Ex Parte Silverbrook

Patent Trial and Appeal Board

Feb 25, 2013

10753499 (P.T.A.B. Feb. 25, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte KIA SILVERBROOK
____________________

Appeal 2010-009174
Application 10/753,499
Technology Center 2600
____________________

Before DEBRA K. STEPHENS, HUNG H. BUI, and GEORGIANA W.
BRADEN, Administrative Patent Judges.

BUI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1-8, 11-12, and 17-22.2 We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.3

1 Real Party in Interest is SIVERBROOK RESEARCH PTY LTD.
2 Claims 9-10, and 13-16 have been cancelled and are not on appeal.
3 Our decision refers to Appellant’s Appeal Brief filed December 29,
2009 (“App. Br.”); Examiner’s Answer mailed March 8, 2010 (“Ans.”);
Final Office Action mailed October 2, 2009 (“FOA”); and the original
Specification filed January 9, 2004 (“Spec.”).
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STATEMENT OF THE CASE
Appellant’s Invention
Appellant’s invention relates to a three dimensional (“3D”) object
creation system for printing a 3D object comprised of layers stacked
vertically with respect to each other. Spec. page 1, ll. 15-18. The system
comprises a series of print heads to simultaneously print multiple layers of
different vertical positions within the stack. Spec. page 17, ll. 5-9, FIG. 2,
and Abstract.
Claims on Appeal
Claim 1 is the only independent claim on appeal and is representative
of the invention, as reproduced below with disputed limitations emphasized:

1. A three dimensional object creation system for
printing a three dimensional object comprised of layers stacked
vertically with respect to each other, the system comprising:

a series of printheads for printing the layers, the series of
printheads simultaneously printing at least two layers of
different vertical positions within the stack; and

a semiconductor memory for storing data defining at
least one layer, wherein the system is operable to reconfigure a
printhead initially configured to print a layer at a first vertical
position to print a layer at a second vertical position.

Evidence Considered
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
O’Connor US 5,705,117 Jan. 6, 1998
Klaus US 6,056,455 May 2, 2000
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Penn US 6,169,605 B1 Jan. 2, 2001
Miyake US 6,174,039 B1 Jan. 16, 2001
Jang US 2002/0062909 A1 May 30, 2002

Examiner’s Rejections
(1) Claims 1, 2, 7, 11-12, and 17 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Penn and Jang. Ans. 3-6.
(2) Claims 3-6 and 8 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Penn, Jang, and Klaus.4 Ans. 6-8.
(3) Claims 18-21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Penn, Jang, and O’Connor.5 Ans. 8-10.
(4) Claim 22 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Penn, Jang, and Miyake.6 Ans. 10-12.

4 Appellant does not dispute the rejection of claims 3-6 and 8, and only
presents arguments against the rejection of claims 1, 2, 7, 11-12, and 17
under 35 U.S.C. § 103(a) as being unpatentable over Penn and Jang (see
App. Br. 8). Therefore, if the rejection of claims 1, 2, 7, 11-12 and 17 is
affirmed, the final rejection of claims 3-6 and 8 is also affirmed, and any
dispute regarding these claims is deemed waived. See Ex Parte Frye, 94
USPQ2d 1072, 1075 (BPAI 2010) (precedential) (citing In re Oetiker, 977
F.2d. 1443, 1445 (Fed. Cir. 1992)) (explaining that the BPAI reviews the
appealed rejections for error based upon the issues identified by an
Appellant, and in light of the arguments and evidence produced thereon).
See also Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) (explaining
that a ground of rejection is waived when an Appellant fails to contest the
rejection and that the Board is free to affirm such an uncontested rejection
without considering the merits).
5 Similarly, Appellant does not dispute the rejection of claims 18-21.
As such, the final rejection of claims 18-21 is affirmed for the same reasons
discussed herein.
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ISSUE
Based on Appellant’s arguments, the dispositive issue on appeal is
whether the Examiner has erred in rejecting claims 1, 2, 7, 11-12, and 17
under 35 U.S.C. § 103(a) as being obvious over Penn and Jang. In
particular, the issue turns on whether Penn and Jang disclose or suggest “a
series of printheads ... simultaneously printing at least two layers of
different vertical positions within the stack,” as recited in independent
claim 1 (emphasis added). App. Br. 9-12.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments that the Examiner has erred. Only those arguments actually made
by Appellant in the Appeal Brief have been considered. See 37 C.F.R.
§ 41.37(c)(1)(vii).
We disagree with Appellant’s contentions. We adopt as our own (1)
the findings and reasons set forth by the Examiner in the action from which
this appeal is taken and (2) the reasons set forth by the Examiner in the
Examiner’s Answer in response to Appellant’s Appeal Brief. We also
concur with the conclusions reached by the Examiner. We further highlight
and address specific findings and arguments for emphasis as follows.
With respect to independent claim 1, Appellant contends that the
combination of Penn and Jang does not disclose or suggest “a series of

6 Likewise, Appellant does not dispute the rejection of claim 22. As
such, the final rejection of claim 22 is also affirmed for the same reasons
discussed herein.
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printheads ... simultaneously printing at least two layers of different vertical
positions within the stack.” App. Br. 9-12. In particular, Appellant
acknowledges that:
Penn et al. teach a series of printheads for printing “layers.”
The series of printheads simultaneously print at least two “layers” of
the same vertical position within a stack. The first “layer” is
construed as the layer of first (conductive) material 25, and the second
“layer” is construed as the layer of second (non-conductive) material
35, both having the same vertical position in the stack.

Jang discloses a 3-D object formed by printing (non-
simultaneously) at least two layers of different vertical positions
within a stack, one after another. A first layer is formed from a first
pore-filling material, and a subsequent layer formed on top of the first
layer is formed from a second (different) pore-filling material. Jang et
al. further teach printing a first layer of a first material, and thereafter
reconfiguring the printhead to print a second layer of second material
in vertical succession.

Hence, the Examiner contends that if Penn et al. can use at least
two printheads to simultaneously print two different materials within
the same vertical positions, and since Jang et al. describes an object
where one vertical layer is of a first material and a subsequent vertical
layer is of a second (different) material, it is then not unpredictable for
one of ordinary skill in the art to arrive at the configuration where the
two different materials are simultaneously printed at two different
vertical positions because, allegedly, Jang et al. explicitly suggest that
it is possible.

App. Br. 10 (emphasis added).
Nevertheless, Appellant argues that:
(1) the fact that Jang et al. describe a 3-D object where
one vertical layer is made of a first material, and a subsequent
vertical layer is made of a second (different) material, does not
teach or suggest or motivate a modification of Penn et al. to
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arrive at a device that can simultaneously print different vertical
layers in a stack (App. Br. 10);

(2) the fact that the 3-D object of Jang et al. is made
up of a first vertical layer of a first material, and a second
vertical layer of a second (different) material does not indicate
to one or ordinary skill in the art how the device of Penn et al.
should be modified such that the different materials in different
vertical layers can be simultaneously printed (App. Br. 11);

(3) Jang et al. do not suggest that it is possible to
simultaneously print at two different vertical positions (App.
Br. 11);

(4) neither Penn et al. nor Jang et al. disclose a method
or device for printing at least two layers of different vertical
positions within a stack simultaneously (App. Br. 12); and

(5) no motivation to combine Penn et al. and Jang et
al. to arrive at Appellant’s invention ... such motivation has
originated from use of improper hindsight in view of
Applicant’s own disclosure (App. Br. 12).

However, we are not persuaded by Appellant’s arguments and do not
find reversible error in the Examiner’s position. See In re Jung, 637 F.3d
1356, 1365 (Fed. Cir. 2011).
As correctly found by the Examiner, Penn discloses a 3-D creation
system, shown in FIG. 1 and 12 as reproduced below, for printing a 3D
object comprised of layers stacked vertically with respect to each other.
Ans. 3-4.
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FIG. 1 of Penn is reproduced below:

FIG. 1 shows a 3-D creation system.

