Mech, Radomir et al.

Patent Trials and Appeals Board

Aug 21, 2020

13408890 - (D) (P.T.A.B. Aug. 21, 2020)

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.
13/408,890 02/29/2012 Radomir Mech 2011US02 3858
108982 7590 08/21/2020
SBMC
116 W. Pacific Avenue
Suite 200
Spokane, WA 99201
EXAMINER
COTHRAN, BERNARD E
ART UNIT PAPER NUMBER
2128
NOTIFICATION DATE DELIVERY MODE
08/21/2020 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@sbmc-law.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte RADOMIR MECH, NATHAN A. CARR,
and ONDREJ STAVA
________________

Appeal 2019-003126
Application 13/408,890
Technology Center 2100
________________

Before RICHARD M. LEBOVITZ, JASON V. MORGAN, and
JOHN A. EVANS, Administrative Patent Judges.

MORGAN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Introduction
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Adobe
Systems, Inc. Appeal Br. 2.
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Summary Of The Disclosure
Appellant’s claimed subject matter relates to “improving printability
of a three-dimensional model” by applying a point “at which stresses . . .
exceed the structural tolerances of a material to be used by the three-
dimensional printing system for a fabrication of the model” and calculating a
correction “to the model designed to decrease the stresses” on the point.
Abstract.
Exemplary Claim (Key Limitations Emphasized)
1. A computer-implemented method, the method comprising:
performing, by a computing device, a three-dimensional
printability analysis of a computer-based three-dimensional
model to be generated by a three-dimensional printing system,
the three-dimensional printability analysis occurring prior to
printing by the three-dimensional printing system and
comprising:
applying, by the computing device, at least one test case
representing an application of at least one force to the
computer-based three-dimensional model; and
performing, by the computing device, for the at least one
test case, operations comprising:
generating, by the computing device, at least one
point at which stresses associated with the
respective test case exceed the structural tolerances
of a material to be used by the three-dimensional
printing system for a fabrication of the computer-
based three-dimensional model;
calculating, by the computing device, for the at
least one point, at least one correction to the
computer-based three-dimensional model, the at
least one correction specifying a change in how
the computer-based three-dimensional model is to
be printed in order to decrease the stresses
associated with the respective test case; and
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selecting, by the computing device, a correction of
the at least one correction based on at least one
criterion.
The Examiner’s Rejections And Cited References
The Examiner rejects claims 1–20 under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Non-Final Act. 3–5.
The Examiner rejects claims 1–3, 6, 8, 11, 14, 16, and 19 under 35
U.S.C. § 103(a) as being unpatentable over J. Hiller et al., Design and
analysis of digital materials for physical 3D voxel printing, Rapid
Prototyping Journal, Vol. 15 No. 2, pp. 137–49 (2009) (“Hiller”), Martin
(US 2012/0326356 A1; published Dec. 27, 2012), Amakai et al. (US 2003/
0055612 A1; published Mar. 20, 2003) (“Amakai”), and Langer et al. (US
5,460,758; issued Oct. 24, 1995). Non-Final Act. 6–14.
The Examiner rejects claims 4, 5, and 20 under 35 U.S.C. § 103(a) as
being unpatentable over Hiller, Martin, Amakai, Langer, and Napadensky et
al. (US 2004/0187714 A1; published Sept. 30, 2004) (“Napadensky”). Non-
Final Act. 13–16.
The Examiner rejects claims 7, 12, and 13 under 35 U.S.C. § 103(a) as
being unpatentable over Hiller, Martin, Amakai, Langer, and Fogel et al.
(US 2011/0087350 A1; published Apr. 14, 2011) (“Fogel”). Non-Final Act.
16–19.
The Examiner rejects claims 9 and 10 under 35 U.S.C. § 103(a) as
being unpatentable over Hiller, Martin, Amakai, Langer, and Stipek (US
2004/0032156 A1; published Feb. 19, 2004). Non-Final Act. 19–21.
The Examiner rejects claims 15, 17, and 18 under 35 U.S.C. § 103(a)
as being unpatentable over Hiller, Martin, Amakai, Langer, and Bickel et al.
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(US 2012/0053716 A1; published Mar. 1, 2012) (“Bickel”). Non-Final Act.
21–25.
PRINCIPLES OF LAW
To constitute patent-eligible subject matter, an invention must be a
“new and useful process, machine, manufacture, or composition of matter,
or [a] new and useful improvement thereof.” 35 U.S.C. § 101. There are
implicit exceptions to the categories of patentable subject matter identified
in 35 U.S.C. § 101, including: (1) laws of nature; (2) natural phenomena;
and (3) abstract ideas. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216
(2014). The U.S. Supreme Court has set forth a framework for
distinguishing patents with claims directed to these implicit exceptions
“from those that claim patent-eligible applications of those concepts.” Id. at
