Palo Alto Research Center Incorporated

Patent Trials and Appeals Board

Nov 18, 2020

2019005874 (P.T.A.B. Nov. 18, 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.
14/099,873 12/06/2013 Armin R. Volkel A1555US01/PARC.135A1 2176
99064 7590 11/18/2020
MRG/HD - PARC
c/o Mueting Raasch Group
111 Washington Ave. S., Suite 700
Minneapolis, MN 55401
EXAMINER
VALENCIA, ALEJANDRO
ART UNIT PAPER NUMBER
2853
NOTIFICATION DATE DELIVERY MODE
11/18/2020 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):
ptodocketing@mrgs.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ARMIN R. VOLKEL and EUGENE M. CHOW
____________________

Appeal 2019-005874
Application 14/099,8731
Technology Center 2800
____________________

Before JAMES C. HOUSEL, MICHELLE N. ANKENBRAND, and
JULIA HEANEY, Administrative Patent Judges.

HOUSEL, Administrative Patent Judge.

DECISION ON APPEAL
A. STATEMENT OF THE CASE
Appellant filed an appeal under 35 U.S.C. § 134(a) from the
Examiner’s final decision rejecting claims 1, 3, 4, 7, and 25.2
We have jurisdiction under 35 U.S.C. § 6(b).3
We REVERSE.

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 Palo Alto Research
Center Incorporated. Appeal Brief (“Appeal Br.”) filed May 6, 2019, 1.
2 Claims 5, 6, and 8–24 have been withdrawn from consideration. Appeal
Br. 11–14; Restriction Requirement mailed March 30, 2015, 3.
3 Our Decision additionally refers to the Specification (“Spec.”) filed
December 6, 2013, the Final Office Action (“Final Act.”) dated August 2,
2018, the Examiner’s Answer (“Ans.”) dated June 14, 2019, and the Reply
Brief (“Reply Br.”) filed July 31, 2019.
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Application 14/099,873
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The subject matter on appeal relates to an apparatus for selectively
depositing a material onto a substrate (see, e.g., claim 1). The Specification
discloses that a printhead subsystem experiences complications when the
long axes of channels for introducing material (e.g., colored toner) are
disposed roughly perpendicular to the long axis of a pipe for a propellant
stream. Spec. ¶¶ 31–32. To address these issues, the Specification discloses
in-line introduction of material into a propellant stream. Id. ¶ 33. According
to the Specification, this configuration permits particulates to enter the
propellant stream smoothly without impacting pipe sidewalls, focuses the
propellant flow that includes the particulates, and enables smaller diameter
jets without requiring the use of smaller rigid exit orifices. Id.
Independent claim 1 is illustrative and is reproduced below from the
Claims Appendix of the Appeal Brief.
1. An apparatus for selectively depositing a material onto a
substrate, comprising:
a material ejector body defining a nozzle and an exit
channel therein, the exit channel having a rectangular cross
section;
a plurality of microchannels disposed within the exit
channel;
a material inlet channel disposed within said nozzle and
substantially uniformly spaced apart from at least first and
second opposite surfaces of said nozzle to thereby define
substantially symmetrical first and second flow regions between
said material inlet channel and said at least two opposite
surfaces of said nozzle, each of the two opposite surfaces of
said nozzle arranged at a first angle φ < 90 degrees with respect
to a longitudinal axis of the material inlet channel, the material
inlet channel longitudinally aligned with the exit channel and
having an outlet facing the exit channel, said exit channel
having a first wall and a second opposing wall, each of said first
and second walls of said exit channel arranged at a second
angle with respect to the longitudinal axis of the material inlet
Appeal 2019-005874
Application 14/099,873
3
channel, wherein said second angle is different than said first
angle;
a collection region disposed between the first and second
walls and the outlet of the material inlet channel;
a material reservoir communicatively coupled to said
material inlet channel for delivery of said material;
a propellant source communicatively coupled to said
nozzle;
said material inlet channel disposed relative to said
propellant source and within said nozzle such that propellant
provided by said propellant source flow substantially uniformly
past said material inlet channel within said first and second
flow regions;
wherein:
material may be provided by said reservoir to said
material inlet channel, carried from said material inlet channel
by propellant flowing substantially uniformly past said material
inlet channel within said first and second flow regions, and
carried by said propellant to exit said material ejector body
through said exit channel toward said substrate.

