Robert Scott. Trowbridge

Patent Trials and Appeals BoardDec 11, 2019

14598189 - (D) (P.T.A.B. Dec. 11, 2019)

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. 14/598,189 01/15/2015 Robert Scott Trowbridge DISNEY-0850-US 4255 94468 7590 12/11/2019 DISNEY ENTERPRISES INC. c/o Patent Ingenuity, P.C. 9701 Wilshire Blvd., Suite 1000 Beverly Hills, CA 90212 EXAMINER SIDDO, IBRAHIM ART UNIT PAPER NUMBER 2675 NOTIFICATION DATE DELIVERY MODE 12/11/2019 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): patents@patentingenuity.com ssimpson@patentingenuity.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ROBERT SCOTT TROWBRIDGE Appeal 2019-000605 Application 14/598,189 Technology Center 2600 ____________ Before JOHN A. EVANS, JOHN P. PINKERTON, and MICHAEL M. BARRY, Administrative Patent Judges. EVANS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–8, 10–13, and 15–20, which are all of the claims pending in this application. Appeal Br. 5. Claims 9, 14, and 21 are canceled. Id. at 13–15 (Claims App.). We have jurisdiction under 35 U.S.C. § 6(b). 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 “Disney Enterprises, Inc., the assignee of record which is a wholly owned subsidiary of The Walt Disney Company.” Appeal Br. 2. Appeal 2019-000605 Application 14/598,189 2 We AFFIRM.2 CLAIMED SUBJECT MATTER The claims relate to a method and system in the field of 3D printing. Spec. ¶ 2. CLAIMS Claims 1, 8, and 13 are independent. An understanding of the invention can be derived from a reading of representative claim 1, which is reproduced below with some formatting added: 1. A method comprising: receiving object geometry data of an object; receiving data that describes an electronic component that is embeddable within the object; calculating, based on the object geometry data and the data that describes the electronic component, 3D coordinates of a position within an integrated 3D printable model, the position providing enough space for placement of the electronic component within the object and for operation of the electronic component to provide an electronic effect; and printing an integrated 3D printable object based upon the integrated 3D printable model. Appeal Br. 12 (Claims App.). 2 Rather than reiterate the arguments of Appellant and the Examiner, we refer to the Appeal Brief (filed June 29, 2018, “Appeal Br.”), the Reply Brief (filed October 30, 2018, “Reply Br.”), the Examiner’s Answer (mailed October 15, 2018, “Ans.”), the Final Action (mailed January 4, 2018, “Final”), and the Specification (filed January 15, 2015, “Spec.”) for their respective details. Appeal 2019-000605 Application 14/598,189 3 REFERENCES Name Reference Date Willis et al. (Willis) US 2015/0287247 A1 Oct. 8, 2015 Ryu US 2014/0098088 A1 Apr. 10, 2014 Hoover et al. (Hoover) US 2016/0120808 A1 May 5, 2016 Cole US 8,502,674 B1 Aug. 6, 2013 REJECTIONS 1. Claims 1, 3, 5–8, 10, 12, 13, and 15–20 stand rejected under 35 U.S.C. § 103 as being unpatentable over Willis and Ryu. Final 4–9. 2. Claim 2 stands rejected under 35 U.S.C. § 103 as being unpatentable over Willis, Ryu, and Hoover. Id. at 9–11. 3. Claims 4 and 11 stand rejected under 35 U.S.C. § 103 as being unpatentable over Willis, Ryu, and Cole. Id. at 11. ANALYSIS We have reviewed the rejections of claims 1–8, 10–13, and 15–20 in light of Appellant’s arguments that the Examiner erred. We consider Appellant’s arguments as they are presented in the Appeal Brief, pages 5–9 and Reply Brief, pages 2–4. We have considered in this decision only those arguments Appellant actually raised in the Briefs. Any other arguments which Appellant could have made but chose not to make in the Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2019-000605 Application 14/598,189 4 CLAIMS 1–8, 10–13, and 15–20: OBVIOUSNESS OVER WILLIS AND ONE OR MORE OF RYU, HOOVER, AND COLE. Appellant presents arguments for the § 103 rejection of claim 1 and relies on those same arguments as a basis for disputing the § 103 rejections of claims 2–8, 10–13, and 15–20. Appeal Br. 5–9. Therefore, we decide the appeal on the basis of representative claim 1, and refer to the rejected claims collectively herein as “the claims.” See 37 C.F.R. § 41.37(c)(1)(iv); In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986). The Examiner’s § 103 rejections rely at least on the teachings of Willis and Ryu. See, e.g., Final 4 (“Claim[] 1 . . . [is] rejected . . . as being unpatentable over