Ex Parte Collins et al

Board of Patent Appeals and Interferences

Apr 21, 2010

10461022 (B.P.A.I. Apr. 21, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte DAVID C. COLLINS and LAURA KRAMER
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Appeal No. 2009-005985
Application 10/461,022
Technology Center 1700
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Decided: April 21, 2010
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Before BRADLEY R. GARRIS, CHUNG K. PAK, and TERRY J. OWENS,
Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claims 1 through 6. Claims 7 through 26, the other
pending claims in the above-identified application, stand withdrawn from
consideration by the Examiner as being drawn to a non-elected invention.
See page 2 of the final Office action dated December 20, 2005 and the
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Appeal Brief (“App Br.”) filed October 21, 2006. We have jurisdiction
under 35 U.S.C. §§ 6 and 134.
STATEMENT OF THE CASE
The subject matter on appeal is directed to a solid freeform fabrication
process for producing a three-dimensional object (Spec. 1, para. 0001).
According to pages 2 and 3, paragraphs 0005, 0006, and 0014, of the
Specification, the use of the claimed particular dispensing technique for
coloring and binder allows the vertical surfaces of the three dimensional
objects formed to “exhibit reduced color hue shifting, reduced surface
roughness, and improved dimensional accuracy.” Details of the appealed
subject matter are recited in the broadest claim on appeal, independent claim
1, reproduced from the Claims Appendix to the Appeal Brief as shown
below:
1. A method for producing an object formed through solid
freeform fabrication, said method comprising:

dispensing a binder on successive layers of build material with a
single first dispensing member; and

coloring said successive layers with at least one second dispensing
member, wherein the second dispensing member over-dispenses the first
dispensing member.

As evidence of unpatentability of the claimed subject matter, the
Examiner relies on the following sole prior art reference at page 3 of the
Answer (“Ans.”) dated August 23, 2006:
Russell 6,375,874 B1 Apr. 23, 2002

Appellants request review of the following grounds of rejection set
forth in the Answer:
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1) Claims 1 through 6 under 35 U.S.C. § 102(b) as anticipated by
the disclosure of Russell; and
2) Claims 1 through 6 under 35 U.S.C. § 103(a) as unpatentable
over the disclosure of Russell.
Appellants traverse the Examiner’s §§ 102(b) and 103(a) rejections,
arguing that Russell does not teach, nor would have suggested, over-
dispensing a colorant over an area of successive layers of build material
covered by a binder dispensed from a first dispensing member (App. Br. 6-
10 and Reply Brief (“Reply Br.”) filed October 21, 2006, 2-6).
ISSUE AND CONCLUSION
The dispositive question is: Has the Examiner shown that Russell
teaches or would have suggested over-dispensing the colorant over an area
of successive layers of build material covered by the binder dispensed from
the first dispensing member within the meaning of 35 U.S.C. §§ 102(b) or
103(a)? On this record, we answer this question in the negative.
RELEVANT FACTUAL FINDINGS
The following relevant factual findings are supported by at least a
preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427
(Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings
before the Office):
1. Appellants do not dispute the Examiner’s finding that Russell
describes a process for “making an object by solid freeform fabrication
including dispensing binder and colorant on successive layers of build
material.” (Compare Ans. 3 and 5 with App. Br. 7 and Reply Br. 2-3.)
2. Russell teaches (col. 2, ll. 10-26) that:
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Varied volumes of binder can be applied to selected
positions in the layers of build material. By applying these
varying quantities of binder, the strength of the part can be
controlled…
The binder can include color dyes. Drops of binder and
dyes can be selectively deposited on layer of build material to
create a multi-color object. In particular, the dyes can be
selectively deposited to color the outside surface of the object.
The binder itself can be uncolored or combined with the dye.

3. Russell teaches (col. 10, ll. 1-67) that:
Color ink jet print heads can be incorporated in the
binder cartridge, thereby providing the capability of printing a
wide variety of colors or ink…. As a result, an embodiment of
the invention can build three-dimensional parts which are in
color, the color varying throughout the part….
For example, a product design can produce models of
products with various color schemes and decorations already
applied to the surface. Such coloring is currently done
painstakingly by hand….
Software can adjust the color ink to use only on the outer
edges of each layer, which is the only part ultimately visible to
the users after the build is complete….
A certain quantity of liquid binder can be deposited into a
given volume of powder to produce a well-formed part. Too
much binder can result in the binder migrating beyond the
intended area of the part. This effect is customarily called
“bleeding.” Quantities of binder below this certain amount,
however, produce progressively weaker parts. It is desirable to
use an optimal quantity of binder independent of amount of
color….
The printer prints onto white powder and has two sets of
nozzles. One set of nozzles deposits a black binder, the other
set of nozzles deposits white binder, which should be
understood to be colorless or clear binder. At each locating in
the part being built, the two types of binders are deposited in a
ratio to produce the shade of gray, white, or black desired in
that region of part….
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…Algorithms also exist for dithering and halftoning
techniques to determine the optimal placement of droplets that
fall on what will be the surface of the finished part.
By adding additional nozzles that deposit other colors of
binder, the above schemes can be extended to produce full-
color parts.

PRINCIPLES OF LAW
As stated in In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007):
[T]he PTO must give claims their broadest reasonable
construction consistent with the specification. Therefore, we
look to the specification to see if it provides a definition for
claim terms, but otherwise apply a broad interpretation.
(Citation omitted.)

The Specification “acts as dictionary when it expressly defines terms used in
the claims or when it defines terms by implication.” Vitronics Corp. v.
Conceptronics, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996).
For a claim to be anticipated under 35 U.S.C. § 102(b), each claim
element must be disclosed, either expressly or inherently, in a single prior art
reference, and the claimed arrangement or combination of those elements
must also be disclosed, either expressly or inherently, in that same prior art
reference. Therasence, Inc. v. Becton, Dickinson and Co., 593 F.3d 1325,
1332-33 (Fed. Cir. 2010).
When an examiner relies upon a theory of inherency, there must be “a
basis in fact and/or technical reasoning to reasonably support the
determination that the allegedly inherent characteristic necessarily flows
from the teachings of the applied prior art.” Ex parte Levy, 17 USPQ2d
1461, 1464 (BPAI 1990). An inherent characteristic must be inevitable, and
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not merely a possibility or probability. See In re Oelrich, 666 F.2d 578, 581
(CCPA 1981).
"[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).
The Examiner has the initial burden of establishing a prima facie case
of unpatentability. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)
(“[T]he examiner bears the initial burden, on review of the prior art or on
any other ground, of presenting a prima facie case of unpatentability.”).

ANALYSIS
As indicated by Appellants at pages 6 through 9 of the Appeal Brief
and page 2 of the Reply Brief, claim 1 requires a solid freeform fabrication
method involving “dispensing a binder on successive layers of build material
with a single first dispensing member; and coloring said successive layer
with at least one second dispensing member, wherein the second dispensing
member over-dispenses the first dispensing member.” According to page 7,
paragraph 0029, of the Specification, “[o]ver-dispensing is when the second
dispensing member dispenses to cover an area larger than the area covered
by the single first dispensing member, as shown in Figure 4” (emphasis
added.) The term “over-dispenses” recited in claim 1 is, therefore, given the
meaning expressly defined in the Specification. Vitronics Corp., 90 F.3d at
1582. In other words, the term “over-dispenses,” as recited in claim 1, is
defined as dispensing a colorant from the second dispensing member to an
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area larger than and including an area of successive layers of build material
covered by the binder dispensed from the first dispensing member as
illustrated in Figure 4.
Having interpreted claim 1 as indicated supra, we concur with
Appellants that the Examiner has not demonstrated that Russell inherently
dispenses the colorant from the second dispensing member to an area larger
than and including an area of successive layers of build material covered by
the binder dispensed from the first dispensing member as illustrated in
Figure 4. The fact that “the color of the object can vary throughout the
object” in Russell’s solid freeform fabrication method relied upon by the
Examiner at page 4 of the Answer does not indicate that the colorant from
the second dispensing member is necessarily or inherently dispensed to an
area larger than and including an area of successive layers of build material
covered by the binder dispensed from the first dispensing member.
Moreover, as correctly pointed out by Appellants at page 9 of the
Appeal Brief, Russell teaches dispensing the colorant to an area co-extensive
with the area covered by the binder dispensed from the first dispensing
member, rather than dispensing the colorant to an area larger than and
including the area of successive layers of build material covered by the
binder dispensed from the first dispensing member. The Examiner’s
reference to Russell’s disclosure regarding deposited materials (e.g., binder
and dyes) migrating beyond an intended area (bleeding) or the amount of the
colorant employed at page 5 of the Answer does not provide any reason or
suggestion which would have prompted one of ordinary skill in the art to
dispense the colorant to an area larger than and including the area covered
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by the binder dispensed from the first dispensing member as illustrated in
Figure 4.
Thus, on this record, we are constrained to agree with Appellants that
the Examiner has not shown that Russell inherently describes or would have
suggested the claimed over-dispensing step.
Accordingly, we reverse the Examiner’s decision rejecting the claims
on appeal under 35 U.S.C. §§ 102(b) and 103(a).
ORDER
In view of the foregoing, the decision of the Examiner is reversed.

REVERSED

PL Initial:
sld

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