REJECTIONS ON APPEAL
The Examiner maintains, and Appellant requests our review of, the
following grounds of rejection:
I. Claim 1 under 35 U.S.C. § 112(a) as failing to comply
with the enablement requirement;
II. Claims 1, 3, 4, and 254 under 35 U.S.C. § 103 as
unpatentable over Vigh5 in view of Walz6 and Herrick;7
and

4 The Examiner states claims 1–4 and 25 are rejected under § 103. Final
Act. 3. However, claim 2 has been cancelled. Appeal Br. 11.
5 Vigh et al., US 6,511,850 B1, issued Jan. 28, 2003 (“Vigh”).
6 Walz, US 4,822,267, issued Apr. 18, 1989.
7 Herrick et al., US 2002/0137085 A1, published Sept. 26, 2002 (“Herrick”).
Appeal 2019-005874
Application 14/099,873
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III. Claim 7 under 35 U.S.C. § 103 as unpatentable over
Vigh, Walz, and Herrick and further in view of Van
Pelt.8

B. DISCUSSION
Rejection I
The Examiner rejects claim 1 under 35 U.S.C. § 112(a) as failing to
comply with the enablement requirement. Final Act. 2–3.
The Examiner concludes that claim 1 fails to comply with the
enablement requirement due to its limitation of “a plurality of microchannels
disposed within the exit channel.” Final Act. 2. Specifically, the Examiner
states “upon review of the specification, it is not clear to Examiner what is
intended to be the claimed microchannel and what is intended to the claimed
exit channel.” Id. The Examiner finds that “nowhere in the specification is
a numeral in the figures designated for the claimed exit channel” and states
“[i]n other words, Examiner cannot seem to identify in the figures one
channel within which a plurality of other channels are disposed.” Id. at 2–3.
Appellant argues that Figure 2 of the application depicts an exit
channel between collection region 80 of nozzle 64 and the end of the print
head body in the direction of substrate 84. Appeal Br. 5. We agree with
Appellant’s description of the relationship between the exit channel and the
plurality of microchannels. An annotated copy of Appellant’s Figure 2 is
reproduced below.

8 Van Pelt, US 2008/0038152 A1, published Feb. 14, 2008.
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Application 14/099,873
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Annotated Figure 2 is a cut-away side view of a ballistic aerosol print head

Figure 2 depicts ballistic aerosol marking system 509 that includes
print head body 52 coupled to a source structure 54. Spec. ¶ 34. Source
structure 54 includes pressurized propellant source 56 and reservoir 58
containing particulates. Id. ¶ 35. Print head body 52 includes nozzle 64 and
particulate inlet channel 66 disposed within nozzle 64. Id. ¶ 36. Print head
body 52 further includes one or more microchannels 72. Id. ¶ 37. System
50 results in a high-velocity focused stream of particles exiting
microchannels 72 and being directed to substrate 84. Id. ¶ 39.
Appellant identifies the unlabeled passage extending between nozzle
64 and the end of print head body 52 as an exit channel, which is indicated

9 Throughout this Decision, for clarity, we present labels to elements in
figures in unbolded font, regardless of their presentation in the original
document.
exit channel
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Application 14/099,873
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in the annotated copy of Figure 2 above. See Appeal Br. 5. Figure 2 depicts
microchannels 72 as being located in this region as well.
Appellant’s Figure 3 is reproduced below.

