Ex Parte Steingart et al

Patent Trial and Appeal Board

Mar 16, 2017

13208992 (P.T.A.B. Mar. 16, 2017)

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.
2010508-0075 (GEO-030) 9146
EXAMINER
LAUGHLIN, NATHAN L
ART UNIT PAPER NUMBER
2126
MAIL DATE DELIVERY MODE
13/208,992 08/12/2011
22514 7590
3D Systems, Inc.
3D Systems, Inc.
333 Three D Systems Circle
Rock Hill, SC 29730
03/16/2017
Robert Steingart
03/16/2017 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 ROBERT STEINGART and DAVID TZU-WEI CHEN
Appeal 2016-008027
Application 13/208,992
Technology Center 2100
Before BRUCE R. WINSOR, LINZY T. McCARTNEY, and
NATHAN A. ENGELS, Administrative Patent Judges.
PER CURIAM.
DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the non-final
rejection of claims 1—4, 6—11, and 15—26. We have jurisdiction under 35
U.S.C. § 6(b). Claims 5 and 12—14 are canceled. See App. Br. 24—25
(Claims App’x).
We affirm.
1 Appellants identify 3D Systems, Inc. as the real party in interest. App. Br.
2.
Appeal 2016-008027
Application 13/208,992
STATEMENT OF THE CASE
The Invention
Appellants’ invention “relates generally to rapid prototyping (additive
manufacturing) systems. More particularly, in certain embodiments, the
invention relates to systems for manufacture of non-homogeneous articles
using 3D voxel-based models and a rapid prototyping device.” Spec. 12.
Claims 1 and 21 are independent. Claim 1 is illustrative of the subject
matter on appeal:
1. A method for manufacturing a non-homogeneous
object, the method comprising the steps of:
(a) creating, via a voxel-based modeling system, a 3D
voxel representation of the nonhomogeneous object, wherein
the 3D voxel representation comprises a multi­
dimensional array of voxel elements, wherein
each voxel element of the multi-dimensional array of
voxel elements is assigned one or more respective values
representing one or more prescribed physical properties M,
wherein a first value of the one or more respective values is
assigned one of the following prescribed physical properties:
color, translucency, and hardness;
(b) modifying, via the voxel-based modeling system,
in accordance with feedback from a user interface associated
with the voxel-based modeling system, a geometric shape of the
3D voxel representation of the non-homogeneous object;
(c) using the modified 3D voxel representation to:
define, by a processor of a computing device, a set of 3D
dots to produce a shape of each of a plurality of successive Z-
layers of the non-homogenous object, and
define, by the processor, for each 3D dot of each set of
3D dots of each Z-layer of the plurality of successive Z-layers,
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one or more respective prescribed physical properties from the
one or more assigned physical properties M of a plurality of
respective voxel elements corresponding to the 3D dot;
(d) defining, by the processor, for each 3D dot of the
set of 3D dots of each Z-layer of the plurality of successive Z-
layers, a respective transfer function T(M) that identifies at least
one of a pigment, an ink, and a resin to produce a material
having the one or more respective prescribed physical
properties; and
(e) providing instructions to a 3D printer to produce
the non-homogenous object, wherein producing the non-
homogenous object comprises depositing, for each dot of the
set of 3D dots of each layer of the plurality of successive Z-
layers of the non-homogenous object the at least one of the
pigment the ink, and the resin identified by the respective
transfer function.
See App. Br. 23—24 (Claims App’x).
Rejections on Appeal2
Claims 1, 4, 6—8, 11, 16—18, 20—22, 25, and 26 stand rejected under
35 U.S.C. § 103(a)3 as unpatentable over Campbell et al. (US 2003/0175410
Al; published Sept. 18, 2003) (“Campbell”), Steingart et al. (US
2008/0261165 Al; published Oct. 23, 2008) (“Steingart”), and Gubkin et al.
(US 2005/0151734 Al; published July 14, 2005) (“Gubkin”). See Non-Final
Act. 5—16.
2 A rejection of claims 1—4, 6—11, and 15—26 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement, is withdrawn. See Ans. 2.
3 All rejections are under the provisions of 35 U.S.C. in effect prior to the
effective date of the Leahy-Smith America Invents Act of 2011. Non-Final
Act 2.
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Claims 2 and 3 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Campbell, Steingart, Gubkin, and Xiao J. Wu et al.,
Heterogeneous Object Slicing with Geometric Contour Constraint, 6(1)
Computer-Aided Design and Applications 137-45 (2009) (“Wu”). See id. at
17-18.
Claims 8, 17, and 18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Campbell, Steingart, Gubkin, and Tochimoto et al. (US
2002/0167101 Al; published Nov. 14, 2002) (“Tochimoto”). See id. at 18—
19.
Claim 9 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Campbell, Steingart, Gubkin, Tochimoto, and Brodkin et al. (US
2010/0323328 Al; published Dec. 23, 2010) (“Brodkin”). See id. at 19-20.
