RENISHAW PLC

Patent Trials and Appeals Board

Sep 28, 2020

14306289 - (D) (P.T.A.B. Sep. 28, 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.
14/306,289 06/17/2014 SIMON PETER SCOTT 176467.01 4213
25944 7590 09/28/2020
OLIFF PLC
P.O. BOX 320850
ALEXANDRIA, VA 22320-4850
EXAMINER
HICKS, ANGELISA
ART UNIT PAPER NUMBER
3753
NOTIFICATION DATE DELIVERY MODE
09/28/2020 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):
OfficeAction25944@oliff.com
jarmstrong@oliff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SIMON PETER SCOTT and CHRISTOPHER SUTCLIFFE
Appeal 2019-005715
Application 14/306,289
Technology Center 3700
Before EDWARD A. BROWN, CHARLES N. GREENHUT, and
LEE L. STEPINA, Administrative Patent Judges.
STEPINA, 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 26–29, 31–36, 38–41, and 43–53.2 We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies Renishaw, PLC as the real party in interest.
Appeal Br. 1.
2 A telephonic hearing was conducted on August 18, 2020.
Appeal 2019-005715
Application 14/306,289
2
CLAIMED SUBJECT MATTER
The claims are directed to systems for, and methods of, changing a
particle filter used in an additive manufacturing process.
Claim 26, reproduced below with emphasis added, is illustrative of the
claimed subject matter.
26. An additive manufacturing apparatus comprising:
a build chamber,
a module for providing a focused energy beam for
consolidating layer-by-layer powder material in the build
chamber to build an article,
a gas flow circuit for passing a flow of gas through the
build chamber during the manufacturing process, and
a filter assembly, the filter assembly comprising;
a filter housing having a gas inlet and a gas outlet
both said gas inlet and said gas outlet being detachably
coupled to the gas flow circuit such that the filter assembly
is removably-mountable to the additive manufacturing
apparatus,
a particulate filter element located within the filter
housing between the gas inlet and the gas outlet and
configured to filter at least one of volatile and explosive
powder from the gas of the gas flow circuit,
a first valve actuatable to seal the gas inlet, and
a second valve actuatable to seal the gas outlet,
wherein the filter housing is configured to allow liquid into
the filter housing to flood the filter housing for entrapping the at
least one of volatile and explosive powder held against the
particulate filter element once the filter assembly has been
removed from the additive manufacturing apparatus and is
openable for removal of the particulate filter element, against
which the at least one of volatile and explosive powder has been
entrapped by the liquid, from the filter housing after flooding of
the filter housing.
Appeal Br. A-1 (Claims App.).
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Application 14/306,289
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Livoti US 2,343,871 Mar. 14, 1944
Cornell US 3,258,391 June 28, 1966
Cathcart US 5,766,486 June 16, 1998
Jaikaran US 5,772,879 June 30, 1998
Abe US 2006/0192322 A1 Aug. 31, 2006
Pang US 2009/0293988 A1 Dec. 3, 2009

Appellant submits a declaration by Chris Sutcliffe, hereinafter, the
“Sutcliffe Declaration.”
REJECTIONS
I. Claims 26–28, 32, 33, 35, 36, 38–41, and 43–47 are rejected
under 35 U.S.C. § 103(a) as unpatentable over Jaikaran, Abe, and Cornell.
II. Claims 29 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Jaikaran, Abe, Cornell, and Cathcart.
III. Claims 31 and 34 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Jaikaran, Abe, Cornell, and Livoti.
IV. Claims 48–53 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Jaikaran, Abe, Cornell, and Pang.

