Lawrence Livermore National Security, LLC

Patent Trials and Appeals Board

Jan 3, 2022

2021000323 (P.T.A.B. Jan. 3, 2022)

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. 15/462,610 03/17/2017 Jeronimo Mora LLNLP164/IL-13109 8723 78980 7590 01/03/2022 LLNL/Zilka-Kotab Lawrence Livermore National Laboratory L-703, P.O. Box 808 Livermore, CA 94551 EXAMINER CHUNG, HO-SUNG ART UNIT PAPER NUMBER 1794 NOTIFICATION DATE DELIVERY MODE 01/03/2022 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): llnl-docket@llnl.gov zk-uspto@zilkakotab.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JERONIMO MORA Appeal 2021-000323 Application 15/462,610 Technology Center 1700 Before JEFFREY B. ROBERTSON, DONNA M. PRAISS, and N. WHITNEY WILSON, Administrative Patent Judges. ROBERTSON, Administrative Patent Judge. DECISION ON APPEAL1 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the Examiner’s decision to reject claims 1-5 and 16-30.2 Appeal Br. 7-88. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 This Decision includes citations to the following documents: Specification filed March 17, 2017 (“Spec.”); Final Office Action entered October 10, 2019 (“Final Act.”); Appeal Brief filed March 9, 2020 (“Appeal Br.”); Examiner’s Answer entered August 14, 2020 (“Ans.”); and Reply Brief filed October 12, 2020 (“Reply Br.”). 2 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Lawrence Livermore National Security, LLC., as the real party in interest. Appeal Br. 3. Appeal 2021-000323 Application 15/462,610 2 CLAIMED SUBJECT MATTER Appellant states the invention relates to producing fine featured patterned three dimensional parts using electrophoretic deposition and electroplating. Spec. ¶ 2. Claims 1 and 16 are reproduced below, and are illustrative of the claimed subject matter (Appeal Br. 90-92, Claims App.): 1. A system, comprising: a deposition electrode, wherein the deposition electrode is configured to move in a z direction, wherein the deposition electrode is configured to move during deposition; a counter electrode, wherein the deposition electrode and the counter electrode are positioned in a chamber and are oriented opposite from one another; wherein the counter electrode is a photoconductive electrode; a mechanism for directing a light onto the photoconductive electrode, wherein the mechanism is configured to move the light in an x direction and/or a y direction, wherein the x direction is oriented perpendicular to the y direction and x-y directions are in a plane that is perpendicular to the z direction; the chamber; and a power source for applying a voltage differential across the electrodes. 16. A system, comprising: a deposition electrode configured to move in an x direction and/or a y direction, wherein the x direction is oriented perpendicular to the y direction and x-y directions are in a plane that is perpendicular to a z direction, wherein the deposition electrode is configured to move during deposition; Appeal 2021-000323 Application 15/462,610 3 a counter electrode, wherein the deposition electrode and the counter electrode are positioned in a chamber and are oriented opposite from one another, wherein the counter electrode is a photoconductive electrode, wherein the photoconductive electrode is fixed in position in the chamber; a mechanism for directing a light onto the photoconductive electrode, wherein the mechanism is configured to direct light to a fixed photoconductive electrode; the chamber; and a power source for applying a voltage differential across the electrodes. Appeal 2021-000323 Application 15/462,610 4 REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Melcher et al. (“Melcher”) US 4,217,183 Aug. 12, 1980 Niksa et al. (“Niksa”) US 5,017,275 May 21, 1991 Fan et al. (“Fan”) US 5,474,719 Dec. 12, 1995 Yoshida et al. (“Yoshida”) US 2003/0019756 A1 Jan. 30, 2003 Cohen et al. (“Cohen”) US 2005/0032362 A1 Feb. 10, 2005 Holmboe et al. (“Holmboe”) US 2006/0078638 A1 Apr. 13, 2006 HU et al. (“HU”) US 2014/0251815 A1 Sept. 11, 2014 Bruck et al. (“Bruck”) US 2015/0343564 A1 Dec. 3, 2015 Higuchi et al. (“Higuchi”) US 2017/0073830 A1 Mar. 16, 2017 Andou et al. (“Andou”) JP 06-299390, English Translation of Record Oct. 25, 1994 Jørgensen et al. (“Jørgensen”) WO 2016/124634 A1 Aug. 11, 2016 Pascall et al. (“Pascall”) “Light Directed Electrophoretic Deposition for Additive Manufacturing: Spatially Localized Deposition Control with Photoconductive Counter Electrodes,” Key Engineering Materials, Vol. 654, 261-267. July 15, 2015 Appeal 2021-000323 Application 15/462,610 5 REJECTIONS3 1. Claims 1, 3-5, 29, and 30 are rejected under 35 U.S.C. § 103 as being unpatentable over Pascall and Jørgensen, Fan, or Melcher. Final Act. 4-9. 2. Claims 16, 17, and 19 are rejected under 35 U.S.C. § 103 as being unpatentable over Pascall and Bruck or Melcher. Final Act. 9-12. 3. Claim 3 is rejected under 35 U.S.C. § 103 as being unpatentable over Pascall and Jørgensen, Fan, or Melcher, and further in view of Holmboe. Final Act. 12-13. 4. Claim 20 is rejected under 35 U.S.C. § 103 as being unpatentable over Pascall and Bruck or Melcher, and further in view of Holmboe. Final Act. 12-13. 5. Claim 30 is rejected under 35 U.S.C. § 103 as being unpatentable over Pascall, Melcher, and Jørgensen. Final Act. 13. 6. Claims 17-20 are rejected under 35 U.S.C. § 103 as being unpatentable over Pascall, Bruck or Melcher, and Jørgensen, Fan, or Melcher. Final Act. 14-15. 3 Although the Examiner’s statement of rejection relies on pre-AIA 35 U.S.C. § 103(a), the Examiner indicated that the application is being examined under the first inventor to file provisions of the AIA. Final Act. 2. Accordingly, we refer to the AIA version of the statute in the listing of rejections herein. In addition, the Examiner withdrew alternative rejections of claims 23, 24, 27, and 28 in the Answer. Final Act. 21-22; Ans. 12, 76. Appeal 2021-000323 Application 15/462,610 6 7. Claims 2, 21, and 22 are rejected under 35 U.S.C. § 103 as being unpatentable over Pascall and Jørgensen, Fan, or Melcher, and further in view of Higuchi or Andou. Final Act. 15-18. 