217 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S.
66 (2012)). The evaluation follows a two-part framework: (1) determine
whether the claim is directed to a patent-ineligible concept, e.g., an abstract
idea; and (2) if so, then determine whether any element, or combination of
elements, in the claim is sufficient to ensure that the claim amounts to
significantly more than the patent-ineligible concept itself. See id. at 217–18.
The U.S. Patent and Trademark Office (USPTO) published guidance
on the application of the two-part analysis in 2019. USPTO, 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (January 7,
2019) (“2019 Revised Guidance”); see also USPTO, October 2019 Update:
Subject Matter Eligibility, available at https://www.uspto.gov/sites/default/
files/documents/peg_oct_2019_update.pdf (Oct. 17, 2019) (“Oct. 2019
Update”). Under that guidance, we first look to whether the claim recites:
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(1) any judicial exceptions, including certain groupings
of abstract ideas (i.e., mathematical concepts, certain methods
of organizing human activity such as a fundamental economic
practice, or mental processes) (see 2019 Revised Guidance, 84
Fed. Reg. at 54 (step 2A, prong one)); and
(2) additional elements that integrate the judicial
exception into a practical application (see id. at 54–55 (step 2A,
prong two); MPEP §§ 2106.05(a)–(c), (e)–(h)).
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:
(3) adds a specific limitation beyond the judicial
exception that is not “well-understood, routine, conventional”
in the field (see MPEP § 2106.05(d)); 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.
See 2019 Revised Guidance, 84 Fed. Reg. at 56.
ANALYSIS—35 U.S.C. § 101
Step 2A, Prong One
In rejecting claim 1 as being directed to patent-ineligible subject
matter, the Examiner determines the claim recites the “abstract idea of
customizing information and presenting it [to] users based on particular
characteristics to improve the printability of a three-dimensional model.”
Non-Final Act. 3; see also Ans. 25. “Appellant maintains that the claims do
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not recite an abstract idea” (Reply Br. 4), but Appellant’s arguments are best
addressed under Step 2A, Prong Two, and Step 2B (see Appeal Br. 10–16;
Reply Br. 3–7; 2019 Revised Guidance, 84 Fed. Reg. at 54–55).
Furthermore, we agree with the Examiner that claim 1 recites an
abstract idea. In particular, claim 1 recites “performing . . . a three-
dimensional [fabrication] analysis of a . . . three-dimensional model” by
“applying . . . at least one test case representing an application of at least one
force to the . . . three-dimensional model,” “generating . . . at least one point
at which stresses associated with [a] test case exceed the structural
tolerances of a material to be used . . . for a fabrication of the . . . three-
dimensional model,” “calculating . . . for the at least one point, at least one
correction to the . . . model, the at least one correction specifying a change in
how the . . . is to be [fabricated] in order to decrease the stresses associated
with the respective test case,” and “selecting . . . a correction of the at least
one correction based on at least one criterion.” The Specification illustrates
these steps in Figure 2, which shows performing structural analysis (step
230) for detected test cases (step 220) to determine if stress is too high (step
240) and selecting a correction (step 260) such as adding a part (step 290),
thickening a part (step 280), or lightening a part (step 270). These
recitations, and the supporting disclosures, exemplify the process of
engineering structures such as bridges or cantilevers that are load-bearing,
allow movement or manipulation, or merely withstand the effects of gravity.
See Spec. ¶¶ 4, 25, 27–29, 46, 52–54; Appeal Br. 14–15; Reply Br. 7. That
is, before creating a physical structure, engineers typically model the
structure, predict how expected forces are likely to affect the structure, and
modify or correct the model to handle predicted forced. Moreover, with the
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exception of generic computing device recitations, there is nothing in claim
1 that forecloses the recited steps “from being performed by a human,
mentally or with pen and paper.” Intellectual Ventures I LLC v. Symantec
Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
Accordingly, claim 1 recites mental processes—concepts performed
in the human mind (including an observation, evaluation, judgment or
opinion)—and, therefore, claim 1 recites an abstract idea. 2019 Revised
Guidance, 84 Fed. Reg. at 52.
Step 2A, Prong One
Appellant contends the Examiner erred because “the claimed subject
matter is an improvement to a computing technology, e.g., three-dimensional
model printing.” Appeal Br. 11; Reply Br. 4. Appellant argues the features
of claim 1 are similar to a patent-eligible solution that “is necessarily rooted
in computer technology in order to overcome a problem specifically arising