Appeal 2019-005715
Application 14/306,289
4
OPINION
Rejection I – Jaikaran, Abe, and Cornell
(Claims 26–28, 32, 33, 35, 36, 38–41, and 43–47)
Claims 26–28, 32, 33, 35, and 36
The Examiner finds that Jaikaran discloses many of the elements
recited in independent claim 26 related to the recited filter housing, but does
not disclose (i) structure for the use of its filter housing in additive
manufacturing and (ii) that the filter housing is configured to allow liquid
into the filter housing to flood the filter housing for entrapping the at least
one of volatile and explosive powder held against the particulate filter
element once the filter assembly has been removed from the additive
manufacturing apparatus. Final Act. 4–5. The Examiner relies on the
teachings of Abe to remedy the deficiencies relating to limitation (i) above
and relies on the teachings of Cornell to remedy the deficiencies relating to
limitation (ii). Id. at 5–7. Specifically, with respect to Cornell, the
Examiner finds “Cornell . . . teaches flooding or backwashing a filter that
filters caustic materials, where caustic is volatile . . . in order to dilute the
causticity of the material.” Id. at 6 (citing Cornell 4:72–75, 5:1–3, 25–26).
The Examiner reasons it would have been obvious “to modify the
manner in which the filter is cleaned [in] Jaikaran with a flooding method as
taught by Cornell . . . in order to dilute the causticity of the material.” Id.
The Examiner concludes that Jaikaran, modified based on the teachings of
Jaikaran as proposed, would result in structure configured in a way
corresponding to limitation (ii). Id.
Appellant argues that Cornell’s disclosed washing process has nothing
to do with entrapping volatile powder against a particular filter element, and,
instead, Cornell uses its washing step to recover “white liquor” in a solid
Appeal 2019-005715
Application 14/306,289
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calcium carbonate cake Cornell uses for its process. Appeal Br. 19–20.
Appellant argues “neither Jaikaran nor Abe is concerned with causticity.”
Id. at 19. Thus, Appellant contends, any problem addressed by Cornell’s
washing step is not present in the additive manufacturing industry, and,
therefore, Cornell’s washing step does not provide any benefit to the
structure resulting from the proposed combination of the teachings of Abe
and Jaikaran. Id. at 20. The Sutcliffe Declaration echoes Appellant’s
argument, stating
Cornell merely describes a washing step where water is applied
across the entire surface of the solid cake in order to wash all of
the cake and is passed through a filter cake. One of ordinary skill
in the additive manufacturing would not understand this to
correspond to allowing liquid into the filter housing to “flood”
the filter housing for “entrapping” at least one of volatile and
explosive powder, as claimed. As described in the specification,
according to embodiments, a capsule is filled with water, and the
water is retained within the capsule until a point later in time.
See, e.g., ¶¶[0009] and [0011]. It is clear that covering a solid
with a liquid and drawing the liquid through the solid, such as is
disclosed in Cornell, would not lead one of ordinary skill in the
art of additive manufacturing to fill a filter cartridge with water.
Sutcliffe Declaration ¶ 23.
In response, the Examiner finds both of Jaikaran and Clark “deal with
the removal of unwanted particulate.” Ans. 3. Further, the Examiner states,
“Jaikaran discloses the housing and filter and is silent about a specific fluid
to be filtered. Cornell deals with the handling of a specific fluid to be
filtered (a caustic material). Therefore, the Jaikaran/Cornell combination
results is a filter housing (Jaikaran) that is flooded (Cornell) in order to
reduce causticity within the filter housing (Cornell). As a result, there is a
reason to combine.” Id. at 3–4. The Examiner states, “[i]t is not beyond the
Appeal 2019-005715
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veil of possibility to a person having ordinary skill in the art at the time of
the invention to utilize a caustic material during this process.” Id. at 4. The
Examiner also finds that Abe disclose the use of iron powder, and this
material can be combined with oxygen to produce ferrous oxide, which, the
Examiner finds, is highly flammable. Id. Thus, according to the Examiner,
a person of ordinary skill in the art would have had a reason to eliminate a
material (ferrous oxide) in the apparatus described by Abe. Id.
In reply, Appellant reiterates that neither Abe nor Jaikaran is
concerned with causticity of material. Reply Br. 5. Appellant states that a
determination of whether something is “beyond the veil of possibility” is not
the proper inquiry for determining obviousness. Id. Appellant also argues
that Cornell is unrelated to the problem of oxidation of particles when they
are exposed to air. Id.
Appellant has the better position. Neither Jaikaran nor Abe is
concerned with neutralizing volatile (or caustic) particles. Further, as stated
by Appellant, Cornell is concerned with recovery of white liquor in a paper-
making process, and this process is unrelated to (i) additive manufacturing
processes, (ii) entrapment of particles on a filter, and (iii) dilution of caustic
materials on a filter. It appears that the benefit of “diluting the causticity” of
material in the filter comes only from Appellant’s disclosure. In this regard,
the Examiner’s finding that a person of ordinary skill in the art might use
caustic material while practicing the process disclosed by Abe, i.e., that this
occurrence “is not beyond the veil of possibility” (Ans. 4) amounts to
speculation and, therefore, does not buttress the Examiner’s reasoning.
Accordingly, we agree with Appellant that the Examiner’s rationale for
providing structure in the combination of Jaikaran and Abe’s teachings to
“flood” the filter housing based on the teachings of Cornell (see Final Act.
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6) is not supported by rational underpinnings and is, instead, based on
impermissible hindsight. Therefore, we do not sustain the rejection of claim
26, and claims 27, 28, 32, 33, 35, and 36 depending therefrom, as
unpatentable over Jaikaran, Abe, and Cornell.
Claims 38–41 and 43–47
The Examiner relies on substantially the same findings of fact and
reasoning regarding Cornell in the rejection of claims 38–41 and 43–47. See
Final Act. 8–12. Accordingly, for the same reasons, we do not sustain the
rejection of these claims as unpatentable over Jaikaran, Abe, and Cornell.
Rejections II–IV– Jaikaran, Abe, Cornell, Cathcart, Livoti, and Pang
(Claims 29, 31, 34, 48–53)
The Examiner does not use the teachings of Cathcart, Livoti, and Pang
in any manner that would remedy the deficiency discussed above regarding
Rejection I. Accordingly, for the same reasons, we do not sustain Rejections
II–IV.

CONCLUSION
The Examiner’s rejections are reversed.

DECISION SUMMARY
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Application 14/306,289
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Claims
Rejected
35 U.S.C.
§
Basis Affirmed Reversed
26–28, 32,
33, 35, 36,
38–41, 43–
47
103(a) Jaikaran, Abe,
Cornell
26–28, 32,
33, 35, 36,
38–41, 43–
47
29 103(a) Jaikaran, Abe,
Cornell, Cathcart
29
31, 34 103(a) Jaikaran, Abe,
Cornell, Livoti
31, 34
48–53 103(a) Jaikaran, Abe,
Cornell, Pang
48–53
Overall
Outcome
26–29, 31–
36, 38–41,
43–53

REVERSED