ANALYTICWARE, INC.

Patent Trials and Appeals Board

Apr 1, 2022

2022000096 (P.T.A.B. Apr. 1, 2022)

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. 15/738,751 12/21/2017 Kimio MOMOSE 252751.000002 8869 6980 7590 04/01/2022 TROUTMAN PEPPER HAMILTON SANDERS LLP 600 PEACHTREE ST NE STE 3000 ATLANTA, GA 30308 EXAMINER VANDERVEEN, JEFFREY S ART UNIT PAPER NUMBER 3711 NOTIFICATION DATE DELIVERY MODE 04/01/2022 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): jim.schutz@troutman.com patents@troutman.com ryan.schneider@troutman.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KIMIO MOMOSE and HIROTAKA KOBAYASHI Appeal 2022-000096 Application 15/738,751 Technology Center 3700 Before BRETT C. MARTIN, MICHAEL J. FITZPATRICK, and ERIC C. JESCHKE, Administrative Patent Judges. Opinion for the Board filed by Administrative Patent Judge MARTIN Opinion dissenting filed by Administrative Patent Judge FITZPATRICK. MARTIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 4, 6-9, and 11-15, the only claims 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 Analyticware Inc. Appeal Br. 1. Appeal 2022-000096 Application 15/738,751 2 currently pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. CLAIMED SUBJECT MATTER The claims are directed to an object and the like produced using 3D printing. Spec. 1. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A composite object comprising: a first object, the first object including a plurality of blocks, wherein each of the plurality of blocks has a joining unit for joining with another block, and one or more joining units are positioned on a surface of the first object; and a second object constituted by one or more parts produced through 3D printing, and configured to be attached to the first object so as to cover at least a portion except for part of a surface thereof, the second object being different from the first object, wherein the second object is shaped to be joined with the one or more joining units positioned on the surface of the first object, at a position facing the one or more joining units, wherein the second object has a recess into which the first object fits when the first object is attached, wherein the second object is attached to the first object such that the second object covers all of the first object except for a bottom face thereof, and wherein the first object is fitted into the recess of the second object, the recess of the second object is at a bottom of the second object, and a bottom of the first object is exposed. REFERENCES The prior art relied upon by the Examiner is: Appeal 2022-000096 Application 15/738,751 3 Name Reference Date Ravich US 2013/0241114 A1 Sept. 19, 2013 Tow US 2015/0165690 A1 June 18, 2015 Licht US 2015/0190724 A1 July 9, 2015 Kanematsu JP 10217337A Aug. 18, 1998 REJECTIONS Claims 1, 4, 6-9, 11, 14, and 15 stand rejected under 35 U.S.C. § 103 as being unpatentable over Kanematsu and Licht. Final Act. 4. Claim 12 stands rejected over Kanematsu, Licht, and Tow. Final Act. 13. Claim 13 stands rejected over Kanematsu, Licht, and Ravich. Id. OPINION Obviousness The Examiner rejects the claims as obvious over Kanematsu and Licht. According to the Examiner, Kanematsu teaches most of the claim limitations of claim 1, but fails to teach the claimed joining units as well as the exposed bottom surface. Final Act. 4-5. Independent claims 9, 14, and 15 contain similar limitations and our analysis applies equally to those claims as well. The Examiner then relies on Licht for teaching the claimed joining units and asserts that “the removal of the bottom section of the second object in [Kanematsu] to expose the bottom of the first object” would have been an obvious modification. Final Act. 6. As Appellant points out, however, in Kanematsu, because “the bottom of detailed shape portion 13 is closed, the bottom of the general-shaped portion 11 is not exposed.” Reply Br. 3. Appellant goes on to note that because “there are no connecting means between the detailed shape portion 13… and the general-shaped Appeal 2022-000096 Application 15/738,751 4 portion 11…, the general-shaped portion 11 or block 12 constituting the general-shaped portion 11 would be dropped from the detailed shape portion 13 if the bottom surface of detailed shape portion was removed or omitted.” Id. at 4. We agree with Appellant that because the blocks in Kanematsu are not attached, it would defeat the purpose of the device in removing the bottom as suggested by the Examiner because the bottom is what is holding the blocks in place inside the cavity and a purpose of Kanematsu is to retain the blocks. Furthermore, as Appellant correctly asserts, Licht does not disclose the claimed covering of the first object except for the upper face. Licht discloses a first object attached to a second object wherein the entirety of the sides of the first object are exposed as well as the bottom face. The claims essentially require the connecting blocks be inserted into a cavity whereas Licht merely