in the realm of computer networks.” Appeal Br. 12 (quoting DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014)); see also id.
at 13–15; Reply Br. 5–6. Specifically, Appellant argues claim 1 “involves
detecting problems with printing a three-dimensional model and calculating
corrections in relation to how a three-dimensional printing system prints the
three-dimensional model.” Appeal Br. 13 (citing Spec. ¶ 25).
Appellant’s arguments are not persuasive because the additional
elements of claim 1 generally link the use of the underlying mental
processes to the field of three-dimensional model printing without providing
an improvement to the printing process which is separate from the recited
mental steps. This is not enough to integrate the underlying mental processes
into a patent-eligible practical application. See 2019 Revised Guidance, 84
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Fed. Reg. at 55. Moreover, processes for modelling a structure, predicting
how expected forces are likely to affect the structure, and modifying or
correcting the model before physically building the modeled structure are
not necessarily rooted in a computing technology because, as explained
above, they can be performed in the human mind with the aid of pen and
paper. Compare with DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245, 1257–58 (Fed. Cir. 2014) (a system to enable a visitor to “click o[n]
an advertisement for a third-party product displayed on a host’s website
[without being] transported to the third party’s website” was necessarily
rooted in a computer technology because with pre-Internet practices there
was “no possibility that by walking up to this kiosk, [a] customer [would] be
suddenly and completely transported outside the warehouse store and
relocated to a separate physical venue associated with the third-party”).
The additional elements of claim 1 also fail:
(1) to reflect “an improvement in the functioning of a computer,
or an improvement to other technology or technical field” (e.g., a
three-dimensional printing system is not improved by the process—
instead, an improved three-dimensional model may be provided to an
unimproved three-dimensional printing system);
(2) to apply or use the underlying “judicial exception to effect a
particular treatment or prophylaxis for a disease or medical
condition”;
(3) to implement the underlying “judicial exception with, or
[use the] judicial exception in conjunction with, a particular machine
or manufacture that is integral to the claim” (e.g., a particular
computing device is not recited);
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(4) to effect “a transformation or reduction of a particular article
to a different state or thing” (compare with Diamond v. Diehr, 450
U.S. 175, 101 S. Ct. 1048 (1981) (a method of operating a rubber-
molding press by monitoring the mold’s temperature to determine
when to automatically opening the press was patent-eligible)); and
(5) to apply or use the underlying “the judicial exception in
some other meaningful way beyond generally linking the use of the
judicial exception to a particular technological environment, such that
the claim as a whole is more than a drafting effort designed to
monopolize the exception.”
See 2019 Revised Guidance, 84 Fed. Reg. at 55.
Accordingly, we determine that claim 1 does not include additional
recitations that integrate the recited mental processes—concepts performed
in the human mind (including an observation, evaluation, judgment or
opinion)—into a patent-eligible practical application.
Step 2B
The Examiner further determines that claim 1 “does not include
additional elements that are sufficient to amount to significantly more than
the judicial exception because the additional elements when considered both
individually and as an ordered combination do not amount to significantly
more than the abstract idea.” Non-Final Act. 4; see also Reply Br. 30–31.
Appellant contends the Examiner erred by failing “to provide any facts
showing that the [additional] elements of [claim 1] were widely prevalent or
in common use in the relevant industry at the time the patent application was
filed.” Appeal Br. 16.
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Appellant’s argument is not persuasive because the additional
recitations were well-understood, routine, and conventional. See 2019
Revised Guidance, 84 Fed. Reg. at 56. For example, the Specification’s
support for the claimed “computing device” is provided at a high-level of
generality that evinces computing devices were sufficiently well-known
such that disclosure of particulars (e.g., which of the many different
computing devices enumerated are best suited for performing the claimed
steps) were not needed to meet the requirements of providing both an
enabling disclosure and sufficient written description support. See Spec.
¶¶ 24, 35–36, 56–68, Fig. 10; USPTO, Changes in Examination Procedure
Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility
Decision (Berkheimer v. HP, Inc.), *3–4, available at https://www.uspto.
