Steingart, Robert et al.

Patent Trials and Appeals Board

May 15, 2020

13208992 - (R) (P.T.A.B. May. 15, 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. 13/208,992 08/12/2011 Robert Steingart 2010508-0075 (GEO-030) 9146 22514 7590 05/15/2020 3D Systems, Inc. 3D Systems, Inc. 333 Three D Systems Circle Rock Hill, SC 29730 EXAMINER LAUGHLIN, NATHAN L ART UNIT PAPER NUMBER 2118 MAIL DATE DELIVERY MODE 05/15/2020 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 T. CHEN ____________ Appeal 2019-000206 Application 13/208,992 Technology Center 2100 ____________ Before JOHN A. JEFFERY, BETH Z. SHAW, and JOHN D. HAMANN, Administrative Patent Judges. JEFFERY, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant requests rehearing of our decision dated March 24, 2020 (“Dec.”), where we, among other things, affirmed the Examiner’s obviousness rejections of (1) claims 1, 4, 6-8, 11, 16-18, 20-22, 25, and 26 over Campbell, Steingart, and Gubkin; (2) claims 2 and 3 over Campbell, Gubkin, Steingart, and Wang; (3) claims 8, 17, and 18 over Campbell, Steingart, Gubkin, and Tochimoto; (4) claim 9 over Campbell, Steingart, Gubkin, Tochimoto, and Brodkin; (5) claim 10 over Campbell, Steingart, Gubkin, and Silverbrook; (6) claim 15 over Campbell, Steingart, Gubkin, and Nikolskiy; (7) claims 23 and 24 over Campbell, Steingart, Gubkin, and Appeal 2019-000206 Application 13/208,992 2 Shih.1,2 Request for Rehearing filed Apr. 24, 2020 (“Req. Reh’g”). In the Request, Appellant contends that our decision overlooked certain (1) rules in the Manual of Patent Examining Procedure (MPEP),3 and (2) claim limitations. Req. Reh’g 5. According to Appellant, in affirming the Examiner’s obviousness rejections, we allegedly misread and/or misapplied a “critical section” of the MPEP and the Board’s decision in the earlier appeal. Req. Reh’g 5-8. For the reasons noted below, we deny the request to modify our decision. The Law of the Case Doctrine Despite Appellant’s arguments to the contrary (Req. Reh’g 5-6), we properly applied MPEP § 706.07(h)(XI)(A) mandating that the Board’s decision becomes the “law of the case” in that it is controlling on the application under appeal and later related applications. See Dec. 13. According to Appellant, not only is this MPEP section inapplicable to de novo appeals, it does not indicate that an earlier decision is binding in a subsequent appeal, let alone when claims are amended after the earlier appeal as is the case here. Req. Reh’g 5-6. These arguments are unavailing. As we indicated on page 13 of our earlier decision that is incorporated by reference here under 37 C.F.R. 1 These references are cited in full on pages 4 and 5 of our earlier decision and their citations are omitted here for brevity. 2 We also reversed the Examiner’s written description and enablement rejections, and did not reach the Examiner’s alternative obviousness rejections that included Appellant’s admitted prior art. See Dec. 6-11, 17. 3 As noted on page 13 of our earlier decision, we refer to the 9th edition of MPEP, Revision 08.2017 dated January 2018. Appeal 2019-000206 Application 13/208,992 3 § 41.52(a)(1), we first noted that claim 1 at issue in this appeal is identical to claim 1 that was at issue in the earlier appeal except for the limitation reciting “each 3D dot comprising a three-dimensional grid of voxels, wherein each voxel constitutes a voxel element of the 3D dot” (“the voxel grid limitation”). We further noted that, in the earlier appeal, the Board affirmed the Examiner’s obviousness rejection of then-existing claim 1 over the same prior art references at issue here, namely Campbell, Steingart, and Gubkin. Dec. 13. To be sure, where, as here, claims are amended after an earlier Board decision, a new record is effectively created for our review that presents a new patentability question. See In re Russell, 439 F.2d 1228, 1230 (CCPA 1971). Therefore, despite the same prior art references applied in the obviousness rejections in the earlier appeal, and the substantial overlapping claim language at issue in both appeals, the later claim amendment created a new record that we reviewed de novo in reaching our decision with respect to the new patentability question raised in this appeal. Nevertheless, the earlier Board decision is the law