8. Claims 25 and 26 are rejected under 35 U.S.C. § 103 as being unpatentable over Pascall and Bruck or Melcher, and further in view of Higuchi or Andou. Final Act. 15-18. 9. Claims 23 and 24 are rejected under 35 U.S.C. § 103 as being unpatentable over Pascall and Jørgensen, Fan, or Melcher, and further in view of Cohen, Yoshida, or Niksa, and alternatively HU for claim 24. Final Act. 18-21. 10.Claims 27 and 28 are rejected under 35 U.S.C. § 103 as being unpatentable over Pascall and Bruck or Melcher, and further in view of Cohen, Yoshida, or Niksa, and alternatively HU for claim 28. Final Act. 18-21. OPINION We confine our discussion to claims 1, 2, 16, 17, 21, 22, and 23, which are representative of the separate arguments made by Appellant with respect to the rejections on appeal. 37 C.F.R. § 41.37(c)(1)(iv)(2019). Rejection 1 The Examiner’s Rejection In rejecting claim 1 as unpatentable over the combination of Pascall taken with Jørgensen, Fan, or Melcher, the Examiner found Pascall discloses a system for additive manufacturing having a deposition electrode, Appeal 2021-000323 Application 15/462,610 7 photoconductive counter electrode, and a mechanism for directing light onto the photoconductive electrode as recited in claim 1. Final Act. 4-5. The Examiner found Pascall does not disclose the mechanism for directing light is configured to move light in an x and/or y direction as recited in claim 1. Id. at 5. The Examiner relied on Jørgensen, Fan, or Melcher for disclosing mechanisms for moving light in X-Y directions. Final Act. 5-8. The Examiner determined it would have been obvious to have modified Pascall in view of Jørgensen’s teachings to replace Pascall’s static light with Jørgensen’s moving light system in order to enhance resolution, remove limitations due to image size, and increase speed and/or area. Id. at 6. The Examiner determined it would have been obvious to have modified Pascall’s system with Fan’s computer assembly in order to implement an object design and/or automate the system. Id. at 7. The Examiner determined it would have been obvious to have modified Pascall’s system with Melcher’s system to move light in the X-Y plane in order to save time and costs by eliminating the use of masks. Id. at 7-8. Appellant’s Arguments Appellant argues that Jørgensen and Fan are non-analogous art as neither reference is in Appellant’s field of endeavor, nor is reasonably pertinent to the problem with which Appellant is concerned. Appeal Br. 8- 10, 17-19. Appellant argues modifying Pascall with either Jørgensen or Fan would render Pascall’s invention unsatisfactory for its intended purpose. Id. at 11-12, 20-22. Appellant contends combining Pascall with Jørgensen, Fan, or Melcher would impermissibly change Pascall’s principle of Appeal 2021-000323 Application 15/462,610 8 operation. Id. at 12-14, 22-23, 28. Appellant argues the Examiner’s rejection relies on impermissible hindsight because Pascall discloses a successful patterned deposit and there is no indication in Pascall that a modification is desired. Id. at 14-15, 23-24, 29. Appellant argues the Examiner has provided insufficient reasoning to support the combination of Pascall with Melcher, because replacing Pascall’s light source and photomask with Melcher’s moveable light beam would be at a higher cost due to the complex light system compared to shining static light on a photomask. Id. at 30. Appellant argues a skilled artisan would not have reasonably expected modifying Pascall with Jørgensen, Fan, or Melcher would produce a successful result. Id. at 15-17, 24-25, 30-31. Discussion Analogous Art - Jørgensen and Fan Determining whether a reference is non-analogous art is a two-fold inquiry. First, we must decide if the reference is within the field of the inventor’s endeavor; if it is not, we proceed to determine whether the reference is reasonably pertinent to the particular problem with which the inventor was involved. See In re GPAC Inc., 57 F.3d 1573, 1578 (Fed. Cir. 1995); In re Wood, 599 F.2d 1032, 1036 (CCPA 1979). The field of endeavor can be correctly determined “by consulting the structure and function of the claimed invention as perceived by one of ordinary skill in the art” with “reference to explanations of the invention’s subject matter in the patent application.” In re Bigio, 381 F.3d 1320, 1325-26 (Fed. Cir. 2004) (affirming Board’s finding that prior art toothbrush was in same field of endeavor as patentee’s hairbrush where Board concluded that “the structural Appeal 2021-000323 Application 15/462,610 9 similarities between toothbrushes and small brushes for hair would have led one of ordinary skill in the art working in the specific field of hairbrushes to consider all similar brushes including toothbrushes”). Where an inventor is considering how to design a particular mechanism to fit a specific type of device, the inventor “would naturally look to references employing” other forms of that mechanism, even where they are found in different types of devices. In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379-80 (Fed. Cir. 2007) (discussing In re Paulsen, 30 F.3d 1475, 1481-82 (Fed. Cir. 1994)). “‘A reference is reasonably pertinent if, even though it may be in a different field from that of the inventor’s endeavor, it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering [the inventor’s] problem.’” In re ICON Health and Fitness, 496 F.3d 1374, 1379-80 (Fed Cir. 