Willis . . . [and] in view of Ryu.”). Appellant does not contest the Examiner’s findings with respect to Willis (id. at 4–5) or that Ryu teaches “calculat[ing] 3D coordinates of the selected location within the 3D model for placement of the additional component” (id. at 5) because Ryu discloses that “the first detector 120 may detect position of real objects by calculating a three-dimensional (3D) coordinate of the position where real objects are placed on 3D area” (Ryu ¶ 63). See Appeal Br. 5–9; Reply Br. 2– 4. Rather, Appellant’s arguments rest merely on the assertions that Ryu is nonanalogous art and that the Office has not met its burden of proof to show obviousness over the combination of Willis and Ryu. See Appeal Br. 5–9; Reply Br. 2–4. As will be discussed in greater detail below, these arguments do not persuade us of Examiner error. It is worth noting here, however, that the Examiner’s rejections did not need to cite the teachings of Ryu. For example, the Examiner could have determined that claim 1 was obvious over Willis alone in view of the knowledge of one of ordinary skill in the art. More specifically, as the Appeal 2019-000605 Application 14/598,189 5 Examiner finds, Willis’s 3D printing method teaches the entirety of claim 1, except that it does not explicitly disclose “calculating . . . 3D coordinates.” See Final 4–5 (citing Willis ¶¶ 15–17, 19, 22–31, 34, 41–43 Figs. 2, 4). Instead of relying on Ryu for this element, however, the Examiner could have pointed to Willis’s disclosure of integrating a 3D digital CAD representation of an additional (e.g., electronic) component with an original 3D object model at a specified location, ensuring the viability of the integrated component once produced. Willis ¶¶ 41–43. From this disclosure, one of ordinary skill in the 3D printing arts would have understood that Willis’s process for integrating a 3D digital CAD representation within a 3D object model includes the calculation of 3D coordinates. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (explaining that an obviousness analysis can take account of the inferences and creative steps of a person of ordinary skill in the art); DyStar Textilfarben GmbH & Co., v. C.H. Patrick Co., 464 F.3d 1356, 1360 (Fed. Cir. 2006) (explaining that basic principles unlikely to be restated in cited references are considered as included in the prior art). We note the existence of this alternative rejection for emphasis only. Nonanalogous Art The Examiner determines that “Willis and Ryu are analogous art because they all pertain to 3D coordinates selection/calculating systems based on received/captured data.” Final 5. Appellant argues Ryu is nonanalogous art because it is neither from the same field of endeavor as claim 1 nor is it reasonably pertinent to the problem faced by the inventor. Appeal Br. 5–7. In particular, Appellant asserts that “Ryu is directed toward the field of display apparatuses, whereas claim 1 is directed to the field of Appeal 2019-000605 Application 14/598,189 6 3D printing.” Id. at 5 (emphasis omitted). Appellant further asserts that Ryu’s transparent display apparatus and associated calculations are not reasonably pertinent to the problem faced by the inventor: The problem of “3D printing being used for relatively simple objects that do not include pre-made electronic components.” Id. at 6. Appellant explains that the breadth of the Examiner’s characterization of Ryu as analogous art because it “‘pertains to 3D coordinate selection/calculating systems based on received/captured data’ . . . would allow Ryu to be analogous to such a wide array of technologies (e.g., motion capture, virtual reality, augmented reality, etc.) as to render MPEP Section 2141.01(a) meaningless.” Id. (citing Final 3). Two separate tests define the scope of analogous prior art: (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 Klein, 647 F.3d 1343, 1348 (Fed. Cir. 2011) (citation omitted). “A reference is reasonably pertinent if, even though it may be in a different field . . . [of] 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). Here, even though Ryu may be in a different field (3D display of virtual objects on physical objects) from that of the inventor’s endeavor (3D printing of model objects), Ryu still qualifies as analogous art because it is reasonably pertinent to the particular problem with which the inventor is involved. As an initial matter, Appellant’s understanding of the inventor’s problem as “3D printing being used for relatively simple objects that do not Appeal 2019-000605 Application 14/598,189 7 include pre-made electronic components” is overly narrow. Appeal Br. 6. Rather, consistent with the Examiner’s determinations, we determine that the inventor’s problem more broadly involves accurately positioning objects within a 3D environment. See, e.g., Spec. ¶¶ 17, 19, 23–24, 29–30. Because this problem is not unique to 3D printing and may be relevant in a wide array of 3D technologies in various environments, both virtual and physical, one of ordinary skill in the art would have consulted areas outside of 3D printing, including Ryu’s disclosure of determining and using 3D coordinates to accurately position and display virtual objects within a 3D environment. See, e.g., Application of Heldt, 433 F.2d 808, 811–12 (CCPA 1970); In re GPAC Inc., 57 F.3d 1573, 1578–79 (Fed. Cir. 1995). In other words, Ryu “logically would have commended itself to an inventor’s attention in considering his problem” and, thus, is reasonably pertinent to the problem with which the inventor is involved. For the foregoing reasons, Appellant does not persuade us that Ryu is nonanalogous art. Burden of Proof for Obviousness “An obviousness determination requires finding both ‘that a skilled artisan would have been motivated to combine the teachings of the prior art . . . and that the skilled artisan would have had a reasonable expectation of success in doing so.” In re Stepan Co., 868 F.3d 1342, 1345–46 (Fed. Cir. 2017) (quoting Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367–68 (Fed. Cir. 2016)). “[T]o have a reasonable expectation of success, one must be motivated to do more than merely to vary all parameters or try each of numerous possible choices until one possibly Appeal 2019-000605 Application 14/598,189 8 arrived at a successful result.” Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). In rejecting claim 1 over the combination of Willis and Ryu, the Examiner determines that: it would have been obvious to people having ordinary skill in the art before the effective filing date of the claimed invention to modify Willis with the first detector 120 of Ryu to teach to calculate 3D coordinates of the selected location within the 3D model for placement of the additional component, as taught by Ryu in order to detect the location/position of the additional component within the 3D model of Willis more precisely. Final 5. Appellant argues the Office has not met its burden of proof for obviousness because the Final Office Action has not explained why a skilled artisan would have any reasonable expectation of success in finding a solution involving Ryu’s 3D coordinate calculation using data from Willis’s 3D printing system. Appeal Br. 7–8. Appellant explains that “even if one of ordinary skill in the art varied ‘all parameters,’ . . . a successful result may not be achieved by combining Willis and Ryu” because “the process of positioning a 3D object on a display apparatus may not lead to any improvement in precision whatsoever,” and “the references themselves do not explicitly state, or suggest, that detection would be more precise -- let alone feasible -- via application of the 3D coordinate calculation from a transparent display apparatus to a 3D printing system.” Id. In response to Appellant’s arguments, the Examiner explains that “using a conventional method of using and calculating [a] 3D coordinate of position of where to embed an object into a 3D area is benefic[ial] as it can Appeal 2019-000605 Application 14/598,189 9 correctly guide the 3D printer to successfully print the 3D object at the correct position.” Ans. 13. The Examiner further explains that [s]ince Willis discloses the limitations recited in the claims except for calculating the geometric coordinates in the 3D model of the 3D model of the object based on the determined position of the electronic component, and since Ryu discloses a first detector 120 Fig 2 which detect[s] position of real objects by calculating a 3D coordinate of the position where the real objects are placed within a 3D area, . . . the combination of Willis with Ryu would result in combining familiar elements according to known methods yielding no more than predictable results. Ans. 14 (citing Willis ¶ 63). In response to the Examiner’s explanations, Appellant asserts that “Ryu is directed toward a physical 3D calculation,” whereas, claim 1 recites calculating 3D coordinates of a position within an integrated 3D printable model. . . . One of ordinary skill in the art would not have a reasonable expectation of success of varying the physical detection componentry of Ryu to then also calculate 3D coordinates for a 3D printable model, as recited by the claims on Appeal. Reply Br. 3–4 (emphasis omitted). Accordingly, Appellant asserts that “[i]n actuality, the only way that one of ordinary skill in the art would reasonably obtain a successful result by combining Willis and Ryu is through impermissible hindsight.” Id. at 4. Appellant’s arguments do not persuade us of Examiner error. As an initial matter, the Examiner’s proposed motivation to combine the cited teachings of Willis and Ryu is supported by Ryu, which discloses a need for a “reality-strengthening display apparatus harmonizing and displaying virtual objects with real objects,” such that a “shop window may display advertising or clothes so that mannequins standing at the back seem to wear Appeal 2019-000605 Application 14/598,189 10 clothes.” Ryu ¶ 8. In other words, Ryu suggests that employing its invention, including its 3D coordinate determinations and calculations, would yield an accurate positioning of a 3D virtual object (e.g., virtual clothing image) over a real object (e.g., mannequin), such that the mannequin appears to be wearing the clothes being virtually displayed thereon. Accordingly, we find no error with the Examiner’s determination that positioning a 3D object more precisely or accurately would have motivated one of ordinary skill in the art to modify Willis’s 3D printing model to include Ryu’s disclosed 3D coordinate determinations and calculations in an effort to produce a 3D printed object with an accurately positioned space for acceptably integrating an electronic component. Moreover, Appellant does not persuade us that the skilled artisan would not have had a reasonable expectation of success in combining the teachings of Willis with those of Ryu. Appellant’s arguments amount to little more than speculation3 and do not include any persuasive evidence to suggest that the proposed combination would have been uniquely challenging or anything more than a routine exercise of combining familiar elements according to known methods or applying known techniques to achieve predictable results. See KSR, 550 U.S. at 416–17 (explaining as examples of combinations likely to be obvious “[t]he combination of familiar elements according to known methods . . . when it does no more than yield predictable results” and “the mere application of a known technique to a piece of prior art ready for the improvement”); Leapfrog 3 See, e.g., Estee Lauder Inc. v. L’Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997) (determining that argument of counsel cannot take the place of evidence lacking in the record). Appeal 2019-000605 Application 14/598,189 11 Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418). Nor does Appellant’s Specification—which mentions calculating 3D coordinates only once and in no more than generic terms—convince us otherwise. See Spec. 19 (“Therefore, the computing device 103 calculates geometric coordinates in the 3D model of the 3D model of the object based on the determined position of the electronic component.”). And, to the extent Appellant is asserting that the 3D coordinate teachings of Ryu must be bodily incorporated or physically integrated into Willis’s 3D printing model, we note “the criterion [is] not whether the references could be physically combined but whether the claimed inventions are rendered obvious by the teachings of the prior art as a whole.” In re Etter, 756 F.2d 852, 859 (Fed. Cir. 1985). For the foregoing reasons, Appellant does not persuade us that the Office’s burden of proof for obviousness has not been met. Therefore, we sustain the Examiner’s § 103 rejection of claims 1–8, 10–13, and 15–20. CONCLUSION We affirm the Examiner’s rejection of claims 1–8, 10–13, and 15–20 under 35 U.S.C. § 103. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37 C.F.R. § 41.50(f). Appeal 2019-000605 Application 14/598,189 12 In summary: Claims Rejected 35 U.S.C. § Basis Affirmed Reversed 1, 3, 5–8, 10, 12, 13, and 15–20 103 Willis, Ryu 1, 3, 5–8, 10, 12, 13, and 15–20 2 103 Willis, Ryu, Hoover 2 4 and 11 103 Willis, Ryu, Cole 4 and 11 Overall Outcome 1–8, 10–13, and 15–20 AFFIRMED