Hewlett-Packard Development Company, L.P.

Patent Trials and Appeals Board

Apr 7, 2021

2020003100 (P.T.A.B. Apr. 7, 2021)

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.
15/520,826 04/20/2017 Hou T. Ng 84619584 3234
22879 7590 04/07/2021
HP Inc.
3390 E. Harmony Road
Mail Stop 35
Fort Collins, CO 80528-9544
EXAMINER
GHORISHI, SEYED BEHROOZ
ART UNIT PAPER NUMBER
1748
NOTIFICATION DATE DELIVERY MODE
04/07/2021 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):
ipa.mail@hp.com
jessica.pazdan@hp.com
yvonne.bailey@hp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte HOU T. NG and ALEJANDRO MANUEL DE PENA1
____________

Appeal 2020-003100
Application 15/520,826
Technology Center 1700
____________

Before LINDA M. GAUDETTE, JEFFREY B. ROBERTSON, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.

KENNEDY, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 11–14. We have jurisdiction under 35 U.S.C.
§ 6(b). We REVERSE.
BACKGROUND
The subject matter on appeal relates to additive manufacturing, i.e.,
3D printing. E.g., Spec. ¶ 1; Claim 11. Claim 11 is reproduced below from

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. The
Appellant identifies the real party in interest as Hewlett-Packard
Development Company, LP (“HPDC”). Appeal Br. 1. The Appellant states
that HPDC is a wholly owned affiliate of HP Inc., and that the general or
managing partner of HPDC is HPQ Holdings, LLC. Id.
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pages 10–11 (Claims Appendix) of the Appeal Brief:
11. An additive manufacturing machine, comprising:
a first device to layer powdered build material;
a second device to dispense a liquid, light absorbing coalescing
agent on to build material;
a third device to dispense a liquid coalescence modifier agent on
to build material;
a light source to apply light energy to build material; and
a controller to execute instructions to:
cause the first device to layer build material in a first layer;
cause the second device to dispense a liquid, light absorbing
coalescing agent on to build material in the first layer in a first
pattern of a first slice of an object;
cause the light source to apply light energy to build material in
the first layer patterned with coalescing agent to generate heat to
melt patterned build material in the first layer, to form the first
slice;
cause the third device to dispense a liquid coalescence modifier
agent on to the first slice bordering an area where a second slice
of the object will cover the first slice;
cause the first device to layer build material in a second layer
over the first slice;
cause the second device to dispense a liquid, light absorbing
coalescing agent on to build material in the second layer in a
second pattern of the second slice; and
cause the light source to apply light energy to build material in
the second layer patterned with coalescing agent to generate heat
to melt patterned build material in the second layer, to form the
second slice on the first slice.
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ANALYSIS
Claims 11–14 stand rejected under 35 U.S.C. § 102(a)(1) as
anticipated by Okamoto (US 2015/0210016 A1, published July 30, 2015).
Claims 12–14 depend from independent claim 11.
Claim 11 requires, inter alia, “a controller to execute instructions to”
cause the recited machine to perform a series of steps in which (1) build
material is deposited as a first layer, (2) coalescing agent is dispensed onto a
portion of the build material first layer, (3) light energy is applied to the
build material with coalescing agent to melt the build material and form a
“first slice,” (4) coalescence modifier agent is dispensed onto a portion of
the first slice, (5) a second layer of build material is deposited over the first
slice as a second layer, (6) coalescing agent is dispensed onto a portion of
the second layer, and (7) light energy is applied to the build material with
coalescing agent in the second layer to melt the build material to form a
“second slice.” Appeal Br. 11 (Claims Appendix).
As an initial matter, we determine that the foregoing recitations of
claim 11 imply a sequential order because, for example, a coalescing agent
cannot be applied to a first layer until the first layer has been formed. See
id.; see also Reply Br. 3 (“It is impossible to dispense a liquid coalescing
agent on to build material in the first layer unless the first layer already
exists.”). To the extent that the Examiner determines otherwise, see, e.g.,
Ans. 4 (“This operational sequence or the sequence of the method steps is
not delineated in the instant claim 11.”), we disagree.
We also disagree with the Examiner’s apparent determination that any
apparatus that comprises first, second, and third devices, along with a light
source and a controller, falls within the scope of claim 11. See Final Act. 4
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(“Okamoto apparatus teaches all the components of the instant invention
apparatus and the controller of Okamoto is capable of executing the
instruction recited in the rest of the limitations of claim 11.”). We agree
with the Appellant, see Reply Br. 2–3 (“Claim 11 is not intended to nor does
it cover a machine whose controller might be, but is not, programmed to
cause the operations recited in Claim 11” (emphasis added)), that claim 11
requires a controller that, without modification, is configured or
programmed to cause performance of the recited sequence of functions. See,
e.g., Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1380–81 (Fed.
Cir. 2011) (affirming district court’s construction of the term “memory for
storing at least one data collection application” as requiring memory to
actually be configured to store at least one data collection application, rather
than as encompassing memory “capable of being configured” to perform the
recited function).
We turn now to the Examiner’s findings that Okamoto’s apparatus
includes a controller that, without modification, causes Okamoto’s apparatus
to perform the recited functions. The Examiner finds, inter alia, that
Okamoto’s ink 4A corresponds to the claimed coalescing agent, that ink 4B
corresponds to the claimed coalescence modifier agent, and that Okamoto’s
Figure 1G indicates a sequence of steps corresponding to the “causing” steps
of claim 11. Final Act. 4–6.
The Appellant argues that Okamoto does not disclose a sequence of
steps corresponding to those of claim 11. See Appeal Br. 3–7.
We agree with the Appellant that the Examiner has not adequately
established that Okamoto anticipates claim 11. In Okamoto, layer 6
(corresponding to a build material layer) is deposited, followed by
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application of inks 4A and 4B, followed by curing. E.g., Okamoto Figs. 1A
through 1G, ¶¶ 43, 67, 68. Multiple layers may be iteratively formed in this
manner. See id. Fig. 1G. In some embodiments, a heating/melting step is
involved prior to application of inks 4A and 4B. Id. ¶ 53.
When the first layer is formed, inks 4A and 4B are dispensed after any
heating/melting of layer 6. See id. Figs. 1A–1D; ¶¶ 53, 54. Thus, formation
of Okamoto’s first layer does not involve the heating and melting of a build
material onto which coalescing agent has already been dispensed, as
required by claim 11; it involves heating and melting the build material prior
to dispensation of inks 4A and 4B. See id. Although paragraph 68 of
Okamoto refers to “thermal curing . . . performed by heating” of layer 6 after
application of inks 4A and 4B, paragraph 68 says nothing about melting.
See id. ¶ 68. The Examiner relies on paragraph 53 for a disclosure of
melting, and, as noted above, paragraph 53 concerns the build layer prior to
application of inks 4A and 4B. See id. ¶ 53.
Formation of Okamoto’s subsequent layers is essentially the same.
See, e.g., Figs. 1D through 1G. For each layer, there does not appear to be
an instance where the build material layer is heated/melted after application
of a coalescing agent. As noted above, the Examiner relies on paragraph 53
for a disclosure of melting, and paragraph 53 concerns the build layer prior
to application of inks 4A and 4B. See id. ¶ 53.
Even if we were to assume that paragraph 68’s reference to “thermal
curing . . . performed by heating” necessarily and inherently implies melting,
the Examiner has still failed to adequately establish that Okamoto’s
sequence corresponds to that of claim 11. With reference to Okamoto
Figure 1G, if we were to assume that element 7 of the layer immediately
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below the top most layer constitutes a “first slice” within the scope of claim
11, the portion of the top most layer 6 that corresponds to the recited “build
material in a second layer” is formed before ink 4B (which the Examiner
finds corresponds to a coalescence modifier agent) is dispensed, whereas
claim 11 requires the coalescence modifier agent to be dispensed “on to the
first slice” prior to forming the second layer of build material. See Appeal
Br. 11 (Claims Appendix). Additionally, both inks 4A and 4B are dispensed
before curing occurs, e.g., Okamoto ¶¶ 54, 55, 67, 68, whereas claim 11
requires the light energy to be applied after the coalescing agent has been
applied but before the coalescence modifier agent has been applied.
On this record, the Examiner has not persuasively established that
Okamoto anticipates the subject matter of claim 11.
DECISION SUMMARY
In summary:
Claim(s)
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
11–14 102(a)(1) Okamoto 11–14
REVERSED