CHURCH, KENNETH H. et al.

Patent Trials and Appeals Board

Aug 3, 2020

12552448 - (D) (P.T.A.B. Aug. 3, 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.
12/552,448 09/02/2009 KENNETH H. CHURCH P09268US01 4651
133690 7590 08/03/2020
Goodhue, Coleman & Owens, P.C.
12951 University Ave
Suite 201
Clive, IA 50325
EXAMINER
EMPIE, NATHAN H
ART UNIT PAPER NUMBER
1712
NOTIFICATION DATE DELIVERY MODE
08/03/2020 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):
USPTO@dockettrak.com
docketing@goodhue.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENNETH H. CHURCH, PATRICK A. CLARK,
XUDONG CHEN, MICHAEL W. OWENS, and KELLY M. STONE
Appeal 2019-005384
Application 12/552,448
Technology Center 1700
Before JAMES C. HOUSEL, WESLEY B. DERRICK, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
HOUSEL, 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 28–41. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as nScrypt,
Inc. Appeal Brief (“Appeal Br.”) filed June 12, 2018, 3.
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CLAIMED SUBJECT MATTER
The invention relates to methods for dispensing various materials
including high viscosity materials at high speeds. Specification (“Spec.”)
filed September 2, 2009, 1:10–12.2
Claim 28, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the claimed subject matter:
28. A method for depositing a material on a substrate in a
continuous line pattern, the method comprising steps of:
providing an apparatus with at least one material
dispenser comprising: (i) a tip orifice defining an opening
within a pen tip through which the material exits the dispenser,
(ii) at least one elongate feed channel having an inlet and a
spaced outlet adjacent the tip orifice, the at least one feed
channel having material therein and being sized and shaped so
that the material therein may flow through the at least one
channel from the inlet to the outlet, (iii) a valve for controlling
the flow of material through the outlet of the at least one feed
channel, the valve being moveable between an open position, in
which materials is permitted to flow through the outlet, and a
closed position, in which material is not permitted to flow
through the outlet, (iv) an actuator operatively coupled to the
valve for selectively moving the valve between the open
position and the closed position;
positioning the pen tip at a predetermined writing gap
above the substrate, the predetermined writing gap having a
distance of more than 75 micrometers above the substrate, the
distance being greater than a line height for the continuous line
pattern such that the pen tip is positioned above the continuous
line pattern; and
controlling velocity of the flow of material through the
outlet and dispense speed to control dispensed line height and
dispensed line width parameters based on the predetermined

2 This Decision also cites to the Final Office Action (“Final Act.”) dated
January 4, 2017, the Examiner’s Answer (“Ans.”) dated October 3, 2018,
and the Reply Brief (“Reply Br.”) filed November 27, 2018.
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writing gap wherein the larger the predetermined writing gap,
the higher the velocity of the flow of the material through the
outlet;
wherein a line width for the continuous line pattern is
300 micrometers or less.

REFERENCES
The Examiner relies on the following prior art:
Name Reference Date
Brown et al. US 3,656,330 Apr. 18, 1972
Drumheller US 4,485,387 Nov. 27, 1984
Churchill et al. US 2002/0159919 A1 Oct. 31, 2002
Warren et al. US 2003/0100824 A1 May 29, 2003
Gibson et al. US 2003/0111011 A1 June 19, 2003
Lemmo et al. US 2003/0207464 A1 Nov. 06, 2003
Bremner et al. US 2003/0209575 A1 Nov. 13, 2003
Rutkowski et al. US 2005/0013926 A1 Jan. 20, 2005
Prentice et al. US 2006/0193969 A1 Aug. 31, 2006
Lord US 2007/0187437 A1 Aug. 16, 2007

REJECTIONS
The Examiner maintains, and Appellant requests our review of, the
following rejections under 35 U.S.C. § 103(a):
1. Claims 28, 29, 35, 40, and 41 as unpatentable over Warren
in view of Prentice, Brown, Drumheller, and Rutkowski;
2. Claims 30 and 31 as unpatentable over the combination of
Warren, Prentice, Brown, Drumheller, and Rutkowski, and
further in view of Lord;
3. Claims 32 and 33 as unpatentable over the combination of
Warren, Prentice, Brown, Drumheller, and Rutkowski, and
further in view of Bremner;
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4. Claim 34 as unpatentable over the combination of Warren,
Prentice, Brown, Drumheller, and Rutkowski, and further in
view of Lemmo;
5. Claim 36 as unpatentable over the combination of Warren,
Prentice, Brown, Drumheller, and Rutkowski, and further in
view of Churchill; and
6. Claims 37–39 as unpatentable over the combination of
Warren, Prentice, Brown, Drumheller, and Rutkowski, and
further in view of Gibson.
OPINION
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. We offer the following for
emphasis only.