Claim 10 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Campbell, Steingart, Gubkin, and Silverbrook (US 2007/0150088 Al;
published June 28, 2007). See Non-Final Act. 20-21.
Claim 15 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Campbell, Steingart, Gubkin, and Nikolskiy et al. (US 6,633,789 Bl;
issued Oct. 14, 2003) (“Nikolskiy”). See id. at 21—22.
Claims 23 and 24 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Campbell, Steingart, Gubkin, and Shih et al. (US
6,421,048 Bl; issued July 16, 2002) (“Shih”). See id. at 22.
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The Record
Rather than repeat the arguments here, we refer to the Appeal Brief
(“App. Br.” filed Dec. 1, 2015),4 5Reply Brief (“Reply Br.” filed Aug. 24,
2016) and the Specification (“Spec.” filed Aug. 12, 2011) for the positions
of Appellants and the Non-Final Office Action (“Non-Final Act.” mailed
May 19, 2015) and Examiner’s Answer (“Ans.” mailed June 24, 2016) for
the reasoning, findings, and conclusions of the Examiner. Only those
arguments actually made by Appellants have been considered in this
decision. Arguments that Appellants did not make in the Appeal Brief have
not been considered and are deemed to be waived. See 37 C.F.R. §
41.37(c)(l)(iv) (2015).
ISSUES
The issues presented by Appellants’ contentions are as follows:
Issue 1: Does the Examiner err in finding that Campbell teaches or
suggests a “3D dot,” as recited in limitations (c), (d), and (e) of claim 1?
Issue 2\ Does the Examiner err because Campbell does not teach or
suggest using voxels for detailed modification of models and printing of said
modified voxel-based models, as recited in limitation (b) of claim 1 ?
4 The Appeal Brief numbers each page (except for the title page), including
appendix, as page 22. We refer to the pages of the Appeal Brief and its
appendix as if numbered consecutively from 1 to 27, with the title page
being referred to as “App. Br. 1” and the final page of the “Claims
Appendix” being referred to as “App. Br. 27.”
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ANALYSIS
We have reviewed the Examiner’s findings and explanations in light
of Appellants’ arguments and contentions. We agree with the Examiner’s
findings and explanations, and we adopt them as our own. The following
discussion, findings, and conclusions are for emphasis.
Issue 1
Appellants contend the Examiner errs in finding that Campbell
teaches or suggests a “3D dot,” as recited in limitations (c), (d), and (e) of
claim 1. See App. Br. 12—17. More specifically, Appellants argue
because Campbell divides its model into layers based on . . . the
droplet diameter . . . and deposits bio-ink based on the
properties of each voxel, it cannot. . . disclose the set of 3D
dots of claim 1, in which each 3D dot comprises one or more
physical properties of a plurality of respective voxel elements
corresponding to the 3D dot.
App. Br. 15.
We find Appellants’ argument unpersuasive because the argument is
not commensurate with the broadest reasonable interpretation of the claimed
“3D dot” and the cited teachings of Campbell. Claim 1 recites, in relevant
part, “a plurality of respective voxel elements corresponding to the 3D dot.”
Appellants’ Specification discloses that “[a] 3D dot can be any 3D structure
that corresponds to one or more voxels” (Spec. 133).
Appellants’ Specification also describes a “3D voxel representation”
wherein each of a plurality of voxels is assigned one or more values
representing one or more prescribed physical properties (Spec. 117), but the
Specification does not explicitly disclose the term “voxel element'’
(emphasis added). See, e.g., Spec. Tflf 17—19, 33, 35, 44, 45. The Examiner
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finds “[t]he term ‘voxel element’ is only defined in the claim as an element
having physical properties and being some part of the representation” (Ans.
5). Accordingly, the Examiner finds “the interpretation of ‘voxel element’
can range from anything such as a portion of a voxel, one or more voxels or
merely a property of a voxel” (Id.).
Appellants argue the Examiner’s interpretation of “voxel element” is
erroneous because it is overly broad and inconsistent with the term’s usage
in the Specification and the prosecution history. See Reply Br. 4—5.
Appellants assert that, instead, “[cjlaim 1 . . . makes clear what is meant by
the term ‘voxel element’ — a voxel element is a unit (voxel) making up the
multi-dimensional array of the 3D voxel representation” (Id. at 4).
We find Appellants’ argument unpersuasive. Even if we adopt
arguendo, and without deciding, Appellants’ proposed interpretation of the
claimed “voxel element,” Appellants’ do not demonstrate error in the
Examiner’s rejection. In other words, even if “voxel element” is limited to a
voxel (one or more of which make up the multi-dimensional array of a 3D
voxel representation), the claimed “voxel elements” encompass Campbell’s
voxels.
There is no disagreement between the Examiner and Appellants that
the term “voxel element” encompasses a voxel. See Reply Br. at 4 (“[A]
voxel element is a unit (voxel) making up the multi-dimensional array of the
3D voxel representation.”); Ans. 5 (“The interpretation of ‘voxel element’
can [include]. . . one or more voxels.”). Therefore, as the claim recites “a
plurality of respective voxel elements corresponding to the 3D dot,” we
conclude a broad but reasonable interpretation of “3D dot” encompasses any
3D structure that corresponds to two or more voxels.
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Accordingly, we find no error in the Examiner’s broad but reasonable
interpretation of the claimed “3D dot” as encompassing Campbell’s
disclosure of a plurality of voxels of a pass during which bio-ink(s) or
solution(s) are deposited to create a layer (or part of a layer) of a 3D
biomimetic scaffold. See Non-Final Act. 5—7 (citing Campbell Tflf 151—56,
233); Ans. 5. More specifically, Campbell divides the volume of the
scaffold into discrete cube units, i.e., voxels, each of which has properties
and a composition that can be used to determine bio-ink(s) and/or other
solution(s) to be dispensed in that voxel. See Campbell 151, 152 (“[A]
mixture-planning module 114 configured to determine a volume of bio-ink
and/or other solution to be dispensed in each voxel based on the properties
and/or components of the each voxel.”). Furthermore, Campbell discloses a
plurality of passes, during each of which a plurality of voxels having one or
more bio-ink(s) or solution(s) can be deposited to form part or all of a layer
of the scaffold. See id. 1155 (“For example, one deposition strategy may be
to deposit every other voxel in a layer in one pass over the surface 22 and in
a second pass over the surface 22, deposit the remaining voxels. . . . [A]
deposition strategy may specify that one or more bio-inks or solutions are
deposited for a layer in a first pass and additional bio-inks are deposited in
one or more subsequent passes.”). Accordingly, Campbell’s plurality of
voxels in a pass satisfies the claimed “3D dot” because it forms a layer (or
portion of a layer) of a biomimetic scaffold and corresponds to two or more
voxels. In addition, contrary to Appellants’ argument that Campbell does
not disclose one or more physical properties of the plurality of respective
voxel elements corresponding to the 3D dot, a single pass in Campbell
satisfies this limitation by depositing one or more bio-inks or solutions in the
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plurality of respective voxels based on the voxels’ properties and/or
composition. See, e.g., Campbell H 152, 155.
Appellants further argue that by dividing the model into a
corresponding number of voxels based on the identified droplet diameter,
“Campbell discloses STL-like5 techniques, which, as described in the
Specification as filed, are remedied by the present claims” (App. Br. 15).
We find Appellants’ argument unpersuasive because it is not commensurate
with the claim scope. “The invention disclosed in [Appellants’] written
description may be outstanding in its field, but the name of the game is the
claim,” In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) (quoting
Giles Sutherland Rich, Extent of Protection and Interpretation of Claims—
American Perspectives, 21 Inf 1 Rev. Indus. Prop. & Copyright L. 497, 499
(1990)). As is the case here, “[although operational characteristics of [an
invention] may be apparent from the specification, we will not read such
characteristics into the claims when they cannot be fairly connected to the
[language] recited in the claims,” Id. at 1368; see In re Self, 671 F.2d 1344,
1348 (CCPA 1982).
In view of the foregoing, Appellants’ arguments have not persuaded
us the Examiner errs in finding that Campbell broadly but reasonably
teaches or suggests limitations (c), (d), and (e) of claim 1, including the
recited “3D dot.”
Issue 2
Appellants further argue “Campbell’s voxels are merely used for
printing objects and not, as in the claimed invention, for detailed
5 “STL” is an acronym for Stereo Lithography File. Spec. 112.
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modification of models and printing of said modified voxel-based models”
(App. Br. 14). Appellants’ argument improperly attacks Campbell
individually and fails to substantively address what a person of ordinary skill
would have understood from the combined teachings of Campbell, Steingart,
and Gubkin. See In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“one cannot
show non-obviousness by attacking references individually where, as here,
the rejections are based on combinations of references”); Ans. 5. Contrary
to Appellants’ arguments, “Campbell was not used to shows detailed
modifications of a voxel model” (Ans. 5). Rather, the Examiner relies on
Gubkin to teach or suggest the limitation at issue. See id.', Non-Final Act. 8—
9 (citing Gubkin || 11, 13, 14, 18, 40). Accordingly, because Appellants’
argument does not specifically address or rebut the Examiner’s findings as to
Gubkin or the combined teachings of Campbell, Steingart, and Gubkin, we
find the argument unpersuasive.
Summary
For the reasons stated above, Appellants have not persuaded us the
Examiner errs in the rejection of claim 1. Accordingly, we sustain the
Examiner’s rejection of claim 1, as well as the rejection of independent
claim 21 and dependent claims 2-4, 6—11, 15—20, and 22—26, which were
not argued separately with particularity beyond the arguments advanced for
claim 1. See App. Br. 17—21; Reply Br. 3—5.
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DECISION
The decision of the Examiner to reject claims 1—4, 6—11, and 15—26 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). See 37 C.F.R.
§§ 1.136(a)(l)(iv), 41.50(f), 41.52(b).
AFFIRMED
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