Ex Parte von Hasseln et al

Patent Trial and Appeal Board

Feb 8, 2019

14151672 (P.T.A.B. Feb. 8, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/151,672 01/09/2014
22514 7590 02/08/2019
3D Systems, Inc.
3D Systems, Inc.
333 Three D Systems Circle
Rock Hill, SC 29730
FIRST NAMED INVENTOR
Kyle William von Hasseln
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.
USA.1168-1 1598
EXAMINER
TRAN, LIEN THUY
ART UNIT PAPER NUMBER
1793
MAIL DATE DELIVERY MODE
02/08/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KYLE WILLIAM VON HASSELN,
ELIZABETH MARISHA VON HASSELN,
and DEREK X. WILLIAM
Appeal2018-002217
Application 14/151,672
Technology Center 1700
Before BRADLEY R. GARRIS, BEYERL YA. FRANKLIN, and
JANEE. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner's decision to finally reject claims 1---6, 8, 9, and 13-22. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellant is the applicant, 3D Systems, Inc., which, according to the
Appeal Brief, is the real party in interest. Appeal Brief filed September 13,
2017 ("App. Br."), 3.
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Application 14/151,672
STATEMENT OF THE CASE
Appellant claims a method of making an edible component. App. Br.
3--4. Claim 1, the sole pending independent claim, illustrates the subject
matter on appeal and is reproduced below with contested language italicized:
1. A method for making an edible component comprising:
depositing successive layers of an unbound powder food
material according to digital data that describes the edible
component; and
applying to one or more regions of each of the successive
layers of food material one or more edible binders that bond the
food material at said one or more regions to form said edible
component,
wherein the food material comprises 25-75% by weight
maltodextrin and 25-75% by weight confectioner's sugar,
based on a total weight of the food material.
App. Br. 9 (Claims Appendix) (emphasis added).
The Examiner sets forth the rejection of claims 1---6, 8, 9, and 13-22
under 35 U.S.C. § I03(a) as unpatentable over Lai2 in view ofYang3,
Dolan4, Willcocks5, Guthrie6, and Emsing7 in the Final Office Action
entered February 16, 2017 ("Final Act."), and maintains the rejection in the
Examiner's Answer entered December 1, 2017 ("Ans.").
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant's contentions, we affirm the Examiner's rejection of
2 US 2008/0260918 Al, published October 23, 2008.
3 US 6,280,784 Bl issued August 28, 2001.
4 US HI620 issued December 3, 1996.
5 US 6,391,356 Bl issued May 21, 2002
6 US 2011/0293781 Al published December 1, 2011.
7 US 6,783,790 Bl issued August 31, 2004.
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claims 1-6, 8, 9, and 13-22 under 35 U.S.C. § 103(a) for the reasons set
forth in the Final Action, the Answer, and below.
We note initially that in the Appeal Brief, Appellant first incorporates
the arguments Appellant previously presented in a Response filed December
7, 2016 ("Resp."), in which Appellant argued claims 1---6, 8, 9, and 13-22
together on the basis of claim 1. App. Br. 4; Resp. 6-24. Appellant then
summarizes some of the arguments presented in the December 7, 2016
Response. App. Br. 4--8. Although Appellant refers to claims 17 and 18
several times in the Appeal Brief without referring to any of the other
pending claims, Appellant's references to claims 1 7 and 18 do not address
the particular subject matter recited in these claims. Id. Accordingly,
Appellant's remarks in the Appeal Brief do not constitute substantive
arguments as to the separate patentability of claims 17 and 18. We therefore
select claim 1 as representative, and decide the appeal as to claims 1-6, 8, 9,
and 13-22 based on claim 1 alone. 37 C.F.R § 4I.37(c)(l)(iv). We address
the arguments Appellant presents in the Response filed December 7, 2016
because, as mentioned above, the arguments Appellant presents in the
Appeal Brief summarize these arguments.
