Hewlett-Packard Development Company, L.P.

Patent Trials and Appeals Board

Jul 30, 2021

2020003007 (P.T.A.B. Jul. 30, 2021)

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.
15/545,693 07/22/2017 Juan Manuel Garcia Reyero Vinas 84649151 1095
22879 7590 07/30/2021
HP Inc.
3390 E. Harmony Road
Mail Stop 35
Fort Collins, CO 80528-9544
EXAMINER
CARTER, CHRISTOPHER W
ART UNIT PAPER NUMBER
2117
NOTIFICATION DATE DELIVERY MODE
07/30/2021 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):
ipa.mail@hp.com
jessica.pazdan@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte JUAN MANUEL GARCIA REYERO VINAS,
SERGIO PUIGARDEU ARAMENDIA,
ALEJANDRO MANUEL DE PENA, and
DAVID RAMIREZ MUELA1
________________

Appeal 2020-003007
Application 15/545,693
Technology Center 2100
________________

Before CAROLYN D. THOMAS, BRADLEY W. BAUMEISTER, and
MICHAEL J. STRAUSS, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–12 and 16–19, which constitute all claims pending in
this application. Appeal Br. 3–7. We have jurisdiction under 35 U.S.C.
§ 6(b). We REVERSE.
Pursuant to 37 C.F.R. § 41.50(b), we enter a new ground of rejection
for claims 1–12 and 16–19 under 35 U.S.C. § 101.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies Hewlett-Packard Development Company as the real party in
interest. Appeal Brief filed September 11, 2019 (“Appeal Br.”), at 1.
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CLAIMED SUBJECT MATTER
Appellant describes the present invention as follows:
A method of fabricating a three dimensional object in an
additive layer manufacturing process, e.g. 3D printing, wherein
a three dimensional design of the three dimensional object is
modelled as a plurality of three dimensional pixels or vortexes.
For every pixel or vortex, at least one parameter is calculated and
is used to select a setting for use when fabricating the three
dimensional object. The parameter may be a speed or rate at
which heat will diffuse away from the pixel or vortex, or a
weighted density surrounding the pixel or vortex. The method
provides higher quality fabrication of the three dimensional
object.
Spec., Abstr.

NEW GROUND OF REJECTION
Pursuant to our discretionary authority under 37 C.F.R. § 41.50(b), we
reject claims 1–12 and 16–19 under 35 U.S.C. § 101 as being directed to a
judicial exception to patent-eligible subject matter (an abstract idea) without
significantly more.
Principles of Law
A. SECTION 101:
Inventions for a “new and useful process, machine, manufacture, or
composition of matter” generally constitute patent-eligible subject matter.
35 U.S.C. § 101. However, the U.S. Supreme Court has long interpreted
35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural
phenomena, and abstract ideas” are not patentable. Alice Corp. v. CLS Bank
Int’l, 573 U.S. 208, 216 (2014).
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In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-step framework, described in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012), and Alice. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–
77). In accordance with that framework, we first determine what concept
the claim is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the
claims before us are drawn to the concept of intermediated settlement, i.e.,
the use of a third party to mitigate settlement risk.”); see also Bilski v.
Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’
application explain the basic concept of hedging, or protecting against
risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.”
Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
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nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”). Having said that, the Court
also indicated that a claim “seeking patent protection for that formula in the
abstract . . . is not accorded the protection of our patent laws, and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.” Id. at 191 (citing
Benson and Flook); see also, e.g., id. at 187 (“It is now commonplace that an
application of a law of nature or mathematical formula to a known structure
or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (internal quotation marks
omitted). “A claim that recites an abstract idea must include ‘additional
features’ to ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo,
566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
B. USPTO SECTION 101 GUIDANCE:
In January 2019, the U.S. Patent and Trademark Office (“USPTO”)
published revised guidance on the application of 35 U.S.C. § 101. See
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“2019 Guidance”), updated by USPTO, October 2019
Update: Subject Matter Eligibility (available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf) (“October 2019
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Guidance Update”); see also October 2019 Patent Eligibility Guidance
Update, 84 Fed. Reg. 55942 (Oct. 18, 2019) (notifying the public of the
availability of the October 2019 Guidance Update). “All USPTO personnel
are, as a matter of internal agency management, expected to follow the
guidance.” 2019 Guidance, 84 Fed. Reg. at 51; see also October 2019
Guidance Update at 1. The Manual of Patent Examining Procedure
(“MPEP”) now incorporates this revised guidance and subsequent updates at
Section 2106 (9th ed. Rev. 10.2019, rev. June 2020).2
Under MPEP § 2106, we first look to whether the claim recites the
following:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activities such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application.3
MPEP §§ 2106.04(a), (d).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:

