Ex Parte SilverbrookDownload PDFPatent Trial and Appeal BoardFeb 25, 201310753499 (P.T.A.B. Feb. 25, 2013) Copy Citation 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.”). Appeal 2010-009174 Application 10/753,499 2 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 Appeal 2010-009174 Application 10/753,499 3 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. Appeal 2010-009174 Application 10/753,499 4 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. Appeal 2010-009174 Application 10/753,499 5 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 Appeal 2010-009174 Application 10/753,499 6 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. Appeal 2010-009174 Application 10/753,499 7 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. Appeal 2010-009174 Application 10/753,499 8 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 Appeal 2010-009174 Application 10/753,499 9 (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). Appeal 2010-009174 Application 10/753,499 10 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 Appeal 2010-009174 Application 10/753,499 11 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.”). Appeal 2010-009174 Application 10/753,499 12 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). Appeal 2010-009174 Application 10/753,499 13 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 msc Copy with citationCopy as parenthetical citation