Ex Parte von Hasseln et al

Patent Trials and Appeals BoardFeb 8, 2019

14151672 - (D) (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. Â§ 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. Â§ 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. Appeal2018-002217 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. Â§ 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. 2 Appeal2018-002217 Application 14/151,672 claims 1-6, 8, 9, and 13-22 under 35 U.S.C. Â§ 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 Â§ 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 3 Appeal2018-002217 Application 14/151,672 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. Â§ 103(a) is limited to consideration of claim 1, as discussed above. 4 Appeal2018-002217 Application 14/151,672 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 5 Appeal2018-002217 Application 14/151,672 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 6 Appeal2018-002217 Application 14/151,672 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 7 Appeal2018-002217 Application 14/151,672 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 8 Appeal2018-002217 Application 14/151,672 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 9 Appeal2018-002217 Application 14/151,672 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. 10 Appeal2018-002217 Application 14/151,672 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 11 Appeal2018-002217 Application 14/151,672 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 12 Appeal2018-002217 Application 14/151,672 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 13 Appeal2018-002217 Application 14/151,672 conclusion of obviousness. We accordingly sustain the Examiner's rejection of claims 1-6, 8, 9, and 13-22 under 35 U.S.C. Â§ 103(a). DECISION We affirm the Examiner's rejection of claims 1---6, 8, 9, and 13-22 under 35 U.S.C. Â§ 103(a). 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 14