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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MARKFORGED INC.,
`Petitioner
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`v.
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`CONTINUOUS COMPOSITES, INC.,
`Patent Owner.
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`Patent No. 9,987,798
`
`IPR Case Nos.: IPR2022-01218
`IPR2022-01220
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`DECLARATION OF SYLVIA D. HALL-ELLIS, PH.D.
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`Page 1 of 93
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`I.
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`INTRODUCTION
`1.
`My name is Sylvia D. Hall-Ellis. I have been retained as an expert by
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`Markforged, Inc. (collectively, “Petitioner”).
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`2.
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`I submit this Declaration to provide my expert opinions regarding the
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`date of public availability or accessibility of three publications attached hereto as
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`Exhibit 1007: Solid Freedom Fabrication of Continuous Fiber Reinforced
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`Composite Materials, a Ph.D. dissertation written by Erjian Ma, which was
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`published in the summer of 2001 by Auburn University; Exhibit 1009: New
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`Metal/Polymer Composites for Fused Deposition Modelling Applications, a Ph.D.
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`dissertation written by Moustafa Nikzad, which was published in the spring of 2011
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`by Swinburne University of Technology; and Exhibit 1010: UK Patent Application
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`GB 2213793A, dated August 23, 1989. My Declaration sets forth my opinions in
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`detail and provides the bases for my opinions.
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`3.
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`I reserve the right to supplement or amend my opinions, and bases for
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`them, in response to any additional evidence, testimony, discovery, argument, and/or
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`other additional information that may be provided to me after the date of this
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`Declaration.
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`4.
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`I am being compensated for my time spent working on this matter at
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`my normal consulting rate of $325 per hour, plus reimbursement for any additional
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`reasonable expenses. My compensation does not in any way depend on the content
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`of this Declaration, the substance of my opinions, or the outcome of this litigation.
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`I have no interest in this proceeding or in any of the parties.
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`5.
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`All of the materials that I considered are discussed explicitly in this
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`Declaration.
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`II. QUALIFICATIONS & BACKGROUND
`6.
`I am currently an Adjunct Professor in the School of Information at San
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`José State University. I obtained a Master of Library Science from the University
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`of North Texas in 1972, a Master of Professional Studies from the University of
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`Denver in 2014, and a Ph.D. in Library Science and Information Science from the
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`University of Pittsburgh in 1985. Over the last fifty years, I have held various
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`positions in the field of library and information resources. I was first employed as a
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`librarian in 1966 and have been involved in the field of library sciences since,
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`holding numerous positions.
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`7.
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`I am a member of the American Library Association (ALA) and its
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`Association for Library Collections & Technical Services (ALCTS) Division, and I
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`served on the Committee on Cataloging: Resource and Description (which wrote the
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`new cataloging rules) and as the chair of the Committee for Education and Training
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`of Catalogers and the Competencies and Education for a Career in Cataloging
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`Interest Group. I also served as the founding Chair of the ALCTS Division’s Task
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`Force on Competencies and Education for a Career in Cataloging. Additionally, I
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`have served as the Chair for the ALA Office of Diversity’s Committee on Diversity,
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`as a member of the REFORMA National Board of Directors, and as a member of the
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`Editorial Board for the ALCTS premier cataloging journal, Library Resources and
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`Technical Services. Currently I serve as a Co-Chair for the Library Research Round
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`Table of the ALA.
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`8.
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`I have also given over one hundred presentations in the field, including
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`several on library cataloging systems and Machine-Readable Cataloging (MARC)
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`standards. My current research interests include library cataloging systems,
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`metadata, and organization of electronic resources.
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`9.
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`I have previously served as an expert witness in approximately 600
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`cases over the course of the last decade. I have extensive experience opining on the
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`publication status of printed references in patent litigations in federal district courts
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`and in proceedings before the Patent Trial and Appeal Board. I have been deposed
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`twenty-one times. I have not testified at trial.
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`10. During my career I have served as a Dissertation Committee Chair ten
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`times, as a Dissertation Committee member three times, and as a Thesis (Capstone)
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`Chair fourteen times. My personal experiences writing a master’s thesis and Ph.D.
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`dissertation and those working with students as a tenured faculty member have
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`provided me with in-depth experience and detailed knowledge of the standardized
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`processes that students follow as part of the culminating process to earn a graduate
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`degree.
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`11. The steps that a student takes in pursuit of a graduate degree are
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`predictable and include a predefined number.1 The Dissertation Chair is responsible
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`for guiding the student and overseeing formal coursework; reviewing research
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`activities; the preparation and defense of the proposal; the selection of committee
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`members; drafting the dissertation document; ensuring the completion of
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`requirements for binding; filing in the institutional digital repository and library; and
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`submitting paperwork with the Graduate Office before specified deadlines in
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`anticipation of conferring the degree. While there are materials that one can read
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`about the process, there is no substitute for going through the process personally,
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`serving as a committee member, and chairing the committee for a student.
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`Understanding the intricacies of the process is essential to determine institutional
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`documents, deadlines, and requirements required at institutions other than the one at
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`which someone works.
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`12. My full curriculum vitae is attached hereto as Exhibit 1.
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`III.
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`SCOPE OF OPINIONS
`13.
`I am not an attorney and will not offer opinions on the law. I am,
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`however, rendering my expert opinion on the dates of public accessibility of the
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`references discussed herein, including when and how each reference was
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`1 https://study.com/how_to_get_your_phd.html
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`disseminated or otherwise made available to persons interested and ordinarily skilled
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`in the subject matter or art, exercising reasonable diligence. In particular, I am
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`rendering opinions on how such persons could have located, before August 29, 2012,
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`the references discussed below.
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`IV. LEGAL STANDARDS
`14.
`I am informed by counsel and understand that a printed publication is
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`deemed publicly accessible as of the date it was disseminated or otherwise made
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`available such that a person interested in and ordinarily skilled in the relevant subject
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`matter could locate it through the exercise of ordinary diligence.
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`15.
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`I also understand
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`that public accessibility
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`is a case-by-case
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`determination based on circumstances particular to an individual publication. I
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`further understand, however, that a printed publication is rendered “publicly
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`accessible” if a person of ordinary skill in the art, exercising reasonable diligence,
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`would have located the publication, or would have known to look for it. I further
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`understand that a printed publication is thus rendered “publicly accessible” if it is
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`filed in an online database, like ProQuest’s Dissertations and Theses, that is
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`cataloged and indexed such that a person interested in the relevant subject matter
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`could locate it (i.e., I understand that cataloging and indexing by an online database
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`is sufficient, though there are other ways that a printed publication may qualify as
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`publicly accessible). One manner of sufficient indexing is indexing according to
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`subject matter category. I understand that the cataloging and indexing by a database
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`of a single instance of a particular printed publication is sufficient, even if that
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`database is hosted by a foreign country. I understand that, even if access to a
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`database is restricted, a printed publication that has been cataloged and indexed
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`therein is deemed publicly accessible if the public concerned with the relevant
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`subject matter would know of the printed publication. I also understand that the
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`cataloging and indexing of information that would guide a person interested in the
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`relevant subject matter to the printed publication, such as the cataloging and
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`indexing of an abstract for the printed publication, is sufficient to render the printed
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`publication publicly accessible.
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`16.
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`I understand that routine business practices, such as general database
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`and library cataloging and indexing practices, can be used to establish an
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`approximate date on which a printed publication became publicly accessible.
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`V.
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`PERSONS OF ORDINARY SKILL IN THE ART
`17.
`I am informed by counsel that the subject matter of this proceeding
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`relates to additive manufacturing of three-dimensional objects.
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`18.
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`I am informed by counsel that a “person of ordinary skill in the art at
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`the time of the inventions” is a hypothetical person who is presumed to be familiar
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`with the relevant field and its literature at the time of the inventions. This
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`hypothetical person is also a person of ordinary creativity, capable of understanding
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`the scientific principles applicable to the pertinent field.
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`19.
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`I am informed by counsel that Petitioners’ expert has opined that
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`persons of ordinary skill in this subject matter or art would have had at least (1) a
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`master’s degree in mechanical engineering, materials science, or a related degree,
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`and at least 3-5 years of experience in composite materials or additive
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`manufacturing; or (2) a bachelor’s degree in mechanical engineering, materials
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`science, or a related degree, and at least 5-6 years of experience in composite
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`materials or additive manufacturing. I understand that a person with less education,
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`but more relevant practical experience may also meet this standard.
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`20.
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`It is my opinion that such a person would have been engaged in
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`research, learning, study, and practice in the field, and possibly formal instruction so
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`that bibliographic resources relevant to his or her research would be familiar. Before
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`August 29, 2012, such a person would have had access to an array of long-
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`established print resources in mechanical and electrical engineering as well as online
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`resources providing indexing information, abstracts, and full text services for
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`computer science.
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`VI. LIBRARY PROFESSIONAL PRACTICES
`21.
`In preparing this Declaration, I used authoritative databases, including
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`the OCLC bibliographic database, the Library of Congress Online Catalog, the
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`Library of Congress Subject Authorities, and ProQuest’s Dissertations and Theses,
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`and the UK’s Online Patent Information and Document Inspection Service database,
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`to confirm citation details of the various publications discussed.
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`22.
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`Indexing. A researcher may discover material relevant to his or her
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`topic in a variety of ways. One common means of discovery is to search for relevant
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`information in an index of periodical and other publications. Having found relevant
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`material, the researcher will then normally obtain it online, look for it in libraries, or
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`purchase it from the publisher, a bookstore, a document delivery service, or other
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`provider. Sometimes, the date of a document’s public accessibility will involve both
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`indexing and library date information. However, date information for indexing
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`entries is often unavailable. This is especially true for online indices.
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`23.
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`Indexing services use a wide variety of controlled vocabularies to
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`provide subject access and other means of discovering the content of documents.
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`The Library of Congress Subject Authorities includes standard forms of terms and
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`cross references that are included in bibliographic records. Subject headings are
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`terms that an individual seeking a document regardless of format can enter in the
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`search bar of the online catalog. Subjects also connect an authenticated term (one
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`included in the Library of Congress subject headings list) with related, broader, and
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`narrower terms.
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`24. Online indexing services commonly provide bibliographic information,
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`abstracts, and full-text copies of the indexed publications, along with a list of the
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`documents cited in the indexed publication. These services also often provide lists
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`of publications that cite a given document. A citation of a document is evidence that
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`the document was publicly available and in use by researchers no later than the
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`publication date of the citing document. Prominent indexing services include
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`Scopus, the IEEE Xplore database, the ACM Digital Library, Google Scholar, the
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`Internet Archive, and ProQuest databases for dissertations, theses, journals, and
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`digital reference materials.
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`25. Databases and digital repositories like those mentioned in paragraph 25
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`provide search capabilities through title, author, subject, keyword, and standard
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`numbers (ISBN and ISSN) that enable information professionals and individuals to
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`locate books, articles, conference papers, and other publications. The databases and
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`digital repositories include retrospective collections of scanned or digitized materials
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`and are updated regularly. Collegiate and university studies at the undergraduate and
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`graduate level require that students develop familiarity and proficiency using
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`indexing services, databases, and digital repositories.
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`VII. PUBLICATION
`Publication 1, Exhibit 1007, Solid Freedom Fabrication of
`A.
`Continuous Fiber Reinforced Composite Materials by Erjian Ma
`(“Ma”)
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`26. Attached hereto as Exhibit 1007 is a dissertation, Solid Freedom
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`Fabrication of Continuous Fiber Reinforced Composite Materials by Erjian Ma
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`(hereafter “Ma”). Exhibit 1007 includes a true and correct copy of the title page,
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`table of contents, and text from the ProQuest2 database Dissertations and Theses.3
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`The dissertation title page shows a date of August 6, 2001. I obtained this
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`dissertation from UMI’s database Dissertations and Theses and made the copies
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`which comprise Exhibit 1007. Specifically, the text is complete; no pages are
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`missing, and the text on each page flows seamlessly from one page to the next;
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`further, there are no visible alterations to the document. Exhibit 1007 was found
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`within the custody of the custodian to whom the author granted permission to make
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`copies and reproductions. Exhibit 1007 is a true and correct copy in a condition that
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`creates no suspicion about its authenticity.
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`27. A dissertation exhibits the following characteristics: the dissertation is
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`attributed to a single creator or author (in this case Erjian Ma) who affixes a date of
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`creation (in this case August 6, 2001), recognizes a committee of three or more
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`faculty members with their affiliations (in this case Professors Bor. Z. Jang, Dan B.
