Ex Parte Kerekes et al

Patent Trial and Appeal Board

Mar 18, 2016

11468090 (P.T.A.B. Mar. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111468,090 08/29/2006
22514 7590 03/18/2016
3D Systems, Inc,
Attn: Keith A. Roberson
333 Three D Systems Circle
Rock Hill, SC 29730
FIRST NAMED INVENTOR
Thomas Alan Kerekes
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
USA.432 4504
EXAMINER
GUPTA, YOGENDRAN
ART UNIT PAPER NUMBER
1744
MAILDATE DELIVERY MODE
03/18/2016 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 PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS ALAN KEREKES,
JOUNI P. PARTANEN, YONG CHEN, and
CHARLES W. HULL
Appeal2014-005436
Application 11/468,090
Technology Center 1700
Before TERRY J. OWENS, CATHERINE Q. TIMM, and
AVEL YN, M. ROSS Administrative Patent Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 15 and 33-36. We have jurisdiction under
35 U.S.C. § 6(b).
The Invention
The Appellants claim a method for forming a three-dimensional
object. Claim 1 is illustrative:
1. A method for forming a three-dimensional object layer-by-layer
comprising the steps of:
a. forming bit-map data of cross-sectional layers of a three-
dimensional object to be built;
Appeal2014-005436
Application 11/468,090
b. delivering a solidifiable photopolymer build material to an
imaging area, wherein the solidifiable photopolymer build material is
solidified when exposed to an accumulated light intensity equal or
exceeding a critical energy needed to solidify the solidifiable
photopolymer build material;
c. projecting an image representative of the bit-map data of a
single cross-sectional layer from a digital radiation source onto the
solidifiable photopolymer build material in the imaging area to
illuminate pixels in the image area to selectively solidify the
photopolymer build material;
d. controlling with sub-pixel resolution the boundary
polymerization of the build material by providing a desired
accumulated light intensity equal or exceeding the critical energy at a
point within a pixel by setting light intensities of neighboring pixels,
wherein setting light intensities of neighboring pixels comprises
summing the neighboring pixel's light intensity contributions to the
point; and
e. repeating steps b, c and d multiple times until a plurality of
object cross-sections are formed to obtain an object with at least one
boundary defining sub-pixel resolution.
The Rejection
Claims 15 and 33-36 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement. 1
OPINION
We reverse the rejection.
A specification complies with the 35 U.S.C. § 112, first paragraph,
enablement requirement if it allows those of ordinary skill in the art to make
and use the claimed invention without undue experimentation. See In re
Wright, 999 F.2d 1557, 1561 (Fed. Cir. 1993); Atlas Powder Co. v. E.I. du
Pont De Nemours & Co., 750 F.2d 1569, 1576 (Fed. Cir. 1984). Regarding
1 Rejections under 35 U.S.C. § 103 are withdrawn in the Examiner's Answer
(p. 2).
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Appeal2014-005436
Application 11/468,090
enablement, a predecessor of our appellate reviewing court stated in Jn re
Marzocchi, 439 F.2d 220, 223-24 (CCPA 1971):
[A] specification disclosure which contains a teaching of
the manner and process of making and using the invention in
terms which correspond in scope to those used in describing
and defining the subject matter sought to be patented must be
taken as in compliance with the enabling requirement of the
first paragraph of§ 112 unless there is reason to doubt the
objective truth of the statements contained therein which must
be relied on for enabling support.
[I]t is incumbent upon the Patent Office, whenever a rejection
on this basis is made, to explain why it doubts the truth or
accuracy of any statement in a supporting disclosure and to
back up assertions of its own with acceptable evidence or
reasoning which is inconsistent with the contested statement.
Otherwise, there would be no need for the applicant to go to the
trouble and expense of supporting his presumptively accurate
disclosure.
The Examiner asserts that "[t]he original disclosure does not support
step d of claim 1 or [similar] step e of claim 11" (Ans. 3) because 1) the
Appellants' summing of estimated or calculated light intensities does not
seem to enable summing neighboring pixels' light intensity contributions to
a point (Ans. 4--6), 2) the Appellants do not describe the required equipment
(Ans. 4), and 3) the summing achieved by the Appellants' controlling step
was not known and is not within the level of ordinary skill in the art (Ans. 8-
9).
Those assertions do not provide the evidence or reasoning required to
establish a prima facie case of lack of enablement. The Examiner does not
address the Appellants' disclosures, particularly those relied upon by the
Appellants to indicate enablement (App. Br. 17-27; Reply Br. 4--9), and
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Appeal2014-005436
Application 11/468,090
establish that, regardless of those disclosures, one of ordinary skill in the art
would have been unable to perform the Appellants' claimed method without
undue experimentation.
Accordingly, we reverse the rejection.
DECISION/ORDER
The rejection of claims 15 and 33-36 under 35 U.S.C. § 112, first
paragraph, enablement requirement is reversed.
It is ordered that the Examiner's decision is reversed.
REVERSED
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