Erik P. Brown

Patent Trials and Appeals Board

Aug 18, 2020

2019002734 (P.T.A.B. Aug. 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.
14/515,301 10/15/2014 Erik P. Brown IL-12715 1051
24981 7590 08/18/2020
Lawrence Livermore National Security, LLC
LAWRENCE LIVERMORE NATIONAL LABORATORY
PO BOX 808, L-703
LIVERMORE, CA 94551-0808
EXAMINER
SNELTING, ERIN LYNN
ART UNIT PAPER NUMBER
1741
NOTIFICATION DATE DELIVERY MODE
08/18/2020 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):
llnldocket@llnl.gov
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ERIK P. BROWN
____________

Appeal 2019-002734
Application 14/515,301
Technology Center 1700
____________
Before ADRIENE LEPIANE HANLON, GEORGE C. BEST, and
N. WHITNEY WILSON, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 13, 14, 16, and 17 of Application
14/515,301. Final Act. (September 25, 2018). We have jurisdiction under
35 U.S.C. § 6.
For the reasons set forth below, we affirm.

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Lawrence Livermore National Security,
LLC and the United States of America as the real parties in interest. Appeal
Br. 2.
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I. BACKGROUND
Typical methods of manufacturing filters involve the application,
disposition, or random layering of small fibers to create a filtration media
mat. Spec. 1. The systems, methods, and apparatus described in the ’301
Application use an additive manufacturing method such as three dimensional
printing to overcome some of the problems with the traditional methods. Id.
at 2. In particular, the use of an additive manufacturing method is said to
allow modeling of the fluid filter prior to manufacturing so that fluid filter
design may be optimized. Id.
II. REJECTIONS
On appeal, the Examiner maintains the following rejections:
1. Claims 13, 14, and 17 are rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Napadensky,2 Sakashita,3
and Dugan.4 Answer 3.
2. Claim 16 is rejected under 35 U.S.C. § 103 as unpatentable over
the combination of Napadensky, Sakashita, Dugan, and Erb.5
Answer 8.
III. DISCUSSION
In the Answer, the Examiner notes that the Answer restates the
rejections with the references in a different order. Answer 3. According to

2 US 2010/0191360 A1, published July 29, 2010.
3 US 2015/0273380 A1, published October 1, 2015.
4 US 5,540,849, issued July 30, 1996.
5 US 2014/0273799 A1, published September 18, 2014.
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the Examiner, the references and cited teachings in support of the rejections
remain the same. Thus, the Examiner contends that the restated rejections
do not constitute new grounds of rejection. Id.
Appellant, however, argues that the Examiner’s Answer contains new
grounds of rejection. Reply Br. 2–3, 13–14. Appellant’s Reply Brief
contains new arguments against the allegedly new grounds of rejection. See
generally id. at 4–13, 15–27.
We need not, and indeed cannot,6 decide whether the Examiner’s
Answer contains new grounds of rejection. Because the Reply Brief contains
new arguments that address the alleged new grounds of rejection and
Appellant has not sought remand for an opportunity to address these grounds
of rejection during prosecution as opposed to on appeal, we are considering
the grounds of rejection stated in the Examiner’s Answer and Appellant’s
arguments as set forth in the Reply Brief.
A. Rejection of claims 13, 14, and 17 as unpatentable over the
combination of Napadensky, Sakashita, and Dugan
The Examiner rejected claims 13, 14, and 17 as unpatentable over the
combination of Napadensky, Sakashita, and Dugan. Answer 3.
Claims 13 and 17 are independent, while claim 14 depends from claim
13. Because Appellant does not differentiate between claims 13, 14, and 17
in its arguments,7 we select claim 13 as representative of the group of claims

6 Questions of whether an Examiner’s Answer contains a new ground of
rejection are generally resolved by way of petition. See In re Berger, 279
F.3d 975, 984–85 (Fed. Cir. 2002).
7 We note that the Reply Brief asserts that claim 14 includes the language
“An additive manufacturing method of producing a fluid filter wherein the
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subject to this ground of rejection. 37 C.F.R. § 41.37(c)(1)(iv). Claims 14
and 17 will stand or fall with claim 13.
Appellant argues that this rejection should be reversed for any of three
reasons. Appeal Br. 11–22. We address these arguments below.
1. The applied combination of references do not teach or
suggest all claim limitations
In the Reply Brief, Appellant argues that none of the references
describes or suggests every limitation of claim 13. Compare Reply Br. 5, 7,
8–9. We reproduce claim 13 below from the Claims Appendix to the Appeal
Brief and italicize the limitations that Appellant asserts are missing from the
references cited in the rejection.
13. An additive manufacturing method of producing a fluid
filter; comprising the steps of:
providing an additive manufacturing three dimensional
model of a fluid filter in a computer readable format, said fluid
filter including
a fluid filter body having a filter wall that has
multiple zig zag baffles,
an entrance face for fluid entrance,
an exit face for fluid exit,
at least one pore in said multiple zig zag baffles of
said fluid filter body, and
at least one pocket in said at least one pore;