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`Marghitu and Sabit Adanur), a list of scholarly references (in this case 76 references
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`2 ProQuest is the corporate global information-content and technology company
`founded as University Microfilms (UMI) in 1939. Over the last 80 years, the firm
`has grown through corporate acquisitions and product development to be a major
`supplier globally of databases and digital products (https://www.proquest.com/).
`3 https://about.proquest.com/en/products-services/pqdtglobal
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`in “References” on pages 221-227), and publishes the document through the higher
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`education institute conferring the doctoral degree (in this case the Department of
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`Mechanical Engineering at the Auburn University).
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`28. Attached hereto as Attachment 1a is a true and correct copy of the
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`online catalog record for this dissertation from the Auburn University Library. The
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`catalog record indicates that copies of the dissertation are located in the Main Library
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`and off-site in the Thesis Special Collection. I personally identified and retrieved
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`the library catalog record which is Attachment 1a.
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`29. Attached hereto as Attachment 1b is a true and correct copy of the
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`MARC record for the dissertation, Solid Freedom Fabrication of Continuous Fiber
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`Reinforced Composite Materials by Ma obtained from the OCLC bibliographic
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`database. I personally identified and retrieved the MARC record that is Attachment
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`1b. As previously noted, the library that created the record is recorded in field 040
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`with a unique library code. For Attachment 1b, that library code is “AAA,” which
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`means that the MARC record for this dissertation was created at the Auburn
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`University Library. As can be seen in the “Entered” field in the MARC record for
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`this exhibit, a cataloger at the Auburn University Library created OCLC record
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`number 48433505 on November 15, 2001.
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`30. Attachment 1b further includes an entry in field 050 (“TA418.9.C6 $b
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`M2 2001”)—as described above, this includes a subject matter classification number
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`consistent with the Library of Congress classification system (analogous to the
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`Dewey Decimal classification system). Attachment 1b includes three descriptor
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`terms reading “Fibrous composites” (see Attachment 1c, Library of Congress subject
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`heading sh85048037), “Composite materials” (see Attachment 1d, Library of
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`Congress subject heading sh85029397), and “Solid freeform fabrication” (see
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`Attachment 1e, Library of Congress subject heading sh93004626) in the 650 fields.
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`Thus, as of its cataloging, the publication corresponding to the MARC record
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`attached hereto as Attachment 1b was indexed by indexed according to its subject
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`matter by virtue of at least two independently sufficient classifications: the field 050
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`entry and the field 650 entries. Further, as of November 15, 2001, the MARC record
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`attached hereto as Attachment 1b was accessible through any library with access to
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`the OCLC bibliographic database or the online catalog at a library that added this
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`book to its collection, which means that the corresponding publication was publicly
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`available on or before that same date through any library with access to the OCLC
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`bibliographic database or through an individual library.
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`31. Attachment 1b indicates that the Ma dissertation as cataloged at the
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`Auburn University is currently available from that institution. In view of above, this
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`dissertation was publicly available no later than November 15, 2001, because by that
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`date it had been received, cataloged, and indexed at the Auburn University Library,
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`placed in the custody of UMI, and made part of the OCLC bibliographic database.
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`For these reasons, it is my opinion that Exhibit 1007 was published and accessible
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`to the public no later than November 15, 2001.
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`B.
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`Publication 2, Exhibit 1009, New Metal/Polymer Composites for
`Fused Deposition Modelling Applications by Mostafa Nikzad
`(“Nikzad”)
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`32. Attached hereto as Exhibit 1009 is a dissertation, New Metal/Polymer
`
`Composites for Fused Deposition Modelling Applications by Mostafa Nikzad
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`(hereafter “Nikzad”). Exhibit 1009 includes a true and correct copy of the title page,
`
`table of contents, and text from the Swinburne Research Bank4 at the Swinburne
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`University of Technology (Hawthorn, Melbourne, Australia). The dissertation title
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`page shows a date of May 2011. I obtained this dissertation from the Swinburne
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`Research Bank and made the copies which comprise Exhibit 1009. Specifically, the
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`text is complete; no pages are missing, and the text on each page flows seamlessly
`
`from one page to the next; further, there are no visible alterations to the
`
`document. Exhibit 1009 was found within the custody of the custodian to whom the
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`author granted permission to make copies and reproductions. Exhibit 1009 is a true
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`and correct copy in a condition that creates no suspicion about its authenticity.
