3D Systems, Inc.

Patent Trials and Appeals Board

Nov 24, 2020

2020001079 (P.T.A.B. Nov. 24, 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.
15/832,112 12/05/2017 Raffaele Martinoni USA.1201-2 8872
22514 7590 11/24/2020
3D Systems, Inc.
3D Systems, Inc.
333 Three D Systems Circle
Rock Hill, SC 29730
EXAMINER
HORNING, JOEL G
ART UNIT PAPER NUMBER
1712
MAIL DATE DELIVERY MODE
11/24/2020 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 RAFFAELE MARTINONI and PAUL BOEHLER
__________

Appeal 2020-001079
Application 15/832,112
Technology Center 1700
__________

Before FRANCISCO C. PRATS, DEBRA L. DENNETT, and
LILAN REN, Administrative Patent Judges.

PRATS, 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, 2, and 4–20.2 We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies 3D Systems, Inc., as the real party in
interest. Appeal Br. 3.
2 The Final Action included claim 3 among the rejected claims. See Final
Act. 1 (entered January 7, 2019). In the Examiner’s Answer, however, the
Examiner indicated that claim 3 is allowable, and withdrew all rejections of
claim 3. See Ans. 3.
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Application 15/832,112

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STATEMENT OF THE CASE
The Specification explains that articles prepared by laser sintering of
particulate polymeric materials “are sufficiently porous such that undesirable
physical and esthetic properties can result.” Spec. ¶ 13. In particular,
“[p]orous articles having inadequate strength, unsatisfactory hardness, low
abrasion resistance, and/or rough surface finish, are significantly limited
with respect to the practical applications in which such articles can be used.”
Id.
To improve the properties of porous polymeric articles prepared by
laser sintering, Appellant’s invention is directed to a “method of infiltrating
an article prepared by a laser sintering process, wherein the dimensions of
the article are retained during the infiltration process, the flexibility of a
flexible article is maintained, and the physical and esthetic properties of the
article are improved.” Spec. ¶ 2.
Appellant’s claim 1, the sole independent claim on appeal, is
illustrative of the appealed subject matter and reads as follows:
1. A method of infiltrating a flexible article prepared by a
laser sintering method, the method comprising:
(a) applying a liquid infiltrant to the article for a
sufficient time to allow the liquid infiltrant to infiltrate the
article, said liquid infiltrant comprising:
(i) an elastomeric material comprising a naturally
occurring resin, a synthetic resin, or a mixture thereof;
(ii) a vehicle comprising a majority of water; and
(iii) an optional colorant;
(b) drying the infiltrated article; and
(c) optionally, repeating (a) and (b) until the article is
infiltrated to a desired degree,
wherein the infiltrated article is flexible.
Appeal Br. 21 (Claims App.).
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3
The following rejections3,4 are before us for review:
(1) Claims 1, 2, 5–7, 9, 13–16, and 18, under 35 U.S.C. § 103(a) as
being unpatentable over DTM,5 Magnus,6 and O’Farrell7 (Final Act. 2–5);
(2) Claims 4 and 8, under 35 U.S.C. § 103(a) as being unpatentable
over DTM, Magnus, O’Farrell, McGlothlin,8 and Kopian9 (Final Act. 6–7);
(3) Claims 10–12 and 15, under 35 U.S.C. § 103(a) as being
unpatentable over DTM, Magnus, O’Farrell, and Marx10 (Final Act. 7–8);
(4) Claims 16 and 18, under 35 U.S.C. § 103(a) as being unpatentable
over DTM (Final Act. 9–10);
(5) Claims 17, 19 and 20, under 35 U.S.C. § 103(a) as being
unpatentable over DTM and Chong11 (Final Act. 10); and
(6) Claims 17, 19 and 20, under 35 U.S.C. § 103(a) as being
unpatentable over DTM, Magnus, O’Farrell, and Chong (Final Act. 10–11).

