Ex Parte Geving et al

Board of Patent Appeals and Interferences

Jul 31, 2007

10791079 (B.P.A.I. Jul. 31, 2007)

The opinion in support of the decision being entered today is not binding
precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BRAD GEVING, KRIS ALAN SCHMIDT,
and KENNETH J. NEWELL
____________

Appeal 2006-2380
Application 10/791,079
Technology Center 1700
____________

Decided: July 31, 2007
____________

Before BRADLEY R. GARRIS, JEFFREY T. SMITH and
CATHERINE Q. TIMM, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal the final rejection of claims 1-7, 9-15, 32, and 34-
51 under 35 U.S.C. § 134. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2006-2380
Application 10/791,079

INTRODUCTION
Appellants claim a powder blend composition for use in a solid free
form fabrication process, such as a laser sintering process (Specification 1;
claim 1). The powder blend is composed of metal powder blended with or
coated with a polymeric binder system and also includes a high melting
temperature fine particulate metallic, intermetallic, or ceramic (Specification
12).
Claim 1 is illustrative:
1. A powder blend for use in a laser sintering process comprising:

a steel alloy of about 88.75 to about 92.75 percent by weight selected from
the group consisting of a mild steel alloy, a carbon steel and a stainless steel;

a polymeric binder from about 1.25 to about 2.25 percent by weight; and

a high melting temperature fine metallic, intermetallic, or ceramic particulate
of greater than about 5 percent and less than about 15 percent by weight.

The Examiner relies on the following prior art references as evidence
of unpatentability:
Gardner US 4,554,218 Nov. 19, 1985
Luk US 5,782,954 Jul. 21, 1998
Bray US 6,048,379 Apr. 11, 2000

The rejections as presented by the Examiner are as follows:
1. Claims 1-7, 9-11, 34-44, 50, and 51 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Gardner.1

1 Claim 44 was inadvertently omitted from the statements of the rejections.
However, the record is clear that claim 44 should be rejected under § 103(a)
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2. Claims 12, 13, 32, 45, 46, and 49 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Gardner in view of Bray.
3. Claims 14, 15, 47, and 48 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Gardner in view of Luk.

Appellants separately argue independent claims 1 and 36. Therefore, in
accordance with their ultimate dependencies, claims 2-7, 9-15, 32, 34, 35,
and 37-51 stand or fall with these independent claims.

OPINION
35 U.S.C. § 103(a) GARDNER
Appellants argue that the Examiner’s application of Gardner’s
disclosure at column 8, lines 62-68, which is directed to a thermoplastic-
thermoset binder combination, to calculate the amount of binder in
Gardner’s Example 2 is based on hindsight because Example 2 is limited to
using thermoplastic binder (Br. 9-10). Appellants further argue that, even if
Gardner’s column 8 disclosure is applicable to Example 2, the amount of
binder in the thermoplastic-thermoset binder of column 8 includes both the
thermoplastic portion and thermoset portion of the binder, which calculates
to a binder percentage outside the claimed range (i.e., 3.5% by weight) (Br.
10-11).
over Gardner. Appellants understand that claim 44 is rejected over the art of
record by their statement that “these claims (1-7, 9-15, 32 and 34-51) are
finally rejected” (Br. 2).

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Appeal 2006-2380
Application 10/791,079

