HEWLETT-PACKARD DEVELOPMENT COMPANY, L.P.

Patent Trials and Appeals Board

Oct 7, 2020

15111949 - (D) (P.T.A.B. Oct. 7, 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.
15/111,949 07/15/2016 David H. DONOVAN 84497709 5843
22879 7590 10/07/2020
HP Inc.
3390 E. Harmony Road
Mail Stop 35
Fort Collins, CO 80528-9544
EXAMINER
TSUI, YUNG-SHENG M
ART UNIT PAPER NUMBER
1743
NOTIFICATION DATE DELIVERY MODE
10/07/2020 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):
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 DAVID H. DONOVAN

Appeal 2019-005784
Application 15/111,949
Technology Center 1700
____________

Before MAHSHID D. SAADAT, DONNA M. PRAISS, and
BRIAN D. RANGE, Administrative Patent Judges.

PRAISS, Administrative Patent Judge.

DECISION ON APPEAL1

Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–16. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 In this Decision, we refer to the Specification filed July 15, 2016 (“Spec.”),
the Final Office Action dated Sept. 7, 2018 (“Final Act.”), the Appeal Brief
filed Feb. 7, 2019 (“Appeal Br.”), the Examiner’s Answer dated May 29,
2019 (“Ans.”), and the Reply Brief filed July 23, 2019 (“Reply Br.”).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Hewlett-Packard Development
Company, L.P. as the real party in interest. Appeal Br. 1.
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Application 15/111,949

2
STATEMENT OF THE CASE
The invention relates to an additive manufacturing system in which
three-dimensional objects are produced on a layer-by-layer basis and in
small quantities. Spec. ¶ 2. Claim 1, reproduced below, is illustrative of the
subject matter on appeal (disputed limitations are italicized).
1. An apparatus for generating a three-dimensional object, the
apparatus comprising:
a radiation sensor to measure absorbance or gloss of build
material; and
a controller to:
control an energy source to apply energy to a layer of the
build material to cause a portion of the layer to coalesce
and solidify to form a slice of the three-dimensional
object;
receive, from the radiation sensor, data representing
measured absorbance or measured gloss of the portion of
the layer;
determine whether the measured absorbance or measured
gloss of the portion of the layer is indicative of an
incorrect degree of solidification of a part of the layer;
and
control the apparatus to modify a process parameter in
response to determining the measured absorbance or
measured gloss is indicative of the incorrect degree of
solidification of the part of the layer.
Appeal Br. 14 (Claims Appendix). Independent claim 14 is similar to
claim 1, but recites for the controller’s receive action:
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receive, from the radiation sensor, data representing measured
absorbance of the portion of the layer, the measured
absorbance based on detection by the radiation sensor of an
amount of the unfocused radiation that is reflected by the build
material.
Id. at 18.

ANALYSIS
We review the appealed rejections for error based upon the issues
Appellant identifies, 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 has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”). After considering the
argued claims and each of Appellant’s arguments, we are not persuaded of
reversible error in the appealed rejections except where otherwise indicated
below.
The Examiner’s rejections rely on the following prior art references:
Name Reference Date
Tochimoto US 6,799,959 B1 Oct. 5, 2004
Coe US 2002/0086247 A1 July 4, 2002
Toyserkani US 2004/0133298 A1 July 8, 2004
Philippi US 2009/0152771 A1 June 18, 2009

The Examiner maintains the following rejections:
Claims
Rejected 35 U.S.C. § References/Basis
1, 4–10, 12, 13, 15 103(a) Philippi, Toyserkani
2, 3, 11 103(a) Philippi, Toyserkani, Tochimoto
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Claims
Rejected 35 U.S.C. § References/Basis
14, 16 103(a) Philippi, Toyserkani, Coe

