Ex Parte Goredema et al

Patent Trial and Appeal BoardJan 24, 2019

14247376 (P.T.A.B. Jan. 24, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/247,376 04/08/2014 Adela Goredema 76113 7590 01/28/2019 PILLSBURY WINTHROP SHAW PITTMAN, LLP (Xerox) XEROX CORPORATION P .0 . BOX 10500 MCLEAN, VA 22102 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. 20131483US01-429485 2187 EXAMINER BELL, WILLIAM P ART UNIT PAPER NUMBER 1745 NOTIFICATION DATE DELIVERY MODE 01/28/2019 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): docket_ip@pillsburylaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ADELA GOREDEMA, JENNIFER L. BELELIE, MARCEL P. BRETON, and BARKEV KEOSHKERIAN Appeal2018-001053 Application 14/247,376 Technology Center 1700 Before TERRY J. OWENS, JEFFREY T. SMITH, and MICHAEL G. McMANUS, Administrative Patent Judges. McMANUS, Administrative Patent Judge. DECISION ON APPEAL The Examiner finally rejected claims 1 and 5-18 of Application 14/247,376 under 35 U.S.C. Â§ 103. Final Act. (May 10, 2017) 2-10. Appellant1 seeks reversal of these rejections pursuant to 35 U.S.C. Â§ 134(a). We have jurisdiction under 35 U.S.C. Â§ 6. For the reasons set forth below, we AFFIRM. 1 The Appellant is the Applicant, Xerox Corporation, which is also identified as the real party in interest. Appeal Br. 2. Appeal2018-001053 Application 14/247,376 BACKGROUND The present application generally relates to a method for the formation of three-dimensional objects using layer by layer formation of the object through application of stereolithography. Spec. ,r 1. Such three-dimensional objects may be made using a three-dimensional printer that deposits phase change materials layer by layer so as to form a three-dimensional structure. Id. Phase change materials are solid at room temperature but are made molten or flowable at an elevated temperature. Id. ,r 1. The application describes a phase change material comprising a crystalline compound and an amorphous compound. Id. ,r 7. This phase change material is advantageous as other known materials "such as hot melt inks, are either not sufficiently robust, tend to be brittle, exhibit significant layer to layer distortion, have high viscosities, or other properties that make them difficult to handle and dispense." Id. ,r 5. Claim 1 is illustrative of the subject matter on appeal and is reproduced below: 1. A method for forming three-dimensional objects compnsmg: providing a phase change material, wherein the phase change material comprises a crystalline compound and an amorphous compound; wherein neither the crystalline compound nor the amorphous compound is wax based; wherein the crystalline compound has a viscosity of less than 12 cps at a temperature of about 140Â°C and a viscosity of greater than 1 x 106 cps at room temperature; and wherein the amorphous compound has a viscosity of less than 100 cps at a temperature of about 2 Appeal2018-001053 Application 14/247,376 140Â°C and a viscosity of greater than 1 x 106 cps at room temperature; heating the phase change material to a jetting temperature; jetting from an inkjet printhead the phase change material in layers on top of one another, wherein the jetting temperature is from about 110Â°C to about 140Â°C and wherein each layer is allowed to cool and/or solidify before jetting a subsequent layer; and forming a three-dimensional object from the cool and/or solidified layers. Appeal Br. 16 (Claims App.) (reformatted for clarity). REJECTIONS The Examiner maintains the following rejections: 1. Claims 1 and 6-18 are rejected under 35 U.S.C. Â§ 103 as obvious over Stockwell et al. 2 ( as informed by Eastman 3) in view of Morimutsu et al., 4 and Bui et al. 5 Final Act. 2-9. 2. Claim 5 is rejected under 35 U.S.C. Â§ 103 as obvious over Stockwell (as informed by Eastman), in view of Morimitsu, Bui, and Rodgers. 6 Id. at 10-12. 2 US 2010/0288194 Al, published Nov. 18, 2010 ("Stockwell"). 3 Product Data Sheet, "Plastolyn TM Rl 140 Hydrocarbon Resin," Eastman Chemical BV ("Eastman"). 4 US 2012/0272863 Al, published Nov. 1, 2012 ("Morimutsu"). 5 US 6,133,353, issued Oct. 17, 2000 ("Bui"). 6 US 2015/0145168 Al, published May 28, 2015 ("Rodgers"). 3 Appeal2018-001053 Application 14/247,376 DISCUSSION Rejection 1. The Examiner determined that claims 1 and 6-18 are obvious over Stockwell (as informed by Eastman), Morimutsu, and Bui. Id. at 2-9. Appellant asserts error on two bases. Appeal Br. 7-13. First, Appellant argues that the Examiner has not shown that the proposed combination would have had a reasonable expectation of success. Id. at 8-9, 10. In the Final Rejection, the Examiner relied upon Stockwell as teaching the use of a phase change material comprising a first crystalline compound and a second amorphous compound. Final Act. 3. Stockwell does not, however, teach that the compounds are not wax-based. Id. The Examiner further relied upon Morimitsu as teaching "a phase change material suitable for use in a range of ink jet printing processes, wherein the phase change material comprises a crystalline compound and an amorphous compound." Id. The Examiner found that the compounds of Morimitsu are not wax-based. Id. at 3--4. The Examiner determined that it would have been obvious to combine the teachings of the references as follows: It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method taught by Stockwell by using the phase change material taught by Morimitsu for the benefit of providing a build material with desirable physical properties and robust performance (see Morimitsu, [0058]). Bui teaches that phase change inks for inkjet