Hewlett-Packard Development Company, L.P.

Patent Trials and Appeals Board

Aug 19, 2021

2020004140 (P.T.A.B. Aug. 19, 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.
15/518,229 04/10/2017 Hou T. Ng 84610386 9188
22879 7590 08/19/2021
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
08/19/2021 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 HOU T. NG, SIVAPACKIA GANAPATHIAPPAN,
ALEJANDRO MANUEL DE PENA, EDWARD DALE DAVIS,
and ALI EMAMJOMEH
Appeal 2020-004140
Application 15/518,229
Technology Center 1700
Before ADRIENE LEPIANE HANLON, KAREN M. HASTINGS, and
BRIAN D. RANGE, Administrative Patent Judges.
RANGE, 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 10–17. We have jurisdiction under
35 U.S.C. § 6(b). We AFFIRM IN PART.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as Hewlett-Packard Development
Company, L.P. Appeal Br. 3. Appellant states that Hewlett-Packard
Development Company, L.P. is a wholly-owned affiliate of HP Inc. Id.
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CLAIMED SUBJECT MATTER2
Appellant describes the invention as relating to a three-dimensional
additive printing system. Spec. ¶ 1. The system involves heating an
inorganic particle with a polymer attached to it. Id. at Fig. 1. A coalescent
dispersion is selectively applied to a portion of the build material. Id. The
build material and dispersion are then exposed to radiation that the
coalescent dispersion absorbs to heat up and fuse the build material. Id.
Claim 10 is the only independent claim on appeal and is illustrative:
10. A three-dimensional (3D) printing system, comprising:
a fabrication bed;
a build material to be introduced into the fabrication bed, the
build material consisting of:
an inorganic particle; and
a polymer attached to the inorganic particle, the polymer
being i) a continuous coating having a thickness ranging from
about 3 nm to about 1500 nm, or ii) nano-beads having an
average diameter ranging from about 3 nm to about 1500 nm;
an inkjet applicator;
a coalescent dispersion to be selectively introduced by the
inkjet applicator onto the build material in the fabrication bed, the
coalescent dispersion including:
a carbon black pigment present in the coalescent
dispersion in an amount ranging from about 3.0 wt% to about
6.0 wt% based on a total weight percent of the coalescent
dispersion; and
inorganic nanoparticles having an average diameter
ranging from about 10 nm to about 500 nm, wherein the

2 In this Decision, we refer to the Final Office Action dated July 15, 2019
(“Final Act.”), the Appeal Brief filed December 16, 2019 (“Appeal Br.”), the
Examiner’s Answer dated March 16, 2020 (“Ans.”), and the Reply Brief
filed May 15, 2020 (“Reply Br.”).
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inorganic nanoparticles make up from about 10 wt% to about
40 wt% of the total weight percent of the coalescent dispersion;
a radiation source to expose the coalescent dispersion and the
build material in the fabrication bed to electromagnetic radiation.
Appeal Br. 28 (Claims App.)
REFERENCES
The Examiner relies upon the prior art below in rejecting the claims
on appeal:
Name Reference Date
Pfeifer et al. (“Pfeifer”) US 2006/0251535 A1 Nov. 9, 2006
Giller et al. (“Giller”) US 2007/0241482 A1 Oct. 18, 2007
Kusahara et al.
(“Kusahara”)
US 2016/0236412 A1 Aug. 18, 2016
Piezoelectric Print Heads Vs. Thermal Print Heads, Alder Technology,
aldertech.com/piezoelectric-print-heads-vs-thermal-print-heads/ (first
archived January 2014) (“Alder”).

REJECTIONS
The Examiner maintains the following rejections on appeal:
A. Claims 10 and 12–17 under 35 U.S.C. § 103 as obvious over Giller in
view of Kusahara as evidenced by Alder. Final Act. 7.
B. Claim 11 under 35 U.S.C. § 103 as obvious over Giller in view of
Kusahara as evidenced by Alder and further in view of Pfeifer. Id.
at 16.
C. Claim 15 under 35 U.S.C. § 103 as obvious over Giller in view of
Kusahara and further in view of Alder. Id. at 17.
OPINION
We review the appealed rejections 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),
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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 evidence
presented in this appeal and each of Appellant’s arguments, we are not
persuaded that Appellant identifies reversible error except where we
otherwise indicate below. Thus, where we affirm the Examiner’s rejections,
we do so for the reasons expressed in the Final Office Action and the
Answer. We add the following primarily for emphasis.
Rejection A, claims 10, 12, 13, 15, 17. The Examiner rejects claims
10, 12, 13, 15, and 17 as obvious over Giller in view of Kusahara as
evidenced by Alder. Final Act. 7. Appellant does not separately argue
dependent claims 12, 13, 15, or 17. We, therefore, first focus on independent
claim 10. Claims 12, 13, 15, and 17 stand or fall with claim 10. 37 C.F.R.
§ 41.37(c)(1)(iv) (2013).
The Examiner finds that Giller teaches a three-dimensional (3D)
printing system that includes, for example, a fabrication bed, a build material
consisting of an inorganic particle and polymer attached to the inorganic
particle, an inkjet applicator, a coalescent dispersion including carbon black
and inorganic particles, and a radiation source. Final Act. 6–11. The
Examiner finds that Giller is silent regarding thickness of the polymer
coating on the inorganic build material. Id. at 11. The Examiner finds that
Kusahara teaches a powder material for 3-D object formation and teaches a
thickness of polymer coating from 5 nm to 1,000 nm. The Examiner
determines that it would have been obvious to combine the teachings of
Kusahara and Giller to “determine the optimum thickness of the polymer
coating on the inorganic filler of Giller.” Id. at 12.
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Appellant first argues that Giller does not teach or suggest claim 10’s
recitation of a build material consisting of an inorganic particle and polymer
attached to the inorganic particle. Appeal Br. 9–14; Reply Br. 2–5. When
used in a patent claim, the phrase “consisting of” most typically excludes
any element, step, or ingredient not specified in the claim. Manual of Patent
Examining Procedure, 2111.03, June 2020. Thus, Appellant argues that
Giller’s filler is only used as “an additive used in conjunction with Giller’s
granular particulate adhesive including a thermoset material and/or a
thermoplastic material.” Id. at 10; see also id. at 12 (“the filler mentioned in
Giller is an optional additive, but when used, is used in conjunction with the
polymeric particulate build material.”). The preponderance of the evidence
does not support Appellant’s reading of Giller.
As patents often do, Giller typically uses the word “includes” when
describing its embodiments. Giller as a whole, however, suggests a build
material that is only an inorganic particle with attached polymer. Giller
describes its system as including “a granular material that includes a first
particulate adhesive including a thermoset material and/or a thermoplastic
material.” Giller ¶ 22. This is the build material portion of the Giller system.
Giller’s “granular material may include a filler.” Id. ¶ 27. The filler may be
various forms of inert inorganic materials. Id. Giller indicates that the
granular material may also include, for example, an active filler or
plasticizer (Id. ¶¶ 32–33), but Giller is best understood as these components
being optional. Giller clarifies its teachings by stating that “build materials
that are suitable for the processes described herein include . . . inert fillers
coated with thermoplastic materials.” Id. ¶ 164. Appellant does not identify
any passage of Giller that absolutely requires a particular additive beyond,
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for example, an inert filler coated with thermoplastic materials. The
preponderance of the evidence, thus, supports that Giller is best understood
as suggesting that an inorganic filler coated with a polymer—along with no
other components—is a suitable build material.
Appellant also argues that it would not have been obvious to combine
Kusahara’s teachings with the teachings of Giller because Kusahara’s
teachings regarding thickness of its coating thickness only relate to
Kusahara’s use of its cross-linking agent. Appeal Br. 14–18. Similarly,
Appellant argues that a person of skill in the art would not have had a
reasonable expectation of success in combining the teachings of Kusahara
and Giller. Id. at 18–22. Appellant’s argument does not persuade us of
Examiner error for the three reasons explained below.