2 All references to the MPEP are to the Ninth Edition, Revision 10.2019
(Last Revised June 2020), unless otherwise indicated.
3 “Examiners evaluate integration into a practical application by
(1) identifying whether there are any additional elements recited in the claim
beyond the judicial exception(s), and (2) evaluating those additional
elements individually and in combination to determine whether the claim as
a whole integrates the exception into a practical application.” MPEP
§ 2106.04(d)II.
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(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, [and] conventional activity” in the field; or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
MPEP § 2106.05(d).
Analysis
THE CLAIMED SUBJECT MATTER:
Independent claim 1 is reproduced below with paragraph designators
added for clarity and emphasis added to indicate the claim language that
recites an abstract idea:
1. A method of fabricating a three dimensional object, the
method comprising:
[(a)] modelling a three dimensional object as a plurality of
three dimensional pixels;
[(b)] for a pixel in the plurality of pixels, calculating a
parameter for a three dimensional region immediately
surrounding the pixel, the parameter being a distance from a
surface of the object, a density, and/or a heat flow property; and
[(c)] based on the calculated parameter, selecting a setting to
use when fabricating the pixel in the three dimensional object,
the setting being an amount of fusing agent, an amount of
detailing agent, a volumetric distribution of build material,
and/or a heating temperature.
STEP 1:
The claimed subject matter falls within the four statutory categories of
patentable subject matter identified by 35 U.S.C. § 101: process, machine,
manufacture, or composition of matter. Accordingly, we turn to step 2A of
the 2019 Guidance.
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STEP 2A, PRONG 1:
Under step 2A, prong 1, of the 2019 Guidance, we first look to
whether the claim recites any judicial exceptions, including certain
groupings of abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activities such as a fundamental economic practice, or
mental processes). MPEP § 2106.04(a).
Limitation (a) recites, “modelling a three dimensional object as a
plurality of three dimensional pixels.” Appellant’s Specification explains
that this claim step “may comprise modelling a three dimensional design as
a plurality of identical cuboid shaped three dimensional pixels (e.g.,
voxels).”
This type of modeling entails mathematical concepts such as
determining mathematical relationships between the voxels and performing
mathematical calculations. The 2019 Guidance recognizes these types of
mathematical concepts as constituting patent-ineligible abstract ideas.
MPEP § 2106.04(a).
Modeling three-dimensional objects in preparation for later
fabrication also constitutes a mental process. More specifically, this type of
object modeling entails performing an observation, evaluation, judgment, or
opinion. The 2019 Guidance also recognizes these sorts of mental processes
as constituting patent-ineligible abstract ideas. MPEP § 2106.04(a).
Accordingly, limitation (a) recites a patent-ineligible abstract idea.
Limitation (b) recites, “for a pixel in the plurality of pixels,
calculating a parameter for a three dimensional region immediately
surrounding the pixel, the parameter being a distance from a surface of the
object, a density, and/or a heat flow property.” Calculating parameters
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constitutes a mathematical concept that the 2019 Guidance recognizes as an
abstract idea. MPEP § 2106.04(a). Accordingly, limitation (b) recites an
abstract idea.
