Ex Parte Lyons

Patent Trial and Appeal Board

May 17, 2016

12886631 (P.T.A.B. May. 17, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/886,631 09/21/2010
63759 7590 05/19/2016
DUKEW, YEE
YEE & AS SOCIA TES, P.C.
P.O. BOX 802333
DALLAS, TX 75380
FIRST NAMED INVENTOR
Brett Ian Lyons
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.
10-0011-US-NP 1920
EXAMINER
KOCH, GEORGE R
ART UNIT PAPER NUMBER
1745
NOTIFICATION DATE DELIVERY MODE
05/19/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
ptonotifs@yeeiplaw.com
mgamez@yeeiplaw.com
patentadmin@boeing.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRETT IAN LYONS
Appeal2014-006131
Application 12/886,631 1
Technology Center 1700
Before BRADLEY R. GARRIS, CHUNG K. PAK, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.
PAK, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Non-Final
Action2 rejecting claims 1 and 5 through 15. We have jurisdiction pursuant
to 35 U.S.C. § 6. We reverse.
1 Application 12/886,631 (Application'63 l), filed September 21, 2010.
2 Non-Final Action mailed May 23, 2013 ("Non-Final Act."). Prosecution
was reopened after the filing of an Appeal Brief on March 14, 2013.
Appeal2014-006131
Application 12/886,631
INTRODUCTION
The appealed subject matter relates to a method for forming objects,
e.g., in addition to aircraft parts, "automobile parts, ship parts, pipes, tubing,
tools, furniture, and/or other suitable types of objects." '631 Specification
("Spec.") iii! 9 and 66. In the claimed method, "[l]ayers of precursor
material may be placed on top of each other ... [which] may be selectively
cured as the layers of precursor material are placed on top of each other to
form an object and a frame associated with the object." Id. at iJ 9.
According to the '631 Specification, in forming aircraft parts, the "frame
may comprise a plurality of base structures and a plurality of connectors and
may be configured to support the aircraft part during [the] formation of the
aircraft part .... " Id. at iJ 12.
Figure 6, an embodiment directed to an object and a frame used for
forming aircraft parts, is reproduced below.
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Application 12/886,631
Figure 6 is "an illustration of a portion [ 600] of a frame [ 501] connected to a
portion [602] of an object [500][.]" Id. at iJ 20. Frame base structure 506 is
connected to frame base structure 514 by connectors 604 and 606. Frame
base structure 514 is connected to portion 602 of object 500 by connectors
608 and 610. Portion 602 of object 500 may be supported by base structures
506 and 514. Id. at iii! 7 6-77.
Details of the appealed subject matter are recited in representative
independent claims 1 and 15 of Application' 631, which are reproduced
below from the Claim Appendix in the Appeal Brief3 (with indentations,
bracketed material, bracketed reference characters of Fig. 6, and added
emphasis):
1. A method for forming objects, the method comprising:
[A] placing layers of precursor material on top of each
other;
[BJ selectively curing the layers of precursor material as
the layers of precursor material are placed on the top of each
other to form an object [500] and a frame [501] associated with
the object [500], the frame [501] comprising a plurality of base
structures [506],
wherein selectively curing the layers comprises:
[B-1] determining whether a new base structure in
the frame [ 501] is needed;
3 Appeal Brief filed on October 23, 2013 ("Appeal Br.").
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Application 12/886,631
[B-2aJ responsive to a determination that the new
base structure is needed, selectively curing the new layer
of precursor material to form a portion [ 602J of the
object [500J and a portion of the new base structure [e.g.,
514J and
[B-2b J responsive to an absence of the
determination that the new base structure is needed,
selectively curing the new layer of precursor material to
form the portion [602J of the object [500J without
forming the portion of the new base structure;
[CJ moving the frame [ 501 J to allow a new layer of
precursor material to be placed on a prior layer of precursor
material in the layers of precursor material that have been
selectively cured; and
[DJ placing the new layer of precursor material on the
prior layer of precursor material.