printing are also suitable for use in rapid prototyping applications, of which 3D inkjet printing is a well-known example (see column 1, lines 50-65 and column 2, lines 60-64). Because Bui teaches that phase change inks for conventional inkjet printing are also useful in rapid prototyping applications, one of skill in the art would 4 Appeal2018-001053 Application 14/247,376 have had a reasonable expectation of success in making the substitution of build materials. Final Act. 4. Appellant argues that the Examiner erred in determining that Bui teaches that phase change inks are suitable for rapid prototyping applications. Appeal Br. 8. Appellant argues that Bui teaches two separate compositions: phase change solid imaging materials and, separately, phase change inks. Id. Appellant asserts that "while Bui does teach that their solid imaging compositions are suitable for rapid prototyping, nowhere does Bui teach that phase change inks are suitable for rapid prototyping." Id. at 9. Similarly, Appellant argues that the "desirable physical properties" providing "robust inks" are relative to two-dimensional flat images and would not motivate one of skill in the art to use such compositions in three- dimensional printing. Id. at 10. In the Answer, the Examiner concedes that "Bui distinguishes between 'phase change inks' for conventional 2D printing and 'phase change materials' for rapid prototyping (e.g. 3D printing)." Answer 3. The Examiner concludes, however, that "one of skill in the art would readily appreciate, based on the disclosure of Bui, that the materials used for 2D and 3D printing are directly related and materials used in one type of printing are also applicable to the other type of printing." Id. The Examiner further states, "[i]n other words, one of skill in the art would have a reasonable expectation of success in using phase change inks for ink jet printing as materials for 3D printing." Id. at 3--4. In its Reply, Appellant argues that "relatedness of materials does not make any phase change ink ( or some of its constituent parts) suitable ( or 5 Appeal2018-001053 Application 14/247,376 modifiable) for 3D printing." Reply Br. 2. Appellant further asserts that the demands of a 2D print and 3D print are different. Id. Moreover, Appellant argues, Bui does not teach one how to make its phase change inks suitable for use in 3D applications. Id. The Specification teaches that the claimed mixture of crystalline and amorphous compounds yields "surprising" results as follows: It has been discovered that using a mixture of crystalline and amorphous compounds in phase change materials used in three-dimensional printing based on thermal stereolithography provides robust objects. Using this approach is surprising, however, due to the known properties of crystalline or amorphous materials. For crystalline materials, small molecules generally tend to crystallize when solidifying and low molecular weight organic solids are generally crystals. While crystalline materials are generally harder and more resistant, such materials are also much more brittle, so that printed matter made using a mainly crystalline ink composition is fairly sensitive to damage. For amorphous materials, high molecular weight amorphous materials, such as polymers, become viscous and sticky liquids at high temperature, but do not show sufficiently low viscosity at high temperatures. As a result, the polymers cannot be jetted at desirable jetting temperature (:S 140 Â°C). In the present embodiments, however, it is discovered that a robust phase change material can be obtained through a blend of crystalline and amorphous compounds. Spec. 14 ( emphasis added). This is similar to the disclosure of Morimitsu which provides, in part, as follows: It has been discovered that using a mixture of crystalline and amorphous components in solid ink formulations provides robust inks, and in particular, solid inks which demonstrate robust images on uncoated and coated paper. For crystalline components, small molecules generally tend to crystallize when solidifying and low molecular weight organic solids are generally crystals. While crystalline components are generally 6 Appeal2018-001053 Application 14/247,376 harder and more resistant, such materials are also much more brittle, so that printed matter made using a mainly crystalline ink composition is fairly sensitive to damage. For amorphous components, high molecular weight amorphous components, such as polymers, become viscous and sticky liquids at high temperature, but do not show sufficiently low viscosity at high temperatures. As a result, the polymers cannot be jetted from print head nozzles at desirable jetting temperature (:S 140 Â°C). In the present embodiments, however, it is discovered that a robust solid ink can be obtained through a blend of crystalline and amorphous components. * * * The crystalline component in the ink formulation drives the phase change through rapid crystallization on cooling. The crystalline component also sets up the structure of the final ink film and creates a hard ink by reducing the tackiness of the amorphous component. The amorphous components provide tackiness and impart robustness to the printed ink. Morimitsu ,r 20, 22. Thus, much of what the Specification describes as "surprising," including the robustness of a mixture of crystalline and amorphous components in solid ink formulations, was known in the prior art as taught by Morimutsu. Further, the Examiner's determination that Bui teaches that materials used in 2D printing may be applicable to 3D printing (Answer 3) is supported by the record. For example, Bui teaches that it is an aspect of the invention "that a phase change solid imaging material or a phase change ink carrier composition which is an admixture of a viscosity modifying agent, a tackifier, a urethane polyamide compound, and a polyamide resin is obtained." Bui, 3:11-15 (emphasis added). Bui further teaches that a feature of the invention is "that the amide isocyanate derived resin product .. . obviates the need for the use of a separate plasticizer when the resin is employed in a solid imaging material or polyamide ink formulation 7 Appeal2018-001053 Application 14/247,376 because the resulting material or ink is sufficiently malleable and ductile on its own." Bui, 3:21-28. Thus, Bui applies the same broad description to both solid imaging material and ink. This supports the Examiner's determination that one of skill in the art would appreciate, based on the disclosure of Bui, that the materials used for 2D and 3D printing are directly related. Accordingly, Appellant has not shown reversible error in the Examiner's determination that one of ordinary skill in the art would have had a reasonable expectation of success in using the crystalline and amorphous components of Morimitsu with the process of Stockwell. For its second argument, Appellant asserts that Morimitsu is not analogous art to the claimed invention. Appeal Br. at 9-10. In evaluating the obviousness of a claim, one must make several factual inquiries including "the scope and content of the prior art." Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966) (emphasis added). A reference must be analogous to fall within the scope of the prior art. See Jurgens v. McKasy, 927 F.2d 1552, 1557 (Fed. Cir. 1991) ("By finding the claims nonobvious, the jury presumably found that the disputed prior art is not analogous and therefore not within the scope of the prior art.") To determine if a prior art reference is analogous, we consider "(1) whether the art is from the same field of endeavor, regardless of the problem addressed, and (2) if the reference is not within the field of the inventor's endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved." In re Clay, 966 F.2d 656, 658 (Fed. Cir. 1992). "A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor's endeavor, it is one which, because of the matter with which it deals, logically would have commended 8 Appeal2018-001053 Application 14/247,376 itself to an inventor's attention in considering his problem." Id. at 659. "When a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). Here, the composition of Morimitsu appears reasonably pertinent to the particular problem with which the inventor is involved. The Specification primarily relates to suitable phase change materials. A persistent problem that exists in relation to thermal stereolithography and, in particular, as it relates to three- dimensional printing is finding suitable materials that are capable of being dispensed from the dispensers currently used in such systems (such as an inkjet print head), and which are also capable of forming three-dimensional objects with suitable robustness and accuracy in formation. Spec. ,r 5. Morimitsu teaches a composition that may be dispersed from an ink jet print head and is robust upon deposit. Similarly, Morimitsu teaches as follows: It has been discovered that using a mixture of crystalline and amorphous components in solid ink formulations provides robust inks, and in particular, solid inks which demonstrate robust images on uncoated and coated paper. ... In the present embodiments, however, it is discovered that a robust solid ink can be obtained through a blend of crystalline and amorphous components. Morimitsu ,r 20. Morimitsu further teaches that "[a]t room temperature, the suitable materials are in crystalline form and have viscosity of greater than about 106 cps." Id. ,r 23. This is comparable to the viscosity described in the 9 Appeal2018-001053 Application 14/247,376 Specification (i-f 16) and required by claim 1. 7 Accordingly, we determine that Appellant has not shown reversible error in the Examiner's determination that Morimitsu is analogous art to the present application. Appellant asserts that the rejection of claims 6-18 is in error for the same reasons as discussed above. Appeal Br. 11-13. As we have not found such arguments to be persuasive, we determine that Appellant has not shown a reversible error in the rejection of these claims. Rejection 2. The Examiner rejected claim 5 as obvious over Stockwell (as informed by Eastman), in view of Morimitsu, Bui, and Rodgers. Final Act. 9-10. Appellant argues that claim 5 depends from claim 1 and is patentable for the same reasons as with regard to claim 1. Appeal Br. 14. As we have not found such arguments to be persuasive, we determine that Appellant has not shown a reversible error in the rejection of claim 5. CONCLUSION The rejection of claims 1 and 6-18 as obvious over Stockwell (as informed by Eastman), in view of Morimitsu, and Bui is affirmed. The rejection of claim 5 as obvious over Stockwell (as informed by Eastman), in view of Morimitsu, Bui, and Rodgers is affirmed. 7 We note that the Specification incorporates by reference United States Patent No. 8,506,040, which, in tum, incorporates by reference Morimitsu. See United States Patent No. 8,506,040, 1: 11-14, 48--49. Thus, Appellant is, in a sense, arguing that the Specification is not analogous to itself. 10 Appeal2018-001053 Application 14/247,376 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). AFFIRMED 11