We have considered all of Appellants’ arguments and find them
unpersuasive for the reasons below.
The issues presented by this appeal are as follows: (1) whether the
claim phrase “a polymeric binder” may properly be construed to include
Gardner’s mixture of thermoplastic-thermoset binders, and, if so, (2)
whether the claimed weight percent of the polymeric binder (i.e., “about
1.25 to about 2.25 percent by weight”) would have been obvious from
Gardner’s disclosure.
Generally, during examination, the claims must be interpreted as
broadly as their terms reasonably allow. In re American Academy of Science
Tech Center, 367 F.3d 1359, 1369, 70 USPQ2d 1827, 1834 (Fed. Cir. 2004).
Additionally, it would have been obvious for an artisan with ordinary skill to
develop workable or even optimum ranges for such art-recognized, result-
effective parameters. In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d
1934, 1936-1937 (Fed. Cir. 1990); In re Boesch, 617 F.2d 272, 276, 205
USPQ 215, 219 (CCPA 1980); In re Aller, 220 F.2d 454, 456, 105 USPQ
233, 235 (CCPA 1955).
In the present case, the Examiner construes the claim phrase, “a
polymeric binder” as inclusive of a mixture of binders wherein the weight
percent of any one binder in the mixture may be used to satisfy the claimed
polymeric binder range (Answer 6). The Examiner’s claim construction is
supported by Appellants’ disclosure in their Specification that the polymeric
binder may be “thermoplastics, thermosets, or a combination thereof”
(Specification 12: 29-30). Accordingly, we find the Examiner’s claim
construction of the phrase “a polymeric binder” to be reasonable. American
Academy of Science Tech Center, 367 F.3d at 1369, 70 USPQ2d at 1834.
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Therefore, the claim phrase “a polymeric binder” includes a mixture of
polymeric binders.
Since the Examiner’s construction of “a polymeric binder” is
reasonable, we address whether the weight percent of the polymeric binder
claimed (i.e., “about 1.25 to about 2.25% by weight”) is rendered obvious by
Gardner’s disclosure.
Gardner discloses that a particularly useful thermoplastic-thermoset
binder has, in relevant part, 29.6 parts “Epon” 825 bis-phenol-A epoxy resin
(i.e., the thermoset portion of the thermoplastic-thermoset binder) (Gardner,
col. 8, ll. 63-64). The Examiner applies this disclosure to Gardner’s
Example 2, which indicates that the binder amount used is 57 grams (i.e., 5.4
wt% of the total blend disclosed in Example 2) and calculates that the weight
percent of thermosetting polymeric binder in the mixture is 1.5 wt% (i.e.,
5.4% x .296). The Examiner’s calculation with respect to Example 2 has not
been challenged by Appellants.
Gardner further discloses that the amounts of the thermoplastic-
thermoset binder may have to be empirically adjusted to optimize production
of a part (Gardner, col. 9, ll. 1-3). Accordingly, Gardner recognizes that the
amount of thermoset and thermoplastic binder in the mixture are result-
effective variables such that it would have been obvious for an artisan with
ordinary skill to develop workable or even optimum ranges for such art-
recognized, result-effective parameters. Woodruff, 919 F.2d at 1578, 16
USPQ2d at 1936-37; Boesch, 617 F.2d at 276, 205 USPQ at 219; Aller,
220 F.2d at 456, 105 USPQ at 235.
From the record before us, the amount of “a polymeric binder” in
claim 1 has not been established to be anything other than an optimizable
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range. No criticality (i.e., unexpected results) of the claimed polymeric
binder range has been shown by Appellants. Woodruff, 919 F.2d at 1578, 16
USPQ2d at 1936 (explaining that “applicant must show that the particular
range is critical, generally by showing that the claimed range achieves
unexpected results relative to the prior art range.”). Therefore, it would
have been obvious to one of ordinary skill in the art to optimize the amount
of polymeric binder (i.e., thermoplastic and thermoset) so as to optimize the
production of an article (Gardner col. 9, ll. 1-3). Woodruff, 919 F.2d at
1578, 16 USPQ2d at 1936-37; Boesch, 617 F.2d at 276, 205 USPQ at 219;
Aller, 220 F.2d at 456, 105 USPQ at 235.
We add that it would have been obvious to combine the claimed
weight percentage of “a polymeric binder” (i.e., “about 1.25 to about 2.25
percent by weight”) with Gardner’s powdered metal blend since such would
be a predictable variation in that no criticality of the claimed range (e.g.,
unexpected results) has been shown. KSR Int’l Inc. v. Teleflex Inc., 127
S. Ct. 1727, 1740-41, 82 USPQ2d 1385, 1396 (2007). Stated differently, the
combination of the claimed weight percentage of “a polymeric binder” (i.e.,
“about 1.25 to about 2.25 percent by weight”) with Gardner’s powdered
metal blend is merely the predictable use of prior art elements (i.e., the
amount of binder in the powder composition) according to their established
functions (i.e., to prevent internal fractures in the green molded article (e.g.,
to enhance the “green” strength of the article) and to completely volatilize
the binder after forming the article to improve the infiltration of the metal)
(Gardner, col. 7, ll. 29-39, 60-68; col. 9, ll. 1-3). Id.
Regarding Appellants’ hindsight argument, Gardner discloses using
thermoplastic binders and thermoplastic-thermoset binders (Gardner, col. 7,
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ll. 40-42). Accordingly, applying Gardner’s disclosure to use thermoplastic-
thermoset binders to Example 2 at column 16, lines 49-60 is based on the
explicit disclosures of Gardner not on hindsight. In re Rouffet, 149 F.3d
1350, 1357, 47 USPQ2d 1453, 1457-58 (Fed. Cir. 1998).
For the above reasons, we affirm the Examiner’s § 103(a) rejection of
argued claims 1 and 36 and non-argued claims 2-7, 9-11, 34, 35, 37-44, 50,
and 51 over Gardner.
THE OTHER § 103(a) REJECTIONS
Appellants do not separately argue the following rejections: (1)
dependent claims 12, 13, 32, 45, 46, and 49 under § 103(a) over Gardner in
view of Bray, and (2) dependent claims 14, 15, 47, and 48 under § 103(a)
over Gardner in view of Luk. Rather, Appellants base the viability of these
rejections on the propriety of rejecting independent claims 1 and 36 under
§ 103(a) over Gardner. As we discussed above, we determine that the
Examiner’s rejection of claims 1-7, 9-11, 34-44, 50, and 51 under § 103(a)
over Gardner is proper.
Accordingly, we affirm the Examiner’s following rejections: (1)
dependent claims 12, 13, 32, 45, 46, and 49 under § 103(a) over Gardner in
view of Bray, and (2) dependent claims 14, 15, 47, and 48 under § 103(a)
over Gardner in view of Luk.
DECISION
The Examiner’s rejection of claims 1-7, 9-11, 34-44, 50, and 51 under
35 U.S.C. § 103(a) as being unpatentable over Gardner is AFFIRMED.
The Examiner’s rejection of claims 12, 13, 32, 45, 46, and 49 under
35 U.S.C. § 103(a) as being unpatentable over Gardner in view of Bray is
AFFIRMED.
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Appeal 2006-2380
Application 10/791,079

The Examiner’s rejection of claims 14, 15, 47, and 48 under 35 U.S.C.
§ 103(a) as being unpatentable over Gardner in view of Luk is AFFIRMED.
The Examiner’s decision is affirmed.
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

sld/ls/cam

Ralph D’Alessandro
3D Systems, Inc.
26081 Avenue Hall
Valencia, CA 91355
8