Limitation (c) recites, “based on the calculated parameter, selecting a
setting to use when fabricating the pixel in the three dimensional object, the
setting being an amount of fusing agent, an amount of detailing agent, a
volumetric distribution of build material, and/or a heating temperature.”
Selecting settings constitutes a mental process, such as an evaluation or
judgment, that can be performed in the human mind. Accordingly,
limitation (c) recites an abstract idea recognized by the 2019 Guidance.
MPEP § 2106.04(a).
For these reasons, each of limitations (a) through (c) recites a judicial
exception to patent-eligible subject matter under step 2A, prong 1, of the
2019 Guidance. See RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322,
1327 (Fed. Cir. 2017) (“Adding one abstract idea . . . to another abstract idea
. . . does not render the claim non-abstract.”)
STEP 2A, PRONG 2:
Under step 2A, prong 2, of the 2019 Guidance, we next analyze
whether claim 1 recites additional elements that individually or in
combination integrate the judicial exception into a practical application.
MPEP § 2106.04(d). The 2019 Guidance identifies considerations indicative
of whether an additional element or combination of elements integrate the
judicial exception into a practical application, such as an additional element
reflecting an improvement in the functioning of a computer or an
improvement to other technology or technical field. Id.; see also MPEP
§ 2106.05(a).
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In the present case, claim 1 recites no additional elements beyond the
abstract ideas, noted above. For example, claim 1 does not recite any steps
of actually manufacturing a three-dimensional object. Moreover,
Appellant’s Specification confirms that the present invention is a purported
improvement to computer aided design software applications that are used
for modeling or designing an object. See Spec. ¶¶ 10–12.
Because no manufacturing steps are recited, we need not inquire
whether manufacturing the three-dimensional object subsequent to the
claimed modelling steps integrates the abstract idea of modelling the device
into a practical application. Because claim 1 only recites modeling steps,
claim 1 does not integrate the recited abstract ideas into a practical
application within the meaning of the 2019 Guidance. See BSG Tech LLC v.
BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (“It has been clear
since Alice that a claimed invention’s use of the ineligible concept to which
it is directed cannot supply the inventive concept that renders the invention
‘significantly more’ than that ineligible concept.”); Synopsys, Inc. v. Mentor
Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] claim for a new
abstract idea is still an abstract idea.”) (emphasis omitted); SAP Am., Inc. v.
InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018) (“What is needed is an
inventive concept in the non-abstract application realm.”).
STEP 2B:
Under step 2B of the 2019 Guidance, we next analyze whether
claim 1 adds any specific limitations beyond the judicial exception that,
either alone or as an ordered combination, amount to more than “well-
understood, routine, conventional” activity in the field. MPEP § 2106.05(d).
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Because claim 1 recites no additional elements, the claim cannot recite
significantly more than the underlying abstract idea.
CONCLUSIONS
Accordingly, we reject claim 1 under 35 U.S.C. § 101 as being
directed to an exception to patent-eligible subject matter without reciting
significantly more. We additionally reject claims 2–12 and 16–19, which,
likewise, do not recite any additional elements beyond the recited abstract
ideas. Appeal Br. 8–10.