2007) (quoting In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992)). “In other words, ‘familiar items may have obvious uses beyond their primary purposes.’” Id. at 1380 (quoting KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007)). Same Field of Endeavor Jørgensen discloses a process to build a 3D object from polymerizable materials, where a light energy is used to cure light sensitive materials in layers to form the 3D object. Jørgensen, 1, ll. 3-11. Fan discloses a method for producing 3D objects from uniform thin layers using radiation to gel, stiffen, harden, or cross-link exposed regions. Fan col. 1, ll. 5-18; col. 8, ll. 58-65; col. 13, l. 15 - col. 14, l. 3. The Specification discloses the invention is for producing fine featured patterned three dimensional parts using electrophoretic deposition and electroplating where light is directed onto a photoconductive electrode. Spec. ¶¶ 2, 5. Appeal 2021-000323 Application 15/462,610 10 Thus, Jørgensen and Fan, like the present Specification, disclose forming 3D objects by building layers, all using light in the manufacture of each layer. We acknowledge Appellant’s arguments that Jørgensen and Fan are functionally and structurally different because both utilize light to solidify or crosslink material already applied to a support rather than for deposition of the material. Appeal Br. 9-10, 18. However, we do not view such differences, which relate specifically to the choice of material to form the layers of the 3D object, as sufficient to constitute a different field of endeavor. Rather, we are of the view that such devices constitute other forms of using a light mechanism for building 3D objects in additive manufacturing methods. ICON Health and Fitness, 496 F.3d at 1379-80. In addition, we are not persuaded by Appellant’s argument that the Examiner has not properly considered the claims, but improperly referred to the Specification when the Examiner determined the scope of the invention is additive manufacturing systems. Reply Br. 7. Appellant’s argument is inconsistent with the controlling case law, which expressly states that the Specification should be consulted when determining the field of endeavor. Bigio, 381 F.3d at 1325-26. As such, Appellant’s arguments suggesting that by broadly claiming a “system” as in claim 1, the entire disclosure in the Specification, which relates only to 3D additive manufacturing, is not relevant in determining the field of endeavor is simply without merit. For these reasons, we agree with the Examiner that Jørgensen and Fan are in the same field of endeavor as Appellant. Appeal 2021-000323 Application 15/462,610 11 Reasonably Pertinent We are also not persuaded by Appellant’s arguments that Jørgensen and Fan are not reasonably pertinent to the problem with which Appellant is concerned. The Examiner explained that Jørgensen and Fan, which each disclose the movement of light, are reasonably pertinent to the inventor’s contribution to the prior art of movement of either light or the substrate. Ans. 22, 36-37. The Examiner’s identification of the problem is not inconsistent with Appellant’s identification of the problem as “using a light on a photoconductive counter electrode to affect the patterned deposition of particles from solution onto a conductive electrode.” Appeal Br. 10, citing Spec. ¶ 63 (emphasis omitted). Appellant argues Jørgensen’s and Fan’s systems are generally impractical for a system of electrophoretic deposition. Id. at 10, 19. However, Appellant’s mere assertion that Jørgensen’s and Fan’s systems are generally impractical for a system of electrophoretic deposition do not provide a sufficient technical explanation as to why Jørgensen’s and Fan’s systems would be impractical or, perhaps more importantly, why such an impracticality would mean that Jørgensen’s and Fan’s systems were not at least reasonably pertinent to Appellant’s problem. Accordingly, we are of the view that Jørgensen and Fan are also at least reasonably pertinent to Appellant’s problem of using light on a photoconductive counter electrode to affect the patterned deposition of particles. In sum, we agree with the Examiner that Jørgensen and Fan are analogous art. Appeal 2021-000323 Application 15/462,610 12 Obviousness As discussed above, Appellant contends that modification of Pascall with either Jørgensen or Fan would render Pascall unsatisfactory for its intended purpose. Appellant’s arguments in this regard are seemingly based on the position that the particular systems of Jørgensen and Fan are directed to providing radiation for crosslinking rather than creating charge on a photoconductive electrode, and as such would be unsuitable for use in Pascall’s system. Appeal Br. 12, 20-21. Initially, we agree with the Examiner that Appellant does not provide sufficient evidence to support these arguments. Ans. 23, 37. As the Examiner points out, Pascall does not set forth specific requirements as to the light needed to activate the photoconductive electrode (see Ans. 23-24, citing Pascall 262), thus indicating that one of ordinary skill in the art would have been able to determine the type of light needed for this purpose. As such, Appellant’s arguments do not consider what the prior art would have suggested to one of ordinary skill in the art. In this regard, Appellant acknowledges that the knowledge possessed by one of ordinary skill in the art would include “knowledge of the type of problems encountered in electrochemical deposition processes . . . and knowledge of the solutions to problems typically encountered in these processes.” Reply Br. 9. Appellant does not explain why, in view of this knowledge, one of ordinary skill in the art would be limited to the specific light sources applied in either Jørgensen or