3SHAPE A/S

Patent Trials and Appeals Board

Mar 21, 2022

2022000003 (P.T.A.B. Mar. 21, 2022)

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. 16/312,045 12/20/2018 Rasmus KJAER 0079124-000235 3227 21839 7590 03/21/2022 BUCHANAN, INGERSOLL & ROONEY PC 1737 KING STREET SUITE 500 ALEXANDRIA, VA 22314-2727 EXAMINER MIKESKA, NEIL R ART UNIT PAPER NUMBER 2485 NOTIFICATION DATE DELIVERY MODE 03/21/2022 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): ADIPDOC1@BIPC.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte RASMUS KJAER, THOMAS ALLIN HOJGAARD, and HERMAN SCHERLING ____________ Appeal 2022-000003 Application 16/312,045 Technology Center 2400 ____________ Before ALLEN R. MACDONALD, CAROLYN D. THOMAS, and JASON V. MORGAN, Administrative Patent Judges. THOMAS, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-34. See Claims App. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). An Oral Hearing was held on March 10, 2022. We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as 3Shape A/S. Appeal Br. 2. Appeal 2022-000003 Application 16/312,045 2 The present invention relates generally to a 3D scanner for recording the 3D topography of an object. See Spec. Abstr. Claim 1, reproduced below with disputed limitations emphasized, is representative: 1. A 3D scanner for recording a digital 3D representation of an object, the 3D scanner comprising: a projector unit configured for projecting a structured beam of probe light comprising a pattern onto the object which is placed in a scan volume, the object comprising a dental impression or a physical dental object; an imaging unit arranged to acquire 2D images of the pattern imaged onto the object when the object is illuminated by the structured probe light beam; and an actuator unit arranged to control the position of the structured probe light beam at the object by rotating a movable portion of the projector unit around a pivoting axis, the actuator unit comprising a rotation motor comprising or arranged to drive a wheel, where a surface of the wheel is operatively coupled to the movable portion of the projector unit and has a radial distance from the axis of the rotation motor which changes with the rotation. REFERENCES The references relied upon by the Examiner are: Name Reference Date Huang US 2009/0231660 A1 Sept. 17, 2009 Fisker US 2012/0092461 A1 Apr. 19, 2012 Bridges US 2013/0016338 A1 Jan. 17, 2013 Jumpertz US 2016/0008111 A1 Jan. 14, 2016 Pfeiffer US 2018/0125338 A1 May 10, 2018 Appeal 2022-000003 Application 16/312,045 3 REJECTIONS R1. Claims 1, 2, 4-14,2 17, 18, 21, and 25 are rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Huang and Jumpertz. Final Act. 2-5. R2. Claims 3, 16, 19, and 20 are rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Huang, Jumpertz, and Bridges. Final Act. 5-6. R3. Claims 15 is rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Huang, Jumpertz, and Pfeiffer. Final Act. 6. R4. Claims 22-24 and 26-34 are rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Huang, Jumpertz, and Fisker. Final Act. 6-11. We review 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). ANALYSIS We refer to, rely on, and adopt the Examiner’s findings and conclusions set forth in the Answer. Our discussions here will be limited to the following points of emphasis. 2 The header of the rejection fails to list claim 12, however, the body of the rejection discusses claim 12. Therefore, we shall treat claim 12 as being rejected under Huang in view of Jumpertz. Appeal 2022-000003 Application 16/312,045 4 Firstly, regarding the claimed “a projector unit configured for projecting a structured beam of probe light comprising a pattern ono the object” (see claim 1), Appellant contends that in Huang “[t]here is only one light source 50, and thus, only one light sheet 4 at a time and the one light sheet does not represent or include a pattern” (Appeal Br. 7) because the light sheet in Huang is just “a plain, unmodified sheet of light. The light sheet does not contain a pattern.” Id. at 8. In response, the Examiner finds, and we agree, that Huang teaches “‘a moving light sheet or a plurality [of] light sheets existing in different timepoints and at different positions.’ The effect of a plurality of light sheets at different positions is to create a light sheet pattern on the object being imaged.” Ans. 13. The Examiner also concludes that “claim [1] does not specify whether a pattern is temporal, spatial, or whether a pattern excludes a sheet of light.” Id. We agree with the Examiner’s claim interpretation. Even if we were to agree with Appellant’s aforementioned contention that “one light sheet does not represent or include a pattern,” this argument fails to rebut the Examiner’s specific finding that the effect of a plurality of light sheets at different positions creates a light sheet pattern. For example, Huang discloses that “for a period of time, it could be considered as a moving light sheet or a plurality [of] light sheets existing in different time points and at different positions.” Huang ¶ 48. It is this embodiment, wherein there is a moving light sheet, that the Examiner is relying on to teach the probe light comprising a pattern. Appellant’s contention regarding one light sheet fails to sufficiently address the specific embodiment realized by a plurality of light sheets, i.e., the concept of moving a light sheet. Appeal 2022-000003 Application 16/312,045 5 Additionally, Huang discloses that the observing device utilize adjusting lens “to collimate the light beam” (Huang ¶ 10), which we find suggests parallel beams, i.e., a pattern of light. We agree with the Examiner that claim 1 does not place any temporal limitations on the pattern formation. As such, we find that the claimed “pattern” reads on Huang’s plurality of light sheets existing in different time points and at different positions in the flow field, given that the moving light sheet produces collimate beams at different positions, the essence of a pattern. Secondly, Appellant contends that [w]hen Huang takes an image at a particular light sheet 4, the entire light sheet is in focus. Huang does not teach or suggest compiling 3D data from the series of 2D images that it takes. . . . Accordingly, Huang does not teach or suggest a 3D scanner with a structured beam. Appeal Br. 9. In response, the Examiner finds, and we agree, that “these feature (i.e. wherein the pattern is only in focus at a specific Z-axis plane, and compiling 3D data from the series of 2D images) are not claimed.” Ans. 13. Thus, we find that Appellant’s aforementioned contentions are not commensurate with the scope of claim 1. To be relevant, evidence of nonobviousness must be commensurate in scope with the claimed invention. In re Huai-Hung Kao, 639 F.3d 1057, 1068 (Fed. Cir. 2011). In any case, we find that Huang teaches a 3D scanner with a structured beam. For example, Huang discloses “the present invention is an observing device for observing a three-dimensional flow field.” Huang ¶ 41. Huang further discloses that “[t]he observing device comprises a light source generating a light beam, light-deflecting device deflecting the light beam, Appeal 2022-000003 Application 16/312,045 6 and a light sheet-generating component receiving the light beam . . . and generating a light sheet.” Huang ¶ 9. Huang also discloses that “the observing device further comprises an adjusting lens . . . to collimate the light beam deflected by the light-deflecting device.” Id. at 10. We find that the aforementioned teachings suggest using a 3D scanner with a structured beam. Additionally, we note that Jumpertz teaches “[f]or optical capture of the surface of the dental shaped part the 3D measurement camera . . . can have an optical image-recording camera and a structured-light projector.” Jumpertz ¶ 49. As such, we find that the combined teachings of Huang and Jumpertz teach and/or suggest a projector unit configured for projecting a structured beam of probe light. Thirdly, Appellant contends that “there is no reason why one of skill in the art would use the Huang technology to measure the flow around a dental object. . . . [because Huang’s] technology is used [for] . . . aeronautics devices” (Appeal Br. 10), and “there is also no reason why one would use the Jumpertz technology with a flow filed detector.” Id. Appellant further contends that the two systems in Huang and Jumpertz are incompatible (id.) because they “relate to different technologies, i.e., dental devices and air flow fields.” Id. at 11. In other words, Appellant contends that the Examiner’s reason to combine Huang and Jumpertz is improper. We disagree with Appellant. The Examiner finds: However, Jumpertz teaches that a person skilled in the art would understand that a dental impression or any physical dental object can be measured and characterized using a 3[D] scanner. A person would be motivated to combine the teachings based on the understanding that a substitution of one known element for another (i.e. a dental Appeal 2022-000003 Application 16/312,045 7 object) will obtain predictable and desirable results (i.e. providing 3[D] scanning data for a different object). Ans. 13. We agree with the Examiner. “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results,” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007), especially if the combination would not be “uniquely challenging or difficult for one of ordinary skill in the art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). Jumpertz discloses an “extraoral dental scanner 100 . . . used for the three-dimensional capture of the surface of a dental shaped part.” Jumpertz ¶ 75. Huang discloses observing and scanning “a three-dimensional flow field.” Huang ¶ 41. As such, we find that both Jumpertz and Huang consider three-dimensional scanning. Although the objects being observed may be different, we agree with the Examiner that a substitution of one known element with another element during such three-dimensional scanning will yield predictable results. Fourthly, Appellant contends that “[t]here is no explanation as to how the teachings of Fisker would be combined with the teachings of Huang” (Appeal Br. 17), because “it is not understood how or where the mask from Fisker would be placed.” Id. at 18. In other words, Appellant is arguing that Fisker’s mask cannot be bodily incorporated into Huang’s system, and to do so would render Huang’s system inoperable. However, “[t]he test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference,” but rather “what the combined Appeal 2022-000003 Application 16/312,045 8 teachings of those references would have suggested.” In re Keller, 642 F.2d 413, 425 (CCPA 1981). Here, we find that Appellant has not demonstrated error in the Examiner’s combination of the references to form the claimed invention. Instead, Appellant is merely arguing that Fisker’s mask cannot be bodily incorporated into Huang’s system. Such an argument is not sufficient to rebut the Examiners’ prima facie case of obviousness because this is not the test for obviousness. Rather, Appellant needs to, yet fails to, illustrate why the combine teachings of Huang, Jumpertz, and Fisker would not have suggested the claimed invention. Appellant further contends that “[s]uch a combination would render Huang unusable for its intended purpose.” Appeal Br. 19. This argument is another form of a teaching away argument. See In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1382 (Fed. Cir. 2007). The Federal Circuit has held “[a] reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Kahn, 441 F.3d 977, 990 (Fed. Cir. 2006) (quoting In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994)). Here, Appellant has not sufficiently shown that Fisker or Huang criticizes, discredits, or otherwise discourages scanning a dental device. To the extent that Appellant’s argument stems from Appellant’s flawed contention that “Huang does not utilize patterns” (see Appeal Br. 14), we find Appellant’s argument unavailing given that, as noted supra, Huang teaches collimating the light beam and moving a position of a light sheet, creating a pattern in the flow field. Appeal 2022-000003 Application 16/312,045 9 Accordingly, we sustain the Examiner’s rejection of claims 1-34 for at least the reasons set forth above. CONCLUSION The Examiner’s rejections of claims 1-34 as being unpatentable under 35 U.S.C. § 103 is affirmed. In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 4-14, 17, 18, 21, 25 103 Huang, Jumpertz 1, 2, 4- 14, 17, 18, 21, 25 3, 16, 19, 20 103 Huang, Jumpertz, Bridges 3, 16, 19, 20 15 103 Huang, Jumpertz, Pfeiffer 15 22-24, 26-34 103 Huang, Jumpertz, Fisker 22-24, 26-34 Overall Outcome 1-34 No period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED