BASF SEDownload PDFPatent Trials and Appeals BoardMar 27, 202014806102 - (D) (P.T.A.B. Mar. 27, 2020) 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. 14/806,102 07/22/2015 Nikolaus NESTLE 457322US99 5707 22850 7590 03/27/2020 OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P. 1940 DUKE STREET ALEXANDRIA, VA 22314 EXAMINER SNELTING, ERIN LYNN ART UNIT PAPER NUMBER 1741 NOTIFICATION DATE DELIVERY MODE 03/27/2020 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): OBLONPAT@OBLON.COM iahmadi@oblon.com patentdocket@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte NIKOLAUS NESTLE, MARIE-CLAIRE HERMANT, and KRIS SCHMIDT1 ____________ Appeal 2019-003382 Application 14/806,102 Technology Center 1700 ____________ Before GEORGE C. BEST, CHRISTOPHER C. KENNEDY, and DEBRA L. DENNETT, Administrative Patent Judges. KENNEDY, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 2–8 and 10–14. An oral hearing was held on March 6, 2020. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. BACKGROUND The subject matter on appeal relates to processes for producing 3-D objects by a fused filament fabrication process. E.g., Spec. 1:5–8; Claim 7. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). The Appellant identifies the real party in interest as BASF SE. Appeal Br. 1. Appeal 2019-003382 Application 14/806,102 2 Claim 7, the only independent claim on appeal, is reproduced below from page 28 (Claims Appendix) of the Appeal Brief (disputed limitation emphasized): 7. A process for the production of a three-dimensional green body by a fused filament fabrication process, comprising: heating a mixture (M) to a temperature (TM), and depositing the mixture (M) into a build chamber using a layer- based additive technique to form the three-dimensional green body, wherein the mixture (M) comprises: (a) from 40 to 70 % by volume of an inorganic powder (IP) based on the total volume of the mixture (M), (b) from 30 to 60 % by volume based on the total volume of the mixture (M) of a binder (B) comprising (b1) from 50 to 96 % by weight of at least one polyoxymethylene (POM) based on the total weight of the binder (B), (b2) from 2 to 35 % by weight of at least one polyolefin (PO) based on the total weight of the binder (B), (b3) from 2 to 40 % by weight of at least one further polymer (FP) based on the total weight of the binder (B), said method further comprising, after the depositing, removing at least part of the binder (B) from the three-dimensional green body to form a three-dimensional brown body. Appeal 2019-003382 Application 14/806,102 3 REJECTIONS ON APPEAL2 The claims stand rejected under 35 U.S.C. § 103 as follows: 1. Claims 2–8 and 10–13 over Wohlfromm (US 2009/0288739 A1, published Nov. 26, 2009), Danforth (US 5,900,207, issued May 4, 1999), Lock (3D Printing with Acetal Filament, http://blog.think3dprint3d.com/2013/09/3d-printing-with-acetal- filament.html (dated Sept. 8, 2013) (of record)), and Foley (3D Printing in Acetal (dated Aug. 12, 2013) (of record)). 2. Claim 14 over Wohlfromm, Danforth, Lock, Foley, and ter Maat (US 2013/0062820 A1, published March 14, 2013). ANALYSIS After review of the cited evidence in the appeal record and the opposing positions of the Appellant and the Examiner, we determine that the Appellant has not identified reversible error in the Examiner’s rejections. Accordingly, we affirm the rejections for reasons set forth below, in the Final Action dated April 12, 2018, and in the Examiner’s Answer. Rejection 1 The Appellant presents separate arguments for claims 7 and 8. We address those claims below. The remaining claims subject to Rejection 1 will stand or fall with claim 7, from which they depend. See 37 C.F.R. § 41.37(c)(1)(iv). Claim 7. The Examiner finds, and the Appellant does not dispute, that Wohlfromm teaches a process comprising each element of claim 7 2 The Appellant does not challenge the prior art status of any reference relied on by the Examiner. Appeal 2019-003382 Application 14/806,102 4 except that Wohlfromm “is silent regarding the mixture being deposited using a layer-based additive technique,” as required by claim 7. Ans. 3–4. The Examiner finds that Danforth teaches that a mixture similar to Wohlfromm’s that comprises inorganic particles and binders “may be deposited using a layer-based additive technique for the benefit of forming near-net shapes with reduced manufacturing time and cost.” Id. at 4. The Examiner finds that Lock and Foley “suggest that materials like POM (a.k.a. acetal) as used in Wohlfromm ’391 are usable in layer-based additive deposition techniques as used in Danforth ’207.” Id. at 4. The Examiner determines that it would have been obvious “to modify the method of Wohlfromm ’391 by depositing the mixture using a layer- based additive technique, as suggested by Danforth ’207, Lock ’13, and Foley ’13, for the benefit of forming near-net shapes with reduced manufacturing time and cost.” Id. The Appellant argues that none of the references individually teach the use of a layer technique with Wohlfromm’s specific mixture, which includes POM as part of the binder, and that Lock and Foley indicate sufficiently significant challenges using a layer technique with POM that a person of ordinary skill in the art would not have had a reasonable expectation that a layer technique could be successfully used with Wohlfromm’s POM-inclusive mixture. Appeal Br. 6–19.3 Those arguments are not persuasive. There is no dispute that Wohlfromm teaches a process comprising each element of claim 7 except that Wohlfromm does not specify that its depositing step involves a layer- 3 We decline to consider arguments raised for the first time at the oral hearing. See 37 C.F.R. § 41.47(e). Appeal 2019-003382 Application 14/806,102 5 based additive technique. Consistent with the Examiner’s findings, Danforth teaches fabrication methods involving “particulate-filled binder systems,” similar to those of Wohlfromm, that build objects layer-by-layer, i.e., using a layer-based additive technique. See Danforth at 2:30–3:48. Although the Appellant is correct that Danforth does not teach the use of POM as part of its binder, Danforth does not disparage or otherwise discourage the use of POM, and both Lock and Foley teach layer-by-layer 3- D printing using POM.4 The Appellant is also correct that Lock describes various challenges with the adhesion of acetal/POM, see Appeal Br. 13–15, but (1) Lock describes various benefits of acetal/POM (e.g., “low co- efficient of friction” and “better wear resistance” than PTFE, Lock at 1, (2) Lock observes that, on certain surfaces, “[s]ufficient bonding for the object to complete printing” with “strong” inter-layer adhesion was achieved, Lock at 2, and (3) Lock specifically expresses optimism that using acetal/POM in a “multimaterial print,” such as that of Wohlfromm, “would open up a huge number of possibilities for complex objects,” Lock at 5. As to Foley, although the Appellant is correct that it also acknowledges adhesion challenges with acetal/POM, the Appellant’s own quotes from Foley in the Appeal Brief show that Foley was successful in 3-D printing with acetal. See Appeal Br. 15–16 (“After several weeks of testing, I am happy to say that we are 3D printing in acetal. We are getting amazingly strong, slippery, rigid, complex parts . . . .”). Additionally, we observe that Wohlfromm’s mixture does not involve the use of pure acetal/POM; Wohlfromm teaches mixtures having far less 4 There is no dispute that acetal, the term used by Lock and Foley, is POM. Appeal 2019-003382 Application 14/806,102 6 than 100% POM. E.g., Wohlfromm ¶¶ 33–39. Even were we to agree with the Appellant that a person of ordinary skill in the art would have had concerns about higher-POM-content embodiments of Wohlfromm, we discern no evidence of record that a person of ordinary skill in the art would have expected adhesion problems with a layer technique using the lower- POM content embodiments of Wohlfromm. We have considered the cited portions of the Declaration of named inventor Marie-Claire Hermant, and we attribute some weight to that Declaration. E.g., Appeal Br. 10–11 (quoting Declaration). However, we are not persuaded that it establishes reversible error in the Examiner’s rejection. Cf. In re Bulina, 362 F.2d 555, 559 (CCPA 1966) (“[A]n affidavit by an applicant or co-applicant as to the advantages of his invention is less persuasive than one made by a disinterested person.”); see also Yorkey v. Diab, 601 F.3d 1279, 1284 (Fed. Cir. 2010) (factfinder has discretion to give more weight to one item of evidence over another unless no reasonable trier of fact could have done so). We agree with the Declarant that Danforth does not specifically disclose the use of POM as part of a binder, see Appeal Br. 10, but, as set forth above, other references of record do indicate the suitability of POM for use in layered application techniques, and the Declarant does not persuasively address the fact that Wohlfromm teaches embodiments that do not use pure POM as the binder. On the record before us, we are not persuaded that certain challenges involved in 3-D printing using POM would have caused a person of ordinary skill in the art to doubt whether Wohlfromm’s “depositing” step could successfully use a layer-based additive technique as suggested by Danforth, Lock, and Foley. Cf. PAR Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, Appeal 2019-003382 Application 14/806,102 7 1198 (Fed. Cir. 2014) (“The reasonable expectation of success requirement for obviousness does not necessitate an absolute certainty for success.”); see In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections . . . .”). The Appellant also argues that unexpected results support a conclusion of nonobviousness in this case. For support, the Appellant quotes portions of the Specification (page 4) that describe physical properties of POM, that indicate adhesion difficulties with POM, and that state, “it is surprising that layers of a mixture (M) comprising an inorganic powder (IP) and a binder (B), which comprises [POM], adhere to each other.” Appeal Br. 9 (quoting Spec. 4:1–21). The Appellant also cites the Hermant Declaration, Appeal Br. 12, which also cites page 4 of the Specification. See Hermant Decl. ¶¶ 11–13. The burden of showing that unexpected results rebut a prima facie case of obviousness rests with the Appellant. In re Huang, 100 F.3d 135, 139 (Fed. Cir. 1996). The Appellant’s arguments do not persuade us that evidence of unexpected results overcomes the evidence of obviousness in this case, discussed above. As an initial matter, we observe that the relied- upon statements in the Specification are in tension with both Lock and Foley, each of which independently describes successfully using POM in layered-application 3-D printing, as discussed above. Prior to the date of invention, and contrary to the Appellant’s argument, it was known that POM could sufficiently adhere to itself to be used in layered 3-D printing, even if such adhesion was known to present challenges. See generally Lock; Foley. Appeal 2019-003382 Application 14/806,102 8 Moreover, the portions of the Specification relied upon by the Appellant describe adhesion issues with POM due to its physical properties, but the Appellant identifies no basis to believe that the mixture of claim 7, which is not pure POM, would have been expected to have such significant adhesion issues as to be unsuitable for deposition using a layered technique. See generally Spec. at 4:1–21. In other words, that the Specification states that POM itself may not have been regarded as suitable for a layered deposition technique due to its physical properties does not persuasively explain why the lower-POM content mixtures of claim 1 would have been regarded as unsuitable for a layered deposition technique. Thus, the Appellant’s argument does not appear to be commensurate with the full scope of the claims, and the Specification’s statement that it was “surprising” that “mixture[s]” comprising POM adhere to each other is not persuasively supported by evidence or reasoning. “[I]t is well settled that unexpected results must be established by factual evidence. Mere argument or conclusory statements in the specification does not suffice.” In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (internal quotation marks omitted). On this record, we are not persuaded that unexpected results support a conclusion of nonobviousness. We affirm the Examiner’s rejection of claim 7. Claim 8. Claim 8 depends from claim 7 and further recites, “wherein the temperature (TM) during the heating is from 140 to 240 °C.” The Examiner finds that Wohlfromm “teaches the temperature (TM) during the heating is from 140 to 240°C. It is also noted that Danforth ’207 suggests temperatures in this range may be utilized for layer-based additive Appeal 2019-003382 Application 14/806,102 9 forming.” Ans. 5 (internal citations omitted). The Appellant does not dispute those findings. The Appellant argues that Foley discloses “that temperatures of 258°C or higher are required to eliminate adhesion problems,” and that Lock indicates “that adhesion and warping problems exist when heating the Acetal/POM polymer to temperatures from 130°C to 225°C.” Appeal Br. 20. Petitioner asserts that, in view of those disclosures, “there is no suggestion in the applied prior art as a whole to heat mixture (M) to a temperature of from 140°C to 240°C with [a] reasonable expectation of success.” Id. That argument is not persuasive. As discussed above, even at 225°C, Lock notes: “Sufficient bonding for the object to complete printing. . . . Inter-layer adhesion is strong.” Lock at 2. Thus, although Lock acknowledges adhesion challenges, Lock had success at temperatures within the recited range. As to Foley, we agree that it describes a temperature of 258°C as “good,” but we disagree with the Appellant’s characterization of Foley as disclosing that temperatures of 258°C or higher “are required to eliminate adhesion problems.” Appeal Br. 20. The Appellant does not identify any discussion in Foley of temperatures below 258°C, but, as noted above, Lock describes “strong” inter-layer adhesion at 225°C—a temperature that falls within the scope both of claim 8 and of Wohlfromm’s recited range. Additionally, we again observe that, to the extent pure POM or binders high in POM content may have adhesion problems at any particular