Fan, and would not have been capable of applying an appropriate source of light for creating charge on a photoconductive electrode in modifying the moving light mechanisms of Jørgensen or Fan for use in Pascall. Appeal 2021-000323 Application 15/462,610 13 As a result, Appellant’s arguments appear to consider each reference individually rather than the rejection as a whole, whereas in an obviousness rejection, the combination of references must be considered as a whole, rather than the specific teaching of each reference. In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971); In re Simon, 461 F.2d 1387, 1390 (CCPA 1972). To the extent Appellant argues that using moving light in itself would render Pascall unsatisfactory for its intended purpose, Appellant does not provide any particular evidence to support their argument. Appeal Br. 12. Thus, Appellant’s mere attorney argument is insufficient to demonstrate error in the Examiner’s position. Appellant also contends that modifying Pascall with Jørgensen, Fan, or Melcher, would change at least one of Pascall’s principles of operation, which include the use of masks in forming a structure away from the source of illumination though electrophoretic deposition. Appeal Br. 12-14, 22-23, 28-29. We are not persuaded by Appellant’s arguments. As acknowledged by Appellant, Pascall discloses a system using a photoconductive counter electrode patterned with light via a photomask to activate a deposition electrode in specific areas. Pascall 262, 265. Although applying the techniques of Jørgensen, Fan, or Melcher to Pascall would allow one of ordinary skill in the art to carry out Pascall’s method without use of a photomask, we are unpersuaded that such a change would not have been obvious. That is, Jørgensen discloses applying a moving light source provides the benefits of increased building speed relative to static building areas. Jørgensen 2, ll. 25-34. Fan discloses various means may be used to provide Appeal 2021-000323 Application 15/462,610 14 radiation including radiation through a photomask or direct exposure with a scanning focused radiation beam. Fan col. 8, ll. 58-65. Melcher discloses a maskless technique for establishing high resolution patterns on a substrate, which avoids multiple time-consuming steps related to masking. Melcher, col. 1, ll. 7-21; col. 2, ll. 35-46. Melcher discloses an energy source forms a beam, focused by a lens system, which may be manipulated by a scanning mirror through angular rotation of the mirror to allow a particular portion of the cathode to be exposed to the beam. Id. at col. 3, ll. 23-39; Fig. 1. Accordingly, the prior art cited by the Examiner provides benefits for providing a moving light source over a static light source, and thus provides a reason to modify Pascall’s system. Appellant’s argument that modification of Pascall with Jørgensen, Fan, or Melcher would change Pascall’s principle of operation because Pascall forms a structure away from the source of illumination is also not persuasive. The Examiner’s rejection relies on Jørgensen, Fan, or Melcher for the light directing mechanism and not for direct application of light to the deposition surface. As discussed above, Jørgensen, Fan, and Melcher provide evidence as to why applying a moving light source would have been desirable relative to static light through a photomask. Therefore, we are not persuaded that in applying these teachings to Pascall, one of ordinary skill in the art would have also modified Pascall’s method to include applying light to the deposition electrode as opposed to the photoconductive electrode. Thus, in view of the benefits disclosed in the prior art for applying moving light methods over static light techniques including the use of photomasks, Appellant’s arguments that modifying Pascall with Jørgensen, Appeal 2021-000323 Application 15/462,610 15 Fan, or Melcher would change a principle of operation in Pascall are not persuasive. Appellant contends also that the Examiner’s modification of Pascall with Jørgensen, Fan, or Melcher relies on impermissible hindsight and lacks sufficient reasoning. We are not persuaded by Appellant’s arguments. That is, Appellant appears to contend that because Pascall “reports a successful patterned deposit on [a] conductive electrode” (see Appeal Br. 15), one of ordinary skill in the art would not have modified Pascall absent improper hindsight of the instant application. We are not persuaded by this argument because, as discussed above, the prior art discloses advantages of moving light over static light and photomasks, which are used in Pascall. Pascall 262, Fig. 1(b). Regarding Melcher, Appellant argues additionally that Melcher discloses the scanning mirror manipulates the beam according to angular rotation and not moving the light in an x and/or y direction. Appeal Br. 27. Appellant contends Melcher discloses manipulating a beam to allow a portion of the cathode to be exposed to the beam uncovering regions of the target, and not a mechanism for directing light onto a photoconductive electrode as recited in claim 1. Id. Appellant contends that modifying Pascall’s method with Melcher’s moveable light beam would significantly increase costs due to the complexity of the light system. Id. at 30. We are not persuaded by Appellant’s argument that Melcher discloses angular rotation of the mirror rather than movement of light in the x and/or y direction. As discussed above, Melcher discloses the angular rotation of the mirror is used to manipulate the beam to the desired portion of the cathode. See Melcher, Figs. 1 and 2. A similar scheme is depicted in Appellant’s Appeal 2021-000323 Application 15/462,610 16 figures. See Figs. 3 and 4. Appellant has not sufficiently explained why, when