Ex Parte Mantell et al

Patent Trial and Appeal Board

Oct 16, 2018

14563563 (P.T.A.B. Oct. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/563,563 12/08/2014
76360 7590 10/16/2018
MAGINOT, MOORE & BECK LLP
One Indiana Square, Suite 2200
INDIANAPOLIS, IN 46204
FIRST NAMED INVENTOR
David A. Mantell
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
1776-0637 7563
EXAMINER
VALENCIA, ALEJANDRO
ART UNIT PAPER NUMBER
2853
MAIL DATE DELIVERY MODE
10/16/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID A. MANTELL, PETER J. NYSTROM,
PETER GUL VIN, ANDREW W. HAYS, and JUN MA
Appeal2017-011100
Application 14/563,563
Technology Center 2800
Before MICHAEL P. COLAIANNI, DONNA M. PRAISS, and
MONTE T. SQUIRE, Administrative Patent Judges.
PRAISS, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
final decision to reject claims 1, 2, 11, and 12. We have jurisdiction under
35 U.S.C. § 6(b). We REVERSE.
1 In this Decision, we refer to the Specification filed December 8, 2014
("Spec."), the Final Office Action entered October 26, 2016 ("Final Act."),
the Appeal Brief filed April 26, 2017 ("Appeal Br."), the Examiner's
Answer entered June 27, 2017 ("Ans."), and the Reply Brief filed August
28, 2017 ("Reply Br.").
2 Xerox Corporation is the Applicant/ Appellant and also identified in the
Appeal Brief as the real party in interest. Appeal Br. 3.
Appeal 2017-011100
Application 14/563,563
The subject matter on appeal "relates to printheads that eject high
viscosity materials and, more particularly, to printers that produce three-
dimensional objects with such materials." Spec. ,r 1. According to the
Specification, single nozzle printheads have been used to eject materials to
form objects in order to overcome the limitations associated with high
viscosity materials, however, this limits the objects that can be produced. Id.
,r 4. Claim 1 below is illustrative ( disputed limitation italicized):
1. A printhead comprising:
a reservoir configured with at least one wall to hold a
volume of a high viscosity material;
a member;
at least one transducer having a plurality of electroactive
elements that is mounted to the member;
a plurality of protrusions extending from a surface of the
member into the reservoir, the protrusions in the plurality of
protrusions being arranged in one-to-one correspondence with
the plurality of electroactive elements, each protrusion being
part of the member and positioned at a distance from its
corresponding electroactive element to enable activation of the
corresponding electroactive element to move the member and
the protrusion within the reservoir; and
a plurality of electrical conductors, each electroactive
element being electrically connected to a different electrical
conductor in the plurality of electrical conductors to enable a
controller to activate each electroactive element independently
of the other electroactive elements in the plurality of
electroactive elements with electrical signals and move the
member and the protrusion extending above the member into
the high viscosity material adjacent to the electroactive element
and the member to thin the high viscosity material and enable
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Application 14/563,563
the thinned material to move away from the at least one
transducer.
Appeal Br. 13 (Claims Appendix). Claim 11 is the only other independent
claim and is directed to a printer comprising a platen and a printhead as
recited in claim 1. Id. at 16-1 7.
The Examiner maintains the following rejections:
1. Claims 1 and 11 under 35 U.S.C. § 112(a) for failing to comply
with the enablement requirement.
2. Claims 1 and 11 under 35 U.S.C. § 112(b) for being indefinite.
3. Claims 1, 2, 11, and 12 under 35 U.S.C. § 103 over Ema3 in view of
Sharma. 4
Ans. 2; Final Act. 2-7.
OPINION
Rejection 1: Enablement
The Examiner determines that claims 1 and 11 are unpatentable under
35 U.S.C. § 112(a) because, while the text of the Specification supports the
claims, Appellant's Figure 5 contradicts the claimed "plurality of protrusions
extending from a surface of the member" because a single member with only
a single protrusion is shown. Final Act. 2-3.
Appellant contends that the Examiner erred because paragraph 23
identifies and Figure 5 shows a plurality of protrusions numbered 524 which
are positioned on member 512 at a distance from a corresponding
electroactive element 504 to operate as a hammer to thin and eject material
3 Ema et al., US 5,541,630, issued July 30, 1996 ("Ema").
4 Sharma, US 6,352,337 Bl, issued March 5, 2002 ("Sharma").
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Application 14/563,563
through an aperture in another layer positioned above the protrusion 524, but
not shown in the figure. Appeal Br. 7. Figure 5 is shown below.