First and foremost, Kusahara teaches that, for a system of forming
three-dimensional objects using base material coated with inorganic
material, thickness of the coating effects both strength and dimensional
precision. Kusahara ¶ 72; see also Final Act. 12. In particular, too thin of a
coating may not be strong enough whereas too thick of a coating may not
allow enough dimensional precision when forming the three-dimensional
object. Kusahara ¶ 72. Appellant does not persuasively refute the
Examiner’s findings in this regard, and the Examiner’s findings are
sufficient to establish that coating thickness is a result effective variable. It
has long been held that “where the general conditions of a claim are
disclosed in the prior art, it is not inventive to discover the optimum or
workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456
(CCPA 1955); see also In re Boesch, 617 F.2d 272, 276 (CCPA 1980)
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(“[D]iscovery of an optimum value of a result effective variable in a known
process is ordinarily within the skill of the art.”).
Second, we do not agree with Appellant that Giller and Kusahara are
in different fields of endeavor. Appeal Br. 20–21. Both Giller and Kusahara
relate to producing three-dimensional objects by use of particles coated with
polymer. See, e.g., Giller ¶¶ 22, 164; Kusahara ¶¶ 38–53 (describing, for
example, inorganic base materials), ¶¶ 70–72 (describing thickness of
organic coating on base material). Appellant’s field of endeavor similarly
relates to producing a three-dimensional object through use of polymer
coated particles. See, e.g., Spec. ¶ 1, 13, 23; see also Appeal Br. 28 (Claims
App.) (claim 10 is directed to a three-dimensional printing system including
inorganic particles coated with polymer). A person of skill in the art would
have reasonably considered Giller and Kusahara relevant when working
within Appellant’s field. The references are, thus, both within the same field
of endeavor as Appellant’s patent application. In re Klein, 647 F.3d 1343,
1348 (Fed. Cir. 2011) (explaining that art is analogous when within the field
of the inventor’s endeavor); In re Sovish, 769 F.2d 738, 742 (Fed. Cir. 1985)
(explaining that identifying a reference as analogous “merely connotes that it
is relevant to a consideration of obviousness under § 103 as ‘prior art.’”).
Third, we agree with Appellant that Giller teaches irradiation as part
of the formation process whereas Kusahara does not. See, e.g., Appeal Br.
20–21; Reply Br. 8. The preponderance of the evidence, however, supports
that both Giller and Kusahara may make use of cross-linking agents. Ans. 6–
7 (citing Kusahara Abstract; Giller ¶ 170). The Giller and Kusahara
processes, overall, are similar enough that a person of skill in the art would
have considered Kusahara’s general teaching that thickness of a polymer
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coating will effect build strength and precision when choosing a thickness
for Giller’s coating. Moreover, because of the processes’ similarities, a
person of skill in the art would have a reasonable expectation of success in
optimizing polymer coating thickness, as taught by Kusahara, to reach
acceptable results when practicing Giller’s process.
Because Appellant’s arguments do not identify Examiner error, we
sustain the Examiner’s rejection of claims 10, 12, 13, 15, and 17.
Rejection A, claim 14. The Examiner also rejects claim 14 as obvious
over Giller in view of Kusahara as evidenced by Alder. Final Act. 7, 13–14.
Appellant argues claim 14 separately. Appeal Br. 22. Claim 14 recites the
3D printing system as defined by claim 10 wherein, for example, the core
particle in the coalescent dispersion is “selected from the group consisting of
a metal, a metal alloy, a metal oxide, a ceramic, and combinations thereof”
and where a polymer attached to the core particle is a coating with thickness
from 3 nm to about 1500 nm (or is nano-beads with diameter from 3 mm to
about 1500 nm). Appeal Br. 29 (Claims App.).