fluid may contain contaminates; [sic] comprising the steps of.” See Reply
Br. 5, 8. The version of claim 14 included in the Claims Appendix of the
Appeal Brief does not include this language. Appeal Br. 33. Based on our
review of the ’301 Application’s prosecution, it appears that claim 14 has
never included the quoted language.
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separating said additive manufacturing three dimensional
model of the fluid filter into void spaces and solid spaces;
providing an adaptive manufacturing system with a first
print head and a second print head;
providing inorganic material that will coalesce at a
sintering temperature;
providing organic material that will decompose at said
sintering temperature;
using said first print head of said adaptive manufacturing
system to print said inorganic material that will coalesce at said
sintedng temperature in said solid spaces;
using said second print head of said adaptive
manufacturing system to print said organic material that will
decompose at said sintering temperature in said void spaces;
printing said fluid filter one layer at a time using said
first print head of said adaptive manufacturing system to
provide said at least one layer including said inorganic
material that will coalesce at said sintering temperature in said
solid spaces and using said second print head of said adaptive
manufacturing system to provide said at least including said
organic material that will decompose at said sintering
temperature in said void spaces; and
sintering said fluid filter at said sintering temperature
wherein said inorganic material that will coalesce at said
sintering temperature will coalesce and wherein said organic
material that will decompose at said sintering temperature will
decompose providing said at least one pore and said at least
one pocket in said at least one pore in the fluid filter and
wherein fluid containing particles flows through said at least
one pore from said entrance face to said exit face and the
particles in the fluid become trapped in said at least one pocket
in said at least one pore.
Appeal Br. 32 (emphasis and some indentation added).
This argument is not persuasive.
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We have reviewed the rejection as set forth in the Examiner’s Answer.
In rejecting claim 13, the Examiner found that the combination of asserted
references—Napadensky, Sakashita, and Dugan—describes or suggests each
limitation recited in claim 13. Answer 3–6. The Examiner supported these
findings with citations to the references. Id.
Appellant attacks each reference individually, identifying the
limitations that are allegedly neither described nor suggested in each
reference. For example, the Reply Brief identifies limitations allegedly not
described or suggested by Dugan. Reply Br. 8–9. The Examiner, however,
found that Dugan does describe or suggest many of the use limitations. See
Answer 5–6. Appellant’s argument does not address the Examiner’s
findings. Reply Br. 8–9. In particular, Appellant does not address the
Examiner’s citation of the relevant portions of Dugan that the Examiner
found describe or suggest each limitation. Nor does Appellant address the
Examiner’s findings that the limitations not taught by Dugan are described
or suggested by either Napadensky or Sakashita.
In view of the foregoing, we do not reverse the rejection of claims 13,
14, and 17 on this basis.
2. No reasonable expectation of success in creating the
combination of references
As written, Appellant’s argument that a person of ordinary skill in the
art at the time of the invention would not have had a reasonable expectation
of success with the proposed combination is mislabeled. Appellant argues
that “[t]here would be no reason to combine the secondary Sakashita ’380
reference and/or the tertiary Dugan ’849 reference with the primary
Napadensky ’360 reference.” Reply Br. 10. Appellant then goes on to list
things not disclosed by each of the references. For example: “the Primary
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Napadensky ’360 reference does not contain the phrase: ‘fluid filter.’ The
Primary Napadensky ’360 reference does not contain the word: ‘filter.’” Id.
based on this listing of things not described in each of the references,
appellant concludes that “[t]here would not be a reasonable expectation of
success with the proposed combination of the secondary Sakashita ’380
reference and/or the tertiary Dugan ’849 reference with the primary
Napadensky ’360 reference.” Id. at 11.
Appellant’s argument is notable for what is not included. In particular,
Appellant’s argument does not include any technical, scientific, or logical
reason why a person of ordinary skill in the art would not have had a
reasonable expectation of success in combining the applied references in the
manner relied upon by the Examiner.8
Consequently, Appellant has not demonstrated reversible error in the
Examiner’s determination that a person of skill in the art would have had a
reasonable expectation of success in combining the applied references to
arrive at the claimed invention.
3. Insufficient reason for a person of ordinary skill in the art
to combine the references
According to Appellant, the Examiner’s reasons for combining the
applied references are not valid. Reply Br. 11–13. In particular, Appellant
argues that the Examiner’s reasons failed to address specific limitations in
claims 13, 14, and 17 and failed to address the fact that Napadensky does not
disclose or relate to producing a fluid filter. Id. at 12.

8 Appellant actually argues that the Examiner failed to provide a sufficient
reason for a person of ordinary skill in the art to combine the references.
Because this is Appellant’s third argument, we will address it below.
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This argument is not persuasive.
In the Answer, the Examiner provides reasons for combining
Napadensky with each of Sakashita and Dugan. See Answer 4–5, 8. We have
reviewed those reasons, and Appellant has not persuasively argued that those
reasons are erroneous or otherwise unsupported. Thus, we are not persuaded
that the Examiner reversibly erred in finding that a person of ordinary skill
in the art at the time of the invention would have had reason to combine
Napadensky with Sakashita and with Dugan in the manner proposed in the
rejection of claim 13.
B. Rejection of claim 16 as unpatentable over the combination of
Napadensky, Sakashita, Dugan, and Erb
The Examiner rejected claim 16 as unpatentable over the combination
of Napadensky, Sakashita, Dugan, and Erb. Answer 8–11.
Appellant argues that the rejection of claim 16 should be reversed for
essentially the same reasons and using essentially the same logic advanced
in arguing for reversal of the rejection of claims 13, 14, and 17. See Reply
Br. 15–27.
These arguments are not persuasive. We, therefore, affirm the
Examiner’s rejection of claim 16 for the reasons we have set forth above as
we affirmed the rejection of claims 13, 14, and 17.
IV. CONCLUSION
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
13, 14, 17 103 Napadensky, Sakashita, Dugan 13, 14, 17
16 103 Napadensky, Sakashita, Dugan, Erb 16
Overall
Outcome 13, 14, 16, 17
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED