10458636 (B.P.A.I. Nov. 29, 2010)

Ex Parte Fink et al

Board of Patent Appeals and InterferencesNov 29, 2010

10458636 (B.P.A.I. Nov. 29, 2010)

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. 10/458,636 06/10/2003 Jeffrey E. Fink U07888US:67.397-089PUS1 1988 54549 7590 11/29/2010 CARLSON, GASKEY & OLDS/PRATT & WHITNEY 400 WEST MAPLE ROAD SUITE 350 BIRMINGHAM, MI 48009 EXAMINER TENTONI, LEO B ART UNIT PAPER NUMBER 1742 MAIL DATE DELIVERY MODE 11/29/2010 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ________________ Ex parte JEFFREY E. FINK, TRACY L. TAYLOR, LORI A. WEGNER, and BRYON SHAPEY ________________ Appeal 2009-014939 Application 10/458,636 Technology Center 1700 ________________ Before TERRY J. OWENS, BEVERLY A. FRANKLIN, and KAREN M. HASTINGS, Administrative Patent Judges. OWENS, Administrative Patent Judge. DECISION ON APPEAL1 STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1-7, 9-12, 14-17 and 28-31, which are all of the pending claims. We have jurisdiction under 35 U.S.C. § 6(b). 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-014939 Application 10/458,636 2 The Invention The Appellants claim methods for improving parts produced from a rapid prototyping machine such as a selective laser sintering machine. Claim 1 is illustrative: 1. A method for improving a part produced from a rapid prototyping machine, wherein the rapid prototyping machine makes use of a rapid prototyping material, the method comprising: determining material characteristics of the rapid prototyping material; determining machine parameters of the rapid prototyping machine; performing a thermal analysis on a parts bed of the rapid prototyping machine, wherein at least said material characteristics, said machine parameters and said thermal analysis form an information set; building a plurality of test specimens with the rapid prototyping machine based upon the information set, the test specimens having properties corresponding to properties of the part; comparing the properties of said plurality of test specimens to input data for said plurality of test specimens to produce a resultant data set that at least includes deviations between said input data and said properties of said plurality of test specimens; adjusting said information set for the part based on said resultant data set for said plurality of test specimens; and Appeal 2009-014939 Application 10/458,636 3 establishing locations for the part in said parts bed based upon the adjusted information set to reduce deviations between the part and input data for the part. The References Barlow 5,284,695 Feb. 8, 1994 Beaman 5,352,405 Oct. 4, 1994 Pennisi 5,659,478 Aug. 19, 1997 Chassé 5,742,511 Apr. 21, 1998 Leyden 2002/0011693 A1 Jan. 31, 2002 Chung 6,815,636 B2 Nov. 9, 2004 (filed Apr. 9, 2003) Cooper, K.G., Rapid Prototyping Technology 3-11 (Dekker 2001). The Rejections The claims stand rejected under 35 U.S.C. § 103 as follows: claims 1- 7 and 28-31 over Cooper or Pennisi, in view of Chung and Beaman; claim 9 over Cooper or Pennisi, in view of Chung, Beaman and either Chassé or Leyden; claims 10, 11, 14 and 16 over Cooper or Pennisi, in view of Beaman; claims 12 and 17 over Cooper or Pennisi, in view of Beaman and Chung; and claim 15 over Cooper or Pennisi, in view of Beaman and either Chassé or Leyden.2 OPINION We reverse the rejections. 2 Rejections of claims 1-7, 9 and 28-31 under 35 U.S.C. § 112, first paragraph, written description requirement, and claims 1, 2, 5, 28, 29 and 31 under 35 U.S.C. § 112, second paragraph are withdrawn in the Examiner’s Answer (Ans. 2). Appeal 2009-014939 Application 10/458,636 4 Issue Have the Appellants indicated reversible error in the Examiner’s determination that the applied prior art would have rendered prima facie obvious, to one of ordinary skill in the art, establishing a part location in a rapid prototype machine parts bed based upon information obtained from iterative improvement (i.e., test) specimens? Analysis The Examiner has the initial burden of establishing a prima facie case of obviousness. See In re Piasecki, 745 F.2d 1468, 1472 (Fed. Cir. 1984); In re Rinehart, 531 F.2d 1048, 1051 (CCPA 1976). The Appellants argue with respect to independent claims 1 and 31 that “[t]he cited references simply do not teach building test specimens to facilitate determining at what location a part should be produced in a prototype machine bed” (Br. 7, 9) and argue with respect to independent claim 10 that “[n]one of the cited references teach using iterative improvement specimens that are formed with the parts in order to establish part location” (Br. 8, 10-11). In the Response to Argument section of the Examiner’s Answer the Examiner does not respond to the above arguments by the Appellants. In the Grounds of Rejection section of the Examiner’s Answer the Examiner argues that “Beaman et al[.] (see the entire document, in particular, col. 2, lines 15-31; col. 6, lines 20-43; col. 8, line 6 to col. 11, line 68) teaches a rapid prototyping process including the step of locating at least two parts in different areas of a parts bed” (Ans. 5, 6, 8, 9). Beaman discloses forming multiple unconnected objects in a single parts bed (col. 6, ll. 25-26; Fig. 3a). The Appellants’ claims, however, Appeal 2009-014939 Application 10/458,636 5 require establishing a part location in a parts bed based upon information obtained from iterative improvement (i.e., test) specimens. The Examiner has not explained how the applied prior art would have rendered that claim requirement prima facie obvious to one of ordinary skill in the art. Conclusion of Law The Appellants have indicated reversible error in the Examiner’s determination that the applied prior art would have rendered prima facie obvious, to one of ordinary skill in the art, establishing a part location in a rapid prototype machine parts bed based upon information obtained from iterative improvement (i.e., test) specimens. DECISION/ORDER The rejections under 35 U.S.C. § 103 of claims 1-7 and 28-31 over Cooper or Pennisi, in view of Chung and Beaman, claim 9 over Cooper or Pennisi, in view of Chung, Beaman and either Chassé or Leyden, claims 10, 11, 14 and 16 over Cooper or Pennisi, in view of Beaman, claims 12 and 17 over Cooper or Pennisi, in view of Beaman and Chung, and claim 15 over Cooper or Pennisi, in view of Beaman and either Chassé or Leyden are reversed. It is ordered that the Examiner’s decision is reversed. REVERSED kmm CARLSON, GASKEY & OLDS/PRATT & WHITNEY 400 WEST MAPLE ROAD SUITE 350 BIRMINGHAM, MI 48009