Figure 3 is a cut-away top view of the ballistic aerosol print head

Figure 3 depicts a top view of ballistic aerosol marking system 50. Id.
¶ 34. As shown above, Figure 3 depicts microchannels 72 in the region
between nozzle 64 and the end of print head body 52 near substrate 84,
where Appellant’s asserted exit channel is located. Thus, Figure 3 clearly
shows a plurality of microchannels 72 disposed within the exit channel.
Appellant further argues that the Examiner has not met the
requirements for setting forth an enablement rejection. Appeal Br. 6.
Appellant’s arguments in this regard are also persuasive.
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Application 14/099,873
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“[T]o be enabling, the specification of a patent must teach those
skilled in the art how to make and use the full scope of the claimed invention
without ‘undue experimentation.’” In re Wright, 999 F.2d 1557, 1561 (Fed.
Cir. 1993) (citation omitted). The Federal Circuit further stated:
When rejecting a claim under the enablement requirement of
section 112, the PTO bears an initial burden of setting forth a
reasonable explanation as to why it believes that the scope of
protection provided by that claim is not adequately enabled by
the description of the invention provided in the specification of
the application; this includes, of course, providing sufficient
reasons for doubting any assertions in the specification as to the
scope of enablement. If the PTO meets this burden, the burden
then shifts to the applicant to provide suitable proofs indicating
that the specification is indeed enabling.
Id. at 1561–62. The Examiner has not met the initial burden of setting forth
a reasonable explanation why Appellant’s disclosure does not enable one of
ordinary skill in the art to make and use the claimed invention without undue
experimentation. For instance, the rejection does not consider the factors
provided in In re Wands, 858 F.2d 731 (Fed. Cir. 1988), as Appellant argues.
Appeal Br. 6. The rejection instead appears to focus on whether the
drawings include a numeral for an exit channel that has microchannels 72
disposed within it, as claim 1 recites. Failing to label in the drawings a
feature recited in the claims alone is insufficient to establish lack of
enablement, especially where, as here, those skilled in the art would readily
recognize the feature in the drawings. Regardless, Appellant adequately
explains how Figures 2 and 3 depict an exit channel, although not labeled
with a reference numeral, and microchannels 72 disposed within the exit
channel.
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For the reasons discussed above, we do not sustain the Examiner’s
§ 112(a) rejection of claim 1.
Rejection II
The Examiner rejects claims 1, 3, 4, and 25 under 35 U.S.C. § 103 as
being unpatentable over Vigh, Walz, and Herrick. Final Act. 3–7.
The Examiner finds Vigh discloses an apparatus for selectively
depositing a material onto a substrate that includes a material ejector body
defining a nozzle and exit channel, a material inlet channel, a material
reservoir, and a propellant source. Id. at 3–5. The Examiner finds that Vigh
does not teach the exit channel’s claimed first and second walls or the
claimed collection region. Id. at 5. The Examiner finds Walz teaches the
walls and the collection region and concludes it would have been obvious to
modify Vigh in view of Walz. Id. at 5–6. The Examiner further finds that
Vigh does not teach that the exit channel has a rectangular cross section. Id.
at 6. The Examiner finds Herrick discloses a rectangular shape for an
opening of an ejection apparatus and concludes it would have been obvious
to modify Vigh, as modified in view of Walz, further in view of Herrick. Id.
Appellant contends the Examiner has not provided any support for the
limitation of “a plurality of microchannels disposed within the exit channel.”
Appeal Br. 7. Appellant’s argument is persuasive. The Examiner addresses
the limitation by merely referring to the enablement rejection. Final Act. 3.
The Examiner also does not respond to Appellant’s argument in the Answer.
See Ans. 4–5. As a result, the Examiner has not set forth a prima facie case
of obviousness for claim 1. Claims 3, 4, and 25 depend from claim 1 and,
therefore, include the limitations of claim 1. Appeal Br. 11, 14. As a result,
the Examiner has also not set forth a prima facie case of obviousness for
claims 3, 4, and 25.
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For the reasons discussed above, we do not sustain the Examiner’s
§ 103 rejection of claims 1, 3, 4, and 25 as unpatentable over Vigh, Walz,
and Herrick.
Rejection III
The Examiner rejects claim 7 as being unpatentable under 35 U.S.C.
§ 103 over Vigh, Walz, and Herrick and further in view of Van Pelt. Final
Act. 7–8.
The Examiner does not rely on Van Pelt to remedy the deficiencies
discussed above with regard to the § 103 rejection of claims 1, 3, 4, and 25
over Vigh, Walz, and Herrick.
For the reasons discussed above, we do not sustain the Examiner’s
§ 103(a) rejection of claim 7 as unpatentable over Vigh, Walz, Herrick, and
Van Pelt.

CONCLUSION
Upon consideration of the record and for the reasons set forth above
and in the Final Office Action and the Examiner’s Answer, the Examiner’s
decision to reject claim 1 under 35 U.S.C. § 112(a) and claims 1, 3, 4, 7, and
25 under 35 U.S.C. § 103 is reversed.
In summary:

Appeal 2019-005874
Application 14/099,873
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Claims
Rejected
35
U.S.C. § References/Basis Affirmed Reversed
1 112(a) Enablement 1
1, 3, 4, 25 103 Vigh, Walz, Herrick 1, 3, 4, 25
7 103 Vigh, Walz, Herrick, Van Pelt 7
Overall
Outcome 1, 3, 4, 7, 25

REVERSED