Hewlett-Packard Development Company, L.P.

Patent Trials and Appeals BoardMar 31, 2021

2020003026 (P.T.A.B. Mar. 31, 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. 15/515,326 03/29/2017 Sergio Puigardeu Aramendia JR. 84608435 6006 22879 7590 03/31/2021 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 03/31/2021 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 SERGIO PUIGARDEU ARAMENDIA JR., DAVID RAMIREZ MUELA, POL MARTINEZ FORNOS, and SALVADOR SANCHEZ RIBES Appeal 2020–003026 Application 15/515,326 Technology Center 1700 Before BEVERLY A. FRANKLIN, GEORGE C. BEST, and N. WHITNEY WILSON, Administrative Patent Judges. FRANKLIN, 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 1–4 and 6–9. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Hewlett-Packard Development Company, L.P. Appeal Br. 1. Appeal 2020-003026 Application 15/515,326 2 CLAIMED SUBJECT MATTER Claim 1 is illustrative of Appellant’s subject matter on appeal and is set forth below: 1. An apparatus for generating a three-dimensional object, the apparatus comprising: a support to receive build material; a calibration platform distinct from the build material support to removably receive a sheet of paper, the calibration platform positioned alongside the build material support for a calibration mode of operation; and a printhead movable over the support to distribute a fluid coalescing agent on to build material on the support during a building mode of operation and moveable over the calibration platform to distribute the coalescing agent on to a sheet of paper on the calibration platform during a calibration mode of operation. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Philippi US 6,483,596 Bl Nov. 19, 2002 Baumann US 2007/0238056 Al Oct. 11, 2007 THE REJECTION Claims 1–4 and 6–9 are rejected under § 103 as obvious over the combination of Philippi and Baumann. OPINION We review the appealed rejection 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), cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t Appeal 2020-003026 Application 15/515,326 3 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 (including the Examiner’s Answer, the Appeal Brief, and the Reply Brief), we are persuaded that Appellant identifies reversible error. Thus, we reverse the Examiner’s rejection essentially for the reasons provided by Appellant and add the following primarily for emphasis. We refer to the Examiner’s statement of the rejection set forth on pages 7–12 of the Final Office Action. We are persuaded of error in the rejection for the reasons presented by Appellant in the record, emphasized below. Appellant argues that the proposed modification of Philippi by placing a build platform alongside the calibration platform (as illustrated by the Examiner’s diagram set forth on page 5 of the Answer) lacks the rational underpinning needed to support a conclusion of obviousness. Reply Br. 2. On pages 5–6 of the Appeal Brief, Appellant explains that leaving Philippi’s calibration plate 60 on platform carrier/plate 20 during building would negate the ability to absolutely position the building platform anywhere on platform carrier/plate 20, just as leaving the building platform on platform carrier/plate 20 for calibration would restrict the ability to absolutely position calibration plate 60 anywhere on platform carrier/plate 20. Appeal Br. 6. Appellant states that the clear implication here is that one or the other of a calibration plate 60 or a building platform, but not both, is “absolutely positioned” on plate 20 at any given time. Id. We are persuaded by this line of argument. We note that “rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some Appeal 2020-003026 Application 15/515,326 4 articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). We also note that setting forth a prima facie case of obviousness requires establishing that the applied prior art would have provided one of ordinary skill in the art with a reason to modify the prior art to arrive at the claimed invention. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). We agree that the Examiner has not identified a proper reason to make the proposed modification. As stated by Appellant on pages 1–2 of the Reply Brief, the construction area covered by any “calibration only” plate 60 in Philippi is wasted space during a building mode of operation, and we agree with Appellant that there is no apparent reason to waste some of the most valuable real estate in the printer by not removing “calibration only” plate 60 after calibration to save a bit of time installing and removing plate 60 for the reasons provided by Appellant in the record. See Ex parte Levengood, 28 USPQ2d 1300, 1301–02 (BPAI 1993) (“At best, the examiner’s comments regarding obviousness amount to an assertion that one of ordinary skill in the relevant art would have been able to arrive at appellant’s invention because he had the necessary skills to carry out the requisite process steps. This is an inappropriate standard for obviousness . . . . That which is within the capabilities of one skilled in the art is not synonymous with obviousness.” (citation omitted)). Because the Examiner does not rely upon the secondary reference of Baumann to cure the aforementioned deficiencies of Philippi, we reverse the rejection. Appeal 2020-003026 Application 15/515,326 5 CONCLUSION We reverse the Examiner’s decision. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–4, 6–9 103 Philippi, Baumann 1–4, 6–9 REVERSED