Figure 5 is an illustration of a plurality of transducers in a radial pattern
within a material reservoir. Spec. ,r 12.
The Examiner responds that "nowhere in figure 5 or any of the other
figures, for that matter, is it indicated that every member 512 is somehow
joined to form a single 'member."' Ans. 3. The Examiner further responds
that "while paragraph [0023] describes one single member with several
protrusions and several transducers, as labeled, figure 5 does not match such
a description." Id. The Examiner finds that neither the Specification nor the
figures indicate that "the generally triangular member 512 in figure 5 would
at any point meet or become part of the same body" and that "the edges of
member( s) 512 in figure 5 appear to be parallel so as not to meet or be
joined at a point." Id. at 4--5.
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Application 14/563,563
In the Reply Brief, Appellant contends that Figure 5 shows only one
reference number 512 and a plurality of triangular members 504 mounted to
member (singular) 512 consistent with paragraph 23. Reply Br. 2.
We are persuaded by Appellant that the Examiner erred in interpreting
Figure 5 as showing multiple members 512 of a triangular shape. Paragraph
23 of the Specification describes a plurality of electroactive elements 504
mounted in a radial pattern to a singular member 512 as well as a plurality of
protrusions 524 on a singular member 512. Spec. ,r 23. While the singular
member 524 could be indicated with an arrow directed to the entirety of the
illustration shown in Figure 5 rather than by an underline within the interior
of the member, Figure 5 only shows one item 512. Therefore, the
Examiner's finding that "the figure also shows a number of other identical
members 512 from which other protrusions 524" (Ans. 4) is not supported
by the record. Accordingly, we reverse the Examiner's rejection of claims 1
and 11 as failing to meet the enablement requirement under 35 U.S.C.
§ 112(a).
Rejection 2: Indefiniteness
The Examiner finds that claims 1 and 11 are indefinite under 3 5
U.S.C. § 112(b) because they recite "the member and the protrusion
extending above the member into the high viscosity material" which is
inconsistent with Appellant's Figure 1 that shows ink being ejected in the
direction of gravity. Final Act. 4.
Appellant argues that the Examiner erred in rejecting claims 1 and 11
because paragraph 23 of the Specification discloses that protrusions 524
positioned on member 512 "operate as a hammer to thin and eject material
through an aperture in another layer positioned above the protrusion."
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Application 14/563,563
Appeal Br. 9. Appellant asserts that the Examiner presents no evidence to
support the view that only one orientation is possible and that the only
possible orientation is that shown in Appellant's Figure 1. Id. Appellant
further argues that paragraph 20 explains how the claimed orientation works,
specifically that protrusion 224 shown in Figures 2 and 4 "moves 'up and
down' to impart shear stress to high viscosity fluid above the protrusion
224." Id. Figure 2 is shown below.
FIG~ 2
Figure 2 is a cross section view of one of the printheads shown in Figure 1.
Spec. ,r 9.
The Examiner responds that it appears that Figures 2 and 4 were
"simply submitted upside down" and that the claims are based on the
orientation of those figures, rather than the operation of the device itself,
because the orientation of the figures cannot be reconciled with the printer
disclosed in Figure 1. Ans. 5---6. The Examiner further finds that because
the application is directed to a 3D printing apparatus, it "uses fluid that could
not physically be ejected upward because of its viscosity." Id. at 6.
In the Reply Brief, Appellant maintains that the Examiner's findings
do not consider the multiple references in the Specification that the action of
the electroactive elements through the member on a protrusion enables the
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Application 14/563,563
protrusion to stress the material over the protrusion and thin it so it can be
ejected in the depicted orientations. Reply Br. 3, quoting Spec. ,r 20 ("This
hammer action imparts shear stress to the high viscosity fluid over the
protrusion 224 and decreases the viscosity of that fluid.").
We are persuaded by Appellant's argument that the Examiner
reversibly erred in rejecting claims 1 and 11 as indefinite for describing an
orientation in which the recited protrusion extends above the recited
member. The Examiner's rejection is based on a finding (Ans. 6) that
Appellant's 3D printer cannot physically eject fluid upward because of the
viscosity of the fluid. Appellant persuasively rebuts this finding by directing
us to the disclosure in the Specification (Spec. ,r 20) that viscosity of the
fluid is decreased through the hammer action of the protrusion which
imparts shear stress to the high viscosity fluid. Therefore, we reverse the
Examiner's rejection of claims 1 and 11 as indefinite.