Lai discloses a method of manufacturing a three-dimensional food
product based on a design created by a customer using computer-aided
design software. Lai Abstract, ,r,r 1, 8-13, and 3 5. Lai discloses that the
method involves applying successive layers of edible powder onto a
workpiece according to the data generated by the design software, and using
an inkjet printer head to spray an edible binder onto each powder layer. Lai
,r,r 22-24, Fig. 1. Lai discloses that the edible powder can be gypsum
powder, flour, glutinous rice flour, com starch, chocolate powder, and other
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edible powders. Lai ,r 33. Lai discloses that the particles of edible powder
may have different sizes, and may play different roles according to their
compositions, such as filler, stabilizer, fortifier or binding promoter, and
special adhesive. Id.
Appellant does not dispute the Examiner's finding that Lai thus
discloses the steps of the method recited in claim 1. Compare Final Act. 2-
3, with Resp. 6-24. The Examiner finds that Lai does not disclose using
maltodextrin and confectioner's sugar in the amounts recited in claim 1,
however, and the Examiner relies on Yang, Dolan, and Emsing for
suggesting these features. 8 Final Act. 2-7. Yang discloses a layer-by-layer
manufacturing method that involves using a food composition to produce a
complex-shaped three-dimensional food object. Yang col. 1, 11. 5-16. Yang
discloses that the food composition includes a powder body building
material, such as "powders of meat, vegetable, fruit, flour, starch, vitamin,
sugar, salt, peppers, flavor, supplementary materials, and combinations
thereof." Yang col. 4, 11. 26-31, 50-54.
Dolan discloses a dry chocolate-flavored beverage mix that includes
about 40% to about 60% particulate sugar, such as granulated or powdered
sugar. Dolan col. 3, 11. 15-20. Dolan discloses that "[i]n addition to the
added particulate sugar in the dry beverage mix, other natural or artificial
sweeteners can also be incorporated therein." Dolan col. 3, 11. 21-23.
8 The Examiner relies on Willcocks and Guthrie for suggesting features of
numerous dependent claims that are not recited in claim 1. Final Act. 4--5.
We therefore do not address these references, because our review of the
rejection of claims 1---6, 8, 9, and 13-22 under 35 U.S.C. § 103(a) is limited
to consideration of claim 1, as discussed above.
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Emsing discloses a process for making a high solids confectionary
product, and discloses that sugar substitutes and sugar replacements, such as
maltodextrins, can be used as sweetening agents in the product. Emsing col.
4, 11. 17-19; col. 6, 11. 39-44.
In view of these disclosures in the applied prior art references, the
Examiner concludes that because Lai and Yang are both directed to creating
three-dimensional food products using powder materials, and Lai discloses
numerous exemplary powders and teaches that "other edible powders" may
be used to create the three-dimensional food product, while Yang teaches
numerous differing types of powder materials that can be used to create such
products, it would have been obvious to one of ordinary skill in the art at the
time of the invention to use one or more sweetening agents as the "other
edible powders" in Lai's method, such as powdered (or confectionary) sugar
in combination with a sugar substitute, as disclosed in Dolan. Final Act. 4--
7; Ans. 10, 12. The Examiner further concludes that it would have been
obvious to use maltodextrin as the sugar substitute suggested by Dolan in
view of Emsing's disclosure of using maltodextrin as a sugar substitute in a
confectionary product. Final Act. 4--5; Ans. 12.
Appellant argues that Lai, Yang, Dolan, and Emsing "each fail to
disclose, teach, or suggest a method of making a food material, in which a
food material is deposited, a binder is applied, and the food material
comprises 25-75% by weight maltodextrin and 25-75% by weight
confectioner's sugar, based on a total weight of the food material." Resp. 8,
13-14.
Appellant's arguments are improperly based on the applied prior art
references individually, and do not take into consideration what the
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combined disclosures of the references would have suggested to one of
ordinary skill in the art at the time of the invention. In re Merck & Co., Inc.,
800 F.2d 1091, 1097 (Fed. Cir. 1986) ("Non-obviousness cannot be
established by attacking references individually where the rejection is based
upon the teachings of a combination of references."); In re Keller, 642 F.2d
413,425 (CCPA 1981) (The test for obviousness "is what the combined
teachings of the references would have suggested to those of ordinary skill
in the art.").
