The Western Union CompanyDownload PDFPatent Trials and Appeals BoardJul 28, 20212020003580 (P.T.A.B. Jul. 28, 2021) 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. 14/040,013 09/27/2013 Scott R. Paintin 90945-879108 (030000US) 5391 20350 7590 07/28/2021 Kilpatrick Townsend & Stockton LLP - West Coast Mailstop: IP Docketing - 22 1100 Peachtree Street Suite 2800 Atlanta, GA 30309 EXAMINER GREGG, MARY M ART UNIT PAPER NUMBER 3697 NOTIFICATION DATE DELIVERY MODE 07/28/2021 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): KTSDocketing2@kilpatrick.foundationip.com ipefiling@kilpatricktownsend.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte SCOTT R. PAINTIN1 ________________ Appeal 2020-003580 Application 14/040,013 Technology Center 3600 ________________ Before CAROLYN D. THOMAS, BRADLEY W. BAUMEISTER, and MICHAEL J. ENGLE, Administrative Patent Judges. BAUMEISTER, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1, 4, 9, 25, 26, 31, 32, 37–40, 42–44, 46, and 47, which constitute all claims pending in this application. Appeal Br. 7–12. We have jurisdiction under 35 U.S.C. § 6(b). The Board conducts a limited de novo review of the appealed rejections for error based upon the issues identified by Appellant, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). We reverse. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies The Western Union Company as the real party in interest. Appeal Brief filed November 18, 2019 (“Appeal Br.”) 2. Appeal 2020-003580 Application 14/040,013 2 CLAIMED SUBJECT MATTER Appellant describes the present invention as follows: Financial instruments are produced at a remote location by a 3D printer. In one embodiment, a request is made for a financial instrument, such as a prepaid gift instrument, by user system(s) at the remote location(s). The user system(s) may be at one or more of a retailer location, a money transfer agent location, or an instrument holder or recipient location (such as at an instrument holder/recipient’s residence). An instrument issuer may transmit a print file to a user system[,] which may[,] in turn[,] provide the print file to the 3D printer in order to produce the instrument. At least . . . a portion of the print file may be rendered unusable at the user system after being provided to or used by the 3D printer, in order to prevent use of the print file to produce unauthorized copies of the instrument. Abstract. Independent claim 1 illustrates the appealed claims. Claim 1 is reproduced below with paragraph designators added for clarity and emphasis added to the disputed claim language: 1. A method for production of a three-dimensional printed object at a remote location, the method comprising: [(a)] receiving, at a host computer system, a request from a user system at the remote location for a printed object; [(b)] in response to the request, generating at the host computer system a print file, wherein the print file comprises a plurality of data matrices storing instrument production data, wherein each of the plurality of data matrices defines a separate printing layer to be deposited at a printing tray of a 3D printer for producing the printed object, and wherein the print file comprises: a first subset of data matrices corresponding to one or more of printing layers that do not contain individual instrument data associated with a user; a second subset of data matrices corresponding to one or more of the printing layers that do contain Appeal 2020-003580 Application 14/040,013 3 individual instrument data associated with the user, wherein the individual instrument data includes an account number associated with the user; [(c)] sending, from the host computer system, the print file to the user system; [(d)] storing the print file at the user system for use by the 3D printer; [(e)] transmitting the print file from the user system to the 3D printer; [(f)] after transmitting the print file from the user system to the 3D printer, scrambling the second subset of data matrices within the print file to render unusable, by the 3D printer, the second subset of data matrices, [(g)] producing, based on the print file, a first three-dimensional printed object, the first three-dimensional printed object containing printing layers associated with the first subset of data matrices and the second subset of data matrices; and [(h)] producing, based on the print file, a second three- dimensional printed object, the second three-dimensional printed object containing printing layers associated with the first subset of data matrices, but not the second subset of data matrices. STATEMENT OF THE REJECTIONS Claims 1, 4, 9, 25, 26, 31, 40, 44, 46, and 47 stand rejected under 35 U.S.C. § 103 as being unpatentable over Ghosh (US 2015/0088290 A1; published Mar. 26, 2015), Isbjornssund (US 2014/0058959 A1; published Feb. 27, 2014), and Sella (US 2012/0308805 A1; published Dec. 6, 2012). Final Act. 5–25, 30–48. Claim 32 stands rejected under 35 U.S.C. § 103 as being unpatentable over Ghosh, Isbjornssund, Sella, and Prati (US 2012/0019867 A1; published Jan. 26, 2012). Final Act. 25–28. Appeal 2020-003580 Application 14/040,013 4 Claim 37 stands rejected under 35 U.S.C. § 103 as being unpatentable over Ghosh, Isbjornssund, Sella, and Edwards (US 2013/0163008 A1; published June 27, 2013). Final Act. 27–28. Claims 38 and 39 stand rejected under 35 U.S.C. § 103 as being unpatentable over Ghosh, Isbjornssund, Sella, and O’Hara (US 2003/0058084 A1; published Mar. 27, 2003). Final Act. 28–30. Claims 42 and 43 stand rejected under 35 U.S.C. § 103 as being unpatentable over Ghosh, Isbjornssund, Sella, and Kasahara (US 2003/0193542 A1; published Oct. 16, 2003). Final Act. 48–52. DETERMINATIONS AND CONTENTIONS The Examiner relies on Ghosh to teach a process whereby a three- dimensional object printer fabricates a first and a second payment card with a model data file obtained from a card issuer on request by a consumer (limitations (a)–(e), (g), and (h)). Final Action mailed June 6, 2019 (“Final Act.”) 6–8. The Examiner relies on Sella for additional evidence that each of the actual fabrication steps (limitations (g) and (h)) proceed by a layer-by- layer deposition of specific materials at specific locations and determines that motivation existed to combine the references. Id. at 12–13. The Examiner relies on Isbjornssund to teach that, just before the fabrication steps, but immediately after sending the printing instructions from the user system to the three-dimensional object printer, a subset of the data contained in the model data file is “scrambled” so as to “render [the subset of the data] unusable, by the 3D printer,” as recited in limitation (f). Final Act. 9–12. The Examiner here too determines that motivation existed to combine the references. Id. at 11–12. Appeal 2020-003580 Application 14/040,013 5 More specifically, the Examiner finds that Isbjornssund discloses the claimed “scrambling” step because Isbjornssund teaches encrypting the data models used by the printer. Final Act. 11 (citing Isbjornssund ¶ 136). The Examiner equates “scrambling” with encryption based on the ordinary meaning of “scrambling” in the computer arts, i.e., encoding a signal to make it unintelligible unless decoded. Examiner’s Answer, mailed Feb. 12, 2020 (“Ans.”) 7 (citing “Computer Dictionary”). According to the Examiner, encryption too causes data to become undecipherable to an unauthorized viewer. Id. The Examiner further finds that Isbjornssund teaches the temporal aspect of claim 1’s limitation (f), i.e., the scrambling occurs specifically “after transmitting the print file from the user system to the 3D printer,” because Isbjornssund teaches that a license to fabricate an object can be rescinded at any time. Final Act. 10 (citing Isbjornssund ¶ 59). The Examiner also cites Isbjornssund for teaching that licensing restricts the maximum amount of time a printer can be offline or not updated before it restricts further printing. Ans. 9 (citing Isbjornssund ¶ 89). The Examiner finds Isbjornssund discloses the claim requirement of “scrambling the second subset of data matrices within the print file to render unusable, by the 3D printer, the second subset of data matrices” because Isbjornssund teaches partially encrypting the model data, i.e., splitting the model data into pieces and encrypting each piece with its own encryption key. Final Act. 11 (citing Isbjornssund ¶ 136). According to the Examiner, the prior art explicitly states that after the 3D object file is in the user hand that the user is told that reproduction is restricted and stopping the copying, alternating, removing or streaming of the 3D object by altering the 3D object unusable and offering a Appeal 2020-003580 Application 14/040,013 6 license and teaches in para 0136 “every 3D model could be split into many pieces, and each peace may be encrypted with its own encryption key ....” Ans. 7–8 (citing Isbjornssund ¶¶ 52, 136). Appellant contends that the Examiner is improperly conflating rescinding authorization with scrambling or encryption. Appeal Br. 10. Appellant agrees that paragraph 136 of Isbjornssund teaches encrypting the model data, but argues that, contrary to the Examiner’s assertions, Isbjornssund is silent with respect to the timing of the encryption. Id. In particular, Appellant argues Isbjornssund does not teach that the encryption or partial encryption occurs specifically “after transmitting the print file from the user system to the 3D printer,” as claimed. Id. Appellant further argues that the act of encrypting or scrambling modifies the actual model data used by the printer, whereas revocation of a privilege (e.g., a license) associated with the data in no way requires that this data be automatically encrypted or scrambled. Id. at 11. ANALYSIS As an initial matter, we note that Ghosh only describes steps to produce a single, fully printed, card. See Ghosh Abstract, ¶¶ 18, 22, 26–29, 32, 37–39, 48, 50, 61. However, the Examiner finds that Ghosh describes a scenario where a consumer discovers that he has lost his card and obtains permission to reprint the same card. Final Act. 8 (citing Ghosh ¶ 54). The Examiner also explains that three-dimensional object printing is an inherently additive process whereby different subsets of data are printed at different times and in different layers. Ans. 4 (citing Ghosh ¶¶ 22, 50). Appeal 2020-003580 Application 14/040,013 7 As an initial matter we note that it is difficult to precisely interpret the Examiner’s rationale because the Examiner fails to clearly explain it. However, reading these