THE ART REJECTIONS
Statement of the Rejections
Claims 1, 3, 7, 8, 10–12, and 16–19 stand rejected under 35 U.S.C.
§ 102(a)(1) as anticipated by Chen (US 2015/0066440 A1; published Mar. 5,
2015). Final Action mailed June 17, 2019 (“Final Act.”), 5–9.
Claim 2 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Chen and Fockele (US 2014/0332507 A1; published Nov. 13, 2014).
Final Act. 9–11.
Claim 4 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Chen and Tsuda (US 2004/0021661 A1; published Feb. 5, 2004). Final
Act. 11–12.
Claim 5 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Chen, Tsuda, and Astakhov (US 5,452,602; published Sept. 26, 1995).
Final Act. 12–13.
Claim 6 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Chen, Tsuda, Astakhov, and Liang (US 2010/0208956 A1; published
Aug. 19, 2010). Final Act. 13.
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Claim 9 stands rejected under 35 U.S.C. § 103 as being unpatentable
over Chen and Vidimce (US 2014/0324204 A1; published Oct. 30, 2014).
Final Act. 13–14.
Standard of Review
The Board conducts a limited de novo review of the appealed
rejections for error based upon the issues identified by Appellant, and in
light of the arguments and evidence produced thereon. Ex parte Frye,
94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
Determinations and Contentions:
The Examiner finds that Chen discloses claim 1’s method of
designing an object by modeling it as a composition of sub-regions. Final
Act. 5 (citing Chen, Abstr.). Equating the sub-regions with the claimed
pixels, the Examiner finds that the modeled sub-regions of the object teach
“modelling a three dimensional object as a plurality of three dimensional
pixels,” as recited in limitation (a). Id. (citing Chen, Fig. 1, ¶ 45).
The Examiner further finds that Chen discloses “calculating a
[density] parameter for a three-dimensional region immediately surrounding
[a] pixel,” as recited in limitation (b), because Chen teaches that the modeled
sub-regions are interconnected and share information with one another to
simulate a desired physical property, such as density, of the object. Id. at 5–
6 (citing Chen, Fig. 5A, ¶¶ 25, 45, 75, 76).
The Examiner further finds that Chen teaches selecting a fabrication
setting for the pixel based on calculated density parameter, as recited in
limitation (c), because the output of the simulation is both an optimized
selection of materials and a volume of material to distribute. Id. at 6 (citing
Chen, Figs. 5A, 6, ¶¶ 45, 75, 76, 80).
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Appellant asserts that Chen’s design methodology is fundamentally at
odds with the pixel-oriented process of claim 1. Appeal Br. 4. For instance,
Appellant argues that, even though Chen teaches single-pixel sub-regions, it
does so only in relation to modeling a surface layer of the object. Id. at 5
(citing Chen ¶ 45). Appellant argues that given the relative low number of
pixels in such a surface layer, the same approach cannot be applied to model
the bulk of the object. Id.
Appellant further argues that, ignoring the computational challenge of
modeling the bulk of an object at the pixel level, Chen does not disclose the
process elements of claim 1. Appeal Br. 5. More specifically, Appellant
argues, with respect to limitation (b), that Chen teaches optimizing certain
parameters to achieve a desired physical property for the object, but does not
disclose how the optimization occurs. Id. (citing Chen ¶ 81). Appellant also
argues that Chen does not teach what the optimization calculations are and,
therefore, does not specifically teach calculating a density parameter for a
region immediately surrounding a pixel. Id. (citing Chen ¶¶ 79–81).
Appellant further argues that, although Chen describes sharing of
information to optimize the selection of materials for sub-regions, the
sharing of information, by itself, does not disclose that any parameter is
calculated for neighboring sub-regions. Id.
With respect to limitation (c), Appellant argues that Chen merely
teaches the selection of materials for sub-regions and this does not constitute
the claimed “[fabrication] setting being . . . a volumetric distribution of build
matter.” Appeal Br. 6. (citing Chen ¶¶ 4, 22, 23). In particular, Appellant
argues that the cited portions of Chen do not anywhere describe, as asserted
by the Examiner, selecting a “volume of material to distribute.” Id. (quoting
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Final Act. 6). Appellant additionally argues that Chen does not teach, as
further found by the Examiner, “an appropriate amount of build volume is
