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 .
Response to Amendment
Applicant’s amendment to the claims filed August 7, 2026 has been entered. Claim 1 is currently amended. Claim 2 has been canceled. Claims 30, 31 and 33-57 remain withdrawn from further consideration. Claims 1, 3-5, 7-29, 32, 58 and 59 are under examination. It is noted that the status identifier of certain claims is incorrect (e.g. claims 24-26) and certain claims appear to be missing (e.g. claims 54-59) in the reply to the Notice of Non-Compliant Amendment. For the purposes of examination, it is understood these claims are intended to remain as previously presented and examined during the prosecution of the application (e.g. see that Status of the Claims submitted with the July 27, 2026 Remarks). Appropriate correction and clarification is required in response to this Office Action.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 3-5, 7-29, 32, 58 and 59 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of U.S. Patent No. 12,263,527. Although the claims at issue are not identical, they are not patentably distinct from each other
Regarding claim 1, claim 1 of the ‘527 patent claims a calculation device used in a manufacturing apparatus configured to produce a 3D manufactured object from a solidified layer formed by heating a layer-shaped material layer formed of a powder material by irradiation with an energy beam, the calculation device comprising: a detection unit configured to obtain a state of the material layer based on a shape of the formed material layer; and an output unit configured to output information on the state of the material layer obtained by the detection unit to set a manufacturing condition of the manufacturing apparatus. This is understood to substantially overlap/correspond with the scope of the claimed invention. The context of the ’527 claims, as written and as properly understood in light of the specification, are understood to be stating, at least implicitly, that the “state” which is being detected by the detection unit in the claims is the melt/unmelt state of the powder material such that the system can be operated as desired. Accordingly, the claims of the ‘527 patent are understood to, at least, render the “melted state” and “unmelted state” detected within the predetermined region of the instant claims by the detection unit, prima facie obvious. Further, the ‘527 patent claims a calculation device comprising a detection unit and an output unit. These units as configured are understood to be capable of obtaining and outputting the same information as the claimed detection and output units. Further, claim 1 claims a manufacturing condition including a scanning condition for an energy beam wherein the scanning condition includes a scanning pass of the energy beam. Further, claim 4 of the ‘527 patent claims a calculation unit and claim 17 claims shape data of a support portion is utilized to generate the change information. The claims of the ‘527 patent set forth a calculation device having a scope that overlaps the claimed calculation device.
As to the limitation in claim 59 that “the support portion being formed while producing the 3D manufactured object and being removed after producing the 3D manufactured object”, one having ordinary skill in the art would have understood or considered it prima facie obvious in view of the teaching of the ‘527 claims to have formed the support portion during production of the object and to have removed the support portion after producing the object as claimed, as this is either, at least implied in the recited language of the ‘527 claims or would have been implemented as a routine expedient in the art to produce an object that is properly supported during manufacture and that is separated from the support unit when completed and ready to be utilized as a finished object.
As to claims 2-5, 7-29, 32, and 58, claims 2-30 of the ‘527 patent, either alone or in reasonable combination, are understood to correspond with or render prima facie obvious the claims.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim Rejections - 35 USC § 103
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.
Claims 1, 3-5, 7-23, 25 and 32 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Niitani (WO 2017/163432).
Note: US 2018/0169951 is utilized as the English language equivalent of WO 2017/163432 in this Office Action.
Regarding claim 1, Niitani et al. teach a calculation device used in a manufacturing apparatus configured to produce a 3D manufactured object from a solidified layer formed by heating a powder material by irradiation with an energy beam (note: while Niitani et al. is understood to teach these limitations, it is noted that these limitations do not positively limit the scope of the claim as they are preamble limitations and the structural limitations set forth in the body of the claim are able to standalone; Figure 2 (200) (230) (240)), the calculation device comprising: a detection unit/data acquirer/camera (203)/sensor (204) configured to obtain/capable of obtaining a melted state of at least a part of a predetermined region including a melted portion/molten pool (250) in which the powder material melts by being heated by irradiation with an energy beam (Figure 2; paragraphs [0006]-[0020], [0029]-[0038]); a calculation unit/shaping parameter estimator/shaping quality estimator configured to generate change information for changing a manufacturing condition used for producing the 3D manufactured object based on the melted state of the at least a part of the melted portion obtained by the detection unit (the device of Niitani et al. takes the monitored data received from the camera and the sensor and performs calculations as claimed to ultimately control the required output as claimed (paragraphs [0035]-[0051]; Figure 2 (205) (206) (207); Figure 3) and an output unit/shaping parameter controller configured to output state information based on the generated change information to set a manufacturing condition of the manufacturing apparatus (paragraphs [0039]-[0051]; Figure 2 (207); Figure 3).