temperature, Wohlfromm discloses mixtures having POM as a relatively minor component. We discern no evidence of record that temperatures of Appeal 2019-003382 Application 14/806,102 10 240°C would not work successfully in the process of the combined prior art. See Jung, 637 F.3d at 1365 (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections . . . .”). We affirm the Examiner’s rejection of claim 8. Rejection 2 Claim 14 depends from claim 7 and further recites, “wherein the at least one further polymer (FP) is polytetrahydrofuran” (“PTHF”). The Examiner finds that Wohlfromm teaches poly-1,3-dioxepane and poly-1,3-dioxolane as “further polymers,” and that it is desirable for the “further polymer” to depolymerize under acidic conditions, but that Wohlfromm does not disclose PTHF. Ans. 6. The Examiner finds that ter Maat discloses a mixture similar to that of Wohlfromm (i.e., inorganic powders and binders comprising POM, used for a similar purpose); that ter Maat teaches the use of poly-1,3-dioxepane, poly-1,3-dioxolane, and PTHF in its binder; and that ter Maat teaches that those particular polymers are desirable because they can be decomposed under acid catalysis. Id. (citing, e.g., ter Maat ¶¶ 35, 36). The Examiner determines that it would be obvious to use PTHF as Wohlfromm’s “further polymer” because it is the substitution of one known polyether binder that decomposes under acid conditions for another “with a predictable result of binding inorganic powders in the formed article.” Ans. 6. The Appellant argues that because there are many different acetal copolymer mixtures possible, the effect of using PTHF in Wohlfromm’s method “appears to have been entirely unpredictable and pure speculation.” Appeal Br. 21. The Appellant also argues, without persuasive explanation, that it would have been “totally unexpected” that using PTHF “results in a Appeal 2019-003382 Application 14/806,102 11 successful use of a POM binder in a fused filament fabrication process employing the layer-based additive technique of this application.” Id. at 22 (citing Hermant Declaration). Those arguments are not persuasive. Wohlfromm and ter Maat are both directed to producing shaped metallic objects from a mixture comprising an inorganic component and a binder. Compare Wohlfromm at Abstract, with ter Maat at Abstract. The binders of ter Maat and Wohlfromm are similar and include POM as a component, compare Wohlfromm ¶¶ 34–38, with ter Maat ¶¶ 34–37, and both ter Maat and Wohlfromm specifically desire a polymer in the binder that depolymerizes under acidic conditions, compare Wohlfromm ¶ 28, with ter Maat ¶ 43. Wohlfromm discloses, e.g., poly-1,3-dioxepane and poly-1,3-dioxolane as suitable polymers. Wohlfromm ¶ 37. Ter Maat discloses that poly-1,3- dioxepane, poly-1,3-dioxolane, and PTHF are suitable polymers, indicating that those three polymers are suitable for the same purpose and could be used interchangeably. E.g., ter Maat ¶ 43. The Examiner’s proposed combination is simply the use of a known polymer according to its established function in a similar application. Alternatively, it is the substitution of the PTHF of ter Maat for the poly-1,3- dioxepane or poly-1,3-dioxolane of Wohlfromm, and a person of ordinary skill in the art would have expected the substitution to yield predictable results given the similarities of the binders and the fact that all three polymers are taught as being useful for the same purpose. Such combinations typically do not result in nonobvious subject matter. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416–21 (2007) (“The combination of familiar elements according to known methods is likely to be obvious when Appeal 2019-003382 Application 14/806,102 12 it does no more than yield predictable results.” / “[W]hen a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.”). On this record, and in view of the disclosures of Wohlfromm and ter Maat discussed above, the Appellant provides no persuasive evidence that a person of ordinary skill in the art would have regarded the proposed substitution as so unpredictable as to defeat a reasonable expectation of success. Nor has the Appellant persuasively supported its contention that success using PTHF as Wohlfromm’s “further polymer” would have been “totally unexpected.” See Appeal Br. 22. On the contrary, the record, as discussed above, is inconsistent with that assertion. On this record, we are not persuaded of reversible error in the Examiner’s rejection of claim 14. CONCLUSION In summary: Claims Rejected 35 U.S.C. § References Affirmed Reversed 2–8, 10–13 103 Wohlfromm, Danforth, Lock, Foley 2–8, 10–13 14 103 Wohlfromm, Danforth, Lock, Foley, ter Maat 14 Overall Outcome 2–8, 10–14 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED Copy with citationCopy as parenthetical citation