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`33. A dissertation exhibits the following characteristics: the dissertation is
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`attributed to a single creator or author (in this case Mostafa Nikzad) who affixes a
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`4 https://researchbank.swinburne.edu.au/items/ffe96def-3bef-4387-9666-
`153a64e7d6d6/1/
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`date of creation (in this case May 2011), recognizes a committee of three or more
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`faculty members with their affiliations (in this case Professors S. H. Masood, Igor
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`Sbarski, and Andrew Groth), a list of scholarly references (in this case 324 references
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`in “References” on pages 214-236), and publishes the document through the higher
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`education institute conferring the doctoral degree (in this case the Department of
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`Engineering & Industrial Sciences at the Swinburne University of Technology).
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`34. Attached hereto as Attachment 2a is a true and correct copy of the
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`online catalog record for this dissertation from the Swinburne University of
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`Technology Library. The catalog record indicates that the dissertation is available
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`as an open access document from the Swinburne research Bank. I personally
`
`identified and retrieved the library catalog record which is Attachment 2a.
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`35. Attached hereto as Attachment 2b is a true and correct copy of the
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`MARC record for the dissertation, New Metal/Polymer Composites for Fused
`
`Deposition Modelling Applications by Nikzad obtained from
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`the OCLC
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`bibliographic database. I personally identified and retrieved the MARC record that
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`is Attachment 2b. As previously noted, the library that created the record is recorded
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`in field 040 with a unique library code. For Attachment 2b, that library code is
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`“LE0,” which means that the MARC record for this dissertation was created at the
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`Swinburne University of Technology Library. As can be seen in the “Entered” field
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`in the MARC record for this exhibit, a cataloger at the Swinburne University of
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`Technology Library created OCLC record number 742215971 on September 28,
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`2011.
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`36. Attachment 2b
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`includes five descriptor
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`terms reading “Fused
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`deposition,” “Manufacturing,” Metal/polymer composites,” “rapid prototyping,”
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`and “Rapid tooling” in the 653 fields. Thus, as of its cataloging, the publication
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`corresponding to the MARC record attached hereto as Attachment 2b was indexed
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`by indexed according to its subject matter by virtue of the field 653 entries. Further,
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`as of September 28, 2011, the MARC record attached hereto as Attachment 2b was
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`accessible through any library with access to the OCLC bibliographic database or
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`the online catalog at a library that added this book to its collection, which means that
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`the corresponding publication was publicly available on or before that same date
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`through any library with access to the OCLC bibliographic database or through an
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`individual library.
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`37. Attachment 2b indicates that the Nikzad dissertation as cataloged at the
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`Swinburne University of Technology Library is currently available from that
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`institution. In view of above, this dissertation was publicly available no later than
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`September 28, 2011, because by that date it had been received, cataloged, and
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`indexed at the Swinburne University of Technology Library, placed in the custody
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`of the Swinburne Research Bank, and made part of the OCLC bibliographic
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`database. For these reasons, it is my opinion that Exhibit 1009 was published and
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`accessible to the public no later than September 28, 2011.
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`Publication 3, Exhibit 1010, Method for Manufacturing a Three-
`C.
`Dimensionally Twisted Rotor Blade Airfoil, GB 2213793 (“Wöhrl”)
`38.
`Attached hereto as Exhibit 1010 is a UK patent application, Method
`
`for Manufacturing a Three-Dimensionally Twisted Rotor Blade Airfoil invented by
`
`Dr. Berhard Wöhrl and filed by MTU Motoren-und Turbinen-Union Müchen GmbH
`
`(hereafter “Wöhrl”). Exhibit 1010 includes a true and correct copy of the patent
`
`application from the UK Online Patent Information and Document Inspection
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`Service database.5 The first page shows a filing date of November 10, 1988, and a
`
`publication date of August 23, 1989. I obtained this patent from the Espacenet Patent
`
`Search website6 and made the copies which comprise Exhibit 1010.7 Specifically,
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`the text is complete; no pages are missing, and the text on each page flows
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`seamlessly from one page to the next; further, there are no visible alterations to the
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`document. Exhibit 1010 was found within the custody of the custodian to whom the
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`author granted permission to make copies and reproductions. Exhibit 1010 is a true
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`and correct copy in a condition that creates no suspicion about its authenticity.