Rejection 1: Obviousness of claims 28, 29, 35, 40, and 41 over Warren in
view of Prentice, Brown, Drumheller, and Rutkowski
Appellant argues these claims as a group. We select claim 28 to
address Appellant’s arguments. In accordance with 37 C.F.R.
§ 41.37(c)(1)(iv) (2017), claims 29, 35, 40, and 41 stand or fall with claim
28.
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The Examiner’s Position
The Examiner finds that Warren teaches a method for depositing a
material on a substrate so as to form a circuit or electronic components using
a material dispenser substantially as recited in claim 28, wherein the pen tip
is positioned at a predetermined writing gap (or vertical distance) above the
substrate and the material flow rate (or velocity) is controlled in order to
obtain the desired dispense line properties such as line height and width.
Final Act. 3–4. The Examiner finds that Warren’s flow rate control is based
on the predetermined writing gap, but acknowledges that Warren fails to
disclose a range of values for the writing gap. Id. at 4–5.
For this missing feature, the Examiner finds that Prentice similarly
discloses a method for dispensing material on a substrate, wherein a
predetermined writing gap distance between a dispenser tip and a substrate
may be about 0.010–0.040 in. (254–1016 µm), so as to dispense uniform
lines of viscous material onto the substrate. Final Act. 5. The Examiner
further finds that Prentice teaches this predetermined writing gap to be a
result-effective variable, wherein a gap that is too large negatively affects
the dispensation quality and a gap that is too small results in crashes with the
substrate. Id. Moreover, the Examiner finds that Prentice teaches controlling
the flow rate (velocity) of the dispensed material, at a predetermined writing
gap, in order to control the line dimensions (width and height) of the
dispensed material. Id. As such, the Examiner finds that Prentice’s flow rate
control is inherently dependent on, i.e., based on, the predetermined writing
gap. Id.
In addition, the Examiner finds that Brown discloses a method for
dispensing material on a substrate, wherein the flow rate of dispensed
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material may be increased in response to an increase in a writing gap in
order to achieve uniform dispensation of dispensed material onto the
substrate. Final Act. 6. The Examiner finds that Brown provides further
guidance on controlling flow rate based on a writing gap in order to achieve
uniform material dispensation. Id. Therefore, based on the teachings of
Prentice and Brown, the Examiner concludes that it would have been
obvious, through routine optimization, to select a predetermined writing gap
and control flow rate based on the writing gap in Warren’s method to allow
for dispensation of uniform lines. Id. at 5–6.
The Examiner next finds that Drumheller discloses a method for
dispensing long lines of a material at a variety of writing speeds on a
substrate, wherein the dispensed line width may be 4–12 mils (102–305
µm). Final Act. 7. The Examiner concludes that it would have been obvious
to dispense long lines of material having line widths within the range recited
in claim 28 (less than 300 µm) as Drumheller teaches that such widths are
suitable for circuit lines and Warren discloses that the dispensed material
may be circuit lines. Id. at 7–8.
The Examiner further finds that Drumheller, like Warren and Prentice,
discloses that writing speed may be adjusted or varied to allow for the
formation of uniform lines. Final Act. 8. However, the Examiner
acknowledges that these references fail to expressly teach positioning the
pen tip at a height greater than the line height. Id. For this feature, the
Examiner finds that Rutkowski teaches that the dispensing tip may be
elevated above a line of dispensed material in order to accurately dispense a
line with desired properties, including line width and height. Id. at 8–9. The
Examiner concludes that it would have been obvious to set the pen tip in
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Warren’s method to be above the dispensed line height in order to allow for
the dispensation of a line with certain used defined properties. Id. at 9.