15. A method for forming aircraft parts, the method
compnsmg:
[ A•J placing layers of precursor material on a base
structure for a frame in which the layers of precursor material
are selected from one of a powder, a liquid, a metal powder, a
ceramic powder, and a plastic powder;
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Application 12/886,631
[B'] selectively curing the layers of precursor material
using a curing system selected from one of a heating system, a
laser, and an electron beam after placing the layers of
precursor material on the base structure to form a portion of an
aircraft part and a portion of the frame to form a prior layer of
precursor material;
[C'] moving the frame to allow a new layer of precursor
material to be placed on the prior layer of precursor material in
the layers of precursor material that have been selectively
cured, wherein the moving of the frame is performed by a
movement system which holds and moves the frame along an
axis;
[D'] placing the new layer of precursor material on the
prior layer of precursor material;
[B-1 '] determining whether a new base structure in the
frame is needed;
[B-2a'] responsive to a determination that the new
base structure is needed, selectively curing the new layer
of precursor material to form an additional portion of the
aircraft part and a portion of the new base structure;
[B-2a-l] responsive to the determination that the
new base structure is needed, repeating the steps of
moving the frame to allow the new layer of precursor
material to be placed on the prior layer of precursor
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Application 12/886,631
material in the layers of precursor material that have been
selectively cured;
placing the new layer of precursor material on the
prior layer of precursor material; and
selectively curing the new layer of precursor
material to form a portion of the aircraft part and the
portion of the new base structure until the base structure
is completed;
[B-2b'] responsive to an absence of the
determination that the new base structure is needed,
selectively curing the new layer of precursor material to
form the additional portion of the aircraft part without
forming the new base structure;
[B-2b- l] responsive to the absence of the
determination that the new base structure is needed,
repeating the steps of moving the frame to allow the new
layer of precursor material to be placed on the prior layer
of precursor material in the layers of precursor material
that have been selectively cured;
placing the new layer of precursor material on the
prior layer of precursor material; and
selectively curing the new layer of precursor
material to form the portion of the aircraft part without
the new base structure until the new base structure is
needed;
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Application 12/886,631
[E] maintaining a desired temperature for the aircraft
part as the aircraft part is formed in different locations in a
chamber using a plurality of heating and cooling elements;
[F] cooling uncured precursor material to change a
density of the uncured precursor material such that a flow of
gas through the precursor material is reduced; and
[ G] separating each portion of the aircraft part from an
associated base structure connected to the each portion of the
aircraft part using a separation system, wherein the separations
system comprises cutters.
The Examiner maintains the following grounds of rejection in
the Examiner's Answer,4 which are before us on appeal:
1. Claims 1 and 5 through 15 under 35 U.S.C. § 112, second
paragraph, as being indefinite.
2. Claims 1, 5 through 12, and 14 under 35 U.S.C. § 103(a) as
being unpatentable over the collective teachings of Famworth5, Hull6,
Coe 7, and Hwang8.
4 Examiner's Answer mailed on February 27, 2014 ("Ans."), 2 through 12.
5 United States Patent Publication No. 2007/0134359 Al by Warren M.
Farnworth, published on June 14, 2007.
6 United States Patent Publication No. 2009/0072447 Al by Charles W. Hull
et al., published on Mar. 19, 2009.
7 United States Patent 6,652,256 B2, issued to Dorsey D. Coe on November
25, 2003.
8 United States Patent Publication No. 2007/0164485 Al by Sheng-Jye
Hwang et al., published on July 19, 2007.
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Application 12/886,631
3. Claim 13 under 35 U.S.C. § 103(a) as being unpatentable
over the collective teachings of Farnworth, Hull, Coe, and Hwang, as
applied to claim 1, further combined with the teachings of Spence9.
4. Claim 15 under 35 U.S.C. § 103(a) as being unpatentable
over the collective teachings of Farnworth, Hull, Coe, Hwang,
Spence, and Farren10.
DISCUSSION
Rejection l, Indefiniteness
The Examiner holds that claims 1 and 5 through 15 fail to comply
with the requirements of 35 U.S.C. § 112, second paragraph. The Examiner
holds that the step of "determining whether a new base structure in the frame
is needed" recited in claims 1 and 15 is indefinite because " [ i ]t is unclear
whether a mental process is referenced by this limitation or whether an
actual process limitation is present." Ans. 2
The "determining step" is broad and includes either a mental or
physical step of determining the need for a new base structure in a frame, but
it is a mandatory step that has "actual process" consequences - distinct steps
are taken depending on whether the next cured layer needs a new base
structure in the frame or whether a new base structure in the frame is not
needed. In claim 1, the determining step further limits the "selective curing"
9 United States Patent 5, 182,056, issued to Stuart T. Spence et al. on January
26, 1993.
10 United States Patent Publication No. 2002/0165635 Al by Chris. E.
Farren, published on November 7, 2002.
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Application 12/886,631
step recited in claim 1. In claim 15, the determining step controls the
production of the airplane object and frame. Nowhere does the Examiner
demonstrate that the scope of the recited determining step is not
ascertainable. Ans. 2, 12, 13. As the predecessor to our reviewing court
stated, "[b ]reath is not indefiniteness." In re Gardner, 427 F.2d 786, 788
(CCPA 1970); see also In re Johnson, 558 F.2d 1008, 1016 n.17 (CCPA
1977); In re Miller, 441F.2d689, 693 (CCPA 1971).
Thus, we conclude that the Examiner has failed to establish that
claims 1 and 5 through 15 fail to comply with the requirements of
§ 112, second paragraph.
Rejection 1 is reversed.
Rejection 2, Obviousness over the collective teachings of Farnworth, Hull,
Coe, and Hwang
The Examiner finds that in Farnworth Fig. 1, reproduced on the
following page, Farnworth discloses a method for forming an object 50
comprising the steps of:
(1) "placing layers (layers 60) of precursor material (liquid material
16) on top of each other"; and
(2) "selectively curing (via a laser beam 26) the layers of precursor
material as the layers of the precursor material are placed on the top of each
other to form an object (object 50) and a frame (supports 52) ... associated
with the object." Ans. 2, 3, citing Farnworth, iii! 39-40.
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Application 12/886,631
The Examiner finds that the "frame comprises a plurality of base
structures (supports 52, see paragraph 0040)." Id. at 3. The Examiner
further finds that Farnworth step (1) includes "moving the frame (platform
20 is elevated with each layer, and the frame moves with the platform) to
allow a new layer of precursor material to be placed on the prior layer of
precursor material in the layers of precursor material that have been
selectively cured." Id.
Farnsworth Fig. 1 is reproduced below.
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72
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Fig. 1
14
16
Farnworth Fig. 1 shows "a schematic of a stereo lithography [STL] apparatus
[10] suitable for use" in the invention of Farnworth. Farnworth, iJ 28. In
Farnworth Fig. 1, reservoir 14 contains liquid material 16, e.g., a
photocurable polymer that is responsive to light in the UV wavelength
region, which is used to form object 50. A platform or elevator 20, which is
vertically movable in repeatable increments responsive to the controls of
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Appeal2014-006131
Application 12/886,631
computer 12, is located for movement downward into and upward out of the
liquid material 16 in the reservoir 14. "UV wavelength range laser" 22
traverses beam 28 in a selected pattern in the X-Y plane to partially cure
selected portions of the liquid material 16 disposed over surface 30.
Farnworth, ii [0039]. Data from the STL files resident in computer 12 is
manipulated to build object 50 one layer at a time. The data mathematically
representing object 50 is divided into subsets, each subset representing a
slice or layer of object 50. A "base support or supports 52 for object 50 may
also be programmed as a separate STL file, such supports 52 being
fabricated before overlaying object 50 in the same manner, and facilitating
fabrication of the object 50 with reference to a perfectly horizontal plane and
removal of object 50 from surface 30 of platform 20." Farnworth, ii 40.
The Examiner finds that Farnworth does not teach the selectively
curing step B, which include steps B-1 through B-2b. Ans. 3. To make-up
for this deficiency in Farnworth, the Examiner relies on the collective
teachings of Hull, Coe, and Hwang. Id. at 3, 4. The Examiner finds the
following:
(1) Hull discloses "providing multiple supports or base structures,"
where the "positioning and size of the support is determined based on
regions." Id. at 3, citing Hull, Figure 23, steps 105 and 106. Hull further
discloses that "[r]egions where the supports should be created are also
determined." Id. at 3, 4, citing Hull Figure 23, step 104. The Examiner finds
that "[t]hese steps enable creation of more complicated geometries." Ans. 4.
(2) Coe discloses "how base (or support) structures are manufactured
... Coe teaches that different file names can be used for various structures in
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Appeal2014-006131
Application 12/886,631
CAD [computer aided design] created products, and discusses the use of a
file name suffix in order to distinguishing between support structures and
between model structures." Id. at 4, citing Coe, col. 7, 1. 23, to col. 8, 1. 60.
The Examiner finds that "Coe teaches the use of file naming conventions in
order to determine when and whether a new base structure is needed or
called for by the model and support structure build." Ans. 4.
(3) Hwang teaches "the use of separate support and build filaments in
manufacture of CAD [computer-aided design] or precursor object products."
Id. at 4, citing Hwang, Figure 4. Hwang discloses that "[b Jase and support
material can be used to build a final product." Id., citing Hwang, ii 7. The
Examiner finds that "[ t ]wo types of materials can be used such that the
three-dimensional product can be easier to separate out." Ans. 4.
Hwang Figure 4 is reproduced below
Heated
Dispensm~
Nozzles j Support JI B~ild Ii
I Filament i . Filament
~~=
1 Platform
Fig 4
Hwang Figure 4 shows an "FDM" method, which according to Hwang Fig.
1 is a "nozzle fabrication," which jets a thermoplastic material. Hwang, ii 19
and Fig. 1. The disclosure in Hwang ii 7 is to an "OBJ et" method, which
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Appeal2014-006131
Application 12/886,631
according to Hwang Fig. 1 is a "hybrid" method. In the words of Hwang iJ
7, "OBJ et used two different materials, one of which is the base material and
the other is used to build a support." The "two materials are treated by
ultraviolet beam and become gel-like material so as to be combined with
each other."
The Examiner provides the following statement of obviousness: "[i]t
would have been obvious to one of ordinary skill in the art ... to have
utilized the claimed steps in order to enable creation of more complicated
geometries by providing support structures for more complicated geometries
and easier separation out of the final product." Ans. 4.
Appellant urges that the Examiner "fails to specifically state" where in
Hull, Coe, and Hwang, the claimed step B-2a', "selectively curing the new
layer of precursor material to form a portion of the object and a portion of
the new base structure" is disclosed. Appeal Br. 16, 17.
In particular, Appellant urges that in Hull, the additional support
structures needed to support the object being made "are not made
simultaneously in the same new layer as a portion of the object" as recited in
claim 1. Id. at 17, 18, citing Hull, Fig 2, which shows a built teapot base 10
on a build pad (BP), where the teapot base 10 is built on supports 30.
Appellant urges that the disclosure in Coe, col. 7, 1. 23, to col. 8, 1. 60,
relied on by the Examiner, does not teach step B-2a in claim 1. Id. at 18.
Appellant further urges that Coe is directed to a solid imaging printer
(shown in Fig. 1 of Coe) that builds 3-D model 26 by iteratively printing
layers of a model building material supplied by printhead assembly 28. Id.
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Appeal2014-006131
Application 12/886,631
According to Appellant, the Coe solid imaging printer does not "selectively"
cure a new precursor layer as required by step B-2a in claim 1. Id.
Appellant urges that "Hwang teaches multiple embodiments for
making formed objects used a gelled form of material." Id at 18, 19, citing
the abstract of Hwang, which describes
spreading a base material layer on a surface ... initiating a first
physical or chemical change of the base material layer . . . so as
to become a gelled material ... initialing a second physical or
chemical change ... to selected areas of the gelled base
material layer to make each selected area to become hardened
in mature ... repeating the ... [above] steps 1-3 a pre-
determined number of times, each newly added base material
layer being laminated on a preceding layer to form a plurality of
stacked layers, the hardened selected areas of the plurality of
stacked layers defining a solid object, and ... removing the
portions of base material layers remaining in gelled form to
obtain a final prototype.
Appellant urges that because the process described in Hwang's abstract
"does not selectively cure the entire new layer or precursor material
comprising a portion of the object and a portion of the new base structure,"
Hwang does not disclose step B-2a in claim 1, "selectively curing the new
layer of precursor material to form a portion of the object and a portion of
the new base structure" as recited in claim 1. Id. at 19. Appellant further
urges that the Examiner's finding that "Hwang teaches the use of two types
of materials so that the final product and [sic: can] be easier to separate out,"
is in "direct contrast to" step B-2a in claim 1. Id. Appellant urges that in
step B-2a of claim 1, "the new layer or [sic: of] precursor material is one
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Application 12/886,631
material forming a portion of the object and a portion of the new base
material." Id.
In response to Appellant's arguments, the Examiner finds that Hull,
Coe, and Hwang individually do not disclose the step B-2a limitation in
claim 1, but holds that, "as a whole, the three references make obvious the
limitation being incorporated into Farnworth." Ans. 14, 15. The Examiner
further finds that "Hwang specifically discloses a step of treating the entire
layer, both the first and second materials." Id. at 15, citing Hwang, iJ 35.
