Detailed Office Action
Notice of Pre-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
Request for Continued Examination
A request for continued examination under 37 CFR 1.114 was filed in this application after appeal to the Patent Trial and Appeal Board, but prior to a decision on the appeal. 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examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on 04/24/26 has been entered.
Response to Amendments
The amendment filed on 04/24/2026 has been entered. Claim 19 has been canceled. Claim 81 has been added. Claims 3 – 12 remain withdrawn. Claims 1 – 2, 13 – 18, 20, and 81 are under examination.
Claim Objections
Claim 1 is objected to because of the following informalities:
“Depositing the solid filler materials(s)” in claim 1 has an erroneous “s” after “material”. That is, it should read “Depositing the solid filler material(s)”
Appropriate correction is required.
Claim Rejections – U.S.C. §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.
Claim 2 is 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.
Regarding claim 2, the metes and bounds of the claim are indefinite. The limitation is indefinite because the phrase “does not require additional tools, machines and/or equipment to complete the finished part” (emphasis added by the examiner) does not make clear whether this means “one or more of” these or all these components listed. Moreover, the metes and bounds of what constitutes a “tool” what constitutes another “machine”, and what constitutes another “equipment” other than the hybrid manufacturing system expressly required in claim 1 is not clearly set forth and defined. As such, the limitation is indefinite. For purposes of examination, any process performed by a hybrid manufacturing system/machine is interpreted to meet the limitation so long as the workpiece is finished within the hybrid manufacturing system/machine.
Claim Rejections – U.S.C. §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 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.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1 – 2, 13 – 18, 20, and 81 are rejected under 35 U.S.C. 103 as being unpatentable over Coates (US2017/0129180) in view of Kandasamy (US2016/0175982, cited in the OA on 12/27/24)
Regarding claims 1 – 2, Coates teaches an apparatus for workpiece processing and method thereto [Title]. Coates teaches manufacturing a workpiece by a hybrid additive manufacturing process including deposition (i.e. additive) and a subtractive process [0296]. The method includes forming a workpiece with a processing head that delivers materials followed by processing the article including by machining steps [0039, 0127], meeting the claimed limitation of depositing filler material to form a 3D printed part in an additive step and performing subtractive steps.
Wherein machining of the part would necessarily be performed on or within the part by broadest reasonable interpretation, meeting the claimed limitation of one or more subtractive steps performed on and/or within the 3D printed parts.
Wherein the apparatus of Coates performs both the additive and subtractive steps, meeting the claimed limitation of the process not requiring additional tools, machines, equipment to complete the finished part of claim 2 (other than the hybrid manufacturing system).
Coates states that the deposition of material can be in a solid state such as powder, filaments, rods, etc [0039], interpreted as the “filler material”. However, Coates does not explicitly teach the details of the deposition of the material (i.e. the additive step).
Kandasamy teaches a method of additive manufacturing friction stir tool [Abstract]. Kandasamy teaches that a filler material is fed through a friction stir tool while being heated and plasticized due to the heat and rotational friction such that the material extruded onto a substrate surface [0060]. Kandasamy also states that the frictional and adiabatic heating that occurs at the interface results in a severe plastic deformation at the tool-metal interface [0060] and as the applied load is increased, the filler material and substrate at the tool-substrate interface become malleable as a result of frictional and adiabatic heating and are caused to bond together under the compressive load [0062], meeting the claimed limitation of “generating plastic deformation of the solid filler material(s) and the substrate by applying normal, shear and/or frictional forces by way of a rotating shoulder of the hollow spindle or tool such that the solid filler material(s) and/or the substrate are in a malleable and/or visco-elastic state in an interface region”.
Kandasamy states that the filler material can be a rod or powder (i.e. solid) and that the tool has a shoulder [0037]. The tool also possesses a “throat” [0042]. “feeding one or more solid filler material(s) through a tool of the hybrid manufacturing system, wherein the tool comprises a shoulder and a throat configured to receive the one or more solid filler materials”.
Kandasamy states that the method further includes machining the previously deposited layer to form grooves then depositing a third layer [0031]. This meets the claimed limitation of “depositing additional solid filler material(s) in the tool by generating plastic deformation of the additional solid filler material(s) and the subtracted area by applying normal, shear and/or frictional forces by way of rotating the tool comprising the shoulder such that the additional solid filler material(s) is in a malleable and/or visco-elastic state to deposit the additional solid filler material on the subtracted area in a plasticly deformed state to form a finished 3D printed part”
It would have been obvious to one of ordinary skill in the art before the effective filing date to have combined the friction stir head for deposition and method of Kandasamy with the method/apparatus of Coates to achieve predictable results. Both Coates and Kandasamy are directed to manufacturing of a workpiece using additive deposition and subtractive steps. As such, a person of ordinary skill in the art would have a reasonable expectation of success in combining the teachings to achieve predictable results and no change to their respective functions.
The rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. KSR, 550 U.S. at 416, 82 USPQ2d at 1395 (MPEP 2143 I A).
Regarding claim 13, Coates in view of Kandasamy teaches the invention as applied in claim 1. Coates teaches that the apparatus can further process the workpiece, including a wide range of additional processing steps [0127], meeting the broadest reasonable interpretation that the process includes one or more “additional processing” steps.
Regarding claim 14, Coates in view of Kandasamy teaches the invention as applied in claim 1. Coates teaches that the workpiece can be subjected to peening [0373], meeting the claimed limitation of the additional processing steps comprising peening.
Regarding claim 15, Coates in view of Kandasamy teaches the invention as applied in claim 1. Coates teaches that the apparatus can use laser cutting and/or laser drilling [0297, 0298], meeting the claimed limitation of “lasering”
Regarding claims 16 – 17, Coates in view of Kandasamy teaches the invention as applied in claim 1. Coates teaches that the coolant can be supplied to the workpiece [0051, 0022], meeting the claimed limitation of the additional processing steps comprising cooling of claim 16 and the broadest reasonable interpretation of quenching of claim 17.
Regarding claim 18, Coates in view of Kandasamy teaches the invention as applied in claim 1. Coates teaches that the machine can perform further processing on the workpiece including laser drilling [0297, 0298] which would be capable of creating both external/surface and internal features, meeting the limitations of claim 18.
Regarding claim 20, Coates in view of Kandasamy teaches the invention as applied in claim 1. Coates teaches that the machine can perform further processing on the workpiece including laser drilling [0297, 0298]. Wherein the process of “drilling” (including via laser) would be capable of forming heating or cooling channels in a workpiece, for example, by drilling a hole through the workpiece, meeting the claimed limitation. Coates states that the hybrid manufacturing system can form cooling channel features [0333].
Regarding claim 81, Coates in view of Kandasamy teaches the invention as applied in claim 1. Kandasamy teaches that the method includes machining the deposited layer to possess grooves, depositing a third layer onto the previously deposited and machined layer, then repeating the process [0031]. The repeating of the machining and deposition meets the claimed limitation of subtracting/removing material from the deposited additional solid material and then further depositing solid material to the second subtracted area of claim 81.
Claims 1 – 2, 13 – 18, 20, and 81 are rejected under 35 U.S.C. 103 as being unpatentable over Kandasamy (US2016/0175982, cited in the OA on 12/27/24) in view of Coates (US2017/0129180)
Regarding claim 1, Kandasamy teaches a method of additive manufacturing [Abstract]. Kandasamy teaches that a filler material is fed through a friction stir tool while being heated and plasticized due to the heat and rotational friction such that the material is extruded onto a substrate surface [0060], meeting the claimed limitation of “depositing solid filler material(s) on a substrate by a hybrid manufacturing system by way of one or more additive steps to form a 3D printed part, wherein the one or more additive steps comprise”.
Kandasamy states that the frictional and adiabatic heating that occurs at the interface results in a severe plastic deformation at the tool-metal interface [0060] and as the applied load is increased, the filler material and substrate at the tool-substrate interface become malleable as a result of frictional and adiabatic heating and are caused to bond together under the compressive load [0062], meeting the claimed limitation of “generating plastic deformation of the solid filler material(s) and the substrate by applying normal, shear and/or frictional forces by way of a rotating shoulder of the hollow spindle or tool such that the solid filler material(s) and/or the substrate are in a malleable and/or visco-elastic state in an interface region”.
Kandasamy states that the filler material can be a rod or powder (i.e. solid) and that the tool has a shoulder [0037]. The tool also possesses a “throat” [0042]. “feeding one or more solid filler material(s) through a tool of the hybrid manufacturing system, wherein the tool comprises a shoulder and a throat configured to receive the one or more solid filler materials”.
Kandasamy states that the method further includes machining the previously deposited layer to form grooves then depositing a third layer [0031]. This meets the claimed limitation of “depositing additional solid filler material(s) in the tool by generating plastic deformation of the additional solid filler material(s) and the subtracted area by applying normal, shear and/or frictional forces by way of rotating the tool comprising the shoulder such that the additional solid filler material(s) is in a malleable and/or visco-elastic state to deposit the additional solid filler material on the subtracted area in a plasticly deformed state to form a finished 3D printed part”
Wherein machining of the part would necessarily be performed on or within the part by broadest reasonable interpretation, meeting the claimed limitation of one or more subtractive steps performed on and/or within the 3D printed parts.
Kandasamy does not explicitly teach using a hybrid manufacturing system to perform the additive and subtractive steps.
Coates teaches an apparatus for workpiece processing and method thereto [Title]. Coates teaches manufacturing a workpiece by a hybrid additive manufacturing process including deposition (i.e. additive) and a subtractive process [0296]. Coates states that the deposition of material can be in a solid state such as powder, filaments, rods, etc [0039], interpreted as the “filler material”. The method includes forming a workpiece with a processing head that delivers materials followed by processing the article including by machining steps [0039, 0127]. Wherein the apparatus of Coates performs both the additive and subtractive steps, meeting the claimed limitation of the process not requiring additional tools, machines, equipment to complete the finished part of claim 2 (other than the hybrid manufacturing system).
It would have been obvious to one of ordinary skill in the art before the effective filing date to have taken the friction stir additive method of Kandasamy and performed the process in the hybrid manufacturing system of Coates. Kandasamy and Coates are directed to forming workpieces by additive deposition followed by subtractive steps and as such, a person of ordinary skill in the art would have a reasonable expectation of success in performing the friction stir additive method of Kandasamy in the hybrid system of Coates. Moreover, an ordinarily skilled artisan would have been motivated to do so because the apparatus/system of Coates allows for the manufacturing process to be performed within one machine.
Regarding claim 13, Kandasamy in view of Coates teaches the invention as applied in claim 1. Coates teaches that the apparatus can further process the workpiece, including a wide range of processing steps [0127], meeting the broadest reasonable interpretation that the process includes one or more “additional processing” steps.
Regarding claim 14, Kandasamy in view of Coates teaches the invention as applied in claim 1. Coates teaches that the workpiece can be subjected to peening [0373], meeting the claimed limitation of the additional processing steps comprising peening.
Regarding claim 15, Kandasamy in view of Coates teaches the invention as applied in claim 1. Coates teaches that the apparatus can use laser cutting and/or laser drilling [0297, 0298], meeting the claimed limitation of “lasering”
Regarding claims 16 – 17, Kandasamy in view of Coates teaches the invention as applied above in claim 1. Coates teaches that the coolant can be supplied to the workpiece [0051, 0022], meeting the claimed limitation of the additional processing steps comprising cooling of claim 16 and the broadest reasonable interpretation of quenching of claim 17.
Regarding claim 18, Kandasamy in view of Coates teaches the invention as applied above in claim 1. Coates teaches that the machine can perform further processing on the workpiece including laser drilling [0297, 0298] which would be capable of creating both external/surface and internal features, meeting the limitations of claim 18.
Regarding claim 20, Kandasamy in view of Coates teaches the invention as applied above in claim 1. Coates teaches that the machine can perform further processing on the workpiece including laser drilling [0297, 0298]. Wherein the process of “drilling” (including via laser) would be capable of forming heating or cooling channels in a workpiece, for example, by drilling a hole through the workpiece, meeting the claimed limitation. Coates states that the hybrid manufacturing system can form cooling channel features [0333].
Regarding claim 81, Kandasamy in view of Coates teaches the invention as applied above in claim 1. Kandasamy teaches that the method includes machining the deposited layer to possess grooves, depositing a third layer onto the previously deposited and machined layer, then repeating the process [0031]. The repeating of the machining and deposition meets the claimed limitation of subtracting/removing material from the deposited additional solid material and then further depositing solid material to the second subtracted area of claim 81.
Claims 1 – 2, 13 – 18, 20, and 81 are rejected under 35 U.S.C. 103 as being unpatentable over Jones (US2015/0183070, cited in the OA of 06/05/2024) in view of Kandasamy (US2016/0175982, cited in the OA on 12/27/24)
Regarding claims 1 – 2, Jones teaches an apparatus for workpiece processing and method thereto [Title]. Jones teaches manufacturing a workpiece by a hybrid additive manufacturing process including deposition (i.e. additive) and a subtractive process [0108]. The hybrid additive manufacturing process is performed by a “machine tool” [0027]. The machine tool includes a processing head to perform deposition of a material (interpreted as the “filler material”) [0061 – 0062], meeting the claimed limitation of depositing filler material to form a 3D printed part in an additive step.
The machine tool also has a machining head [0061] for material removal [0134], meeting the claimed limitation of removing material from the 3D printing part by the hybrid manufacturing system by a subtractive step. Wherein machining of the part would necessarily be performed on either the external or internal area of the part and any machining would, by broadest reasonable interpretation, form a “feature”, meeting the claimed limitation of one or more subtractive steps such that surface and/or internal features are formed on and/or within the 3D printed parts.
Wherein the machine tool performs both the additive and subtractive steps, meeting the claimed limitation of the process not requiring additional tools, machines, equipment to complete the finished part of claim 2.