Rejection 3: Obviousness over Ema and Sharma
The Examiner finds that claims 1, 2, 11, and 12 are unpatentable
under 35 U.S.C. § 103 over Ema in view of Sharma for the reasons stated on
pages 5-7 of the Final Office Action.
Appellant argues that the Examiner erred in rejecting the claims over
the combination of Ema and Sharma because substituting the cantilevered
beam, pivot, paddle, and micro-actuator of Sharma for the vibrating plate of
Ema fails to disclose the printhead and printer of independent claims 1 and
11. Appeal Br. 10. As acknowledged by the Examiner, Ema fails to
disclose a plurality of protrusions that are part of the member and positioned
at a distance from each corresponding electroactive element. Id. at 10
(citing Final Act. 6). According to Appellant,
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Application 14/563,563
[ w ]hen Shanna is substituted into Ema, a plurality of members,
one per pressure chamber, is required to replace the single
vibrating plate. Thus, the combination does not possess a
member with a plurality of protrusions extending from it, but
rather, requires one beam per pressure chamber and each beam
has only one paddle attached to it.
Id. at 11. Appellant contends that it is only with impermissible hindsight
that a skilled artisan would form the vibrating plate with a plurality of
paddles extending from it rather than a single beam and a single paddle as
taught by Sharma. Id.
The Examiner responds that because the ejector configurations of
Ema and Sharma "were by far the two most common at the time of [the]
invention and that each had well-defined pros and cons" it would have been
obvious to use either approach depending on constraints. Ans. 8. The
Examiner finds that the approaches of Ema and Sharma differ in that Sharma
allows for high pressure fluctuation due to its loose end, resulting in a higher
allowable range in ejection volumes while requiring an extra manufacturing
step of creating every member singly, whereas Ema's approach uses one
single member, saving a manufacturing step, but resulting in a smaller range
of ejectable volumes due to limited movement of the single member. Id. at
7-8. The Examiner also finds that "one of ordinary skill would have
combined the two references in such a manner that none of the pitfalls listed
by Applicant would be incurred." Id. at 7.
In the Reply Brief, Appellant maintains that the rejection is in error
because the Examiner provides no motivation for combining the cited
references such that protrusions are added to a vibrating plate at positions
near the plurality of nozzles. Reply Br. 4. Appellant contends that the
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Application 14/563,563
combination of Sharma with Ema would result in multiple arms rather than a
single member with multiple protrusions. Id. at 4. Appellant also contends
that there is no support in the record for one skilled in the art to position the
protrusions "at a distance from its corresponding electroactive element to
enable activation of the corresponding electroactive element to move the
member and the protrusion within the reservoir" as recited in the claims
because the prior art teaches transducers are placed "at positions
corresponding to the respective pressure chambers" rather than with
reference to a protrusion. Id. at 5 (citing Sharma [sic, Ema] 7: 1-3).
After review of the positions of both the Examiner and the Appellant,
we find the Examiner's rejection of claims 1, 2, 11, and 12 under 35 U.S.C.
§ 103 is not supported by the preponderance of the evidence cited in the
Appeal record. Specifically, the Examiner provides no reasoning to support
modifying either Ema or Sharma to provide multiple protrusions arranged in
the manner claimed. We are persuaded by Appellant that the approach of
Sharma that the Examiner references is to use a cantilever beam pivoting
about a fulcrum to cause a paddle to move toward a nozzle and that the
combination of this teaching with Ema would result in multiple arms, not
multiple protrusions. The Examiner has not provided a reason why one
skilled in the art would have modified Ema, in view of the teachings of
Shanna's paddle, to incorporate protrusions in the claimed arrangement
relative to the electroactive elements of a transducer as required by the
claims. Therefore, we are persuaded by Appellant that the combination of
Ema and Sharma has not been shown to teach or suggest each of the claimed
limitations recited in independent claims 1 and 11.
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In sum, we reverse the Examiner's rejection of claims 1 and 11 as
well as claims 2 and 12, which depend therefrom, as obvious over Ema and
Sharma.
Conclusion
For the above reasons, we reverse all of the Examiner's rejections of
claims 1, 2, 11, and 12.
DECISION
The Examiner's decision is reversed.
REVERSED
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