Melcher’s system is adapted to Pascall’s system as proposed by the Examiner, it would not have been obvious to have arranged the angular rotation of the mirror employed by Melcher to direct the beam in the x and/or y direction in order to direct light onto the photoconductive electrode based on the pattern desired in Pascall. We are also not persuaded by Appellant’s position that applying Melcher to Pascall would increase costs. As the Examiner explains, Melcher expressly discloses use of masks are time consuming and increase the cost of the process. Ans. 46; see Melcher col. 1, ll. 6-21. In contrast, Appellant does not provide adequate evidence to support their position that applying Melcher’s technique to Pascall would increase costs. As a result, Appellant’s arguments are not persuasive. Last, we are unpersuaded by Appellant’s arguments that one of ordinary skill in the art would not have reasonably expected that combining Pascall with Jørgensen, Fan, and Melcher would produce a successful result. Appeal Br. 15-16; 24-25; 30-31. Appellant’s arguments in this regard are similar to those discussed above with respect to the use of a photomask and indirect light versus direct light.4 Regarding Appellant’s argument that Pascall requires one hour of deposition time (Appeal Br. 16), we observe that Pascall does disclose application of voltage for one hour under certain conditions (Pascall 264), but Appellant has not sufficiently explained why 4 It is interesting to note that Appellant contends that a skilled artisan would not use moving light with a photomask (Appeal Br. 16), yet Appellant’s Specification provides for such a scenario in the present system. Spec. ¶ 34. Appeal 2021-000323 Application 15/462,610 17 such times would be necessary with the use of moving focused light. See Ans. 28, 41-42, 47-48. Thus, after considering Appellant’s arguments in view of the evidence as a whole, we are not persuaded that the Examiner reversibly erred in rejecting claim 1 as unpatentable over the combination of Pascall, Jørgensen, Fan, and Melcher. Rejection 2 Claim 16 The Examiner’s Rejection In rejecting claim 16 as unpatentable over the combination of Pascall and Melcher, the Examiner found Pascall discloses a system for additive manufacturing including a deposition electrode that is configured to move during deposition, a counter electrode, and a power source for applying a voltage differential across the electrodes. Final Act. 9-10. The Examiner found that Pascall does not disclose the deposition electrode is configured to move in an x and/or y direction as recited in claim 16. Id. at 10. The Examiner found that Bruck discloses an additive manufacturing process, where both an energy beam and substrate may move in all three dimensions (x, y, and z dimensions). Final Act. 10. The Examiner found one of ordinary skill in the art would have recognized from this teaching that having a part be stationary or moving are suitable substitutes for each other. Id. The Examiner determined that it would have been obvious to have substituted Pascall’s static deposition electrode with a moving deposition electrode in view of Bruck’s teachings. Id. at 11. The Examiner found Melcher discloses the cathode disclosed therein may be moved so that a Appeal 2021-000323 Application 15/462,610 18 predetermined portion of the cathode may be exposed to the beam. Id. at 11. The Examiner found such an arrangement would have added a backup mechanism in case the beam movement stopped working or would have added flexibility to the system. Id. The Examiner determined it would have been obvious to have modified Pascall’s system with Melcher’s mechanism of moving the deposition electrode in the X-Y plane in order to have a backup X-Y movement mechanism and/or add flexibility. Id. Appellant’s Arguments Appellant contends Bruck is non-analogous art. Appeal Br. 63-64. Appellant contends the combination of Pascall and Bruck or Melcher would change Pascall’s principle of operation. Id. at 65, 70-71. Appellant contends the Examiner’s rejection relies on impermissible hindsight and insufficient reasoning to modify Pascall’s system. Id. at 66-67, 71-72. Appellant argues that one of ordinary skill in the art would not have expected the combination of Pascall and Bruck or Melcher to produce a successful result. Id. at 67-68, 72-73. Discussion Analogous Art - Bruck We are not persuaded by Appellant’s arguments that Bruck is non- analogous art. Bruck discloses an additive manufacturing process for making three dimensional objects, where an energy beam is used to form a pattern on a substrate. Bruck ¶¶ 2, 8, 9. Thus, for similar reasons as discussed above with respect to Jørgensen and Fan, we are of the view that Appeal 2021-000323 Application 15/462,610 19 Bruck is in the same field of endeavor as Appellant’s claims, and is also reasonably pertinent to the problem with which Appellant is concerned. Obviousness We are not persuaded by Appellant’s argument that because Bruck’s substrate is grounded for deposition of electrostatically charged particles, such would change the principle of operation of Pascall. Appeal Br. 65. Similar to our discussion above with respect to the combination of Pascall, Jørgensen, Fan, and Melcher, the Examiner’s combination does not rely on the use of electrostatically charged particles, but, rather, Bruck’s disclosure that in additive manufacturing processes, either the energy source, the substrate, or both may be moved to create patterned layers. Final Act. 10; Ans. 84; Bruck ¶¶ 24, 26. Thus, we are not persuaded by Appellant’s arguments that the Examiner’s rejection is based on hindsight, or lacks sufficient reasoning. Appeal Br. 66-67. We are also not persuaded by Appellant’s argument that Melcher does not disclose the cathode may move in an X-Y plane or the combination of Pascall and Melcher would impermissibly change Pascall’s principle of operation, because Pascall’s deposition electrode only moves in the z- direction. Appeal Br. 68-71. Melcher discloses alternative techniques for exposing a predetermined portion of the cathode to the beam. Melcher discloses angular rotation of the scanning mirror or moving the cathode allows a predetermined portion of the cathode to be exposed to the beam. Melcher, col. 3, ll. 33-39. Thus, Melcher recognizes that in order to produce patterned surfaces, both the light source and the surface may be moved to target the desired portion of the surface. Appeal 2021-000323 Application 15/462,610 20 In the context of applying such concepts to Pascall’s additive process, one of ordinary skill in the art would have understood that such would have entailed moving the deposition electrode in the X-Y direction in order to apply the mask free technique of Melcher thereto. We do not view such a modification as impacting Pascall’s disclosure that the deposition electrode moves in the z direction, as this aspect would still be desired for building the 3D successive layer structure. In other words, movement of the deposition electrode in the X-Y direction would affect the particular pattern of an individual layer without changing the distance between the deposition front and counter electrode, while movement of the deposition electrode in the Z direction would allow for the 3D additive structure to be built. Contrary to Appellant’s arguments, the Examiner’s combination does not involve substituting Melcher’s cathode in Pascall’s system. Rather, the Examiner’s combination relies on the alternative and/or additional ability to modify Pascall’s deposition electrode such that it is movable in the X-Y direction in order to allow for the production of a patterned surface. As such, we are not persuaded by Appellant’s arguments that the Examiner’s rationale is based on insufficient reasoning or improper hindsight. Appeal Br. 71-72. Appellant’s additional arguments that the Examiner’s reasoning would not produce a successful result (Appeal Br. 66-68, 72-73) are essentially based on the alleged deficiencies in combining Pascall with Bruck or Melcher discussed above, and similar to our discussion above with respect to claim 1, Appellant does not address the Examiner’s rejection as a whole or provide sufficient evidence beyond mere attorney argument as to the alleged deficiencies in the patterning process that would be present if Appeal 2021-000323 Application 15/462,610 21 Pascall and Bruck or Melcher would be combined. As a result, we are not persuaded by Appellant’s arguments. Accordingly, we affirm the Examiner’s rejection of claim 16. Claim 17 Claim 17 depends from claim 16 and recites that the mechanism for directing light onto the photoconductive electrode “is configured to direct the light on a single spot of the fixed photoconductive electrode.” Appeal Br. 92. Appellant contends the Examiner has not provided sufficient reasoning to support the position that modifying Pascall with Melcher would have rendered claim 17 obvious. Appeal Br. 74-77. We are not persuaded by this argument. As the Examiner points out, Melcher expressly discloses beams that form a spot on the substrate. Ans. 92, citing Melcher col. 5, ll. 5-14; col. 6, ll. 11-20. Although we recognize that the Examiner applied the concepts of Melcher to the system of Pascall, we are not persuaded that the modification alone would be reason for one of ordinary skill in the art not to reasonably expect a spot to form. That is, Melcher discloses the cathode is immersed in electrolyte, and the beam still produces a spot on the cathode. Melcher, col. 5, ll. 5-14, col. 6, ll. 5-20. In view of this evidence, Appellant has not sufficiently explained why one of ordinary skill in the would not have reasonably expected such a spot would not also be formed on Pascall’s deposition electrode when a focused light source is applied to the backside of the photoconductive electrode therein and projects through the suspension of particles between the photoconductive electrode and deposition electrode. See Pascall 264, Experimental. Appeal 2021-000323 Application 15/462,610 22 Accordingly, we affirm the Examiner’s rejection of claim 17. As a result, we find it unnecessary to address Appellant’s additional arguments with respect to Rejection 6, the Examiner’s rejection of claims 17-20 as obvious over Pascall, Bruck, Melcher, Jørgensen, and Fan. Appeal Br. 77-81. Rejections 3-5 Claims 3, 20, and 30, the subject of Rejections 3-5, depend from claims 1 and 16. Appellant relies on the dependencies of these claims for patentability. Appeal Br. 87-88. Accordingly, we affirm Rejections 3-5 for similar reasons as discussed above for Rejections 1 and 2. Rejection 7 Claims 2, 21, and 22, depend directly or indirectly from claim 1. The Examiner rejected claims 2, 21, and 22 as obvious over Pascall, Jørgensen, Fan, and Melcher, further in view of Higuchi or Andou. Final Act. 15-17. Claim 2 Claim 2 recites: A system as recited in claim 1, wherein the photoconductive electrode is configured to move in the x direction and/or the y direction, wherein the mechanism for directing the light onto the photoconductive electrode is configured to cause the light to follow the movement of the photoconductive electrode. The Examiner’s Rejection The Examiner found that Pascall fails to disclose the limitations of claim 2. Final Act. 15. The Examiner found Higuchi discloses a moving Appeal 2021-000323 Application 15/462,610 23 anode (counter electrode) that is smaller than the cathode and Andou discloses a counter electrode that may be moved to any position relative to a workpiece