The corresponding detection unit/data acquirer/camera (203) in Niitani et al. is utilized to determine the “molten pool diameter” (Figure 3 (301); paragraphs [0030]-[0034], [0043], [0044], [0048], [0049]; claim 5). In determining the diameter of a molten pool, portions that are melted are necessarily differentiated from portions that are unmelted; otherwise, the diameter is not actually known. As such, when Niitani et al. disclose that the diameter of the molten pool is detected and then that information is correspondingly utilized for calculation and output to set operating conditions as claimed, it follows that “a melted state of at least a part of a predetermined region of the powder material being melted by irradiation with the energy beam and an unmelted state of the at least the part of the predetermined region of the powder material” has been obtained. The molten diameter is known and it is also therefore known that other portions are unmelted. This obtained data is utilized in the corresponding calculations within Niitani and therefore also make the calculation “based on the melted state and the unmelted state of the predetermined region”. Further still, Figure 3 of Niitani and the corresponding discussion in the specification makes clear that increases/decreases in the size of the molten pool are being detected/obtained/acquired and that this information/knowledge is being utilize to calculate and control output. This further establishes that changes in areas from molten to unmolten or from unmolten to molten are being detected with the diameter and that the corresponding obtaining of data regarding both melted and unmelted states is being accomplished. Even further, it’s not clear how the camera of Niitani is configured any differently than the claimed detection unit and it therefore is configured as claimed because it actually does and is also capable of detecting material in a melted and unmelted state as claimed.
As to the new language in claim 1, the “phase state” is simply understood to mean whether it is in the unmelted phase or the melted phase. As such, by knowing that the material is unmelted or melted, the phase state is known. Further, the camera (203) of Niitani captures the image/video of the material and this requires or renders prima facie obvious “information on…brightness”. Further still, Niitani teaches including information on temperature (paragraphs [0032] and [0033]).
As to the additional new language that unmelted powder “that has not yet been melted by the irradiation with the energy beam”, material that is not melted in Niitani that is outside of or at the boundary of the melt pool is material that “has not yet been melted by the irradiation with the energy beam”.
As such, for these reasons, Niitani is understood to anticipate the claimed invention under a reasonable interpretation.
Alternatively, if it is considered that it is not inherent that obtaining the diameter of the molten pool necessarily also results in detection and usable knowledge for calculation and output of the status of unmelted material outside (e.g. immediately outside), the diameter of the molten pool, it is submitted that it would have been prima facie obvious to one having ordinary skill in the art to recognize and utilize this additional information and knowledge of the unmelted state of the material in this portion of the predetermined region such that the system of Niitani can accurately and effectively use the established relationships of Niitani regarding molten pool diameter and the impact of the diameter on the quality of the three-dimensional shaped object that is being produced. As such, in this alternative interpretation, each and every limitation is taught or rendered prima facie obvious in view of the teaching of Niitani.
As to claim 3, the camera and sensor of Niitani are configured to/capable of identifying the state as claimed and to the extent required (paragraphs [0030]-[0033]).
As to claim 4, the camera is configured to/capable of identifying the temperature as claimed and to the extent required (paragraphs [0032]).
As to claim 5, Niitani detects the intensity of reflected light and the wavelength from the molten pool (paragraphs [0032]-[0034]). Absent further specificity, this is understood to meet the claimed brightness for wavelengths as claimed including information on a temperature of the melted pool.
As to claims 7-23, Niitani teach the corresponding calculation unit provides the required change information for changing the manufacturing conditions to the extent required by the claims under a reasonable interpretation (paragraphs [0030]-[0051], Figure 2; Figure 3).
As to claim 25, Niitani et al. further teach a unit understood to read upon the claimed determination unit (Figures 2 (205) (206) (207); paragraphs [0035]-[0051]). It is noted that the scope differences between the claimed units is relatively small and that a unit of Niitani et al. is reasonably understood to read upon different units depending upon the actual scope set forth in the claim and the number of different units actually required by the claim.
As to claim 32, Niitani et al. teach the device of claim 1 as set forth above and further including a setting unit/controller as claimed and a manufacturing unit as claimed (Figure 2 – the shown apparatus and described control scheme; paragraphs [0029]-[0040]).
Claims 24, 26-29 and 58 are rejected under 35 U.S.C. 103 as being unpatentable over Niitani (WO 2017/163432), as applied to claims 1, 3-5, 7-23, 25 and 32 above, and further in view of in view of Tsumuraya et al. (WO 2016/143137).
Note: US 2022/0355550 is utilized as the English language equivalent of WO 2016/143137 in this Office Action.
As to claims 24 and 26-29, Niitani does not teach the determination unit is configured to identify the need for a repair. However, Tsumuraya et al. teach an analogous device/apparatus wherein the unit makes a determination regarding a need to repair the layer/structure being produced (paragraphs [0020], [0127]-[0135]).
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of Niitani et al. and Tsumuraya et al. and to have included the capability of determining that the solidified layer/article needed to be repaired based upon received state information as claimed, in the device/apparatus of Niitani, as suggested by Tsumuraya et al., for the purpose, as suggested by Tsumuraya et al., of effectively reducing defects in the produced article/layer. In combination, each of the recited limitations are reasonably suggested to produce a high-quality part having desired properties.
As to claim 58, Niitani teach that other embodiments for shaping and controlling the process can be utilized to facilitate shaping a high-precision three-dimensional object (paragraphs [0001], [0004], [0053] and [0054]), but do not teach the manufacturing conditions that can be changed are one of the recited conditions, such as a scanning pass of the energy beam or a particle size distribution of the powder material or a pressure within a housing as claimed.
However, Tsumuraya et al. teach an analogous device for shaping and controlling the production of a three-dimensional object wherein the analogous manufacturing condition that can be changed is a scanning pass of the energy beam and/or a particle size distribution of powder material (paragraphs [0014], [0051], [0065], [0066], [0071], [0075]-[0077], [0080], [0084]-[0089], [0093], [0108], and [0109]; claim 32) and/or pressure within a housing as claimed (paragraph [0081]) and further includes shape data of a support portion that supports the 3D manufactured (paragraph [0062]).
Therefore, it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of Niitani with Tsumuraya et al. and to have utilized a scanning pass of the energy beam/laser or particle size distribution of the powder or pressure within a housing as the corresponding manufacturing condition in the device of Niitani, as suggested by Tsumuraya et al., for the purpose, as suggested by the references, of reducing defects in the produced article/layer and to improve the quality of the overall printed part.
Claim 59 is rejected under 35 U.S.C. 103 as being unpatentable over Niitani (WO 2017/163432), as applied to claims 1, 3-5, 7-23, 25 and 32 above, in view of Tsumuraya et al. (WO 2016/143137) and either one of Comb et al. (US 2020/0338825) or Craeghs et al. (US 2018/0322621) alone or further in view of either one of Gibson et al. (US 2017/0297109) or Baecker et al. (US 2016/0339646).
As to claim 59, Niitani teach that other embodiments for shaping and controlling the process can be utilized to facilitate shaping a high-precision three-dimensional object (paragraphs [0001], [0004], [0053] and [0054]), but do not the manufacturing condition includes shape data of a support portion that supports the manufactured object, the support portion being formed while producing the object and being removed after producing the object.
Niitani teach that other embodiments for shaping and controlling the process can be utilized to facilitate shaping a high-precision three-dimensional object (paragraphs [0001], [0004], [0053] and [0054]), but do not teach the manufacturing conditions that can be changed are one of the recited conditions, such as a scanning pass of the energy beam or a particle size distribution of the powder material or a pressure within a housing as claimed, or that the condition includes shape data or a support portion that supports the 3D manufactured object, the support portion being formed while producing the object and removed after producing the object.
However, Tsumuraya et al. teach an analogous device for shaping and controlling the production of a three-dimensional object wherein the analogous manufacturing condition that can be changed is a scanning pass of the energy beam and/or a particle size distribution of powder material (paragraphs [0014], [0051], [0065], [0066], [0071], [0075]-[0077], [0080], [0084]-[0089], [0093], [0108], and [0109]; claim 32) and/or pressure within a housing as claimed (paragraph [0081]) and further includes shape data of a support portion that supports the 3D manufactured (paragraph [0062]). Additionally, each of Comb et al. (paragraph [0063]) and Craeghs et al. (see paragraphs [0030], [0075] and [0085] which demonstrate support structures are in view and paragraphs [0073]-[0085] for implementing control more specifically as required) teach analogous devices for manufacturing 3D printed objects wherein the shape date of a support structure is changed, as claimed, based on the state of the object during manufacturing of the object.
Therefore, it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of Niitani et al. with Tsumuraya et al. and either one of Comb et al. or Craeghs et al. and to have utilized a scanning pass of the energy beam/laser or particle size distribution of the powder or pressure within a housing in combination with shape data of a support portion that supports the manufactured object, the support portion being formed while producing the object and being removed after producing the object, as the corresponding manufacturing condition in the device of Niitani et al., as suggested by Tsumuraya et al. and either one of Comb et al. or Craeghs et al., for the purpose, as suggested by the references, of reducing defects in the produced article/layer and to improve the quality of the overall printed part.
As to the limitation that “the support portion being formed while producing the 3D manufactured object”, this limitation is understood to be taught by either one of Comb et al. or Craeghs et al. as set forth above. As to the limitation that the support portion “being removed after producing the 3D manufactured object”, the limitation is understood to be met in one of three manners:
First, the examiner suggests the limitation does not introduce a structural difference beyond the requirement that the support unit of the prior art must be capable of being removed. As set forth in Tsumuraya et al. taken with Comb et al. or Craeghs et al., the examiner submits the support portion suggested by these references for use in the device of Niitani is capable of being removed.
Second, as one having ordinary skill in the art would recognize, the disclosure of a support portion, at least implies, that this portion will be removed when the object is complete. The support portion is needed during manufacture, but is not necessary after the object has been produced and is commonly removed from the finished object.
Each of Gibson et al. (paragraphs [0082], [0087], [0105], [0115], [0128], [0205]; Figure 8 (818)) and Baecker et al. (paragraph [0084]) teach analogous devices, methods and systems, wherein the support material is removed after producing the 3D manufactured object. Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of Niitani and either one of Gibson et al. or Baecker et al. and to have removed the support portion after producing the 3D manufactured object as claimed in the device of Niitani, as suggested by either one of Gibson et al. or Baecker et al., for the purpose, as suggested by the references, of effectively supporting the object during production while ultimately not including additional material than necessary or that changes the overall shape of the object (e.g. without removing the support portion the support portion would become part of the final object).
Response to Arguments
Applicant’s arguments filed July 27, 2026 and August 7, 2026 have been fully considered. The amendment to claim 1 has overcome the previous objection. As such, the objection has been withdrawn. Applicant’s arguments regarding Niitani have been fully considered, but they are not persuasive.
Applicant argues that Niitani does not teach or suggest detecting, acquiring, or outputting any “state” of unmelted powder and suggests the examiner conflates an implicit physical boundary with an explicitly acquired, processed, and utilized “unmelted state” in claim 1. This argument is not persuasive.
As an initial matter, it is generally submitted and noted that to the extent there is some difference, which remains unclear, between how the unmelted state is acquired, processed and utilized between the instant application and the teaching of Niitani, this difference is understood to remain unclaimed.
Niitani evaluates/determines/detects a predetermined region by utilizing an image/video obtained from camera (203) that is able to identify where the melted powder is found within the area/diameter of the melt pool and where the melted powder is not found (i.e. the unmelted state) outside of this area/diameter (paragraphs [0032], [0033]; Figure 3). After having made this determination, the required calculation and outputting as set forth in the claim are performed as described above. Since Niitani detects and relies upon where the material is molten and where it is not molten (i.e. where it is unmelted), this calculation and output is based on both the melted and unmelted state.
As to the new language in claim 1, the “phase state” is simply understood to mean whether it is in the unmelted phase or the melted phase. As such, by knowing that the material is unmelted or melted, the phase state is known. Further, the camera (203) of Niitani captures the image/video of the material and this requires or renders prima facie obvious “information on…brightness”. Further still, Niitani teaches including information on temperature (paragraphs [0032] and [0033]).
The additional new language that unmelted powder “that has not yet been melted by the irradiation with the energy beam” is noted. It is not completely clear how applicant thinks this language limits the claim. However, material that is not melted in Niitani that is outside of or at the boundary of the melt pool is material that “has not yet been melted by the irradiation with the energy beam”. It has not yet been melted and the word “yet” does not limit the claim such that this material is ever actually melted. It could be melted in the future or it may not be melted in the future. As such, when applicant argues that all monitoring in Niitani occurs during or after melting, this is not persuasive to the extent it is commensurate in scope with the claims. While some material is melted in Niitani (and some material is also melted in claim 1), there is some material that is not melted in Niitani (and some unmelted material in claim 1). Both of these materials are within a predetermined region as required by the claim. Both the instant claims and Niitani reasonably have both melted and unmelted materials and it is not clear why it is suggested that Niitani is not applicable because melting has occurred. If there is some particular evaluation of unmelted powder before the process begins, which then becomes the melted powder in precisely the same spot, that is intended to be performed initially to further control how it is ultimately melted and controlled after melting this has not been clearly or necessarily set forth in the claim.
It is submitted that the claims would need to be further amended to overcome the Niitani reference under a reasonable interpretation as the language does not appear to require all that is implied by the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeff Wollschlager whose telephone number is (571)272-8937. The examiner can normally be reached M-F 7:00-3:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christina Johnson can be reached at 571-272-1176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEFFREY M WOLLSCHLAGER/Primary Examiner, Art Unit 1742