As discussed above, it is undisputed on this appeal record that Lai
discloses the process steps recited in claim 1. Lai' s disclosure that "other
edible powders" can be used to produce a three-dimensional food product
according to Lai's method, in addition to various specifically delineated
exemplary edible powders, and disclosure of using edible powders that play
different roles according to their compositions, would have suggested that
edible powders beyond those specifically mentioned in the reference could
be used to produce food products having desired characteristics.
Accordingly, one of ordinary skill in the art seeking to produce a food
product using Lai' s method would have selected and combined various
conventional food powders to create a product having the desired flavor,
texture, and appearance. For example, one of ordinary skill in the art
seeking to produce a sweet, confectionary product using Lai' s method would
have used one or more powdered sweeteners in the method to impart a sweet
flavor. Dolan's disclosure of using artificial sweeteners in combination with
a particulate sugar, such as powdered sugar, to produce a confectionary
product, and Emsing's disclosure of using maltodextrin as a sweetening
agent in a confectionary product, reasonably would have suggested using
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powdered sugar and powdered maltodextrin as sweeteners in Lai' s method
to produce a confectionary product. One of ordinary skill in the art would
have adjusted the levels of powdered sugar and powdered maltodextrin to
achieve a desired level of sweetness in the product, and would have arrived
at suitable levels, such as an amount as recited in claim 1, through nothing
more than routine experimentation. In re Boesch, 617 F.2d 272, 276 (CCPA
1980) ("[D]iscovery of an optimum value of a result effective variable in a
known process is ordinarily within the skill of the art."); In re Aller, 220
F.2d 454, 456 (CCPA 1955) ("[W]here the general conditions of a claim are
disclosed in the prior art, it is not inventive to discover the optimum or
workable ranges by routine experimentation.").
Appellant argues that "there is no logical nexus or evidentiary-based
reasoning for combining the non-powder methods and/or materials of
making edible components in Yang, Dolan, Willcocks, Guthrie, and Emsing
with the powder based method and materials of Lai." Resp. 8. Appellant
argues that "[t]here is no obvious reason for replacing and/or combining any
of the powder food materials in Lai with any of the sweeteners in any of the
remaining references." Resp. 14. Appellant argues that "[t]he fact that
maltodextrin may replace the sweetener in Emsing does not render it
obvious to replace the specific sugars or sweeteners in other recipes utilizing
preferred ingredients that are suitable for certain methods of manufacture ...
[and] [t]here is certainly no evidence that maltodextrin will work in a
powder food material absent the teachings gleaned from the instant
specification." Id.
As discussed above, contrary to Appellant's arguments, one of
ordinary skill in the art seeking to produce a confectionary product using
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Lai's method would have used one or more powder sweeteners as edible
powders in the method, such as powdered sugar in combination with
powdered maltodextrin, as suggested by Dolan and Emsing. Levin, 178 F.2d
at 948.
Also contrary to Appellant's arguments, Yang does not disclose a
"non-powder" method. Rather, as discussed above, Yang discloses a
method for manufacturing a food composition that includes a powder body
building material, such as "powders of meat, vegetable, fruit, flour, starch,
vitamin, sugar, salt, peppers, flavor, supplementary materials, and
combinations thereof." Dolan also does not disclose a "non-powder"
method, but instead discloses a dry confectionary product that includes
particulate sugar, such as granulated or powdered sugar in combination with
an artificial sweetener. Dolan's disclosure of particulate sugar used together
with an artificial sweetener reasonably would have suggested that the
artificial sweetener would also be a particulate, or powdered, material.
Furthermore, as discussed above, Lai broadly discloses that "other
edible powders" can be used to produce a three-dimensional food product
using Lai's method, in addition to various exemplary edible powders
specifically mentioned in the reference. We find no disclosure in Lai
indicating that particular types of edible powders could not be used in Lai's
method, and Appellant does not direct us to any such disclosure. Resp. 6-
24. Rather, Lai broadly discloses that the particles of edible powder used in
Lai's method may have different sizes, and may play different roles
according to their compositions. Lai ,r 33. Thus, we find no evidence on this
appeal record establishing that particular types of edible powders, such as
powdered sugar and powdered maltodextrin as suggested by Dolan and
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Emsing, could not be used successfully in Lai' s method to create a
satisfactory confectionary product. In re Kubin, 561 F.3d 1351, 1360 (Fed.
