and Barlage. Ans. 5—8. We first
address the Menchik/Barlage combination.
The Examiner finds that Menchik discloses a three dimensional
fabricator (i.e., a 3D printer system) having most of the elements recited by
claim 7. Ans. 4—5. The Examiner finds that Menchik discloses the recited
mixing chamber of claim 7 because the building materials comprise, for
example, dyes, powders, photopolymers, and liquid. Appeal Br. 5. The
Examiner finds that these building materials are stored in disposable
cartridges, pressurized, and then extruded through tubing. Id. The Examiner
finds that this process will result in a certain degree of mixing and that the
tubes where the mixing occurs constitute claim 7’s recited “heating
chamber” configured to “mix or fuse the plurality of materials or colors into
a first mixture.” Id. at 5, 24—25; see also Ans. 29 (indicating that Menchik’s
tubings leading from the cartridges to the printing head are claim 7’s recited
“first material heating chamber”).
Appellant argues that Menchik’s tube and valve structure is best
characterized as “non-mixing” and that Menchik keeps its materials
“separate and distinct.” Appeal Br. 8—9. On the present record, we agree
with Appellant that the Examiner has not adequately explained how
Menchik teaches a “first material heating chamber . . . configured to . . . mix
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Application 13/761,272
or fuse the plurality of materials or colors into a first mixture.” Appeal Br.
37 (emphasis added). Rather, based on the Examiner’s findings, the mixture
that comprises Menchik’s building materials exists prior to entering
Menchik’s tubing. The Examiner cogently explains that the process of
forcing the materials into the tubing will result in mixing, but the Examiner
does not explain how this process will result in mixing or fusing “into a first
mixture” as recited by claim 7. In other words, Menchik’s “first mixture”
already exists in the cartridge/storage area. Because claim 7 requires mixing
or fusing of discrete components to create the first mixture, further mixing of
one pre-existing mixture does not equate to mixing “into a first mixture” as
recited by claim 7. Accordingly, we do not sustain the Examiner’s rejection
to the extent it is based solely on Menchik combined with Barlage.
As an alternative, the Examiner finds that Jang or Yang teach mixing
chambers as recited by claim 7 and concludes that it would have been
obvious to incorporate such a chamber. Ans. 5—7. The Examiner also finds
that Barlage “discloses that it is well-known in the art to have a building
material in liquid form ... by incorporating heating elements.” Id. at 8. The
Examiner finds that Menchik teaches building material in liquid form (id. at
5, 8) and concludes that it would have been obvious to heat the combined
Menchik/Jang and/or Menchik/Yang apparatus “for the purpose of allowing
said building and supporting materials to be in liquid form throughout the
manufacturing process as desired by Menchik” (id. at 9—10).
Appellant argues that the Examiner has not provided adequate reason
to combine heating elements into a Menchik/Jang and/or Menchik/Yang
apparatus. See generally Appeal Br. 13—21. Appellant argues that rather
than requiring a heating chamber, Menchik suggests building materials that
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Application 13/761,272
“are in liquid form to begin with.” Appeal Br. 18—19. A preponderance of
the evidence supports this argument. Menchik teaches, for example, that its
material may be “curable by electro-magnetic radiation and/or electron
beams etc.” (Menchik 130) rather than teaching material that is first heated
and later cooled for curing.
Appellant also argues that reason to combine a heating chamber is
lacking because both Jang and Yang discourage use of a heating chamber.
Appeal Br. 15—18. A preponderance of the evidence supports this argument
as well. See Jang 1:5 8—60 (explaining that melt extrusion based systems
“provided a relatively poor part accuracy”); Yang 1:51—62 (explaining that
melting requires expensive heating means and cannot be used to fabricate
“edible food items like cakes” as desired by Yang). Thus, based on the
record as a whole, we agree with Appellant that the Examiner has not
provided an adequate reason why a person of ordinary skill would have
added a heating element to Menchik/Jang or Menchik/Yang. Because each
of the Examiner’s alternatives is not adequately explained, we do not sustain
the rejection of claim 7. We also do not sustain the Examiner’s rejection of
claims 8—13 because of each of those claims depend from claim 7.
Rejection 2. The Examiner rejects claims 14—17 as obvious over
Menchik in view of Gothait and in further view of Sachs. Ans. 13. Claim
14 recites “a control unit. . . wherein the control unit is configured to . . .
operate the material deposition tool head to . . . disengage . . . and . . . engage
. . . during fabrication of a three dimensional structure.” Appeal Br. 38
(Claims App’x) (emphasis added). Appellant argues that this recitation is
not taught or suggested by the cited references because the Examiner relies
on Gothait (see, e.g., Ans. 14—16) and Gothait only teaches replacing a
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Application 13/761,272
nozzle after fabrication. Appeal Br. 25—26 (citing Gothait Fig. 3).