Appellant’s Position
Appellant argues that the combination of Warren, Prentice, Brown,
Drumheller, and Rutkowski fails to teach the step of controlling flow rate
(velocity of the flow of material through the outlet) and dispense speed to
control line width and height based on the predetermined writing gap,
wherein the larger the gap, the higher the flow rate. Appeal Br. 13. Appellant
contends that Warren and Brown fail to teach this step. Id. at 15.
Appellant notes that Prentice positions and maintains its nozzle at a
nominal height above the substrate so as to optimize the continuous
dispensation of material. Appeal Br. 14. Appellant contends, however, that
Prentice does not teach that greater speeds can be maintained while
maintaining precise control by having a larger writing gap, nor controlling
flow rate and dispense speed to control line width and height based on the
gap. Id. at 14–15.
Appellant also notes that Drumheller teaches a dynamic pen control
system to maintain a desired dispensed line thickness to width ratio, but
contends that Drumheller fails to teach this step. Appeal Br. 13–14.
As to Rutkowski, Appellant notes that this reference teaches that the
pen tip may be precisely located on the substrate to provide precise line
width and height determined by the flow rate and dispense speed. Appeal Br.
14. However, Appellant contends that this teaching is inconsistent with
Appellant’s flow rate and dispense speed control step. Id.
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Appellant next argues that a skilled artisan would not have combined
Brown’s teaching with those of Warren and Prentice because Brown’s
dispensing relates to spraying, not to 3D printing. Appeal Br. 15. Appellant
notes that Brown is directed to a system for uniformly distributing a
divergent stream of liquid onto a surface, wherein the flow rate is adjusted
based on the distance between the spray nozzle and the substrate in order to
provide a uniform coating of liquid. Id. at 16–17. Appellant contends that
Brown is not directed to depositing a material on a substrate in a continuous
line pattern. Id. at 17. Moreover, Appellant asserts that neither Warren nor
Prentice are concerned with uniform distribution of liquid. Id.
Finally, Appellant argues that, contrary to the Examiner’s findings of
inherency, the references do not support these findings. Appeal Br. 18. In
particular, Appellant asserts that the Examiner finds that Warren and
Prentice inherently control flow rate based on the predetermined writing gap.
Id. Appellant contends that Warren’s and Prentice’s flow rates and dispense
speeds need not be based on the gap, “and the Examiner evinces nothing to
indicate otherwise.” Id. at 19.

Analysis
Appellant’s arguments are not persuasive for the reasons the
Examiner provides in the Examiner’s Answer, Response to Argument.
Ans. 3–6. We note that the Examiner responds to Appellant’s arguments by
directing attention to the prior Decision on Appeal (“Decision” or “Dec.”)
dated January 29, 2016, which stated, contrary to Appellant’s position, that
“the combined teachings of Warren and Prentice would have suggested
controlling velocity of material flow and dispense speed based on
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parameters including the predetermined writing gap.” Ans. 3; Dec. 4.
Appellant fails to address either the Examiner’s response or the prior
Decision in this regard. Further, Appellant fails to explain with any
particularity why Warren, Brown, and Drumheller fail to teach controlling
velocity of material flow and dispense speed based on the writing gap.
As to Appellant’s contention that Prentice fails to teach that greater
speeds can be maintained while maintaining precise control by having a
larger writing gap, we note that claim 28 does not recite any limitation that
the dispense speed is greater when the gap is larger. However, given that
Warren and Prentice suggest controlling flow rate and dispense speed based
on the writing gap, one of ordinary skill in the art would reasonably
conclude that greater flow rates and/or dispense speeds may be obtained for
larger writing gaps through no more than routine optimization as set forth by
the Examiner. Likewise, although Appellant concedes that Rutkowski
teaches the pen tip may be precisely located on the substrate to provide
precise line width and height determined by the flow rate and dispense
speed, Appellant fails to explain with any particularity how this teaching is
inconsistent with Appellant’s flow rate and dispense speed control step.
We are also not persuaded that Brown is not directed to depositing a
material on a substrate in a continuous line pattern or is otherwise non-
analogous prior art. Appellant has not shown that Brown’s projection of a
divergent stream of material to a substrate is not depositing the material on
the substrate in a continuous line pattern. In fact, Brown teaches that the
material is discharged continuously. Brown 3:20–33. Moreover, the
Examiner finds that Brown is both in Appellant’s field of endeavor and
reasonably pertinent to the particular problem with which Appellant was
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concerned. Ans. 5–6. A reference is analogous prior art if it is either in the
field of the Appellant’s endeavor, or is reasonably pertinent to the particular
problem with which the inventor was concerned. In re Kahn, 441 F.3d 977,
987 (Fed. Cir. 2006). The Examiner finds that Appellant’s field of endeavor
is the deposition of a material onto selected areas of a substrate involving
material flow control. Ans. 6. Appellant does not dispute or otherwise rebut
this finding. The Examiner also finds that Brown is concerned with the
problem of improving uniformity of deposited material. Id. Further, contrary
to Appellant’s assertion that neither Warren nor Prentice are concerned with
uniform distribution of material, the Examiner finds that both these
references expressly describe that deposition uniformity is desirable. Id.;
Warren ¶ 10 (“for dispensing uniform lines of viscous solutions”); Prentice
¶ 55 (“[i]n order to produce a dispense line of uniform width and cross
section”). Again, Appellant does not dispute or otherwise rebut this finding.
Turning to Appellant’s argument that the Examiner’s inherency
findings are unsupported, the Examiner responds that the prior Decision
previously supported these findings. Ans. 6. Appellant fails to address either
the Examiner’s response or the prior Decision in this regard. The Examiner
further explains that these positions merely indicate that these findings (that
the references disclose maintaining material flows and speeds at a particular
gap distance to achieve particular line height and width) read on the recited
controlling flow rate and dispense speed to control line height and width
based on the predetermined gap. Id. Although Appellant contends that
Warren’s and Prentice’s flow rates and dispense speeds need not be based on
the gap, Appellant fails to explain with any particularity why. To the
contrary, the Examiner has shown that these references teach controlling
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material flow rate and dispense speed, and also that Prentice teaches that the
writing gap is a result effective variable wherein “control of velocity and
speed necessarily is based on the particular value of this . . . writing gap.”
Dec. 4. The Board previously held, “[t]hese findings and the corroborative
technical reasoning identified in the Final Action and in the Answer
convincingly support the Examiner’s determination that the combined
teachings of Warren and Prentice would have suggested controlling velocity
of material flow and dispense speed based on parameters including the
predetermined writing gap.” Id. Appellant fails to persuasively identify any
reason why we should deviate from the Board’s holding.3