Cir. 2009) ( emphasis omitted) ( citing In re O 'Farrell, 85 3 F .2d 894, 903-04
(Fed. Cir. 1988) ("[ o ]bviousness does not require absolute predictability of
success ... all that is required is a reasonable expectation of success.").
Finally, we point out that it is well-established that "new recipes or
formulas for cooking food" that "involve the addition or elimination of
common ingredients, or for treating them in ways which differ from the
former practice," do not amount to a patentable invention "merely because it
is not disclosed that, in the constantly developing art of preparing food, no
one else ever did the particular thing upon which the applicant asserts his
right to a patent." In re Levin, 178 F.2d 945, 948 (CCPA 1949). "In all such
cases, there is nothing patentable unless the applicant by a proper showing
further establishes a coaction or cooperative relationship between the
selected ingredients which produces a new, unexpected, and useful
function." Id.
On this record, as discussed more fully below, Appellant does not
establish "a coaction or cooperative relationship" between maltodextrin and
confectioner's sugar that produces a new, unexpected, and useful function."
Levin, 178 F.2d at 948.
Appellant argues that "among the undefined, broad choices allegedly
provided by Lai and Yang," the Examiner does not identify a direction or
teaching in Lai, Yang, Dolan, and/or Emsing "regarding why the specific
choices made in Applicant's claims would be made by a person of ordinary
skill in the art without knowledge of Applicant's disclosure." Resp. 19
( emphasis omitted). Appellant argues that contrary to the Examiner's
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position, Lai, Yang, Dolan, and Emsing "provide no guidance whatsoever
regarding the selection of the specific materials and amounts recited in
Applicant's claims." Resp. 20.
As discussed above, however, one of ordinary skill in the art seeking
to produce a confectionary food product using a layer-by-layer
manufacturing process as disclosed in Lai would have found it obvious to
utilize one or more of any of the suitable powder ingredients suggested by
Lai, Yang, Dolan, and Emsing, including powdered sugar and powdered
maltodextrin. The disclosure in these references of a multitude of suitable
ingredients, and combinations thereof, for producing food products does not
render any particular ingredient, or combination of ingredients, less obvious,
because these references are available for all they would have suggested to
one of ordinary skill in the art at the time of Appellant's invention. Merck &
Co., Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) ("That
the '813 patent discloses a multitude of effective combinations does not
render any particular formulation less obvious. This is especially true
because the claimed composition is used for the identical purpose."); In re
Susi, 440 F.2d 442,445 (CCPA 1971) (obviousness rejection affirmed where
the genus of the prior art was "huge, but it undeniably include[ d] at least
some of the compounds recited in appellant's generic claims and [was] of a
class of chemicals to be used for the same purpose as appellant's additives").
As also discussed above, the skilled artisan would have arrived at
suitable levels of powdered sugar and powdered maltodextrin to include in a
confectionary product produced using Lai' s method that would impart a
desired level of sweetness, such as an amount as recited in claim 1, through
nothing more than routine experimentation.
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Appellant argues that Dolan, and Emsing are non-analogous art
because they are not directed to three-dimensional printing of powdered
food material and a binder. Resp. 23.
A reference is analogous art if it is either in the field of the inventors'
endeavor, or is reasonably pertinent to the particular problem with which the
inventors were concerned. In re Kahn, 441 F.3d 977, 987 (Fed. Cir. 2006).
"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 itself to an
inventor's attention in considering his problem." In re Clay, 966 F.2d 656,
659 (Fed. Cir. 1992).
One of ordinary skill in the art seeking to produce a confectionary
food product using a layer-by-layer manufacturing process as disclosed in
Lai reasonably would have looked to Dolan and Emsing's disclosures of
suitable sweetening agents for confectionary products. Accordingly, one of
ordinary skill in the art would have understood Dolan and Emsing to be
reasonably pertinent to the particular problem with which the inventors were
concerned-namely, production of a three-dimensional food product
comprising maltodextrin and confectioner's sugar in a layer-by-layer
manufacturing process. Spec. ,r,r 19, 58, 101-102, and 105.
