11378919 (B.P.A.I. Jun. 25, 2009)

Ex Parte Barr et al

Board of Patent Appeals and InterferencesJun 25, 2009

11378919 (B.P.A.I. Jun. 25, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte ROBERT K. BARR, JAMES T. FAHEY, COREY O’CONNOR, and JAMES G. SHELNUT ____________ Appeal 2009-002255 Application 11/378,919 Technology Center 1700 ____________ Decided:1 June 25, 2009 ____________ Before TERRY J. OWENS, JEFFREY T. SMITH, and JEFFREY B. ROBERTSON, Administrative Patent Judges. ROBERTSON, Administrative Patent Judge. 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 2009-002255 Application 11/378,919 2 DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of pending claims 1-11. (Examiner’s Answer entered June 23, 2008, hereinafter “Ans.”). We have jurisdiction pursuant to 35 U.S.C. § 6(b). Appellants describe a method whereby a computer programmed 3-D image is projected on a work piece with a laser, a photosensitive composition is applied to the work piece, and a pattern is formed on the photosensitive composition via the computer programmed 3-D image. (Spec. 42-43). Claim 1, the only independent claim on appeal, is representative and recites: 1. A method comprising: a) projecting a computer programmed 3-D image with a laser on a work piece at a beam scan speed in a projecting mode; b) applying a photosensitive composition to the work piece as directed by the image formed on the work piece in the projecting mode; and c) reducing the beam scan speed of the computer programmed 3-D image to a beam scan speed in a [sic] image recording projection mode to form a pattern on the photosensitive composition. The prior art relied upon by the Examiner in rejecting the claims on appeal is: Telfer 5,681,676 Oct. 28, 1997 Appeal 2009-002255 Application 11/378,919 3 Kaufman 6,547,397 B1 Apr. 15, 2003 The Examiner rejected claims 1-11 under 35 U.S.C. § 103(a) as being unpatentable over Telfer in view of Kaufman. In rejecting the claims on appeal, the Examiner found that Telfer discloses “projecting a 3-D image onto the imaging composition (col. 3, lines 20-29).” (Ans. 3). The Examiner found that “Telfer does not teach that the 3-D image is projected from a projector in a one system head to the workpiece from a distance from the projector.” (Ans. 4). The Examiner found that “Kaufman teaches a 3-D imaging method comprising applying an imaging composition to a workpiece, providing a 3-D imaging system, positioning the workpiece and applying energy to the imaging composition to affect color change.” (Ans. 4). The Examiner concluded that it would have been obvious to use the 3-D projector system of Kaufman “to accurately project the 3-D imaging composition [of Telfer] onto the workpiece as taught by Kaufman (col. 3, lines 42-51).” (Ans. 5). Appellants contend that the applied prior art does not teach or suggest all the elements of the claimed method. (App. Br. 8). Appellants argue that Telfer teaches forming two-dimensional images on an imaging medium with a laser, and that Telfer is silent on projecting a 3-D image with a laser onto an imaging medium. (App. Br. 8 and 9). Appellants contend that Kaufman fails to make up for the deficiencies of Telfer, where Kaufman fails to disclose applying an image composition to a workpiece. (App. Br. 9 and 10). ISSUE The issue is: Have Appellants shown reversible error in the Examiner’s determination that applying the 3-D imaging system disclosed in Appeal 2009-002255 Application 11/378,919 4 Kaufman to the 3-D imaging method disclosed in Telfer would have rendered the claimed method obvious to one of ordinary skill in the art? FINDINGS OF FACT The record supports the following Findings of Fact (FF) by a preponderance of the evidence. 1. Telfer describes a three-dimensional imaging technique, where “a plurality of two-dimensional images of the object from various positions are determined . . . each of these two-dimensional images is separated into a plurality of strips . . . and one strip from each two-dimensional image . . . is placed in each of the image areas.” (Col. 5, ll. 24-36). 2. Telfer discloses that the composite image formed from the image strips is written into a radiation sensitive layer. (Col. 14, ll. 40-56; col. 22, ll. 27-56). 3. Telfer discloses that an orthoscopic three dimensional image is observed by viewing the composite image appearing behind a plane of a radiation sensitive layer. (Col. 22, ll. 55-62). 4. Kaufman discloses a laser projector for projecting a 3-D image onto an object having contoured surfaces. (Col. 1, ll. 6-18). 5. Kaufman is silent as to applying an imaging composition to a workpiece. (See Kaufman, generally). Appeal 2009-002255 Application 11/378,919 5 PRINCIPLES OF LAW “‘[R]ejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’” KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007), (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)). ANALYSIS We agree with Appellants, that the Examiner erred in finding that Telfer discloses projecting a 3-D image onto an imaging composition. Contrary to the Examiner’s position, Telfer discloses that two-dimensional images are applied to an imaging medium, and that a 3-D image appears behind the plane of an imaging medium. (FF 1-3). We also agree with Appellants that the Examiner erred in finding that Kaufman discloses or suggests applying an imaging composition to a work piece. We, like Appellants, are unable to find any such disclosure in Kaufman. (FF 5). The Examiner has failed to identify a specific embodiment in Kaufman where an imaging composition is applied to a work piece. Accordingly, the Examiner has not provided a sufficient reason why one of ordinary skill in the art would have employed the 3-D projection method of Kaufman to apply the two-dimensional images of Telfer to an imaging medium. In addition, the Examiner has not provided sufficient rational underpinning to support the position that Kaufman must have an imaging composition on a work piece in the area where the energy from the 3-D imaging system falls. As discussed supra, Kaufman is silent as to the presence of an imaging composition and the Examiner does not provide Appeal 2009-002255 Application 11/378,919 6 additional sufficient support for the addition of an imaging composition to Kaufman’s method. CONCLUSION Appellants have shown reversible error in the Examiner’s determination that applying the 3-D imaging system disclosed in Kaufman to the 3-D imaging method disclosed in Telfer would have rendered the claimed method obvious to one of ordinary skill in the art. ORDER We reverse the Examiner’s decision rejecting claims 1-11 under 35 U.S.C. § 103(a) as being unpatentable over Telfer in view of Kaufman. REVERSED PL initial: sld ROHM AND HAAS ELECTRONIC MATERIALS LLC 455 FOREST STREET MARLBOROUGH, MA 01752