The Examiner finds that Hwang, iJ 35, teaches "initiating a first physical or
chemical change of the base material . . . [which] would read on the
claims." Id. The Examiner holds that based on disclosure in Hwang iJ 35,
and "in combination with Hull and Coe's discussion of support structures,
the three references make obvious the limitation being incorporated into
Farnworth." Id.
T ,., T""ti. "I ~ • 1""11 A "1"1 , ,., , ,., -.--i • LL"1
in me Kep1y tiner,, Appeuam urges mat me bxammer --nas
incorrectly applied Hwang." Reply 7. Appellant urges that "Hwang 's
paragraph [0035] is the second of a number of steps and does not disclose
treating 'both a first and second materials"' as found by the Examiner. Id.
Rather, Hwang "describes treating a single, entire base level so that the
entire base level material turns into a gel." Id. at 7, citing Hwang, Fig. 6 and
iii! 33-38 which describe Fig. 6. According to Appellant, in Hwang Fig. 6,
the method comprises: "step 1: spreading a base material layer on a surface
by a nozzle" iJ 34; "step 2: initiating a first physical or chemical change of
the base material layer by exposure to one of ultra violet beams or infra-red
11 Reply Brief ("Reply") filed on April 28, 2014.
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Application 12/886,631
beams, the base material layer thereby becoming a gelled material" iJ 35; and
"step 3: initiating a second physical or chemical change by application of a
laser beam to selected areas of the gelled base material layer, the second
physical or chemical change being a change to the gelled material at each
selected area to become hardened ... "iJ 36. Id. at 7, 8. Appellant
maintains that Hwang fails to teach step B-2a in claim 1. Id. at 8.
On this record, the Examiner has not demonstrated, by the
preponderance of evidence, that the collective teachings of Farnworth, Hull,
Coe, and Hwang would have suggested step B-2a, "selectively curing the
new layer of precursor material to form a portion of the object and a portion
of the new base structure," as recited in claim 1. As indicated supra, the
Examiner acknowledges that Farnworth does not disclose or suggest step B-
2a in claim 1. Although the Examiner relies upon Hull, Coe, and Hwang to
supply step B-2a missing in Farnworth, neither Hull, Coe, nor Hwang, as
urged by Appellant supra, discloses or suggests step B-2a in claim 1. Hull
and Coe each discloses forming base structures, but neither reference
discloses forming a portion of the base structures and a portion of the object
in the same precursor layer, as recited in step B-2a in claim 1. Appeal Br.
17-18; Hull, Figs. 2 and 23; Coe, col. 7, 1. 23, to col. 8, 1. 60. Hwang
discloses multiple embodiments for making formed objects via using a
gelled material, but it does not disclose or suggest selectively curing the
entire new precursor layer to form a portion of the base structures and a
portion of the object as recited in step B-2a in claim 1. Appeal Br. 18-19;
Hwang, abstract, Fig. 6, and iii! 33-38. The Examiner simply has not
directed our attention to any disclosure in Farnworth, Hull, Coe, and Hwang
that would have led a person having ordinary skill in the art to "selectively"
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Application 12/886,631
cure a new precursor layer to form a portion of the object and a portion of
the new base structure, as recited in step B-2a in claim 1.
Accordingly, we find that Appellant has shown reversible error
in the Examiner's findings that the collective teachings of Farnworth,
Hull, Coe, and Hwang would have prompted a person having ordinary
skill in the art to arrive at the subject matter recited in the claims on
appeal within the meaning of 35 U.S.C. § 103(a).
Rejection 2 is reversed.
Rejections 3 and 4, Obviousness
Claim 13 includes step B-2a recited in claim 1 and claim 15 includes
steps B-2a' and B-2a-l that correspond to step B-2a recited in claim 1. The
additional prior art references used in rejecting dependent claim 13 on
appeal in Rejection 3 and used in rejecting independent claim 15 on appeal
in Rejection 4 were not relied upon by the Examiner to remedy the
deficiencies of Farnworth, Hull, Coe, and Hwang, discussed supra.
Accordingly, Rejections 3 and 4 are also reversed.
ORDER
We REVERSE the rejection of claims 1 and 5 through 15 under 35
U.S.C. § 112, second paragraph.
We REVERSE the rejections of claim 1and5 through 15 under
35 U.S.C. § 103(a).
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REVERSED
18