Steingart, Robert et al.

Patent Trials and Appeals Board

May 15, 2020

2019000206 (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
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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.
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§ 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
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“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
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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
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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.

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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.
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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.
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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
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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

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Overall
Outcome
1–4, 6–11,
15–26

DENIED