3 In the Reply Brief, Appellant presents a new argument not raised in the
Appeal Brief concerning Prentice, i.e., that Prentice never discusses a
writing gap but merely relies upon a “nominal clearance height.” Reply Br.
27–28. Under regulations governing appeals to the Board, any new argument
not timely presented in the Appeal Brief will not be considered when filed in
a Reply Brief, absent a showing of good cause explaining why the argument
could not have been presented in the Appeal Brief. See 37 C.F.R.
§ 41.41(b)(2); In re Hyatt, 211 F.3d 1367, 1373 (Fed. Cir. 2000) (noting that
an argument not first raised in the brief to the Board is waived on appeal);
Ex parte Nakashima, 93 USPQ2d 1834 (BPAI 2010) (explaining that
arguments and evidence not timely presented in the principal Brief will not
be considered when filed in a Reply Brief, absent a showing of good cause
explaining why the argument could not have been presented in the Principal
Brief); Ex parte Borden, 93 USPQ2d 1473, 1477 (BPAI 2010) (informative)
(“Properly interpreted, the Rules do not require the Board to take up a
belated argument that has not been addressed by the Examiner, absent a
showing of good cause.”). Appellant has provided this record with no such
showing. Indeed, given the importance of Prentice with regard to the issue of
writing gap, e.g., that Prentice teaches that the writing gap is a result
effective variable, there would seem to be no excuse for failing to raise this
issue earlier in the prosecution of this application. Accordingly, we will not
consider this new argument in the Reply Brief.

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Accordingly, we sustain the Examiner’s rejection of claims 28, 29, 35,
40, and 41 under 35 U.S.C. § 103(a) as unpatentable over Warren in view of
Prentice, Brown, Drumheller, and Rutkowski.

Rejections 2–5: Obviousness of claims 30–34 and 36–39 over Warren in
view of Prentice, Brown, Drumheller, and Rutkowski, and further in view of
Lord, Bremner, Lemmo, Churchill, or Gibson
Appellant argues that Lord fails to remedy the deficiencies in the
combination of Warren, Prentice, Brown, Drumheller, and Rutkowski as
applied to claim 28. Appeal Br. 20. Appellant does not separately argue the
rejections relying on Bremner, Lemmo, Churchill, or Gibson. Because we
are not persuaded of any deficiency in the Warren, Prentice, Brown,
Drumheller, and Rutkowski combination as applied to claim 28 requiring
curing by Lord (or the remaining applied prior art), we are not persuaded of
reversible error in any of Rejections 2–5.
Accordingly, we sustain each of obviousness Rejections 2–5.
CONCLUSION
Upon consideration of the record and for the reasons set forth above
and in the Final Office Action and the Examiner’s Answer, the Examiner’s
decision to reject claims 28–41 under 35 U.S.C. § 103(a) is affirmed.
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DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
28, 29, 35, 40,
41
103(a) Warren, Prentice,
Brown,
Drumheller,
Rutkowski
28, 29, 35,
40, 41

30, 31 103(a) Warren, Prentice,
Brown,
Drumheller,
Rutkowski, Lord
30, 31
32, 33 103(a) Warren, Prentice,
Brown,
Drumheller,
Rutkowski,
Bremner
32, 33
34 103(a) Warren, Prentice,
Brown,
Drumheller,
Rutkowski,
Lemmo
34
36 103(a) Warren, Prentice,
Brown,
Drumheller,
Rutkowski,
Churchill
36
37–39 103(a) Warren, Prentice,
Brown,
Drumheller,
Rutkowski, Gibson
37–39
Overall
Outcome
28–41

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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