As shown in FIG. 1, the 3-D creation system includes one or more
computer-address print devices 10 within a printhead 20 to create a 3-D
object 55 comprising a stack of layers of materials 25, 35 using eutectic
materials in liquid state, either as a droplets or narrow streams. Ans. 3-4.
FIG. 12 of Penn is reproduced below:

FIG. 12 shows the use of multiple printheads in an alternative
embodiment to produce a multi-layered printed circuit board.

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As shown in FIG. 12 of Penn, a series of printheads 20, 670 are used
to simultaneously print at least two layers of different materials, i.e.,
conductive object material 25 and insulative support material 35, albeit at
the same vertical position within a stack. Ans. 3-4, 14-15.
As a secondary reference, Jang is simply cited for disclosing a similar
3-D creation system using a printhead to print at least two layers of different
materials at two different vertical positions within a stack of layers. Ans. 4,
13, 15; also see FIG. 1, Jang (element 46 relative to element 24). Contrary
to Appellant’s argument, Jang is not cited for suggesting the simultaneously
printing at two different vertical positions, since Penn already provides an
option to the user to simultaneously print at least two layers of different
materials within a stack of layers. Ans. 15.
Therefore, in view of (1) the teachings of Penn regarding a series of
printheads to simultaneously print at least two layers of different materials
within a stack of layers; (2) the suggestions of Jang regarding printing at
least two layers of different materials at two different vertical positions
within the stack, and (3) the background knowledge possessed by a person
having ordinary skill in the art of 3-D printing, we agree with the
Examiner’s findings that “the most obvious and straight forward
modification to Penn would be to simply improve upon printheads 20 and
670 to simultaneously print at least two layers of different materials at
different vertical positions.” Ans. 15.
As correctly noted by the Examiner, “when a patent claims a structure
already known in the prior art that is altered by the mere substitution of one
element for another known in the field, the combination must do more than
yield a predictable result.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416
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(2007) (citing United States v. Adams, 383 U.S. 39, 50-51 (1966)). We
agree with the Examiner’s findings that “the improvement [relative to Penn
and Jang] is the predictable substitution of printing two layers of distinct
materials in a single vertical position with printing two layers of distinct
materials in two vertically stacked layers” and concur with the Examiner’s
conclusions that such a substitution is “obvious to one of ordinary skill in
the art at the time of the invention because the combination is the predictable
use of two known methods according to established properties.” Ans. 15.
For the reasons set forth above, we do not find any error in the
Examiner’s position. Nevertheless, in order to further buttress the
Examiner’s obviousness rejection of independent claim 1, we also note that
Penn, in addition to using multiple printheads to simultaneously print at least
two layers of different materials within a stack of layers, further describes
that Penn’s invention:
allows for the formation of a printed circuit board [shown in
FIG. 12] in a layerwise fashion ... enables the production of
circuit boards with significantly more complex shares than
available in conventional circuit boards. For example, the
present invention enables the formation of a unitary circuit
board having locations with different thicknesses and
numbers of conductive layers. In addition, it is contemplated
that the present invention enables the formation of a circuit
board with walls, including walls that contain conductive
shielding for radio frequency interference (RFI). The increased
flexibility provided by the present invention enables the
formation of RFI shielding of differing thickness at different
locations of the printed circuit board (and walls), depending
upon the circuitry to be installed on the board.