to form any pattern. Final Act. 15-16. The Examiner determined that it would have been obvious to have modified the prior art systems to decrease the size of the anode and reduce the time for designing and manufacturing the anode. Id. at 16. The Examiner determined that because the counter electrode/photoconductive electrode and light would move to form the desired pattern, the light would follow the movement of the photoconductive electrode as recited in claim 2. Id. The Examiner made similar determinations with respect to Andou. Id. at 16-17. Appellant’s Arguments Appellant contends that the Examiner has not provided sufficient reasoning for modifying the combination of references so that the light would follow the movement of the photoconductive electrode. Appeal Br. 33-34, 38. Appellant argues Pascall’s disclosure of reusing a photoconductive electrode relates to the number of photoconductive electrodes and not to the size of the photoconductive electrode. Id. at 34; see id. at 45. Appellant argues the Examiner has failed to provide sufficient reasoning as to how Higuchi would be modified to work with the other references applied against claim 1, from which claim 2 depends, to produce a successful result. Id. at 35-37. Appellant makes similar arguments with respect to the Examiner’s findings regarding Andou’s counter electrode. Id. at 37-41. Discussion We are not persuaded by Appellant’s arguments. Higuchi discloses an electroplating apparatus, where the area of the anode portion (counter Appeal 2021-000323 Application 15/462,610 24 electrode) can be decreased in order to decrease the time required for designing and manufacturing. Higuchi ¶¶ 2, 99. Andou discloses a counter electrode with a minute tip that may be used to electrochemically form patterns. Andou ¶¶ 8, 13, 16, 21. We are of the view that these disclosures provide sufficient support for the Examiner’s position that when Pascall is modified with Jørgensen, Fan, or Melcher, it would have been obvious to one of ordinary skill in the art to have reduced the size of the photoconductive counter electrode, in order to have reduced the time and costs of manufacturing the photoconductive electrode. In this regard, we do not find the Examiner’s position to be inconsistent with Pascall’s disclosure that “the photoconductive electrode is expensive, and it is desirable to reuse it.” Pascall 262. That is, Appellant has not sufficiently explained why the size of the photoconductive electrode itself would not contribute to the cost of manufacture and provide a reason for one of ordinary skill in the art to have reduced its size. We are also not persuaded by Appellant’s arguments that it would not have been obvious to have configured the mechanism for directing light to cause the light to follow the movement of the photoconductive electrode. In particular, we do not agree with Appellant’s characterization of the Examiner’s position as being based on inherency. Rather, the Examiner’s position is based on the combined teachings of the prior art where in order to implement a smaller photoconductive electrode consistent with the disclosures in Higuchi or Andou to the combined teachings of the prior art, the mechanism for directing light would have been configured to follow the photoconductive electrode in order to create the conditions necessary for Appeal 2021-000323 Application 15/462,610 25 deposition in the form of a pattern on the deposition electrode. See Ans. 53. In view of this discussion, we are not persuaded by Appellant’s argument that one of ordinary skill in the art would not have had a reasonable expectation that the combination proposed by the Examiner would have been successful in producing a patterned deposit. As a result, we affirm the Examiner’s rejection of claim 2. Claim 21 Claim 21 depends from claim 1, and further recites “wherein a size of the photoconductive electrode is smaller than a size of the deposition electrode.” Appellant relies on similar arguments for claim 21 as discussed above for claim 2. Appeal Br. 42-44. Accordingly, we affirm the Examiner’s rejection of claim 21 for the reasons discussed above in claim 2. Claim 22 Claim 22 depends from claim 21, and further recites “wherein the size of the photoconductive electrode is up to 90% smaller than the size of the deposition electrode.” The Examiner found Higuchi discloses the anode area is a variable that achieves the recognized result of affecting the time required for designing and manufacturing the anode, and as such, the anode area is a result effective variable. Final Act. 17. The Examiner determined it would have been obvious to have routinely experimented with the photoconductive electrode area in order to reduce the time required for designing and manufacture of the photoconductive electrode. Id. The Examiner also Appeal 2021-000323 Application 15/462,610 26 determined claim 22 recites a change in proportion, which would have been obvious. Id. at 18. Appellant relies on similar arguments with respect to claims 2 and 21, and the additional argument that Higuchi is silent as to the actual size of the anode or relative size to a cathode and Pascall does not disclose the size of the photoconductive electrode such that the relative size of the photoconductive electrode recited in claim 22 has not been recognized as a result-effective variable. Appeal Br. 46-47. We are not persuaded by Appellant’s argument because, as the Examiner points out, Higuchi does expressly disclose the anode area is a variable that affects the time required for designing and manufacturing the anode. Ans. 64, citing Higuchi ¶ 99. Thus, in considering the application of Higuchi to Pascall’s photoconductive electrode, we are of the view that one of ordinary skill in the art would