Ex Parte Monsheimer et al

Board of Patent Appeals and Interferences

Jan 18, 2012

11671820 (B.P.A.I. Jan. 18, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SYLVIA MONSHEIMER, MAIK GREBE, HIDEKI MATSUI,
and HAJIME KOMADA
____________

Appeal 2011-000864
Application 11/671,820
Technology Center 1700
____________

Before CHUNG K. PAK, LINDA M. GAUDETTE, and
KAREN M. HASTINGS, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

Appeal 2011-000864
Application 11/671,820

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DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s decision1
finally rejecting claims 1-21 under 35 U.S.C. §103(a) as unpatentable over Ito (US
2005/0239925 A1, published Oct. 27, 2005) in view of Lawton (US 5,980,812,
issued Nov. 9, 1999).2 An oral hearing was held on January 11, 2012. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appellants do not present arguments in support of separate patentability of
any particular claim or claim grouping. (See generally, App. Br. 4-9.) Rather,
Appellants’ traversal of the rejection is based on limitations found in claim 1, the
sole independent claim on appeal, which is reproduced below from the Claims
Appendix to the Appeal Brief:
1. A process for the layer-by-layer moldless production of three-
dimensional shaped products, comprising:
providing at least one powder layer,
selective melting of regions of the respective powder layer via input of
electromagnetic energy,
wherein said powder of said powder layer comprises at least one polymer
powder or copolymer powder produced from a dispersion which comprises at least
one polymer or copolymer and which comprises a water-soluble component,
said water-soluble component comprising at least one oligosaccharide.

The issue in this appeal is: did the Examiner reversibly err in determining
that the combined teachings of the references disclose or suggest a “process for the
layer-by-layer moldless production of three-dimensional shaped products” which
includes a step of “selective melting” as recited in claim 1?

1 Final Office Action mailed Dec. 1, 2009 (“Final”).
2 Appeal Brief filed May 28, 2010 (“App. Br.”), 4.
Appeal 2011-000864
Application 11/671,820

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Appellants concede “Ito is drawn a process for producing a shaped article by
using a dispersion composition containing a resin component and a water-soluble
auxiliary component, which may contain an oligosaccharide.” (Rep. Br. 3 1.)
Appellants note “[t]he European counterpart (EP 1 512 725) to Ito is cited in the
specification at page 5, lines 12-17,” and that “[t]he polymers [] used in the present
invention are produced according to the method disclosed by Ito.” (Id.)
Appellants acknowledge Ito teaches “the polymers used therein can be used to
produce shaped articles, for example by the injection-molding method.” (Id.; see
generally Ito ¶ [0131] (“Examples of the shaping (or molding) method include an
extrusion molding, an injection molding, a blow molding, and a calender
molding.”).)
The Examiner concedes Ito does not teach producing shaped articles using a
layer-by-layer approach as required by appealed claim 1. (Ans.4 4.)
The Examiner finds Lawton discloses the known use of selective layer
sintering (“SLS”) techniques to create shaped articles from a powdered material.
(Final 4 and Ans. 5 (citing Lawton col. 1, ll. 15-19 (“Layer-by-layer solid imaging
techniques, including stereolithography and selective laser sintering, have been
used to produce models, mold patterns, and near net shape production parts.”)).)
Appellants also concede that SLS techniques were known in the art at the time of
the invention for producing three-dimensional products from plastics powders in “a
simple and rapid fashion.” (Spec. 1:21-26.) The Examiner determines it would
have been obvious for the ordinary artisan to have used a known SLS technique as
the shaping or molding method in Ito. (Final 4; Ans. 5.)

3 Reply Brief filed Oct. 5, 2010.
4 Examiner’s Answer mailed Aug. 6, 2010.
Appeal 2011-000864
Application 11/671,820

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Appellants contend the processes disclosed by Ito “are distinct from the
claimed layer-by-layer moldless process utilizing selective melting by introduction
of electromagnetic energy.” (Rep. Br. 4.) Appellants note that “Ito does not
require or utilize electromagnetic energy at all” (Id.; see also, App. Br. 8), and
maintain “the artisan in possession of Ito, when considering the method disclosed
therein, would not even consider combining this reference with the disparate
disclosure of Lawton” (Rep. Br. 3).
“[I]f a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar devices in
the same way, using the technique is obvious unless its actual application is
beyond his or her skill.” KSR Int'l. Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
See also Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co.,
464 F.3d 1356, 1368 (Fed. Cir. 2006) wherein our reviewing Court stated:
[A]n implicit motivation to combine exists not only when a suggestion
may be gleaned from the prior art as a whole, but when the
“improvement” is technology-independent and the combination of
references results in a product or process that is more desirable for
example because it is stronger, cheaper, cleaner, faster, lighter,
smaller, more durable, or more efficient. Because the desire to
enhance commercial opportunities by improving a product or process
is universal-and even common-sensical-we have held that there exists
in these situations a motivation to combine prior art references even
absent any hint of suggestion in the references themselves. In such
situations, the proper question is whether the ordinary artisan
possesses knowledge and skills rendering him capable of combining
the prior art references.
Appellants rely on differences between Ito’s polymers/molding methods and
Lawton’s polymers/imagewise radiation process in support of their contention that
the ordinary artisan would not have been motivated to modify Ito’s method in view
of Lawton. (See generally, App. Br. 4-9; Rep. Br. 1-8.) However, Appellants have
Appeal 2011-000864
Application 11/671,820

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not convincingly explained why the Examiner erred in finding that the ordinary
artisan would have had a reasonable expectation of success in utilizing known SLS
techniques (described in the “BACKGROUND AND PRIOR ART” section of
Lawton) in place of Ito’s explicitly disclosed molding/shaping techniques,
motivated, for example, by a desire to provide a faster or more efficient process.
Appellants have not persuasively demonstrated that replacing Ito’s
molding/shaping method, which does not require electromagnetic energy, with a
known SLS technique, which does utilize electromagnetic energy, would have
been beyond the level of skill in the art.
In sum, Appellants have not fully addressed/identified error in the facts and
reasons relied on by the Examiner in support of the obviousness determination.
Because we view the Examiner’s obviousness determination as supported by a
preponderance of the evidence and consistent with the Supreme Court’s decision in
KSR, we affirm the Examiner’s decision to reject claims 1-21.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1).
AFFIRMED

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