Appellant argues claims 1, 4–10, 12, 13, and 15 subject to the first
rejection as a group and relies on those same arguments for claims 2, 3, and
113 subject to the second rejection. Appeal Br. 8–10. Therefore, in view of
the lack of separate arguments directed to the rejected claim group and the
subsidiary rejection of claims 2, 3, and 11, claims 2–13, and 15 stand or fall
with independent claim 1. 37 C.F.R. § 41.37(c)(1)(iv). We separately
address claims 1, 14, and 16 below.
Claim 1
Appellant contends Toyserkani is silent regarding gloss, therefore
there is no disclosure of either “receive . . . data representing . . . measured
gloss of the portion of the layer” nor “determine whether the measured
absorbance or measured gloss . . . is indicative of an incorrect degree of
solidification” as required by claim 1. Appeal Br. 9. Appellant argues
Toyserkani instead uses “preprocessed images fed into a complex algorithm
are used to determine dimensions and rate of solidification.” Id. at 10 (citing
Toyserkani ¶¶ 42, 44–47).
Appellant’s arguments do not persuade us that the Examiner
reversibly erred in rejecting claim 1 as obvious over the teachings of Philippi
in view of Toyserkani.

3 We understand Appellant’s omission of claim 11 on page 10 of the Appeal
Brief to be a typographical error in the restatement of the Examiner’s
rejection of claims 2, 3, and 11.
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Appellant’s argument that Toyserkani does not teach determining a
degree of solidification from measured gloss is not persuasive of error
because the rejection is over the combined teachings of Toyserkani and
Philippi. As the Examiner correctly finds, Appellant’s Specification broadly
defines gloss as “an optical property of a surface to reflect radiation in a
specular direction.” Ans. 4; Spec. ¶ 16. The record supports the Examiner’s
finding that Philippi teaches detecting defects and/or irregularities in a newly
applied powder layer based on measuring reflected radiation with an IR-
infrared camera, which the Examiner equates with the claimed “radiation
sensor.” Ans. 4; Final Act. 3; Philippi ¶¶ 18, 19, 29. The record also supports
the Examiner’s finding that Toyserkani teaches detecting degrees of
solidification of a newly applied layer to minimize distortion and improve
surface quality. Ans. 4; Toyserkani ¶¶ 3, 11, 15. Based on these teachings,
the Examiner reasonably determines (Ans. 4) it would have been obvious to
a person having ordinary skill in the art to use Philippi’s reflected radiation
measurement to detect degrees of solidification as taught by Toyserkani.
Appellant raises a new argument in the Reply Brief (Reply Br. 5–6)
that Philippi does not disclose measuring gloss because “specular
reflection,” as used in the Specification’s definition of gloss, requires
measuring radiation reflected at an opposite and equal angle from the
radiation emission is not persuasive of error. This argument was not
presented in the Appeal Brief, and Appellant has not proffered a showing of
good cause explaining why the argument could not have been presented in
the Appeal Brief. Therefore, we will not consider this new and untimely
argument in our assessment of the Examiner's § 103 rejections. 37 C.F.R.
§§ 41.37, 41.41.
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Even if we were to consider Appellant’s new argument, Appellant’s
assertion that the Specification requires “gloss” to be measured by
measuring radiation reflected at an opposite and equal angle from the
radiation emission as described in the Specification’s paragraph 72 is not
supported by the preponderance of the evidence in this record. Paragraph 72
itself indicates that the radiation sensor “may measure any of the
radiation . . . that exhibits specular reflection at the opposite and equal angle
. . . from the surface of the un-solidified portion. Spec. ¶ 72 (emphasis
added). The Specification also describes only measuring the post-energy
specular reflection where a reference specular reflection may be a known
quantity based on known properties of the build material and system. Id.
¶ 75. We also note that paragraph 76 describes using a radiation sensor at a
non-specular angle and that the degree of non-specular reflection may
negatively correlate with gloss of the portion. Id. ¶ 76. Thus, Appellant’s
distinctions over how Philippi’s radiation sensor measures an optical
property of the build material surface do not sufficiently distinguish the
claimed apparatus.
The preponderance of the evidence in this appeal record therefore
supports the Examiner’s conclusion that the claimed subject matter would
have been obvious in view of Philippi’s apparatus as modified by
Toyserkani’s teaching to monitor solidification rate in real time to create a
product with minimal distortion and improved surface quality. Accordingly,
we affirm the Examiner’s rejection of claim 1 under 35 U.S.C. § 103(a) for
the above reasons and those provided by the Examiner.
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Because we find Appellant’s arguments unpersuasive of error in the
Examiner’s rejection of claim 1 for the reasons discussed above, we likewise
affirm the Examiner’s rejection of claims 2–13, and 15 for the same reasons.
Claims 14 and 16
Claim 14 is independent4 and claim 16, which depends from claim 1,
recites “wherein the data received from the radiation sensor comprises data
representing the measured absorbance, and the controller is to control the
apparatus to modify the process parameter if the measured absorbance
indicates an incorrect degree of solidification of a part of the layer.” Appeal
Br. 18, 19 (Claims Appendix). Appellant contends the Examiner erred in
rejecting claims 14 and 16 over the combination of Philippi, Toyserkani, and
Coe because (1) Coe does not disclose measuring “absorbance based on
detection by the radiation sensor of an amount of the unfocused radiation
that is reflected by the build material” as recited in claim 14 and (2) the
combination of Philippi and Toyserkani does not disclose the disputed
limitation discussed above in connection with claim 1. Appeal Br. 11; Reply
Br. 10.
Appellant’s arguments are persuasive of error by the Examiner
because, unlike claim 1 which requires “a radiation sensor to measure
absorbance or gloss of build material,” claim 14 requires “a radiation sensor
to measure absorbance of build material.” The Examiner finds that Philippi
and Toyserkani do not explicitly mention measuring absorbance of the layer,
which the Examiner equates with optical density. Final Act. 10. The

