Xerox CorporationDownload PDFPatent Trials and Appeals BoardOct 25, 20212020005712 (P.T.A.B. Oct. 25, 2021) 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. 15/200,964 07/01/2016 Erwin Ruiz 1776-0766 1033 76360 7590 10/25/2021 MAGINOT, MOORE & BECK LLP ONE INDIANA SQUARE SUITE 2200 INDIANAPOLIS, IN 46204 EXAMINER REDDY, SATHAVARAM I ART UNIT PAPER NUMBER 1785 MAIL DATE DELIVERY MODE 10/25/2021 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 ERWIN RUIZ, RON E. DUFORT, LINN C. HOOVER, MANDAKINI KANUNGO, and PATRICK J. HOWE Appeal 2020-005712 Application 15/200,964 Technology Center 1700 ____________ Before DONNA M. PRAISS, JENNIFER R. GUPTA, and LILAN REN, Administrative Patent Judges. REN, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 8, 9, and 11. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM and enter a new ground of rejection based on indefiniteness pursuant to 37 C.F.R. § 41.50(b). 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Xerox Corporation as the real party in interest. Appeal Br. 3. Appeal 2020-005712 Application 15/200,964 2 CLAIMED SUBJECT MATTER Claim 1, reproduced below, are illustrative of the claimed subject matter: 1. A three-dimensionally printed object comprising: a part formed with a build material; a first arrangement formed with a first support material that encloses and surrounds a portion of the part formed with the build material, the portion of the part being less than the part as a whole and the first support material being different than the build material; and a second arrangement formed with a second support material that encloses and surrounds the first arrangement formed with the first support material and the portion of the part enclosed and surrounded by the first arrangement so the first arrangement formed with the first support material is interposed between the portion of the part formed with the build material and the second arrangement formed with the second support material, the second support material being different than the first support material and the build material and the second arrangement formed with the second support material being removable by a first process that leaves the portion of the part formed with the build material enclosed and surrounded by the first arrangement formed with the first support material after the second arrangement of the second support material has been removed so the first arrangement can then be removed from the portion of the part formed with the build material by a second process that is different than the first process. Claims Appendix (Appeal Br. 13). REFERENCE The prior art relied upon by the Examiner is: Name Reference Date Napadensky US 2004/0187714 A1 Sept. 30, 2004 Appeal 2020-005712 Application 15/200,964 3 REJECTION Claims Rejected 35 U.S.C. § Reference(s)/Basis 1, 8, 9, 11 103 Napadensky OPINION Indefiniteness Appellant argues that the Examiner reversibly erred in finding that the claim limitation “the second support material being removable by a first process that leaves the portion of the part formed with the build material enclosed and surrounded by the first arrangement formed with the first support material after the second arrangement of the second support material has been removed so the first arrangement can then be removed from the portion of the part formed with the build material by a second process that is different than the first process” is a product-by-process limitation. Appeal Br. 7. Appellant argues that rather than a process that produces the recited three-dimensionally printed object, this limitation “describes how the two support materials are different from one another and the build material of the part.” Id. Appellant also distinguishes the prior art structure arguing that the structure recited in claim 1 “requires that the process for removing the second arrangement leaves the first arrangement surrounding and enclosing the part portion.” Id. at 8. A single claim covering both an apparatus and a method of using that apparatus is indefinite because it is unclear what acts constitute infringement of the claim. IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005). In this case, Appellant argues that apparatus claim 1 Appeal 2020-005712 Application 15/200,964 4 “requires that the three-dimensionally printed object has a part, a first arrangement, and a second arrangement” but also that claim 1 requires “the process for removing the second arrangement leaves the first arrangement surrounding and enclosing the part portion.” Id. at 7, 8.2 The portions of the Specification, cited by Appellant as written description support for this claim limitation, describe no more than that “[t]he first support material is a rigid support material that can be removed via a dissolution process” whereas “[t]he second support material can be removed via a phase change operation” such as heating. Spec. ¶ 35 (cited in Appeal Br. 5). Because the scope of claim 1 is ambiguous as to whether it covers an apparatus or a process, we find claim 1 and its dependent claims indefinite and enter a new ground of rejection as a result. 37 C.F.R. § 41.50(b); 37 C.F.R. § 41.37(c)(1)(iv). Obviousness A claim can sometimes be analyzed for obviousness even though it is indefinite. Ex parte Saceman, 1993 WL 290670, *3 (BPAI 1993). In some instances it is possible to make a reasonable, conditional interpretation of claims adequate for the purpose of resolving patentability issues to avoid piecemeal appellate review. In the interest of administrative and judicial economy, this course is appropriate wherever reasonably possible. See id. Claim 1 The Examiner finds that the prior art and the three-dimensionally printed object recited in claim 1 are structurally identical. Final Act. 5. 2 Appellant also argues that claim 1 “describes how the two support materials are different from one another and the build material of the part” (Appeal Br. 7) but does not dispute the Examiner’s finding that the prior art teaches such different materials. Compare id., with Final Act. 5. Appeal 2020-005712 Application 15/200,964 5 Appellant does not dispute this finding. Appeal Br. 8 (“Such is not the case with the subject matter of claim 1 in which the first arrangement is interposed between the second arrangement and the object cannot be removed without subjecting the overlying second arrangement to a removal process that removes it as well.”). To the extent that the recited first process and second process may be interpreted as functional limitations, they do not further limit the apparatus claim because it has long been established that “apparatus claims cover what a device is, not what a device does.” Hewlett- Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1468 (Fed. Cir. 1990). The obviousness rejection of apparatus claim 1 based on structural identity is sustained. Claim 8 Claim 8 depends from claim 1 and additionally recites: the second process used to remove the first arrangement formed with the first support material from the portion of the part enclosed and surrounded by the first arrangement formed with the first support material directs a pressurized fluid toward the first arrangement and the first process used to remove the second arrangement formed with the second support material from the first arrangement formed with the first support material and the portion of the part enclosed and surrounded by the first arrangement formed with the first support material applies to the second arrangement a solvent or a heat having a temperature less than a melting temperature of the build material. The entirety of Appellant’s arguments with regard to claim 8 is directed to the removal process of the prior art layers. See Appeal Br. 9 (“Napadensky . . . plainly teaches that the removal of the support layers would result in the simultaneous removal of the release layers since the release layers are lower strength layers and, thus, more easily removed.”). Appeal 2020-005712 Application 15/200,964 6 Based on the absence of any structural distinction over the prior art apparatus, the rejection of claim 8 is sustained. Claim 9 Claim 9 depends from claim 1 and additionally recites: “the portion of the part enclosed and surrounded by the first arrangement formed with the first material has a size that is less than or equal to a threshold feature size.” Appellant argues that the Examiner reversibly erred for various reasons. Appeal Br. 10–11. For example, Appellant argues that the Examiner fails to adequately explain the calculation of the prior art size. Id. at 10. Appellant also argues that the Examiner fails to make a comparison of the prior art size to the recited “threshold size.” Id. at 11. Appellant’s arguments are unpersuasive of patentable distinction. It has been generally held that ordinarily changes in sizes of shapes of known elements are within the level of skill in that art, especially in the absence of unexpected results or criticality. Cf. Gardner v. TEC Sys., Inc., 725 F.2d 1338, 1349 (Fed. Cir. 1984) (holding that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device); see also In re Dailey, 357 F.2d 669, 676 (CCPA 1966) (change in shape ordinarily prima facie obvious). The rejection of claim 9 is sustained. Claim 11 Claim 11 depends from claim 1 and additionally recites: wherein the portion of the part enclosed and surrounded by the first arrangement formed with the first material is thermally insulated by the first arrangement formed with the first support Appeal 2020-005712 Application 15/200,964 7 material from a heat having a temperature that is less than a phase change temperature of the first support material and the build material of the portion of the part enclosed and surrounded by the first arrangement formed with the first material and greater than a phase change temperature of the second support material. Appellant argues that the Examiner reversibly erred by failing to present evidence in support of the rejection of claim 11. Appeal Br. 11; see Final Act. 10. Appellant, however, does not dispute the Examiner’s finding that the prior art apparatus is structurally identical with the apparatus recited in claim 11. Compare Appeal Br. 11–12, with Final Act. 10. To the extent that claim 11 recites certain properties in the form of phase change temperature — although the scope of claim 11 is again ambiguous because the recited phase change temperatures are specified by the temperature of a heating process3 — the recitation of “a particular property said to be possessed by the recited composition, be that property newly-discovered or not, does not necessarily change the scope of the subject matter otherwise defined by that claim.” In re Wilder, 429 F.2d 447, 450 (CCPA 1970). Appellant’s argument that the prior art layer “would not be available to thermally insulate the wineglass portions” (Appeal Br. 12) does not structurally distinguish the prior art as “apparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co., 909 at 1468. The rejection of claim 11 is therefore sustained. CONCLUSION The Examiner’s obviousness rejection is affirmed. Claims 1, 8, 9, and 11 are additionally rejected for indefiniteness. 3 In the event the examination of this application continues, the Examiner may consider issuing an indefiniteness rejection of claim 11. Appeal 2020-005712 Application 15/200,964 8 DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed New Ground Reversed 1, 8, 9, 11 103 Napadensky 1, 8, 9, 11 1, 8, 9, 11 112 Indefiniteness 1, 8, 9, 11 Overall Outcome 1, 8, 9, 11 TIME PERIOD FOR RESPONSE This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. Appeal 2020-005712 Application 15/200,964 9 (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. 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)(iv). AFFIRMED; 37 C.F.R. § 41.50(b) Copy with citationCopy as parenthetical citation