XYZPRINTING, INC. et al.

Patent Trials and Appeals Board

Nov 5, 2020

14566937 - (D) (P.T.A.B. Nov. 5, 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.
14/566,937 12/11/2014 CHUAN-FENG WU OP-103000668 3585
84956 7590 11/05/2020
HDLS IPR Services
P.O. Box 230970
CENTREVILLE, VA 20120
EXAMINER
PATEL, SHIVANG I
ART UNIT PAPER NUMBER
2618
NOTIFICATION DATE DELIVERY MODE
11/05/2020 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):
hdlsipr@gmail.com
services.ipr@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHUAN-FENG WU, MENG-GUNG LI,
YI-HSUN LEE, HUA LIU, and CHUN-FAN TAI
Appeal 2019-002552
Application 14/566,937
Technology Center 2600
Before JOSEPH L. DIXON, ERIC S. FRAHM, and
JOHNNY A. KUMAR, Administrative Patent Judges.
DIXON, 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 1–3 and 10. Claims 4–9 are canceled.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a)(2017). Appellant identifies the real party in interest as
XYZPRINTING, INC. Appeal Br. 3.
Appeal 2019-002552
Application 14/566,937
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CLAIMED SUBJECT MATTER
The claims are directed to an image processing method including the
steps of: a two-dimensional (2D) image is obtained; a gray-scale processing
is performed; a smoothing processing is performed; and a height calculation
for constructing a three-dimensional (3D) model is performed. The 2D
image is automatically converted into a 3D model. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A method for constructing three-dimensional model
from two-dimensional image, comprising:

a) retrieving a two-dimension image;

b) performing a gray-scale processing to the two-
dimension image to obtain a gray-scale two-dimension
image if the two-dimension image is a color image;

c) performing a resolution lowering processing to the
gray-scale two-dimension image to decrease resolution of
the gray-scale two-dimension image, the resolution
lowering processing combining or deleting multiple pixels in
the gray-scale two-dimension image so that the resolution of the
gray-scale two-dimension image is lowered to a specific size to
achieve resolution lowering effect for the gray-scale two-
dimension image;

d) respectively calculating a height value corresponding
to each pixel according to pixel values of a plurality of pixels
of the gray-scale two-dimension image, wherein the pixel value
of each pixel is inversely proportional to the corresponding
height value;

e) constructing a three-dimension model according to the
gray-scale two-dimension image and the height values;

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f) dividing a pixel value range of the pixels of the two-
dimension image by a slicing threshold to obtain a thickness
value;

g) slicing the three-dimension model into a plurality of
slice models according to the thickness value, wherein a
number of slice models is same as the slicing threshold; and

h) printing the slice models for generating a physical
three-dimension model at a three-dimension printer, wherein a
numbers of layers of the physical three-dimension model is
same as the slicing threshold.

(Claims App. 17–18).
REFERENCES
The prior art relied upon by the Examiner is:
Stokes US 2005/0053275 A1 Mar. 10, 2005
Lipton et al. US 2012/0241993 A1 Sept. 27, 2012
Wang et al. US 8,520,935 B2 Aug. 27, 2013
Z. Borsos et al. “A Realistic Estimation of Nanosurfaces Area from SEM
Grayscale Images,” U.P.B. Sci. Bull., Series A, Vol. 76, Iss.4, 2014, pp.
199–208.
REJECTION
Claims 1–3 and 10 stand rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Wang, Stokes, Borsos, and Lipton.

OPINION
35 U.S.C. § 103(a)
Claim 1

In the Final Action, the Examiner provides a rejection with the
mapping of the corresponding claimed elements to the four prior art
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Application 14/566,937
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references in the Final Action. Final Act. 3–9 (Wang teaches steps a, b, and
h of the claimed method; Stokes teaches steps a, c, d, e, and f of the claimed
method; Borsos teaches steps d, e, and f of the claimed method; Lipton
teaches steps g and h of the claimed method).
Appellant has the burden on appeal to the Board to demonstrate error
in the Examiner’s position. See In re Kahn, 441 F.3d 977, 985–86 (Fed. Cir.
2006). We review the appealed rejections for error based upon the issues
identified by Appellant and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential),
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”)). After considering the
evidence presented in this Appeal and each of Appellant’s arguments, we are
persuaded that Appellant identifies reversible error. Thus, we reverse the
Examiner’s rejection for the reasons expressed in the Appeal and Reply
Briefs. We add the following primarily for emphasis.
Appellant argues that the Stokes reference teaches a two-dimensional
to three-dimensional conversion and the Stokes reference does not teach or
suggest step d) where “the pixel value of each pixel is inversely
proportional to the corresponding height value.” Appeal Br. 10 (emphasis
added).
The Examiner merely identifies paragraph 11 of the Stokes reference
which generally teaches identifying the color black as a minimum value (0
to 256 scale) and the color white is a maximum value and further processing
all the grayscales between the two limits. Final Act. 5; Ans. 4.
Appellant further identifies the corresponding portions of the
Specification at “paragraph 81 [sic 74]” of the printed Wu application (page
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13 of original Specification discloses the inverse proportional limitation)
which discloses the use with back lighting and transmitted light. Appeal Br.
10.
With regards to the claimed “inversely proportional” limitation, the
Examiner makes a conclusory finding in the Responsive to Arguments
section that:
similar to claimed invention, Stokes discloses converting pixel
values to height values of a 30 surface this is shown in Figure 3
and Figure 4 of Stokes. Stokes differs in specifically generating
a low relief surface (paragraph [0008]), however one of ordinary
skill would understand if the opposite is desired - a sunken relief
surface - it would be a simple matter of interchanging the height
transformation such that dark pixels correspond to largest height
and light pixels with lowest height.
Ans. 4. We find the Examiner’s statement to be unsupported by the express
teachings and suggestions in the Stokes reference. Although the Stokes
reference discloses “low relief” models or representations, the Examiner has
identified no teaching or suggestion regarding a “sunken relief surface” in
the Stokes reference or in any other prior art reference of record to support
the Examiner’s statement. Stokes ¶¶ 8, 26, 85, 96.
The Examiner provides no express teaching, suggestion, or persuasive
line of reasoning to support the “sunken relief surface” in the administrative
record on review. Consequently, the Examiner has not provided a teaching
or suggestion or articulated line of reasoning to use supported by any factual
evidence in the administrative record.
In response to Appellant’s arguments regarding the claimed
“calculating a height value corresponding to each pixel according to pixel
values of a plurality of pixels of the gray-scale two dimension image,
wherein the pixel value of each pixel is inversely proportional to the
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corresponding height value,” the Examiner finds that paragraph [0076] of
Stokes discloses transforming an image into a relief surface, specifically
dark pixel values (i.e. low pixel values) have the smallest height and light
pixels values (i.e. height pixels values) have the largest height. “Therefore
similar to claimed invention, Stokes discloses converting pixel values to
height values of a 3D surface this is shown in Figure 3 and Figure 4 of
Stokes.” Ans. 4. The Examiner further finds that “Stokes differs in
specifically generating a low relief surface (paragraph [0008]), however one
of ordinary skill would understand if the opposite is desired - a sunken relief
surface - it would be a simple matter of interchanging the height
transformation such that dark pixels correspond to largest height and light
pixels with lowest height.” Ans. 4.
Appellant additionally argues that the Examiner’s applied rejection
splits the sequence of steps f) and g) between the Borsos and Lipton
references, but the claimed invention has those limitations “highly related.”
Appeal Br. 11–12.
Appellant argues that the claim recites in step f) dividing a pixel value
range of the pixels of the two-dimensional image by a slicing threshold to
obtain a thickness value and then in step g) the same thickness value is used
in the slicing of the three-dimensional model where the number of slice
models is the same as the slicing threshold. Appeal Br. 11.
The Examiner, in the Response to Argument section of the
Examiner’s Answer, only addresses the Borsos reference as having 256
elevation Heights and then identifies that there is a slicing threshold. Ans.
5. It is unclear if the Examiner is dropping the reliance upon the Lipton
reference and relying on the identified Borsos reference to teach or suggest
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the limitations in d, e, f, and g limitations except that the slicing threshold is
with respect to the two-dimensional model and the step of slicing has to do
with the three-dimensional model.
We find that the Examiner’s reliance upon the two interrelated steps
from two separate references, does not teach or suggest using one value for
the related computations.
Additionally, the Examiner doesn’t expressly identify any specific
portion of the Borsos reference to support the finding and the Examiner just
states there are 256 elevation Heights/levels which doesn’t necessarily
correlate to the claimed threshold.
“On appeal to the Board, an applicant can overcome a rejection by
showing insufficient evidence of prima facie obviousness or by rebutting the
prima facie case with evidence of secondary indicia of nonobviousness.” In
re Kahn, 441 F.3d 977, 985–86 (Fed. Cir. 2006) (quoting In re Rouffet, 149
F.3d 1350, 1355 (Fed. Cir. 1998)).
[T]he examiner bears the initial burden, on review of the prior
art or on any other ground, of presenting a prima facie case of
unpatentability. If that burden is met, the burden of coming
forward with evidence or argument shifts to the applicant.
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
“A rejection based on section 103 clearly must rest on a factual basis.
. . .” In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). “The Patent Office
has the initial duty of supplying the factual basis for its rejection. It may not
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. . . resort to speculation, unfounded assumptions or hindsight reconstruction
to supply deficiencies in its factual basis.” Id.
“Obviousness may not be established using hindsight or in view of the
teachings or suggestions of the inventor.” Para-Ordnance Mfg. v. SGS
Importers Int’l, 73 F.3d 1085, 1087 (Fed. Cir. 1995) (citing W.L. Gore &
Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1551, 1553 (Fed. Cir. 1983)).
“The mere fact that the prior art may be modified in the manner suggested
by the Examiner does not make the modification obvious unless the prior art
suggested the desirability of the modification.” In re Fritch, 972 F.2d 1260,
1266 (Fed. Cir. 1992) (citing In re Gordon, 733 F.2d 900, 902 (Fed. Cir.
1984)). “It is impermissible to use the claimed invention as an instruction
manual or ‘template’ to piece together the teachings of the prior art so that
the claimed invention is rendered obvious.” Fritch, 972 F.2 at 1266 (citing
In re Gorman, 933 F.2d 982, 987 (Fed. Cir. 1991)).
We find the Examiner’s finding and conclusion regarding the “sunken
relief” to be unsupported by the express teachings of the Stokes reference in
the identified portions of the Stokes reference, and the Examiner has not
identified any teaching or suggestion of a “sunken relief surface” in any of
the applied prior art references.
With respect to Appellant’s argument that claimed steps f) and g) are
“highly related” and the three-dimensional model is sliced in a number of
slice models based on the slicing threshold, the Examiner identifies
paragraphs 76–78 of Appellant’s Specification regarding the claimed slicing
threshold and finds that for a slicing threshold of 120, a total of 120 slice
models are generated. Ans. 5. The Examiner finds Borsos is related to
creating a 3D model from 2D image and calculating surface area, and Borsos
also discloses determining the number of elevation heights for the 3D model.
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Ans. 5. Specifically, the Examiner finds Borsos discloses for an image with
256 gray levels a total of 256 elevation heights are used for 3D model
(Section 2.1- Surface area of a 3D image created from 2D image). Ans. 5.
We note that Section 2.1 of the Borsos reference does not expressly
discuss a “threshold” or “slicing,” and the Examiner does not cite to any
specific teaching or suggestion in the Borsos reference to support the
Examiner’s factual finding. Additionally, the Examiner rejected the separate
limitations of steps f) and g) applying the Stokes and Borsos references to
the individual steps. We find the two steps are interrelated in the functions
pertaining to the claimed “a slicing threshold to obtain a thickness value,”
and “slicing the three-dimension model into a plurality of slice models
according to the thickness value, wherein a number of slice models is same
as the slicing threshold, as claimed. As a result, the Examiner has not
specifically responded to Appellant’s arguments with any additional factual
findings or articulated reasoning because the Examiner has rejected the
individual steps with two different references that lack the interrelationship
of the values used therein.
We do not address Appellant’s third argument regarding “resolution
lowering” because Appellant’s has already shown error in the Examiner’s
factual findings and ultimate conclusion of obviousness with respect to
illustrative independent claim 1. Appeal Br. 13–14; see also Ans. 6.
Therefore, we do not sustain the obviousness rejection of illustrative
independent claim 1 and dependent claims 2, 3, and 10.
CONCLUSION
The Examiner’s obviousness rejection is reversed.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–3, 10 103(a) Wang, Stokes,
Borsos, Lipton
1–3, 10

REVERSED