DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 2/9/2026 has been entered.
Claim Interpretation
Claim 1 recites “for use in a lighting device” in the preamble but do not incorporate the 3D produced component into a lighting device within the body of the claim. This language constitutes intended use and the product must be capable of being used in a lighting device but the prior art does not have to positively recite that the 3D printed component is incorporated into a lighting device.
Claim 1 recites “second shape/component for the lighting device” in the body of the claim at lines 9-10 & 13. The use of “/” between the words shape and component are being interpreted as an abbreviation for “and/or” and either a second shape, a component for the lighting device or a combination of the two will be considered to read on the limitation.
Claims 1 recites the term “component for a lighting device” which is broadly disclosed as:
Said method of producing a component for use in a lighting device results in said 3D-printed component for use in a lighting device. Such a component may comprise a complicated shape with a single or a plurality of curvatures due to optical, structural, thermal, electronic or aesthetic requirements. In some examples, said component may be one of (or may be part of one of) a lamp, a reflector, a cover, a light guide, a blind, a light engine, a heat sink, a cable guide, a lens, a substrate accommodating electronics, a collimator, a connector, a luminaire housing or a luminaire. Said lighting device may be a luminaire, a lamp, a light pole, an electronics device comprising a light source, or a lighting device comprised within a vehicle. (Specification, pg 3)
Thus, it is apparent that “component for use in a lighting device” is not limited to a component of a lighting device but can be anything that is attached to a lighting device or related to lighting as well.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-6, 8, 11, & 16-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1: Claim 1 recites the limitation “wherein the component remains in the second shape or returns to the first shape after removal of the flexible substrate” which renders the claim indefinite because it is unclear if “after removal of the flexible substrate” is intended to modify both clauses or just the later and thus the claim is indefinite because one of ordinary skill would not be able to ascertain the metes and bounds of the claim.
For the purpose of examination, the final wherein clause will be interpreted as including the component remains in the second shape when the flexible substrate remains, the component remains in the second shape when the flexible substrate is removed, or the component returns to the first shape after the flexible substrate is removed.
Claims 2-6, 8, 11, & 16-20: Claims 2-6, 8, 11, & 16-20 are rejected as being indefinite because they depend from claim 1 and do not remedy the issues of claim 1.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-6, 11, & 16-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tibbits et al. (US PG Pub 2016/0101594; hereafter ‘594).
Claim 1: ‘594 is directed towards a method of 3D printing producing a component (abstract & ¶s 66-67) for use in a furniture or building materials, the component comprising a removable flexible substrate (the substrate is removable because one can remove it) having a stiffness and a first shape (abstract), and a polymer material (abstract), wherein the 3D printing produced component is capable of use in a lighting device because it is a flexible fibrous structure with a weave pattern and could be used for a light shade of a lamp, the method comprising:
3D-printing the polymer material onto the removable flexible substrate in a printing structure (abstract & ¶ 66-67 & 99);
wherein the printing structure causes the first shape of the flexible substrate to change into a second shape/component, after printing (abstract & ¶ 66-67 & 99), and
wherein the component remains in the second shape (the second shape is formed and thus it is inherent that the component remains in the second shape at least for a period of time and reads on the limitation).
Claim 2: The method according to claim 1, wherein the bending force leads to elastic or plastic deformation of the flexible substrate (the underlying substrate provides elasticity and strength, ¶ 20, and the substrate is bent by a bending forced applied by the printed structure, abstract, therefore it is apparent that the bending force leads to at least elastic deformation of the flexible substrate).
Claim 3: The second shape of the flexible substrate comprises a bending angle of at least 5 degrees in respect to the first shape of the flexible substrate (see Fig. 13A & B).
Claim 4: The method further comprising applying a thermal treatment for shrinking (¶ 18).
Claim 5: The printing structure comprises a patterned distribution of polymeric material (abstract).
Claim 6: The polymer material is polyethyleneterephthalate (¶ 64).
Claim 11: The printing step comprises printing an electrically conductive track (¶s 70-71). The Examiner notes that “for powering electronics” is intended use and the claim does not require that the printed pattern power electronics but instead it must be capable and given that the track is electrically conductive it is apparent that the limitation is met.
Claim 16: The printing structure causes the first shape of the flexible substrate to change into a desired second shape (abstract).
Claim 17: Printing the polymer material onto the flexible substrate includes providing grooves in the printed polymer material (the polymer material is applied by fused deposition modeling which inherently forms a grooved structure between each line of deposited material, ¶ 99).
‘594 teaches the claimed invention but fails to explicitly teach that the grooves in the printed material help cool an area or volume of the printing structure, thereby providing a higher bending force on a surface area of the flexible substrate. Since the same materials are used and similar grooves are formed; it is reasonable to presume the grooves of ‘594 would also help cool an area or volume of the printing structure, thereby providing a higher bending force on a surface area of the flexible substrate. Support for said presumption is found in the use of like materials and like processes which would result in the claimed property.
The burden is upon the Applicant to prove otherwise. In re Fitzgerald 205 USPQ 594. In addition, the presently claimed properties would obviously have been present once the product is provided. Note In re Best, 195 USPQ at 433, footnote 4 (CCPA 1977).
Claim 18: Printing the polymer material onto the flexible substrate includes providing a perforation in the printed polymer material (the printed material is noncontinuous and thus has a perforation (see Figs. 2E & 16).
‘594 teaches the claimed invention but fails to explicitly teach that the perforations accumulate internal stress in an area around the perforation, thereby contributing to the bending force exerted on a surface area of the flexible substrate. Since the same materials are used and perforations are formed; it is reasonable to presume the perforations accumulate internal stress in an area around the perforation, thereby contributing to the bending force exerted on a surface area of the flexible substrate. Support for said presumption is found in the use of like materials and like processes which would result in the claimed property.
The burden is upon the Applicant to prove otherwise. In re Fitzgerald 205 USPQ 594. In addition, the presently claimed properties would obviously have been present once the product is provided. Note In re Best, 195 USPQ at 433, footnote 4 (CCPA 1977).
Claim 19: The printing the polymer material onto the substrate includes providing a print characteristic of a patterned distribution in the printed polymer material to such that the printed pattern causes the flexible substrate to change into the desired second shape during shrinking (see Fig. 2E & 2G).
Claim 20: The flexible substrate returns to the first shape when the polymer material is removed based on the amount of bending force exerted (the bending is reversible; ¶ 65).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over ‘594 as applied to claim 1 above, and further in view of Anderson et al. (US PG Pub 2016/0201871; hereafter ‘871).
Claim 8: As discussed above, ‘594 teaches that the woven material is suitable for use in furniture.
‘594 does not teach that the furniture comprises a light source.
However, ‘871, which is directed towards lamp shades (title) teaches that lamp shades are attached to a lamp which comprises a light bulb (i.e. a lamp shade is connected to a light source and thus the lamp shade can be considered to comprise a light source; ¶ 1) and further discloses that lamp shades can be formed from fabric with a polymeric base material (¶ 1).
The Examiner notes that a lamp is a piece of furniture.
It would have been obvious to one of ordinary skill in the art at the time of filing to select a lamp as the particular piece of furniture because lamps and lamp shades are known types of furniture of which polymeric fabric is used in and the use of the shape change fabric of ‘871 would have predictably been suitable as a lampshade.
Response to Arguments
Applicant's arguments filed 2/9/26 have been fully considered but they are not persuasive.
In regards to applicant’s argument that the amendment to claim 1 reciting “3D printing the polymer material onto a removable flexible substrate in a printing structure…wherein the component remains in the second shape or returns to the first shape after removal of the flexible substrate”; the Office does not find this argument as discussed above because:
recitation of “a removable substrate” does not require that the substrate is removed but instead that is can be removed and the substrate of ‘594 can be removed and thus reads on the limitation;
clause “wherein the component returns to the first shape after removal of the flexible substrate” is a contingent limitation, the claim does not recite removal of the substrate and process claims are only limited by the required steps and prior art only has to meet the required limitations. See MPEP 2111.04;
the clause “wherein the component remains in the second shape or returns to the first shape after removal of the flexible substrate” is ambiguous as discussed above and as noted above, the component of ‘594 remains in the second shape at least for a period of time and thus reads on the limitation.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES M MELLOTT whose telephone number is (571)270-3593. The examiner can normally be reached 8:30AM-4:30PM CST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached at 571-272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/James M Mellott/Primary Examiner, Art Unit 1759