teaches face-to-face mating of components with no cavity whatsoever. Kanematsu discloses retained blocks, but not connected blocks, and the retention is accomplished by having a complete bottom holding the blocks in. Nothing in the cited prior art teaches retaining blocks via a joining means inside of a cavity. We further note that Kanematsu uses the blocks as part of the printing process and it is unclear how any mating could be achieved as the blocks in Kanematsu are never pressed in and joined to the other structure, but are simply set in place and printing continues around the blocks. Because Licht fails to teach enclosing the attached block and modifying Kanematsu as suggested by the Examiner would result in the blocks of Kanematsu falling from the detailed shape portion 13, neither Kanematsu nor Licht, either alone or in combination, teaches the claimed first object covered except for its bottom face and joined to the second Appeal 2022-000096 Application 15/738,751 5 object. Accordingly, we do not sustain the Examiner’s rejection. Each of the additional rejections of claims 12 and 13 also rely on this combination and we likewise do not sustain those rejections for the same reasons as stated above. CONCLUSION The Examiner’s rejections are reversed. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 4, 6-9, 11, 14, 15 103 Kanematsu, Licht 1, 4, 6-9, 11, 14, 15 12 103 Kanematsu, Licht, Tow 12 13 103 Kanematsu, Licht, Ravich 13 Overall Outcome 1, 4, 6-9, 11-15 REVERSED UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KIMIO MOMOSE and HIROTAKA KOBAYASHI Appeal 2022-000096 Application 15/738,751 Technology Center 3700 Before BRETT C. MARTIN, MICHAEL J. FITZPATRICK, and ERIC C. JESCHKE, Administrative Patent Judges. FITZPATRICK, Administrative Patent Judge. DISSENTING I respectfully dissent from the majority’s Decision reversing the Examiner’s rejections. As the majority correctly notes: According to the Examiner, Kanematsu teaches most of the claim limitations of claim 1, but fails to teach the claimed joining units as well as the exposed bottom surface. Final Act. 4-5. The Examiner then relies on Licht for teaching the claimed joining units and asserts that “the removal of the bottom section of the second object in [Kanematsu] to expose the bottom of the first object” would have been an obvious modification. Final Act. 6. Supra. The majority ultimately determine that the Examiner’s proposed removal of the bottom section of the second object in Kanematsu would Appeal 2022-000096 Application 15/738,751 2 defeat the purpose of Kanematsu “because the bottom is what is holding the blocks in place inside the cavity and a purpose of Kanematsu is to retain the blocks.” Supra. In my view, retaining the blocks 12 (asserted first object) inside the detailed shape parts 13 (asserted second object) is not the purpose of Kanematsu. It is a means. I assess the purpose of Kanematsu to be broader, namely: to “provide[] a three-dimensional modeling method for forming a three-dimensional object more quickly and accurately.” Kanematsu, Abstract.2 The Examiner’s proposed modification is not inconsistent with that purpose. Further, nowhere does Kanematsu limit its method to forming 3-dimensional objects that lack cavities or openings. Also, I am not persuaded by Appellant’s argument that the blocks “would fall out” in the Examiner’s proposed modification. See, e.g., Appeal Br. 4-5. For example, as the Examiner points out, the modified Kanematsu object could “be placed on a table with the bottom of the second object removed wherein the internal blocks would not fall” out. Advisory Act. 2; see also Final Act. 14. “Appellant respectfully disagrees” with the Examiner’s point, but does not explain why. Appeal Br. 3. Instead, Appellant argues that “[t]he specification and figures of [Kanematsu] provide no teaching or suggestion that the bottom face can be removed or omitted.” Id. Appellant’s argument does not speak to, let alone rebut, the Examiner’s point about placing the modified Kanematsu object on a table. In any event, and more importantly in my view, the Examiner’s rejection is based on a combination of prior art teachings, including Licht’s 2 My citation to Kanematsu is to the machine translation entered into the file history on July 7, 2020. Appeal 2022-000096 Application 15/738,751 3 teaching of joining elements for joining objects corresponding to the first and second objects of the claimed invention. See Final Act. 5 (“As shown in Figure 1 the joining elements 5 are received in 3 to hold the blocks together.” (citing Licht ¶32)). Thus, as the Examiner states: the removal [of Kanemastu’s bottom wall] is based on the combination of [Kanematsu] and the Litcht reference which clearly shows the joining elements connecting the different elements together. As such the combination would allow the blocks [to] stay in place when the bottom is removed. Final Act. 14. In my view, Appellant has not shown error in the Examiner’s rejections. I respectfully dissent.