4 Should prosecution continue, the Examiner might consider whether claim
14’s recitation “or measured gloss” has an antecedent basis in claim 14.
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Examiner also finds that Coe does not disclose measuring optical density.
Ans. 11. The Examiner does not adequately explain why a person having
ordinary skill in the art would have modified Philippi and Toyserkani such
that absorbance or optical density is measured to determine whether the
measured absorbance is indicative of an incorrect degree of solidification as
required by claims 14 and 16. Even if a skilled artisan would understand
from Coe’s method for providing color to a 3D object that optical density
should be measured to determine how heat affects the optical density as the
Examiner determines (Ans. 5), the Examiner does not adequately explain
why one skilled in the art would have used optical density rather than
Philippi’s measured reflected radiation to detect defects and/or irregularities
in a newly applied powder layer. Absent such reasoning for combining the
prior art references, we are persuaded by Appellant that the Examiner
reversibly erred in rejecting claims 14 and 16 over the combination of
Philippi, Toyserkani, and Coe.
CONCLUSION
For these reasons and those the Examiner provides, we uphold the
Examiner’s rejection of claims 1–13 and 15 under 35 U.S.C. § 103(a) as
obvious over the combination of Philippi and Toyserkani alone or in further
view of Tochimoto.
For the reasons provided by Appellant and above, we reverse the
Examiner’s rejection of claims 14 and 16 under 35 U.S.C. § 103(a) as
obvious over Philippi, Toyserkani, and Coe.

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DECISION SUMMARY
In summary:
Claim(s)
Rejected 35 U.S.C. § References/Basis Affirmed Reversed
1, 4–10, 12,
13, 15 103(a)
Philippi,
Toyserkani
1, 4–10, 12,
13, 15
2, 3, 11 103(a)
Philippi,
Toyserkani,
Tochimoto
2, 3, 11
14, 16 103(a) Philippi, Toyserkani, Coe 14, 16
Overall
Outcome 1–13, 15 14, 16

TIME PERIOD FOR RESPONSE
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).

AFFIRMED IN PART