Hewlett-Packard Development Company, L.P.

Patent Trials and Appeals Board

Mar 31, 2021

2020003026 (P.T.A.B. Mar. 31, 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.
15/515,326 03/29/2017 Sergio Puigardeu Aramendia JR. 84608435 6006
22879 7590 03/31/2021
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
03/31/2021 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 SERGIO PUIGARDEU ARAMENDIA JR.,
DAVID RAMIREZ MUELA, POL MARTINEZ FORNOS,
and SALVADOR SANCHEZ RIBES
Appeal 2020–003026
Application 15/515,326
Technology Center 1700
Before BEVERLY A. FRANKLIN, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
FRANKLIN, 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 1–4 and 6–9. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a).
Appellant identifies the real party in interest as Hewlett-Packard
Development Company, L.P. Appeal Br. 1.
Appeal 2020-003026
Application 15/515,326

2
CLAIMED SUBJECT MATTER
Claim 1 is illustrative of Appellant’s subject matter on appeal
and is set forth below:
1. An apparatus for generating a three-dimensional
object, the apparatus comprising:
a support to receive build material;
a calibration platform distinct from the build material
support to removably receive a sheet of paper, the calibration
platform positioned alongside the build material support for a
calibration mode of operation; and
a printhead movable over the support to distribute a fluid
coalescing agent on to build material on the support during a
building mode of operation and moveable over the calibration
platform to distribute the coalescing agent on to a sheet of paper
on the calibration platform during a calibration mode of
operation.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Philippi US 6,483,596 Bl Nov. 19, 2002
Baumann US 2007/0238056 Al Oct. 11, 2007
THE REJECTION
Claims 1–4 and 6–9 are rejected under § 103 as obvious over the
combination of Philippi and Baumann.
OPINION
We review the appealed rejection 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
Appeal 2020-003026
Application 15/515,326

3
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 (including the Examiner’s Answer, the Appeal
Brief, and the Reply Brief), we are persuaded that Appellant identifies
reversible error. Thus, we reverse the Examiner’s rejection essentially for
the reasons provided by Appellant and add the following primarily for
emphasis.
We refer to the Examiner’s statement of the rejection set forth on
pages 7–12 of the Final Office Action. We are persuaded of error in the
rejection for the reasons presented by Appellant in the record, emphasized
below.
Appellant argues that the proposed modification of Philippi by placing
a build platform alongside the calibration platform (as illustrated by the
Examiner’s diagram set forth on page 5 of the Answer) lacks the rational
underpinning needed to support a conclusion of obviousness. Reply Br. 2.
On pages 5–6 of the Appeal Brief, Appellant explains that leaving Philippi’s
calibration plate 60 on platform carrier/plate 20 during building would
negate the ability to absolutely position the building platform anywhere on
platform carrier/plate 20, just as leaving the building platform on platform
carrier/plate 20 for calibration would restrict the ability to absolutely
position calibration plate 60 anywhere on platform carrier/plate 20. Appeal
Br. 6. Appellant states that the clear implication here is that one or the other
of a calibration plate 60 or a building platform, but not both, is “absolutely
positioned” on plate 20 at any given time. Id. We are persuaded by this line
of argument. We note that “rejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
Appeal 2020-003026
Application 15/515,326

4
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
We also note that setting forth a prima facie case of obviousness requires
establishing that the applied prior art would have provided one of ordinary
skill in the art with a reason to modify the prior art to arrive at the claimed
invention. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
We agree that the Examiner has not identified a proper reason to make
the proposed modification. As stated by Appellant on pages 1–2 of the
Reply Brief, the construction area covered by any “calibration only” plate 60
in Philippi is wasted space during a building mode of operation, and we
agree with Appellant that there is no apparent reason to waste some of the
most valuable real estate in the printer by not removing “calibration only”
plate 60 after calibration to save a bit of time installing and removing plate
60 for the reasons provided by Appellant in the record. See Ex parte
Levengood, 28 USPQ2d 1300, 1301–02 (BPAI 1993) (“At best, the
examiner’s comments regarding obviousness amount to an assertion that one
of ordinary skill in the relevant art would have been able to arrive at
appellant’s invention because he had the necessary skills to carry out the
requisite process steps. This is an inappropriate standard for obviousness . . .
. That which is within the capabilities of one skilled in the art is not
synonymous with obviousness.” (citation omitted)).
Because the Examiner does not rely upon the secondary reference of
Baumann to cure the aforementioned deficiencies of Philippi, we reverse the
rejection.
Appeal 2020-003026
Application 15/515,326

5
CONCLUSION
We reverse the Examiner’s decision.
DECISION SUMMARY
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 6–9 103 Philippi, Baumann 1–4, 6–9
REVERSED