have recognized the size of the photoconductive electrode as a result effective variable. In this regard, we observe the Specification does not assign any particular criticality to the size of the photoconductive electrode. Spec. ¶ 69. Accordingly, we affirm the Examiner’s rejection of claim 22. Rejection 8 Claims 25 and 26 contain similar limitations as discussed above for claims 21 and 22. Appellant relies on the arguments made for claims 21 and 22 as a basis for the patentability of claims 25 and 26. Appeal Br. 81-83. Accordingly, for the reasons discussed above with respect to claims 21 and 22 in conjunction with Rejection 7, we affirm the Examiner’s rejection of claims 25 and 26. Appeal 2021-000323 Application 15/462,610 27 Rejection 9 Claim 23 recites: A system as recited in claim 1, wherein the chamber includes a bath, wherein the bath has a first solution for electrophoretic deposition on the deposition electrode and a second solution for electroplating on the deposition electrode. The Examiner found Pascall does not explicitly disclose a bath that has a first solution for electrophoretic deposition or a second solution for electroplating on the deposition electrode. Final Act. 18-19. The Examiner found Yoshida or Niksa discloses a chamber used for electrophoretic deposition may also be used for electroplating. Id. at 19. The Examiner found Cohen discloses a series of operations involving separate selective electroplating and selective electrophoretic deposition. Id. The Examiner determined it would have been obvious to have added Cohen’s electroplating baths using the same chamber used with electrophoretic deposition as taught by Yoshida or Niksa in order to efficiently make structure for use in a variety of fields as disclosed in Cohen. Id. The Examiner additionally determined it would have been obvious to have combined equivalents for the same purpose in view of Cohen’s disclosure that electroplating and electrophoretic deposition are equivalent electrodepositing methods and would have provided added flexibility to the methods. Ans. 69-70. Appellant argues none of Yoshida, Niksa, or Cohen discloses a first solution for electrophoretic deposition and a second solution for electroplating as required in claim 23. Appeal Br. 49. Appellant contends the Examiner has not provided an explicit analysis as to why the references Appeal 2021-000323 Application 15/462,610 28 would be combined as in the rejection with a reasonable expectation of success. Id. at 50-52. We are not persuaded by Appellant’s arguments. Appellant’s arguments fail to consider the Examiner’s rejection as a whole and the specific articulation of why the subject matter in claim 23 would have been obvious as discussed above. In this regard, Yoshida discloses an apparatus for electrochemical treatment that may be used for electroplating or other types of electrochemical treatment including electrophoretic coating. Yoshida ¶¶ 1, 87, 369. Yoshida discloses mutually different kinds of electrolytic solutions may be used and supplied to a vessel via different valves. Id. ¶¶ 230, 237, 277. Niksa discloses an electrolytic cell that can be used for electroplating or electrophoresis. Niksa, col. 3, ll. 1-22. Cohen also discloses electrochemical fabrication methods to produce structures using a plurality of adhered layers. Cohen ¶¶ 34, 35. Cohen discloses different materials may be used in each layer and the deposition method may be electroplating or electrophoretic deposition. Id. ¶¶ 74, 75, 87, 108, 109. In view of these disclosures, we find that the preponderance of the evidence supports the Examiner’s position that it would have been obvious to have combined electrophoretic deposition and electroplating methods to apply layers of different composition to a substrate for added flexibility in constructing 3D objects. Because such a combination would include different solutions depending on the specific deposition method, we are of the view that employing a first solution for electrophoretic deposition and a second solution for electroplating as recited in claim 23 would have been obvious as determined by the Examiner. Appeal 2021-000323 Application 15/462,610 29 Regarding claim 24, which depends from claim 23 and further recites a bath chamber, Appellant’s arguments essentially rely on the same arguments made for claim 23, with the additional statement that HU does not remedy the deficiencies discussed with respect to claim 23. Appeal Br. 52- 55. Accordingly, we are not persuaded the Examiner erred in rejecting claim 24 for the similar reasons as discussed with respect to claim 23. Rejection 10 For claims 27 and 28, the subject of Rejection 10 and which contain similar limitations as claims 23 and 24, Appellant relies on their arguments made for claims 23 and 24. Appeal Br. 83-84. Accordingly, we are not persuaded by Appellant’s arguments for the reasons discussed above with respect to claims 23 and 24, the subjects of Rejection 9. Appeal 2021-000323 Application 15/462,610 30 DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 3-5, 29, 30 103 Pascall, Jørgensen, Fan, Melcher 1, 3-5, 29, 30 16, 17, 19 103 Pascall, Bruck, Melcher 16, 17, 19 3 103 Pascall, Jørgensen, Fan, Melcher, Holmboe 3 20 103 Pascall, Bruck, Melcher, Holmboe 20 30 103 Pascall, Melcher, Jørgensen 30 17-20 103 Pascall, Bruck, Melcher, Jørgensen, Fan, Melcher 17-20 2, 21, 22 103 Pascall, Jørgensen, Fan, Melcher, Higuchi, Andou 2, 21, 22 25, 26 103 Pascall, Bruck, Melcher, Higuchi, Andou 25, 26 23, 24 103 Pascall, Jørgensen, Fan, Melcher, Cohen, Yoshida, Niksa, HU 23, 24 27, 28 103 Pascall, Bruck, Melcher, Cohen, Yoshida, Niksa, HU 27, 28 Overall Outcome 1-5, 16-30 Appeal 2021-000323 Application 15/462,610 31 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