Ex Parte Goredema et al

Patent Trials and Appeals Board

Jan 24, 2019

14247376 - (D) (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. § 103. Final Act. (May 10, 2017) 2-10.
Appellant1 seeks reversal of these rejections pursuant to 35 U.S.C. § 134(a).
We have jurisdiction under 35 U.S.C. § 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 140°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
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Application 14/247,376
140°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 110°C to about 140°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. § 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. § 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").
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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
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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
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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 °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
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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 °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
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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
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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
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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.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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