Appellant argues that Lai' s method of layering powder and spraying
with a binder to form a three-dimensional structure "is not the same as, and
actually teaches away from, the non-powder on binder printing method
disclosed in Yang." Resp. 15-16. Appellant argues that the Examiner "fails
to clearly articulate any reason why Yang's teaching of a single extruded
layer that can bind to itself without the use of a separate binder renders
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obvious the claimed invention, which recites an entirely different method of
forming an edible component." Resp. 16-17. Appellant argues that
modifying the method of Yang to arrive at the method of Claim 1 would
require a substantial reconstruction of the method of Yang." Resp. 17-18
( emphasis omitted).
As discussed above, Appellant does not dispute the Examiner's
finding that Lai discloses the process steps recited in claim 1. The
Examiner's rejection is not based on modifying the method disclosed in
Yang to arrive at the method of claim 1. Ans. 10. Rather, the Examiner's
reliance on Yang is based on Yang's disclosure of various powder materials
that can be used to create three-dimensional food products. Id. Therefore,
regardless of whether the steps of Yang's method differ from those of Lai' s
method and from the method of claim 1, the combined disclosures Lai,
Yang, Dolan, and Emsing nonetheless would have suggested the method for
making an edible component recited in claim 1.
Appellant argues that the inventors discovered that the method of
claim 1 "can provide edible components or food products having improved
mechanical properties, such as improved flexural strength." Resp. 20 (citing
Spec. ,r 105). Appellant argues that "Lai and Yang are completely silent
regarding this unexpected advantage, nor do Lai, Yang, Dolan ... and
Emsing, disclose methods, formulations, or configurations capable of
providing this advantage." Resp. 20 (emphasis omitted).
The relevant portion of the Specification cited by Appellant states that
"the use of a maltodextrin in a food material or mixture of food materials
described herein, in some cases, can provide edible components or food
products having improved mechanical properties. For example, in some
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embodiments, an edible component or food product formed from a food
material comprising maltodextrin can exhibit a flexural strength of at least
about 0.5 MPa, at least about 1 MPa, or at least about 1.5 MPa." Spec. ,r 105
( emphasis added). This portion of the Specification, however, does not
describe the particular "cases" or "embodiments" that impart improved
mechanical properties to food products, and therefore does not demonstrate
that the method recited in claim 1 provides improved mechanical properties.
Moreover, Appellant does not direct us to any persuasive evidence or
averment evincing that the asserted improved mechanical properties would
have been unexpected by one of ordinary skill in the art at the time of the
invention. See, e.g., In re Geisler, 116 F.3d 1465, 1471 (Fed. Cir. 1997)
("Geisler made no such assertion [that results were unexpected] in his
application. Nor did Geisler submit any such statement through other
evidentiary submissions, such as an affidavit or declaration under Rule 132 .
. . Instead, the only reference to unexpected results was a statement by
Geisler's counsel ... that Geisler's results were 'surprising."').
Nor does Appellant direct us to any factual evidence supporting
Appellant's assertion of the "unexpected advantage" imparted by the method
of claim 1. "[I]t is well settled that unexpected results must be established
by factual evidence. 'Mere argument or conclusory statements in the
specification does not suffice."' Geisler, 116 F .3d at 14 70 ( quoting In re De
Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1994)); see also In re Pearson, 494
F.2d 1399, 1405 (CCPA 1974) ("Attorney's argument in a brief cannot take
the place of evidence.").
Therefore, considering the totality of the evidence relied upon in this
appeal, a preponderance of the evidence weighs in favor of the Examiner's
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conclusion of obviousness. We accordingly sustain the Examiner's rejection
of claims 1-6, 8, 9, and 13-22 under 35 U.S.C. § 103(a).
DECISION
We affirm the Examiner's rejection of claims 1---6, 8, 9, and 13-22
under 35 U.S.C. § 103(a).
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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