of the case for overlapping issues and, therefore, is binding in this case and later related applications at least with respect to those issues, despite Appellant’s contentions to the contrary. See Req. Reh’g 5-6. In this sense, the “law of the case” principles articulated in MPEP § 706.07(h)(XI)(A) are analogous to issue preclusion or collateral estoppel. See BLACK’S LAW DICTIONARY (11th ed. 2019) (defining “law of the case” as “[t]he doctrine that when a point or question arising in the course of a lawsuit has been finally decided, the legal rule or principle announced as applicable to the facts governs the lawsuit in all its later stages and developments”); see also id. (defining Appeal 2019-000206 Application 13/208,992 4 “collateral estoppel” as “[t]he binding effect of a judgment as to matters actually litigated and determined in one action on later controversies between the parties involving a different claim from that on which the original judgment was based”); Nestle USA, Inc. v. Steuben Foods, Inc., 884 F.3d 1350, 1352 (Fed. Cir. 2018) (“[O]ur precedent makes clear that collateral estoppel is not limited to patent claims that are identical. Rather, it is the identity of the issues that were litigated that determines whether collateral estoppel should apply.”) (internal quotations omitted; emphasis added); DBN Holding, Inc. v. Int’l Trade Commission, 755 F. App’x 993, 996 (Fed. Cir. 2018) (unpublished) (“The law of the case doctrine refers to courts’ general practice of refusing to reconsider issues already decided.”). Here, the earlier Board panel decided that the Examiner did not err in rejecting then-existing claim 1 as obvious over Campbell, Steingart, and Gubkin. See Ex parte Steingart, Appeal No. 2016-008027 (PTAB Mar. 16, 2017). That is, the earlier Board panel found no error in the Examiner’s factual findings and legal conclusions with respect to the respective disclosures of Campbell, Steingart, and Gubkin for teaching or suggesting the recited limitations in concluding that these limitations would have been obvious-limitations that are identical to those at issue here except for the voxel grid limitation. See id. Accordingly, the law of the case doctrine applies here with respect to those overlapping issues that were already decided. Given this substantial overlap, we noted on page 13 of our earlier decision that the key question before us in the present appeal is whether the Examiner erred by finding that Campbell also teaches or suggests the newly- added voxel grid limitation-the only substantial difference in the Appeal 2019-000206 Application 13/208,992 5 Examiner’s findings and conclusions that were made in connection with the obviousness rejections in both appeals. Our reliance on the law of the case doctrine articulated in MPEP § 706.07(h)(XI)(A) is, therefore, appropriate for the overlapping issues in both appeals. The Voxel Grid Limitation Despite Appellant’s arguments to the contrary (Req. Reh’g 6-8), we are not persuaded that we misapplied the earlier panel’s decision or overlooked the voxel grid limitation in affirming the Examiner’s obviousness rejection. First, our issue statement on page 12 of our Decision acknowledges explicitly the claim’s requirement that each dot comprises a 3D grid of voxels, as well as the other disputed limitations that refer to these dots. Second, although we acknowledged that the voxel grid limitation was added after the earlier panel’s decision, we nonetheless were unpersuaded of error in the Examiner’s findings and conclusions that forming each dot of a 3D grid of voxels would have been at least an obvious variation given Campbell’s teachings-teachings that the earlier panel also cited in reaching its decision, albeit lacking the voxel grid limitation. Dec. 13-16 (citing page 8 of the earlier panel’s decision). That is, we cited the earlier panel’s findings regarding Campbell’s teachings because that disclosure from Campbell is also relevant to the Examiner’s conclusion that forming each dot of a 3D grid of voxels would have been obvious, as well as the obviousness of other disputed limitations that refer to these dots. To the extent Appellant contends that the Board’s factual findings regarding what a Appeal 2019-000206 Application 13/208,992 6 prior art reference teaches or suggests cannot be relied on in later Board decisions as we did here (see Req. Reh’g 6-7), we disagree. Appellant’s contention that it would ostensibly be “impossible” to deposit a dot’s individual “cubes” without first breaking the dot’s Rubik’s Cube-like structure with 27 cubes (see Req. Reh’g 7-8) is unavailing. Not only is this argument not commensurate with the scope of the claim that does not specify the size or extent of each dot’s 3D voxel grid, it is unsubstantiated by any persuasive evidence on this record and, therefore, has little probative value. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also Enzo Biochem, Inc. v. Gen-Probe, Inc., 424 F.3d 1276, 1284 (Fed. Cir. 2005) (“Attorney argument is no substitute for evidence.”). That said, if Appellant’s “impossibility” theory was substantiated by concrete factual evidence, such as valid and verifiable test results and corroborated expert declarations, such evidence of non-obviousness would create a new record that would present a new patentability question based on that evidence-despite the same cited prior art references. See Russell, 439 F.2d at 1230. Indeed, such evidence of non-obviousness could be the most probative and cogent evidence in the record in this regard. See Leo Pharm. Products, Ltd. v. Rea, 726 F.3d 1346, 1358 (Fed. Cir. 2013). But that is not the case here. On this record, we are not persuaded that we misapprehended or overlooked the points raised in the rehearing request regarding our decision affirming the Examiner’s obviousness rejections. Therefore, we deny Appellant’s request to rehear our decision in that respect. Appeal 2019-000206 Application 13/208,992 7 CONCLUSION Outcome of Decision on Rehearing: Claims Rejected 35 U.S.C. § Reference(s)/ Basis Denied Granted 1-4, 6- 11, 15-26 112, first paragraph Written Description4 1-4, 6- 11, 15-26 112, first paragraph Enablement 1, 4, 6-8, 11, 16- 18, 20- 22, 25, 26 103 Campbell, Steingart, Gubkin 1, 4, 6-8, 11, 16-18, 20-22, 25, 26 2, 3 103 Campbell, Gubkin, Steingart, Wang 2, 3 8, 17, 18 103 Campbell, Steingart, Gubkin, Tochimoto 8, 17, 18 9 103 Campbell, Steingart, Gubkin, Tochimoto, Brodkin 9 10 103 Campbell, Steingart, Gubkin, Silverbrook 10 4 Appellant did not request rehearing of our decision reversing the Examiner’s written description and enablement rejections. Accordingly, we leave the grant and denial columns blank for those rejections. Appeal 2019-000206 Application 13/208,992 8 15 103 Campbell, Steingart, Gubkin, Nikolskiy 15 1, 4, 6-8, 11, 16- 18, 20- 22, 25, 26 103 Campbell, Steingart, Gubkin, APA5 2, 3 103 Campbell, Steingart, Gubkin, APA, Wang 8, 17, 18 103 Campbell, Steingart, Gubkin, APA, Tochimoto 9 103 Campbell, Steingart, Gubkin, APA, Brodkin 15 103 Campbell, Steingart, Gubkin, APA, Nikolskiy 23, 24 103 Campbell, Steingart, Gubkin, APA, Shih Overall Outcome 1-4, 6-11, 15- 26 5 Because we did not reach the Examiner’s alternative obviousness rejections that included APA as noted on page 18 of our earlier decision, we leave the associated outcome columns blank in both tables. Appeal 2019-000206 Application 13/208,992 9 Final Outcome of Appeal after Rehearing: Claims Rejected 35 U.S.C. § Reference(s) /Basis Affirmed Reversed 1-4, 6- 11, 15- 26 112, first paragraph Written Description 1-4, 6- 11, 15-26 1-4, 6- 11, 15- 26 112, first paragraph Enablement 1-4, 6- 11, 15-26 1, 4, 6-8, 11, 16- 18, 20- 22, 25, 26 103 Campbell, Steingart, Gubkin 1, 4, 6-8, 11, 16-18, 20- 22, 25, 26 2, 3 103 Campbell, Gubkin, Steingart, Wang 2, 3 8, 17, 18 103 Campbell, Steingart, Gubkin, Tochimoto 8, 17, 18 9 103 Campbell, Steingart, Gubkin, Tochimoto, Brodkin 9 10 103 Campbell, Steingart, Gubkin, Silverbrook 10 15 103 Campbell, Steingart, 15 Appeal 2019-000206 Application 13/208,992 10 Gubkin, Nikolskiy 23, 24 103 Campbell, Steingart, Gubkin, Shih 23, 24 1, 4, 6-8, 11, 16- 18, 20- 22, 25, 26 103 Campbell, Steingart, Gubkin, APA 2, 3 103 Campbell, Steingart, Gubkin, APA, Wang 8, 17, 18 103 Campbell, Steingart, Gubkin, APA, Tochimoto 9 103 Campbell, Steingart, Gubkin, APA, Brodkin 10 103 Campbell, Steingart, Gubkin, APA, Silverbrook 15 103 Campbell, Steingart, Gubkin, APA, Nikolskiy 23, 24 103 Campbell, Steingart, Gubkin, APA, Shih Appeal 2019-000206 Application 13/208,992 11 Overall Outcome 1-4, 6-11, 15-26 DENIED