11931131 (B.P.A.I. Jan. 31, 2012)

Ex Parte Johnson et al

Board of Patent Appeals and InterferencesJan 31, 2012

11931131 (B.P.A.I. Jan. 31, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/931,131 10/31/2007 David Johnson USA . 1036-2 1797 22514 7590 01/31/2012 3D Systems, Inc. Attn: Keith A. Roberson 333 Three D Systems Circle Rock Hill, SC 29730 EXAMINER LIGHTFOOT, ELENA TSOY ART UNIT PAPER NUMBER 1715 MAIL DATE DELIVERY MODE 01/31/2012 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 DAVID JOHNSON and JOHN WAI FONG ________________ Appeal 2010-011317 Application 11/931,131 Technology Center 1700 ________________ Before ADRIENE LEPIANE HANLON, PETER F. KRATZ, and MICHAEL P. COLAIANNI, Administrative Patent Judges. COLAIANNI, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-011317 Application 11/931,131 2 This is a decision on an appeal under 35 U.S.C. § 134 from the Examiner’s final rejection of claims 21 through 24. Claim 25, the other claim pending in this application, stands withdrawn from consideration by the Examiner. We have jurisdiction pursuant to 35 U.S.C. § 6. We REVERSE. STATEMENT OF THE CASE The subject matter on appeal is directed to a method of producing a solidified 3-D object. Claim 21 is illustrative: 21. A method for producing a solidified 3-D object comprising: (1) forming a first layer comprising a photocurable composition containing at least one photocurable monomer, at least one photoinitiator, at least one glycol or diol, and reactive particles comprising a crosslinked elastomeric core and a shell of reactive groups on an outer surface of the crosslinked elastomeric core wherein the crosslinked elastomeric core comprises a crosslinked polysiloxane material and wherein the reactive groups are epoxy groups, ethylenically unsaturated groups or hydroxy groups; (2) exposing the first layer to actinic radiation to form a hardened first layer; (3) forming a second layer comprising the photo curable composition on top of the hardened first layer; (4) exposing the second layer to actinic radiation to form a hardened second layer; and (5) repeating steps (3) - (4) as needed to produce the solidified 3-D object. The Examiner maintains the following rejections: 1) claims 21, 22, and 24 under 35 U.S.C. § 103(a) as unpatentable over Yamamura (US 6,287,745 B1, issued Sep. 11, 2001) and Block (US 4,853,434, issued Aug. 1, 1989); and Appeal 2010-011317 Application 11/931,131 3 2) claims 23 and 24 under 35 U.S.C. § 103(a) as unpatentable over Yamamura and Block, and further in view of Swei (US 6,413,286 B1, issued Jul. 2, 2002). REJECTION (1) ISSUE Did Appellants establish that the Examiner reversibly erred in determining that Yamamura teaches or would have suggested a method for producing a solidified 3-D object using a photocurable composition containing at least one glycol or diol as required by claim 21 within the meaning of § 103(a)? We decide this issue in the affirmative. PRINCIPLES OF LAW The Examiner bears the initial burden of presenting a prima facie case of unpatentability. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). “[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.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). ANALYSIS AND CONCLUSION The Examiner finds that Yamamura in its abstract and summary of the invention teaches a photocurable liquid resin composition comprising a polyether polyol compound having one or more hydroxyl groups in one molecule as its component (E). (Ans. 3 and 6). The Examiner determines that this polyether polyol compound having one or more hydroxyl groups in Appeal 2010-011317 Application 11/931,131 4 one molecule includes a polyether polyol compound having two hydroxyl groups in a molecule (e.g., diol or glycol as required by claim 21). (Id.) Appellants argue that Yamamura neither teaches nor would have suggested the use of at least one glycol or diol as required by the claim in light of Yamamura’s column 11, lines 16-19 disclosure. (App. Br. 10-11). We agree with Appellants. The Examiner has failed to direct us to any credible evidence or provide any persuasive reasoning that Yamamura teaches or would have suggested the disputed claim feature. Notwithstanding the language in the portions of Yamamura relied upon by the Examiner, Yamamura plainly teaches that its component (E) is a polyol having three or more hydroxyl groups and preferably 3 to 6 hydroxyl groups. (Yamamura, col. 11, ll. 8-16). Indeed, Yamamura teaches that “[i]f polyols having less than three hydroxyl groups (i.e., diol) are used, photo-curing characteristics can not [sic] be attained and the resulting three-dimensional object lacks the desired mechanical strength.” (Id. at ll. 16-20) (emphasis added). In this regard, Yamamura teaches that a photocurable liquid resin composition exhibiting superior photocurability and high mechanical strength is essential to its invention. (Id. at col. 1, ll. 5-10, col. 3, ll. 31-62, and col. 29, ll. 55-63). Thus, we agree with Appellants that Yamamura fails to provide any teaching or suggestion of using a diol or glycol as required by claim 21. In addition, we note that the Examiner does not rely on Block to satisfy the disputed claim feature. Accordingly, we do not sustain the Examiner’s § 103 rejection. Appeal 2010-011317 Application 11/931,131 5 REJECTION (2) The Examiner relies on the same factual findings and determinations discussed above and does not provide any additional findings or determinations as to how the addition of Swei would have rendered the invention recited in claim 21 obvious within the meaning of § 103. Therefore, for the reasons stated above, we do not sustain the Examiner’s rejection (2). ORDER The Examiner’s decision is reversed. REVERSED bar