12592162 - (D) (P.T.A.B. Mar. 30, 2020)

Keller, Peter et al.

Patent Trials and Appeals BoardMar 30, 2020

12592162 - (D) (P.T.A.B. Mar. 30, 2020)

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. 12/592,162 11/19/2009 Peter Keller 1415211.498US2 8722 21874 7590 03/30/2020 LOCKE LORD LLP P.O. BOX 55874 BOSTON, MA 02205 EXAMINER CHRISTIE, ROSS J ART UNIT PAPER NUMBER 1731 NOTIFICATION DATE DELIVERY MODE 03/30/2020 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): patent@lockelord.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PETER KELLER, THOMAS MATTES, MANDY GERSCH, JOHANN OBERHOFER, and ANTON MAYER Appeal 2019-000915 Application 12/592,162 Technology Center 1700 Before MICHAEL P. COLAIANNI, MICHAEL G. MCMANUS, and SHELDON M. MCGEE, Administrative Patent Judges. MCGEE, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 15–28, 31, and 32. We have jurisdiction. 35 U.S.C. § 6(b). Oral arguments were heard in this case on March 17, 2020. We reverse. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as EOS GMBH ELECTRO OPTICAL SYSTEMS. Appeal Br. 2. Appeal 2019-000915 Application 12/592,162 2 BACKGROUND The subject matter on appeal is directed to methods for labelling three-dimensional objects that have been manufactured from a powdered building material via a layer-wise manufacturing process using a high- energy beam technology such as selective layer sintering. See Appeal Br. 17, 20–21 (independent claims 15 and 31). The appealed subject matter also concerns a method for making a powder to be used in such layer-wise manufacturing processes. See id. at 21 (independent claim 32). Claim 15, reproduced below, is illustrative of the claimed subject matter: 15. A method for labelling three-dimensional objects that have been manufactured from a building material in powder form by a layer-wise manufacturing process, the method having the following steps: mixing a powder that is used as a building material of an object made in said layer-wise manufacturing process with at least one salt of a metal of the rare earths, wherein the salt has the property that it shows a luminescence when being irradiated with photons having a wavelength outside of the visible spectrum or with particle radiation, and wherein the salt either is colorless or is added in such a low proportion that no change of the color of the powder is observable, wherein the salt encodes the powder, and manufacturing three-dimensional objects by said layer- wise manufacturing process, wherein the mixture in powder form that results from said mixing is used as the building material throughout the object in said layer-additive manufacturing process, wherein said layer-wise manufacturing process is an additive manufacturing process using selective laser sintering or selective laser melting or other high-energy beam technology for melting, fusing or sintering. Appeal Br. 17 (Claims App’x, emphasis added). Appeal 2019-000915 Application 12/592,162 3 STATEMENT OF THE CASE The Examiner rejects all claims on appeal based on the combined disclosures of Smith (US 6,982,117 B2, issued January 3, 2006) and Kenney (US 2008/0138604 A1, published June 12, 2008), with or without additional prior art. Final Act. 3–18. Specifically, in rejecting independent claims 15, 31, and 32, the Examiner finds that Smith teaches each element of the claimed methods, except for the luminescent agent being “at least one salt of a metal of the rare earths.” Id. at 3–5, 9–15. The Examiner maps Smith’s “particle scattering colorant” to the claimed “powder” and Smith’s “electronic transition colorant” to the claimed agent that “shows a luminescence,” which the Examiner determines “is necessarily added in such a low proportion that no change of the color of the powder . . . is observable.” Id. at 3–4, 9–10, 12–13. To address the difference between Smith and the claimed subject matter, the Examiner turns to the disclosure of Kenney, which the Examiner finds discloses “suitable luminescent materials” including “oxides, sulfides and phosphates doped with a rare earth element.” See, e.g., id. at 5 (citing Kenney ¶ 92). Based on the combined disclosures of Smith and Kenney, the Examiner determines that the skilled artisan would have been motivated to modify the teachings of Smith by substituting Smith’s “electronic transition colorant” in favor of Kenney’s luminescent material. See, e.g., id. at 6. The Examiner reasons that the skilled artisan would have been so motivated because Smith and Kenney share a similar purpose––i.e., authentication and thwarting counterfeit activity. Id. Appellant argues, inter alia, that “Smith relates to providing color to an article or object, exactly the opposite of the invention at hand [] which is Appeal 2019-000915 Application 12/592,162 4 to remain colorless.” Appeal Br. 11. Appellant also argues that the Examiner’s finding that Smith’s electronic transition colorant encodes the powder “is flawed in that it is based upon a colorant, which the Examiner further incongruously states ‘is equivalent to Applicants’ claim term ‘a powder’.” Id. at 11–12. OPINION We reverse the rejections. Each of the independent claims require “mixing a powder that is used as [a] building material.” The Examiner maps Smith’s particle scattering colorant to the claimed powder. Final Act. 3–4. The Examiner has not established, however, that Smith’s particle scattering colorant is a powder that is used as the building material from which the three-dimensional object is made in the layer-wise manufacturing process. In fact, Smith teaches that “the particle scattering colorants . . . are dispersed as particles in a surrounding matrix.” Smith, 7:13–14. “The matrix in which the particle scattering colorant is dispersed can be either absorbing or non-absorbing in the visible spectral range.” Id. at 8:30–32. Example matrix materials include “carpets, clothing, wall paper, draperies, covering for furniture, polymer molded parts, [] coatings, [and] organic polymers.” Id. at 8:66–67. Smith teaches that the particle scattering colorant is loaded “in the host matrix” in various levels “over a very wide range,” but that “very high loading levels of the particle scattering colorant can degrade mechanical properties” and, as such, “the volumetric loading level of the particle scattering colorant in the host matrix is preferably less [than] about 70%.” Id. at 9:33–46. Appeal 2019-000915 Application 12/592,162 5 Smith also teaches that when particle scattering colorants are used in the manufacture of polymer articles, “[t]he particle size of the particle scattering colorant, as well as other possible solid additives, should be sufficiently small that these particles do not settle appreciably during the fabrication of an article.” Id. at 37:1–22. Smith’s “rapid prototyping” of three-dimensional articles can include particle scattering colorants as “additives to the molten polymer.” Id. at 37:43–48. In other words, Smith teaches that its particle scattering colorant is merely one component of a composition, and not, by itself, the building material from which a three-dimensional object is made. In view of Smith’s teachings, we agree with Appellant (Appeal Br. 11–12) that the Examiner’s mapping of Smith’s particle scattering colorant to the claimed “powder” is flawed. Because the rejection of each independent claim suffers from this deficiency, we reverse the rejections of all claims on appeal. CONCLUSION The Examiner’s rejections are reversed. DECISION SUMMARY Claims Rejected 35 U.S.C. § Basis Affirmed Reversed 15–17, 20, 22–28, 31, 32 103(a) Smith, Kenney 15–17, 20, 22–28, 31, 32 18, 21 103(a) Smith, Kenney, Vanheusden 18, 21 19, 22 103(a) Smith, Kenney, Nara Machinery 19, 22 Overall Outcome 15–28, 31, 32 Appeal 2019-000915 Application 12/592,162 6 REVERSED