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`5https://www.ipo.gov.uk/p-ipsum/Case/ApplicationNumber/GB8826325.6
`6https://worldwide.espacenet.com/searchResults?DB=EPODOC&PN=GB2213793
`&ST=advanced&compact=false
`7https://worldwide.espacenet.com/publicationDetails/originalDocument?FT=D&da
`te=19890823&DB=EPODOC&locale=&CC=GB&NR=2213793A&KC=A&ND=
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`Holdings: Solid freedom fabrication of con inuous fiber reinforced composite materials / Erjian Ma.
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`|a unmediated |2 rdamedia
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`|a volume |2 rdacarrier
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`|a Abstract.
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`|a Vita.
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`|a Thesis (Ph. D.)--Auburn University, 2001.
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`|a Includes bibliographical references (221-227).
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`|a qthes
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`|a Composite materials.
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`|a Fibrous composites.
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`|a Solid freeform fabrication.
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`0
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`|a Auburn University. |b Dissertations. |b Mechanical Engineering
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`948
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`994
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`852 0
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`852 0
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`|a wf:ff 11/15/01, ff (xpo, 11/15/01, )ff
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`|a E0 |b AAA
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`|a 1963989
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`|b olaf |h TA 418.9 .C6 M2 2001 |z Non-Circulating.
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`|b 8main,4th |h TA 418.9 .C6 M2 2001
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`https://catalog.lib.auburn.edu/vufind/Record/1963989#details
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`Mailing Address:
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`https://authorities.loc.gov/cgi-bin/Pwebrecon.cgi?AuthRecID=4681673...
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`URL: https://www.loc.gov/
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`Mailing Address:
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`Washington, DC 20540
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`LC control no.: sh 93004626
`LCCN Permalink: https://lccn.loc.gov/sh93004626
`HEADING: Solid freeform fabrication
`000 01685cz a2200337n 450
`001 4851548
`005 20160511060009.0
`008 930618i| anannbabn |a ana
`010 __ |a sh 93004626
`035 __ |a (DLC)sh 93004626
`035 __ |a (DLC)198233
`040 __ |a DLC |c DLC |d DLC
`150 __ |a Solid freeform fabrication
`450 __ |a Fabrication, Solid freeform
`450 __ |a Freeform fabrication, Solid
`450 __ |a Layered manufacturing (Materials processing)
`450 __ |a Manufacturing, Solid freeform
`550 __ |w g |a Computer integrated manufacturing systems
`550 __ |w g |a Three-dimensional printing
`670 __ |a Work cat.: 93-642852: Solid freeform fabrication symposium proceedings (a fully
`integrated approach to design, materials processing, and manufacturing)
`670 __ |a Engr. index: |b v. 89, Pt. IX, p. 8784, under Solid freeform fabrication (several
`articles)
`670 __ |a Engineering Village, viewed February 12, 2016 |b (Solid freeform fabrication
`redirects to: Layered manufacturing)
`670 __ |a Wkipedia, viewed February 12, 2016 |b (Solid freeform fabrication redirects to 3D
`printing; electron beam freeform fabrication and laser freeform fabrication are listed as
`subtypes)
`670 __ |a Inspec, viewed Feb. 12, 2016 |b (uncontrolled term: Laser solid freeform
`fabrication)
`670 __ |a Applied science and technology abstracts, viewed February 12, 2016 |b (both
`headings are controlled: Three-dimensional printing; Solid freeform fabrication
`675 __ |a ASTI; |a NASA; |a Web. 3
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`DISSERTATION
`New metal/polymer composites for fused deposition modelling applications
`Nikzad, Mostafa
`
`Swinburne University of Technology; 2011
`
`View Online
`Full text availability
`Link to Resource
`Details
`Title
`New metal/polymer composites for fused deposition modelling applications
`Author/Creator
`Nikzad, Mostafa
`Creation Date
`2011
`Publisher
`Swinburne University of Technology
`Description
`Fused Deposition M