selected to be distributed at each sub-region location.” Reply Brief filed
Mar. 13, 2020, at 2 (quoting Examiner’s Answer mailed Jan. 28, 2020, at 5).
Analysis:
(I)
Chen teaches a method of designing an object that are fabricated by an
additive manufacturing technique. Chen ¶ 4. Chen explains that historically
“an object may be conceptually broken down into volume elements (voxels)
and a material identified for each voxel. By determining which material
should be chosen for each voxel, a composition of the whole object may be
determined.” Chen ¶ 21.
Chen additionally explains that in some situations, it “may be difficult
or impossible” to computationally determine which compositions best fit the
desired properties of the object due to the large space of parameters that
must be searched for the best fit composition. Chen ¶ 21. For this reason,
Chen proposes simplifying the analysis for such complex objects by
determining the object’s composition based on a reduced set of parameters.
Id. ¶ 22. That is, Chen’s invention generally entails performing an analysis
of the object by breaking down the object into sub-regions that are larger
than the voxels that were previously used for the modeling calculations. Id.
More specifically, to obtain an object with a desired physical property
(e.g., density, elasticity, compression, thermal expansion coefficient), Chen
creates a model of the object that parameterizes the materials used to
fabricate chosen sub-regions of the object. Id. ¶ 22. The choice of sub-
regions and the selection of materials for each sub-region is adjusted by
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simulating the object and receiving an indication how to adjust the choice of
sub-regions and materials to obtain the desired physical property. Id. at
¶ 25.
Chen’s disclosure distinguishes between a smaller voxel (or three-
dimensional pixel) and a larger sub-region. The anticipation rejection,
though, is premised on interpreting the two terms as being synonymous.
E.g., Ans. 4. Chen’s distinction between these terms indicates that the
Examiner’s interpretation is unreasonably broad.
Accordingly, we reverse the anticipation rejection of independent
claim 1. We, likewise, reverse the anticipation rejection of claims 3, 7, 8,
10–12, and 16–19, which either depend from claim 1 or otherwise recite
similar claim language.
With respect to the remaining obviousness rejections of claims 2, 4–6,
and 9, the Examiner does not rely on any of the additionally cited references
to cure the deficiency noted above. See Final Act. 10–14.
(II)
This determination does not end our inquiry. By stating that “the
object may be difficult or impossible to computationally determine,” Chen
makes clear that, in at least some situations, less complex compositions can
be determined computationally by analyzing the object at the smaller,
individual voxel level. Chen ¶ 21. Reading Chen as a whole, one of
ordinary skill in the art would reasonably understand, then, that the various
properties and parameters that Chen discusses in relation to modeling more
complex structures with Chen’s larger sub-regions would also be useful for
modeling simpler structures with voxels, and vice versa. Reading Chen as a
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whole in this manner, we agree with the Examiner’s ultimate determination
that Chen discloses all of the limitations of independent claim 1.
For example, Appellant argues that Chen does not teach what the
optimization calculations are and, therefore, does not specifically teach
calculating a density parameter for a region immediately surrounding a
pixel. Id. (citing Chen ¶¶ 79–81). We disagree.
Chen explains that, during simulation, finite element analysis may be
performed to model various properties of an object, specifically including
density and temperature conductivity (“a heat flow property”), as claimed.
Chen ¶¶ 25, 26. Finite element analysis (FEA) is a computerized method for
predicting how a product reacts to real-world forces, vibration, heat, fluid
flow, and other physical effects by “breaking down a real object into a large
number (thousands to hundreds of thousands) of finite elements, such as
little cubes” or voxels. Autodesk, “Finite Element Analysis Software (FEA
Software),” https://www.autodesk.com/solutions/finite-element-analysis.
“Finite element analysis helps predict the behavior of products affected by
many physical effects, including, mechanical stress, mechanical vibration,
fatigue, motion, heat transfer, fluid flow, electrostatics, [and] plastic
injection molding.” Id. (capitalization and formatting modified).
The listed behaviors indicate that FEA entails calculating parameters
for the surrounding elements, as well. Because Chen discloses that finite
element analysis was performed for all of the sub-regions of the object
(Chen ¶ 25), one would therefore understand Chen as disclosing “calculating
a parameter for a three dimensional region immediately surrounding the sub-
region.
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And as explained above, reading Chen as a whole, one of ordinary
skill would understand that FEA could be used for modeling objects based
on smaller pixels, as disclosed in Chen’s background disclosure, as well as
for modeling objects with larger sub-regions. As used in this voxel-based
analysis, Chen discloses “calculating [density and heat-flow-property
parameters] for a three dimensional region immediately surrounding the
pixel,” as claimed.
We also disagree with Appellant’s contention that Chen fails to teach
the claimed “[fabrication] setting being . . . a volumetric distribution of build
matter.” Appeal Br. 6. (citing Chen ¶¶ 4, 22, 23). The background of Chen
says that additive manufacturing operates by forming successive cross-
sectional layers of the object. Chen ¶ 3. At each layer stage, portions of
building material are caused to solidify or combine at specific locations. Id.
Known techniques specifically mentioned include selective or fused
deposition modeling and multi-phase jet solidification. Id. (emphasis
added). As such, Chen discloses selecting a setting to use when fabricating
the element, the setting being an amount of fusing agent.
Chen also discloses that according to their invention, “a list of
materials from which a material is chosen for one or more sub-regions
includes a void material.” Chen ¶ 30. Chen explains, “[i]n most additive
fabrication techniques, forming a region of a fabricated object from a void
material simply means that no material is deposited in that region.” Id. As
such, Chen discloses “selecting a setting to use when fabricating the pixel in
the three dimensional object, the setting being . . . a volumetric distribution
of build material,” as claimed. And again, one of ordinary skill would
understand the elements of Chen’s process—including the practice of
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selecting void materials to set the volumetric distribution of build material—
to be useful in carrying out the prior modeling via voxels, as well as in
carrying out Chen’s analysis with simplified sub-regions.
For these reasons, we reject claim 1 under 35 U.S.C. § 102(a)(1) as
anticipated by Chen, when reading that reference as a whole. Because our
rationale differs from that of the Examiner’s, we designate this rejection as
constituting a new ground pursuant to 37 C.F.R. § 41.50(b).
(III)
We also alternatively reject claim 1 as obvious under 35 U.S.C § 103
as being obvious over the combination of (1) Chen’s disclosure of the prior
modeling methods that use voxels and (2) Chen’s disclosure of Chen’s
modeling method that uses simplified sub-regions. Even assuming,
arguendo, that Chen must be interpreted so narrowly as not sufficiently
disclosing setting the volumetric distribution of materials when modeling
specifically with voxels, as in prior-art processes, it at least would have been
obvious to one of ordinary skill to have done so. Chen, itself, discloses that
the volumetric distribution can be set in Chen’s modeling processes that use
the larger sub-regions.
We designate this obviousness rejection as constituting a new ground
pursuant to 37 C.F.R. § 41.50(b).
Although we decline to reject claims 2–12, 16–19 as anticipated or
obvious pursuant to our discretionary authority under 37 C.F.R. § 41.50(b),
we emphasize that our decision does not mean that the remaining claims are
necessarily unobvious over the cited references. Rather, we merely leave the
patentability determination of these claims to the Examiner. See MPEP
§ 1213.02.
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DECISION SUMMARY
In summary:

FINALITY AND RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Rule 37 C.F.R. § 41.50(b) provides “[a] new ground
of rejection pursuant to this paragraph shall not be considered final for
judicial review.”
Rule 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed New
Ground
1, 3, 7, 8,
10–12,
16–19
102(a)(1) Chen 1, 3, 7, 8,
10–12,
16–19
1
2 103 Chen,
Fockele
2
4 103 Chen, Tsuda 4
5 103 Chen, Tsuda,
Astakhov
5
6 103 Chen, Tsuda,
Astakhov,
Liang
6
9 103 Chen,
Vidimce
9
1–12, 16–
19
101 Eligibility 1–12, 16–
19
103 Chen 1
Overall
Outcome
1–12, 16–
19
1–12, 16–
19
Appeal 2020-003007
Application 15/545,693

19
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. . . .

REVERSED;
37 C.F.R. § 41.50(b)