Ex Parte Steinmann

Board of Patent Appeals and Interferences

Apr 6, 2009

10342408 (B.P.A.I. Apr. 6, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte BETTINA STEINMANN
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Appeal 2008-6294
Application 10/342,408
Technology Center 1700
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Decided:1 April 06, 2009
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Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and
ADRIENE LEPIANE HANLON, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2008-6294
Application 10/342,408

Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 38, 39, 41, and 42. We have jurisdiction under 35
U.S.C. § 6.
We AFFIRM for the reasons expressed in the Answer and below.
Statement of the Case
Appellant claims a liquid radiation-curable composition useful for the
production of three-dimensional articles by stereolithography which
comprises six ingredients including glycerine propoxylated polyether triol.
Representative independent claim 38 reads as follows:
38. A liquid radiation-curable composition useful for the
production of the three-dimensional articles by stereolithography that
comprises:
(A) at least one alicyclic epoxide having one to two epoxy groups;
(B) dipentaerythritol-monohydroxy pentaacrylate;
(C) at least one cationic polymerization initiator;
(D) at least one free radical polymerization initiator;
(E) glycerine propoxylated polyether triol;
(F) at least one hyduoxyl-functional oxetane compound.

The Examiner rejects all appealed claims under 35 U.S.C. § 103(a) as
being unpatentable over Thies (US 2004/0142274 A1, published July 22,
2004).2
Issues
Has Appellant shown error in the Examiner’s legal determination
that the glycerine propoxylated polyether triol of the claim 38 composition
encompasses the glycerol propoxylate-B-ethoxylate triol of Thies?

2 On the record before us, Appellant does not contest the Examiner’s
determination that Thies is available as prior art against the appealed claims.
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Appeal 2008-6294
Application 10/342,408

Has Appellant shown error in the Examiner’s legal conclusion that it
would have been obvious to combine Thies’ glycerol propoxylate-B-
ethoxylate triol with the pentaacrylate ingredient disclosed by this reference
as required by claim 38?
Findings of Fact
Appellant does not dispute with any reasonable specificity the
Examiner’s finding that Thies discloses compositions for stereolithographic
processes which include ingredients satisfying ingredients (A)-(D) and (F) of
claim 38 or the Examiner’s finding that Thies discloses glycerol
propoxylate-B-ethoxylate triol as one of the compositional ingredients (Ans.
3-5).
Principles of Law
During examination, a claim should be given its broadest reasonable
interpretation consistent with the specification and should be read in light of
the specification as it would be interpreted by a person of ordinary skill in
the art. In re Am. Acad. of Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
The disclosure in a prior art reference of compositions having a
multitude of effective ingredient combinations does not render any particular
formulation less obvious, particularly when the claimed composition is used
for the identical purpose taught by the prior art reference. Merck & Co., Inc.
v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989).
Analysis
Appellant’s arguments are not directed to any specific claim (Br. 10-
13). Accordingly, we select independent claim 38 to represent the rejected
claims since it is the broadest claim on appeal. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2007).
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Appeal 2008-6294
Application 10/342,408

Appellant argues that the Examiner has incorrectly interpreted the
claim 38 ingredient “glycerine propoxylated polyether triol” as
encompassing the “glycerol propoxylate-B-ethoxylate triol” ingredient of
Thies (Br. 11-12). In support of this argument, Appellant states that “a
careful reading of the ‘Hydroxyl-Functional Compounds Section’ in the
present specification (Section E on pages 14 to 16) clearly differentiates
between ‘glycerol propoxylate-B-ethoxylate triol’ and ‘glycerine
propoxylated polyether triol’” (id.). More specifically, Appellant states that
“the former compound is recited on line 15 of page 15 whereas the latter
compound is separately recited on line 24 of the same page” (id.).
This argument is unpersuasive for the reasons detailed by the
Examiner (Ans. 7-11). In particular, we agree with the Examiner that
Appellant has failed to identify any disclosure in the Specification which
defines “glycerine propoxylated polyether triol” of claim 38 in such a way as
to exclude the “glycerol propoxylated-B-ethoxylate triol” disclosed by
Thies. Certainly, the disclosure referred to by Appellant on lines 15 and 24
of Specification page 15 provides no such definition. Therefore, on the
record before us, Appellant has failed to provide support for the argument
that the claim 38 recitation “glycerine propoxylated polyether triol” excludes
the ethoxylated units of Thies’ ingredient “glycerol propoxylated-B-
ethoxylated triol”.
Under these circumstances, Appellant has failed to show that, when
claim 38 is given its broadest reasonable interpretation consistent with the
Specification and is read in light of the Specification as it would be
interpreted by a person of ordinary skill in the art, the claim phrase
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Appeal 2008-6294
Application 10/342,408

“glycerine propoxylated polyether triol” excludes Thies’ “glycerol
propoxylated-B-ethoxylate triol”.
Appellant also argues that “[t]here is not teaching or suggestion of
combining the presently claimed pentaacrylate with the presently claimed
triol, out of all of those possible combinations [of ingredients disclosed by
Thies]” (Br. 12). We cannot agree. While Thies may disclose a multitude of
effective ingredient combinations, this fact does not render any particular
formulation less obvious. This is particularly so because Appellant’s
claimed composition is used for the identical purpose taught by Thies.
Conclusions of Law
Appellant has not shown error in the Examiner’s legal determination
that the glycerine propoxylated polyether triol of the claim 38 composition
encompasses the glycerol propoxylate-B-ethoxylate triol of Thies.
Appellant has not shown error in the Examiner’s legal conclusion that
it would have been obvious to combine Thies’ glycerol propoxylate-B-
ethoxylate triol with the pentaacrylate ingredient disclosed by this reference
as required by claim 38.
For these reasons, we sustain the Examiner’s § 103 rejection of all
appealed claims as being unpatentable over Thies.
Order
The decision of the Examiner is affirmed.

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Appeal 2008-6294
Application 10/342,408

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a) (2008).

AFFIRMED

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3D SYSTEMS, INC.
ATTN: KEITH A. ROBERSON
333 THREE D SYSTEMS CIRCLE
ROCK HILL, SC 29730

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