The Examiner finds that Giller teaches metal core particles. Final Act.
13–14. The Examiner finds that Kusahara teaches the advantage of coating
inorganic particles with a thickness of polymeric material that achieves the
required strength and precision. Id. at 15. The Examiner also finds that Giller
teaches that “the binder or the coalescent dispersion also penetrates the build
material and becomes part of the 3D object.” Id. at 14. The Examiner
determines that a person of skill in the art would have understood the
advantage of coating binder particles in the same way as those of the build
material based on Kusahara’s teaching because “binder material also
becomes part of the build material and the final 3D object.” Id.
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Appellant argues that a person of ordinary skill in the art would have
been led away from combining the teachings of Giller and Kusahara in the
manner the Examiner suggests. Appeal Br. 22. In particular, Appellant
argues that coating Giller’s absorber with a polymer would reduce the
absorber’s ability to absorb applied radiation and thus reduce its ability to be
heated. Id. at 23 (citing Giller ¶¶ 17, 139). Appellant argues that Giller’s
teachings regarding polymers absorbing radiation poorly or not at all
“undermine the rationale underpinning [to combine the references’
teachings] set forth by the Office.” Id.
Appellant’s argument is unpersuasive because, as the Examiner
explains, Giller’s main component for absorption of electromagnetic
radiation is carbon black. Ans. 10. Appellant does not persuasively dispute
this point. The Examiner’s proposed combination of the references’
teachings does not coat Giller’s carbon black with polymer. Appellant’s
argument, therefore, does not establish that a person of ordinary skill in the
art would have believed that the combination would unduly hinder Giller’s
absorber from performing its function. Because Appellant’s argument does
not identify error, we sustain this rejection.
Rejection A, claim 16. The Examiner also rejects claim 16 as obvious
over Giller in view of Kusahara as evidenced by Alder. Final Act. 7, 13–14.
Appellant argues claim 16 separately. Appeal Br. 25–26. Claim 16 depends
from claim 10. Appeal Br. 30 (Claims App.). Claim 10 recites a build
material with a “polymer attached to the inorganic particle” which is either a
continuous coating or is a nano-bead. Id. at 28. Claim 16 depends from
claim 10 and limits claim 10 by eliminating the possibility of a continuous
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coating. Claim 16 recites, in relevant part, “the polymer of the build material
is the nano-beads . . . .” Id. at 30.
Appellant argues that Giller does not teach the recited nano-beads.
Appeal Br. 25–26. Appellant’s argument persuades us of error. The
Examiner finds that Giller teaches “aggregating or coating thermoplastic
compositions onto grains of inert fillers.” Ans. 11 (citing Giller ¶ 21). The
Examiner further finds that aggregation “is correctly interpreted as two
particles attached to each other.” Id. at 11–12. Claim 16, however, requires
“nano-beads” having an average diameter. Because the nano-beads have a
diameter, they must be substantially round. The Examiner has not
adequately explained how or why Giller’s reference to “aggregating”
suggests such nano-beads. Appeal Br. 26. We, thus, do not sustain the
Examiner’s rejection of claim 16.
Rejections B and C. The Examiner rejects dependent claim 11 as
obvious over Giller in view of Kusahara as evidenced by Alder and further
in view of Pfeifer and rejects dependent claim 15 as obvious over Giller in
view of Kusahara and further in view of Alder. Final Act. 16–17. We sustain
these rejections for the reasons we explain above with regard to claim 10
because Appellant does not, in substance, argue these claims separately. Ex
parte Frye, 94 USPQ2d at 1072; cf. 37 C.F.R. § 41.37(c)(1)(iv) (2013).

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
10, 12–17 103 Giller, Kusahara, Alder 10, 12–15,
17
16
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Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
11 103 Giller, Kusahara, Alder,
Pfeifer
11
15 103 Giller, Kusahara, Alder 15
Overall
Outcome
10–15, 17 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED IN PART