rationales as a whole, several possible interpretation flow therefrom. For example, we understand the Examiner’s position to be that Ghosh discloses fabricating a second, partially printed card because the same additive process may be reused a second time to begin producing a second replacement card. Additionally, we further understand the Examiner’s position to be that in the event that a license to print the second data matrices (the private information) is withdrawn after the print file is transferred to the printer, and while a second card is in the process of being printed, then the second card will only be partially printed, thereby reading on limitation (h) of claim 1. We turn, then, to the Examiner’s reliance on Isbjornssund to cure the deficiency of Ghosh with respect to the limitation “after transmitting the print file from the user system to the 3D printer, scrambling the second subset of data matrices within the print file to render unusable, by the 3D printer, the second subset of data matrices,” as recited in limitation (f). Here, we understand the Examiner’s position to be that Isbjornssund teaches encrypting data so that only a user in possession of a proper license can access or read the encrypted data. Final Act. 9–11; Ans. 7–8. We also understand the Examiner’s position to be that different portions of the data can be encrypted separately. Id. Further, we understand that the Examiner is not relying on the act of initially encrypting the data as corresponding to the claim step of scrambling the data matrices to make them unusable. Id. But rather, the Examiner is relying on the subsequent step of either (A) altering the 3D object to render it unusable if the system detects a Appeal 2020-003580 Application 14/040,013 8 restriction (e.g., if the user does not have a license) or (B) revoking the license of at least one portion of the encrypted data. Id. Turning to the cited art, Isbjornssund teaches offering licenses to permit the printing of encrypted data, and that the licenses are freely revocable by the rights holder at any time. See, e.g., Isbjornssund ¶¶ 52, 59. Even if Isbjornssund’s disclosure that a license is revocable at any time sufficiently teaches that the license may be revoked specifically “after transmitting the print file from the user system to the 3D printer,” we still agree with Appellant that the Examiner has not established a prima facie showing of unpatentability. The Examiner has not shown that Isbjornssund’s act of revoking a license is the same thing as “scrambling” data, as claim 1 more specifically requires. Data can be scrambled when it is encrypted. But in the context here, revoking a license could merely entail revoking a user’s ability to decrypt, descramble, or read data that has already been scrambled. Isbjornssund also teaches options of what to do if a user attempts to copy a 3D object that has restrictions, such as “intellectual property rights” (“IPR”), “prohibited items such as weapons and firearms,” or “rights to personal image (likeness).” Isbjornssund ¶¶ 49–53. The “appropriate affirmative action” may include (A) sending a notice or warning to the user that reproduction of the 3D object is illegal or subject to intellectual property rights, (B) stopping reproduction, (C) “offering the user a license for fee,” and (D) “altering the reproduced 3D object to make it safe or unusable for prohibited purposes.” Id. ¶ 52. To the extent the Examiner relies on the latter of these for teaching the “scrambling” limitation (see Ans. 7–8), even if we assume that “altering” is “scrambling,” we agree with Appellant that Appeal 2020-003580 Application 14/040,013 9 this portion of Isbjornssund teaches altering “the reproduced 3D object,” not “the second subset of data matrices within the print file” as required by the claim. Reply Br. 4. Because the Examiner has not sufficiently established that Isbjornssund teaches or suggests scrambling the second subset of data matrices after the print file is transmitted from the user system to the 3D printer, the Examiner has not established a prima facie showing of obviousness. We, therefore, reverse the Examiner’s obviousness rejection of independent claim 1, and of independent claims 25 and 40, which recite similar claim language. See Appeal Br. 14–17. We, likewise, reverse the obviousness rejections of claims 4, 9, 26, 31, 44, 46, and 47, which depend from claims 1, 25, and 40. With respect to the remaining obviousness rejections of claims 32, 37–39, 42, and 43, the Examiner does not rely on any of the additionally cited references to cure the above-noted deficiency in the obviousness rejection of claim 1. See Final Act. 25–30, 49–52. Accordingly, we reverse these rejections for the same reasons set forth above in relation to claim 1. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 4, 9, 25, 26, 31, 40, 44, 46, 47 103 Ghosh, Isbjornssund, Sella 1, 4, 9, 25, 26, 31, 40, 44, 46, 47 32 103 Ghosh, Isbjornssund, Sella, Prati 32 37 103 Ghosh, Isbjornssund, Sella, Edwards 37 Appeal 2020-003580 Application 14/040,013 10 REVERSED 38, 39 103 Ghosh, Isbjornssund, Sella, O’Hara 38, 39 42, 43 103 Ghosh, Isbjornssund, Sella, Kasahara 42, 43 Overall Outcome 1, 4, 9, 25, 26, 31, 32, 37–40, 42– 44, 46, 47 Copy with citationCopy as parenthetical citation