gov/sites/default/files/documents/memo-berkheimer-20180419.PDF (Apr.
19, 2018).
For these reasons, we determine that claim 1 does not add a specific
limitation or combination of limitations that provide an inventive concept
such that transforms the underlying mental processes into a patent-eligible
invention. See 2019 Revised Guidance, 84 Fed. Reg. at 56. Accordingly, we
sustain the Examiner’s 35 U.S.C. § 101 rejection of claim 1, and claims 2–
20, which Appellant does not argue separately. Appeal Br. 16.
ANALYSIS—35 U.S.C. § 103(A)
Langer teaches analysis of the surface of a three-dimensional object—
modelled by solidifying superposed layers—to ascertain deviations of the
object from the CAD data for the object, thus enabling the CAD data to be
corrected for subsequent productions of the object. See Langer Abstract,
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3:30–56. The Examiner “considers the changing of the layer thickness to be
the calculation of at least one correction, since one or more corrections
form[ing] the correction calculation module include adjusting a thickness of
a component of a . . . model.” Non-Final Act. 9 (citing Spec. ¶ 40). Thus, the
Examiner finds that Langer teaches or suggests “calculating for the at least
one point, at least one correction to the computer-based three-dimensional
model, the at least one correction specifying a change in how the computer-
based three-dimensional model is to be printed in order to decrease the
stresses associated with the respective test case,” as recited in claim 1. Id.
(citing Langer 3:30–56); see also Ans. 34 (further citing Langer 4:7–15).
Appellant contends the Examiner erred because Langer teaches “that
Moire-technology is used to perform surface measurements of an object,
which determines inaccuracies of a solidified surface of the object.” Appeal
Br. 18 (citing Langer 1:26–32). Appellant argues that “measurements of a
printed object are not force representations applied to a three-dimensional
model that is not transferred to the real world, e.g., via three-dimensional
printing.” Id. at 19. That is, “Langer’s correction calculation does not
correspond to the claimed ‘calculating . . . at least one correction,’ which is
calculated in relation to stresses associated with a test case—a
representation of at least one force applied to the claimed computer-based
three-dimensional model.” Reply Br. 9.
We agree with Appellant that the Examiner erred. The thickening of a
surface, or a portion of a surface, in Langer merely corrects for discrepancies
between uncorrected CAD data for an object and the object as produced. In
particular, Langer discloses that its
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correction takes not only the primary causes of deformation into
account, i.e.[,] the stresses and deformations due to the volume
change or shrinkage occurring during the solidification and/or
post curing, but also all other inaccuracies such as errors in
adjusting the illuminating apparatus, inhomogeneities of the
resin, variations in the level adjustment of the support
platform[,] etc.
Langer 4:9–14.
Producing corrected CAD data to minimize discrepancies (i.e.,
deformations) in subsequent productions of the object does not represent
making a correction to decrease the stresses associated with a test case. That
is, the subsequent objects produced in Langer more accurately embody the
original CAD data, but correcting the CAD data to enable more accurate
object production does not correct the design of the original CAD data so
that the modeled object can withstand particular forces applied to a point in a
computer-based three-dimensional model. Therefore, we agree with
Appellant that the Examiner does not show Langer teaches or suggests
“calculating . . . for the at least one point, at least one correction to the
computer-based three-dimensional model, the at least one correction
specifying a change in how the computer-based three-dimensional model is
to be printed in order to decrease the stresses associated with the respective
test case,” as recited in claim 1.
The Examiner does not show that Hiller, Martin, Amakai,
Napadensky, Fogel, Stipek, or Bickel cure the noted deficiency of Langer.
Non-Final Act. 10, 14, 16–17, 20–22. Therefore, we do not sustain the
Examiner’s 35 U.S.C. § 103(a) rejection of claim 1, and claims 2–20, which
contain the same or similar recitations.
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CONCLUSION
Claims
Rejected 35 U.S.C. § References/Basis Affirmed Reversed
1–20 101 Eligibility 1–20
1–3, 6, 8, 11,
14, 16, 19
103(a) Hiller, Martin
Amakai, Langer
1–3, 6, 8, 11,
14, 16, 19
4, 5, 20 103(a) Hiller, Martin,
Amakai, Langer,
Napandesky
4, 5, 20
7, 12, 13 103(a) Hiller, Martin,
Amakai, Langer,
Fogel
7, 12, 13
9, 10 103(a) Hiller, Martin,
Amakai, Langer,
Stipek
9, 10
5, 17, 18 103(a) Hiller, Martin,
Amakai, Langer,
Bickel
5, 17, 18
Overall
Outcome
1–20
TIME PERIOD FOR RESPONSE
No time period for taking subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED