The Western Union Company

Patent Trials and Appeals Board

Jul 28, 2021

2020003580 (P.T.A.B. Jul. 28, 2021)

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.
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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
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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.
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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.
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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
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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).
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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
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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
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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
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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