Penn, col. 16, l. 57 – col. 17, l. 7 (emphasis added).
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As recognized by Jang and Appellant, when a single printhead is used,
only a single layer of material can be formed at a time, albeit two layers of
two different vertical positions can be formed within a stack, one after the
other. App. Br. 10; also see Jang, FIG. 12. However, when a series of
printheads are used, at least two or more layers can be formed
simultaneously, typically at the same vertical position within the stack, as
described, for example, by Penn. However, if the printed circuit board is
complex and has multiple locations with different thicknesses and numbers
of conductive layers (see Penn, col. 16, l. 57 - col. 17, l. 7), the multiple
printheads can be adjusted or configured to simultaneously print at least two
layers of the same or different materials at the same vertical position within
a stack, as described, for example, by Penn, or alternatively, at different
vertical positions within a stack in the manner as described by Appellant.
Such an improvement is obvious because “it is likely the product not of
innovation but of ordinary skill and common sense.” KSR, 550 U.S. at 421.
As the US Supreme Court explained in KSR:
[w]hen a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of
it, either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill.

Id. at 417 (emphasis added). Thus, we find that a skilled artisan, when
prompted to design and manufacture a printed circuit board having different
thicknesses at different locations, can configure a series of printheads to
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simultaneously print at least two or more layers of the same or different
materials at the same or different vertical positions with a stack.
For example, when two printheads are configured to simultaneously
print two layers of different materials at the same vertical position within a
stack during a first pass, one layer of a first material may have a first
thickness and another layer of a second material may have a second
thickness. During a second pass, the two printheads can simultaneously
print two additional layers of the same materials on top of the previous
layers. However, the vertical positions are now different for the two
additional layers because the two previous layers were printed with different
thicknesses at different locations.
Consequently, we find the adjustment made to the printheads is
necessary to manufacture printed circuit boards that multiple locations with
different thicknesses and numbers of conductive layers. We do so because
“[a] person of ordinary skill is also a person of ordinary creativity, not an
automaton.” KSR, 550 US at 421. “[I]n many cases a person of ordinary
skill will be able to fit the teachings of multiple patents together like pieces
of a puzzle.” Id. at 420. This is not hindsight gleaned only from Appellant’s
disclosure, but rather a simple understanding of printhead(s) and their
operations. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971)
(“Any judgement on obviousness is in a sense necessarily a reconstruction
based on hindsight reasoning, but so long as it takes into account only
knowledge which was within the level of ordinary skill in the art at the time
the claimed invention was made and does not include knowledge gleaned
only from applicant’s disclosure, such a reconstruction is proper.”).
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For the reasons set forth above, we sustain the Examiner’s rejection of
independent claim 1 under 35 U.S.C. § 103(a) as being unpatentable over
Penn and Jang.
With respect to dependent claims 2, 7, 11-12, and 17, Appellant
presents no arguments for patentability of these claims separately from claim
1. App. Br. 8. As such, claims 2, 7, 11-12, and 17 stand or fall together
with independent claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (stating that “the
failure of Appellant to separately argue claims which Appellant has grouped
together shall constitute a waiver of any argument that the Board must
consider the patentability of any grouped claim separately”). Therefore, we
also sustain the Examiner’s rejection of claims 2, 7, 11-12, and 17 under 35
U.S.C. § 103(a).

CONCLUSION
On the record before us, we conclude that the Examiner has not erred
in rejecting claims 1-2, 7, 11-12, and 17 under 35 U.S.C. § 103(a).
In addition, based on Appellant’s failure to address the Examiner’s
prima facie case of obviousness regarding claims 3-6, 8, and 18-22, we
affirm the Examiner’s rejections of (1) claims 3-6 and 8 over Penn, Jang,
and Klaus; (2) claims 18-21 over Penn, Jang, and O’Connor; and (3) claim
22 over Penn, Jang, and Miyake pro forma. See 37 C.F.R. § 41.37(c)(1)(vii)
(requiring a statement in the briefs as to each ground of rejection presented
by Appellant for review); 37 C.F.R. § 41.37(c)(1)(vii) (stating that
arguments not presented in the briefs by Appellant will be refused
consideration).

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DECISION
As such, we affirm the Examiner’s final rejection of claims 1-8, 11-
12, and 17-22.
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) (2011).

AFFIRMED

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