3 The Examiner withdrew a number of rejections that were maintained in the
Final Action. See Ans. 3.
4 The Final Action included a rejection for obviousness-type double
patenting over U.S. Patent No. 9,862,148. Final Act. 17. In view of the
decision entered April 8, 2019, approving Appellant’s terminal disclaimer
filed April 5, 2019, the double patenting rejection is moot, and we do not
discuss it.
5 www.theautochannel.com/news/press/date/19990407/press021449.html
6 US 4,946,717 (issued Aug. 7, 1990).
7 US 4,117,186 (issued Sept. 26, 1978).
8 US 2003/0141633 A1 (published July 31, 2003).
9 US 5,156,696 (issued Oct. 20, 1992).
10 US 3,907,737 (issued Sept. 23, 1975).
11 US 2001/0043990 A1 (published Nov. 22, 2001).
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Application 15/832,112

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DISCUSSION
In rejecting claims 1, 2, 5–7, 9, 13–16, and 18 over DTM, Magnus,
and O’Farrell, the Examiner cited DTM as disclosing a process of using a
polymeric infiltrant to infiltrate articles produced by laser sintering. Final
Act. 2–3. The Examiner found that with DTM’s process differs from the
claimed process in that “DTM does not specifically state what the elastomer
composition is for the polymeric infiltrant material.” Id. at 3.
The Examiner cited Magnus as evidence that it would have been
obvious to use a water-containing material as the infiltrant for DTM’s laser
sintered articles, as recited in Appellant’s claim 1. Final Act. 3. The
Examiner cited O’Farrell as evidence that it would have been obvious to dry
Magnus’s coating after it was applied to DTM’s articles, as also recited in
claim 1. Id. at 4.
As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992):
[T]he examiner bears the initial burden . . . of presenting a
prima facie case of unpatentability. . . .
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.
In KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), although the
Supreme Court emphasized “an expansive and flexible approach” to the
obviousness question, id. at 415, it also reaffirmed the importance of
determining “whether there was an apparent reason to combine the known
elements in the fashion claimed by the patent at issue.” Id. at 418 (emphasis
added).
Thus, as the Federal Circuit has explained, even post-KSR,
“obviousness concerns whether a skilled artisan not only could have made
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5
but would have been motivated to make the combinations or modifications of
prior art to arrive at the claimed invention.” Belden Inc. v. Berk-Tek LLC,
805 F.3d 1064, 1073 (Fed. Cir. 2015)
Ultimately, therefore, “[i]n determining whether obviousness is
established by combining the teachings of the prior art, the test is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art.” In re GPAC Inc., 57 F.3d 1573, 1581 (Fed. Cir.
1995) (internal quotations omitted).
We agree with Appellant that a preponderance of the evidence does
not support the Examiner’s conclusion of obviousness. In particular,
Appellant persuades us that the Examiner has not explained sufficiently why
the cited references would have suggested using Magnus’s coating for
uncured rubber as the infiltrant for DTM’s laser sintered article.
As the Examiner found, DTM discloses a process of making articles,
such as automotive hoses and gaskets, by first laser sintering a particulate
thermoplastic elastomer (“the Somos 201 powder”), and then infiltrating the
laser-formed articles with a “new polymer material.” DTM. DTM discloses
that the “Somos 201 laser-sintered parts infiltrated with the new polymer
material are watertight, exhibit greatly increased burst strength, wear
resistance, improved tear resistance, and enhanced surface finish.” Id.
DTM explains that “[t]he ability to rapidly create strong, watertight,
flexible prototypes will allow us to address applications where the final part
would be made from rubber or a thermoplastic elastomer. Automotive
hoses, gaskets, and door seals are obvious examples.” DTM (internal
quotations omitted).
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As explained in Appellant’s Specification, infiltration with additional
material, as disclosed in DTM, is required because articles formed from laser
sintering are porous, and therefore have limited practical applications, due to
lack of strength, and other inadequate physical properties. Spec. ¶ 13.
As Appellant points out, Magnus repeatedly describes its coating as
being specifically intended for application to uncured rubber. See Magnus,
abstract (describing invention as a “water based coating composition for
unvulcanized rubber articles” and disclosing that the coating “is placed on an
uncured rubber article prior to vulcanization and results in improved
molding of the rubber article and provides a final rubber vulcanizate that
possesses superior antidegradative properties”; see also id. at 1:4–18 (“This
invention is concerned with and relates to a water based precure paint that is
useful on articles such as truck and passenger tires, off the road tires, hoses,
belts and other articles that are molded during vulcanization and are exposed
to oxidative environments.” (emphasis added)); id. at 1:18-22 (“The precure
paint (hereinafter PCP) of this invention facilitates rubber flow and air bleed
during the early stages of cure (vulcanization) and further results in a final
rubber article having as an integral part thereof an oxidatively resistant
coating.”).
We are not persuaded that the Examiner has explained sufficiently
why the combined teachings of the cited references would have motivated a
skilled artisan to use Magnus’s coating as the infiltrant for the laser-formed
porous articles taught in DTM, given Magnus’s repeated teachings that its
coating is specifically intended and formulated for application to uncured
rubber. In that regard, the Examiner does not dispute Appellant’s contention
that DTM’s laser-formed porous article is not uncured rubber.
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Rather, the Examiner contends that the oxidative resistance imparted
by Magnus’s coating to rubber products would motivate a skilled artisan to
use Magnus’s coating as DTM’s infiltrant:
The substrate materials [of DTM and Magnus] are both
elastomers designed for similar uses. It would be surprising if
the rubber gasket of DTM was not susceptible to oxidation, and
the advantages of the coating components taught by Magnus are
readily applicable to DTM. If Magnus requires a subsequent
curing process of the coating material to produce the desired
properties in the coating, a practitioner could subsequently cure
the applied coating composition.
Ans. 3–4.
The Examiner, however, does not point to any specific teachings in
any of the cited references explaining why the porous material in DTM’s
pre-infused laser-formed articles is similar to uncured rubber, to an extent
sufficient to motivate a skilled artisan to use Magnus’s coating as DTM’s
infiltrant. Given Magnus’s repeated teachings that its precure coating is
specifically intended and formulated for application to uncured rubber, we
are not persuaded that the mere presence of anti-degradation ingredients in
Magnus’s coating would have been sufficient to motivate a skilled artisan to
apply that coating to a porous article which on this record has not been
shown to have any meaningful similarities with uncured rubber.
We are unpersuaded, moreover, by the Examiner’s conclusion, noted
above, that it would have been obvious to cure Magnus’s coating once
applied to DTM’s laser-formed article, to afford the anti-degradation
properties of the coating. See Ans. 3–4. In that regard, the Examiner does
not specifically address, or even dispute, Appellant’s contention that the
curing temperatures described in Magnus would be unsuitable for use with
the polymers used in DTM’s laser-formed article. See Appeal Br. 7 (citing
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Application 15/832,112

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Declaration of Raffaele Martinoni under 37 C.F.R. § 1.132 (signed February
18, 2014) (“Martinoni Declaration” or “Martinoni Decl.”); see also Magnus
8:7–9 (curing coated rubber composition at 150° C for 20 minutes at 10,000
psi); Martinoni Decl. ¶ 8 (based on experience, DTM’s laser sintered
material softens and melts at 150° C rendering it unsuitable for use).
In sum, for the reasons discussed, we are not persuaded that a
preponderance of the evidence supports the Examiner’s determination that a
skilled artisan would have combined the teachings in DTM and Magnus to
arrive at the process recited in Appellant’s claim 1. As noted above, the
Examiner relies on O’Farrell solely as suggesting claim 1’s drying step.
Accordingly, because we are not persuaded that the Examiner has explained
sufficiently why the teachings of DTM, Magnus, and O’Farrell would have
suggested a process having all of the steps and features recited in
Appellant’s claim 1, we reverse the Examiner’s obviousness rejection of
claim 1, and its dependent claims 2, 5–7, 9, 13–16, and 18, over those
references.
In rejecting claims 4 and 8 over DTM, Magnus, O’Farrell,
McGlothlin, and Kopian, the Examiner cited McGlothlin and Kopian as
evidence that the additional features recited in dependent claims 4 and 8
would have been obvious variations of the process suggested by DTM,
Magnus, and O’Farrell. See Final Act. 6–7.
Similarly, in rejecting claims 10–12 and 15 over DTM, Magnus,
O’Farrell, and Marx, the Examiner cited Marx as evidence that the
additional features recited in dependent claims 10–12 and 15 would have
been obvious variations of the process suggested by DTM, Magnus, and
O’Farrell. See Final Act. 7–8.
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9
Because the Examiner does not identify any teachings in McGlothlin,
Kopian, and Marx that remedy the deficiencies discussed above in the
combination of DTM, Magnus, and O’Farrell, we reverse the Examiner’s
rejection of claims 4 and 8 over DTM, Magnus, O’Farrell, McGlothlin, and
Kopian, as well as the Examiner’s rejection of claims 10–12 and 15 over
DTM, Magnus, O’Farrell, and Marx.
Appellant’s claim 16 recites “[a]n infiltrated article prepared by the
method of claim 1.” Appeal Br. 24.
Appellant’s claim 18 recites “[t]he infiltrated article of claim 16,
wherein the article exhibits improved tear strength and elongation at break
compared to the article prior to infiltration.” Appeal Br. 24.
In rejecting claims 16 and 18 over DTM, the Examiner again cited
DTM for its disclosure of forming prototypes from laser sintered articles
infiltrated with a polymeric material, and reasoned that,
[s]ince DTM teaches that these materials are normally made
from elastomer, it would have been obvious to a person of
ordinary skill in the art at the time of invention to fill the pores
of the gasket with an elastomer [that] would make the prototype
a more accurate representation of a production part (e.g.
gasket).
Final Act. 9.
The Examiner further noted that, although product-by-process claims
“are limited by and defined by the process, determination of patentability is
based on the product itself.” Final Act. 9 (citing In re Thorpe, 777 F.2d 695,
698 (Fed. Cir. 1985)). Therefore, the Examiner reasoned, “the resulting
structure of an article with infiltrated elastomer is the required structure, and
specific recitations directed towards drying or vehicles used are not further
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limiting to the claim, unless they produce some sort of structural difference
(claim 16).” Id.
Appellant contends that the articles produced by the process suggested
by DTM are structurally different because DTM’s process uses an infiltrant
that results in significant swelling of the final article, whereas using a water-
based infiltrant as recited in claim 1 does not result in any appreciable
swelling in the final article. Appeal Br. 16–17 (citing Martinoni Decl. ¶¶ 6–
7).
The Examiner does not respond to Appellant’s arguments traversing
the rejection of claims 16 and 18. Thus, the Examiner does not provide any
explanation as to why we should consider Appellant’s arguments
unpersuasive as to that rejection. Nor does the Examiner identify any
evidence controverting the evidence advanced by Appellant supporting the
assertion that the water-based infiltrant of claim 1 produces a product that is
structurally different from the product suggested by DTM.
Given the absence of any explanation why we should consider
Appellant’s arguments unpersuasive, and the absence of any evidence
controverting the evidence advanced by Appellant, we find that the
preponderance of the evidence does not support the Examiner’s
determination that the products recited in claims 16 and 18 would have been
obvious over DTM. We, therefore, reverse the Examiner’s rejection of
claims 16 and 18 over DTM.
Claims 17, 19, and 20 all depend from claim 16. See Appeal Br. 24.
In rejecting claims 17, 19, and 20 over DTM and Chong, the Examiner cited
Chong as evidence that the additional features recited in claims 17, 19, and
20 would have been obvious variations of the product suggested by DTM.
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See Final Act. 10. Similarly, in rejecting claims 17, 19, and 20 over DTM,
Magnus, O’Farrell, and Chong, the Examiner cited Chong as evidence that
the additional features recited in dependent claims 17, 19, and 20 would
have been obvious variations of the product suggested by DTM, Magnus,
and O’Farrell. See id. at 10–11.
In traversing these rejections, Appellant relies on its arguments
directed to claim 16, discussed above. See Appeal Br. 17–18. Accordingly,
for essentially the same reasons as to claim 16, we reverse the Examiner’s
rejections of claims 17, 19, and 20.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 5–7,
9, 13–16,
18
103(a) DTM, Magnus,
O’Farrell
1, 2, 5–7, 9,
13–16, 18
4, 8 103(a) DTM, Magnus,
O’Farrell,
McGlothlin, Kopian
4, 8
10–12, 15 103(a) DTM, Magnus,
O’Farrell, Marx
10–12, 15
16, 18 103(a) DTM 16, 18
17, 19, 20 103(a) DTM, Chong 17, 19, 20
17, 19, 20 103(a) DTM, Magnus,
O’Farrell, Chong
17, 19, 20
Overall
Outcome
1, 2, 4–20

REVERSED