The Examiner responds by stating that the recitation “during
fabrication of a three dimensional structure” of claim 14 “does not
structurally limit the claimed apparatus.” Ans. 43. We disagree with this
claim construction. Claim 14 recites a control unit, and the Specification
indicates the control unit may be a computer. See Spec. 17. Claim 14
requires that this control unit be “configured to” (e.g., be programmed to)
“disengage” and “engage” “without user interaction during fabrication of a
three-dimensional structure.” We agree with Appellant that, on the present
record, the Examiner has not adequately explained how the cited references
teach or suggest a control unit having such a configuration. Accordingly, we
do not sustain the Examiner’s rejection of claim 14, and we do not sustain
the Examiner’s rejection of claims 15—17 because those claims depend from
claim 14.
Rejection 3. The Examiner rejects claim 19 as obvious over Menchik
in view of Gothait or Kidu or Fujiwara and in further view of Suenaga. Ans.
17. The Examiner finds that the combination of Menchik with Gothait,
Kidu, or Fijuwara is silent as to opening a nozzle without user interaction to
modify the nozzle opening in shape or size during fabrication. Ans. 19. The
Examiner finds, however, that Suenaga discloses a spray gun capable of
adjusting nozzle size/shape and concludes that it would have been obvious to
replace a nozzle of Menchik with Suenaga’s “entire spray gun ... for the
purpose of providing a means for controlling the flow volume or droplets
size of the deposition materials being dispensed . . . [and] facilitate the
creation of 3D objects. . . .” Ans. 20.
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Application 13/761,272
Suenaga is a 1971 patent directed to an ink based color copy machine.
Ans. 30-32; see also Suenaga Abstract. It does not teach 3D printing.
Appellant argues that a person of skill in the art would not have had reason
to combine Suenaga’s spray gun with a three dimensional fabricator because
while Suenaga “might have been viable for a pure liquid ink-based copy
machine [as described in Suenaga]. . . such a structure appears to be at least
impractical—if not impossible—for three dimensional fabricators that, in
most instances, use building materials of a much greater viscosity.” Id. at
Appeal Br. 32—33.
A reasonable expectation of success is a necessary part of a prima
facie case of obviousness. In re Vaeck, 947 F.2d 488, 493 (Fed. Cir. 1991);
see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (“a court must ask
whether the improvement is more than the predictable use of prior art
elements according to their established functions” (emphasis added)).
Whether or not a person of ordinary skill in the art would have had a
reasonable expectation that a particular combination of references would
work is a pure question of fact. Alza Corp. v. Mylan Labs., Inc., 464 F.3d
1286, 1289 (Fed. Cir. 2006).
Here, the Examiner does not adequately explain why a person of
ordinary skill in the art would have had a reasonable expectation of success
in combining the Suenaga spray gun with a 3D fabricator such as the
Menchik fabricator. Rather, the Examiner responds to Appellant’s argument
by stating that Suenaga does not teach that its spray gun is not compatible
with the materials of Menchik. Ans. 54—55. This response improperly
attempts to shift the Examiner’s burden of providing a reason for reasonable
expectation of success in the first instance. The Examiner also states that the
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Application 13/761,272
combination “would be capable of fabricating three dimensional structures”;
but the Examiner provides no reasoning as to why a person of ordinary skill
would have understood this to be the case. Because the Examiner does not
adequately explain why a person of ordinary skill in the art would have had
a reasonable expectation of success in combining the teachings of Suenaga
and Menchik, we do not sustain the Examiner’s rejection of claim 19.
Rejection 4. The Examiner rejects claim 14—17 and 19 as failing to
comply with the written description requirement of 35 U.S.C. § 112. Ans.
21. The Examiner states that independent claims 14 and 19 each recite
“without user interaction” but this recitation is not disclosed in the original
specification or claims. Id. at 21—22.
Appellant explains that paragraph 60 of the Specification teaches
changing deposition tips with an “automatic mechanism” and “without
individual instructions.” Reply Br. 6. Appellant also explains that
paragraph 6 of the Specification teaches adjusting the shape and/or size of
the deposition head “preferably, automatically.” Id. at 7. We agree with the
Appellant that the Specification discloses “without user interaction” as
recited in claims 14 and 19 sufficiently to satisfy the written description
requirement. We therefore do not sustain this rejection.
Rejection 5. The Examiner rejects claims 14—17 and 19 as indefinite
under 35 U.S.C. § 112. Ans. 22—23. The Examiner first states that the
Specification provides no standard to determine whether the second tip is
“non-identical” as recited in claim 14. Id. We agree with Appellant,
however, that given the context of the claim and the Specification, “non­
identical” as recited in claim 14 means tips that are different. Reply Br. 9—
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10. The tips could be, for example, different in size or shape. Id. The
recitation is not unclear.
The Examiner also states that it is unclear what is meant by “without
user interaction” as recited in claims and 14 and 19. Ans. 22—23. We agree
with Appellant, however, that given the context of the claims and the
Specification, “without user interaction” means that the control unit executes
the steps to be performed “without user interaction” in an automatic fashion,
i.e., without the involvement of the person operating the three dimensional
fabricator. Reply Br. 10. This recitation is also not unclear.
We therefore do not sustain the Examiner’s indefiniteness rejection.
DECISION
For the above reasons, we reverse the Examiner’s rejection of claims
7-17 and 19.
REVERSED
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