Jones states that the deposition of material can be in a solid state such as powder, filaments, rods, etc [0025, 0071], interpreted as the “filler material”. However, Jones does not explicitly teach the details of the deposition of the material (i.e. the additive step).
Kandasamy teaches a method of additive manufacturing [Abstract]. Kandasamy teaches that a filler material is fed through a friction stir tool while being heated and plasticized due to the heat and rotational friction such that the material extruded onto a substrate surface [0060], meeting the claimed limitation of depositing the filler material from a tool onto a substrate.
Kandasamy states that the frictional and adiabatic heating that occurs at the interface results in a severe plastic deformation at the tool-metal interface [0060] and as the applied load is increased, the filler material and substrate at the tool-substrate interface become malleable as a result of frictional and adiabatic heating and are caused to bond together under the compressive load [0062], meeting the claimed limitation of “generating plastic deformation of the solid filler material(s) and the substrate by applying normal, shear and/or frictional forces by way of a rotating shoulder of the hollow spindle or tool such that the solid filler material(s) and/or the substrate are in a malleable and/or visco-elastic state in an interface region”.
Kandasamy states that the filler material can be a rod or powder (i.e. solid) and that the tool has a shoulder [0037]. The tool also possesses a “throat” [0042]. “feeding one or more solid filler material(s) through a tool of the hybrid manufacturing system, wherein the tool comprises a shoulder and a throat configured to receive the one or more solid filler materials”.
Kandasamy states that the method further includes machining the previously deposited layer to form grooves then depositing a third layer [0031]. This meets the claimed limitation of “depositing additional solid filler material(s) in the tool by generating plastic deformation of the additional solid filler material(s) and the subtracted area by applying normal, shear and/or frictional forces by way of rotating the tool comprising the shoulder such that the additional solid filler material(s) is in a malleable and/or visco-elastic state to deposit the additional solid filler material on the subtracted area in a plasticly deformed state to form a finished 3D printed part”
It would have been obvious to one of ordinary skill in the art before the effective filing date to have combined the friction stir head and additive method of Kandasamy with the method/apparatus of Coates to achieve predictable results. Both Coates and Kandasamy are directed to manufacturing of a workpiece using additive and subtractive steps and as such, a person of ordinary skill in the art would have a reasonable expectation of success in combining the teachings to achieve predictable results and no change to their respective functions.
The rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. KSR, 550 U.S. at 416, 82 USPQ2d at 1395 (MPEP 2143 I A).
Regarding claim 13, Jones in view of Kandasamy teaches the invention as applied in claim 1. Jones teaches that the controller in the machine tool can control an energy source to further process the workpiece, including a wide range of processing steps [0103], meeting the broadest reasonable interpretation that the process includes one or more “additional processing” steps.
Regarding claim 14, Jones in view of Kandasamy teaches the invention as applied in claim 1. Jones teaches that the material processing system controls a fluid supply that can use the fluid supply to perform shot peening [0099], meeting the claimed limitation of the additional processing steps comprising peening.
Regarding claim 15, Jones in view of Kandasamy teaches the invention as applied in claim 1. Jones teaches that the controller in the machine tool can control an energy source to further process the workpiece, including a wide range of processing steps [0103]. Jones teaches that the energy source can be a laser [0096], meeting the broadest reasonable interpretation of “lasering”.
Regarding claims 16 – 17, Jones in view of Kandasamy teaches the invention as applied in claim 1. Jones teaches that the material processing system controls a fluid supply that can use the fluid supply to perform quenching [0099], meeting the claimed limitation of the additional processing steps comprising cooling of claim 16 and quenching of claim 17.
Regarding claim 18, Kandasamy in view of Jones teaches the invention as applied in claim 1. Jones teaches that the machine tool can perform drilling on the workpiece, which would be capable of creating both external/surface and internal features, including in areas desired based on the workpiece being created, such as the subtracted area [0103], meeting the limitations of claim 18.
Regarding claim 20, Jones in view of Kandasamy teaches the invention as applied in claim 1. Jones teaches that the controller in the machine tool can control an energy source to further process the workpiece, including drilling [0103]. Jones teaches that the energy source can be a laser [0096]. Wherein the process of “drilling” (including via laser) would be capable of forming heating or cooling channels in a workpiece, for example, by drilling a hole through the workpiece.
Regarding claim 81, Jones in view of Kandasamy teaches the invention as applied above in claim 1. Kandasamy teaches that the method includes machining the deposited layer to possess grooves, depositing a third layer onto the previously deposited and machined layer, then repeating the process [0031]. The repeating of the machining and deposition meets the claimed limitation of subtracting/removing material from the deposited additional solid material and then further depositing solid material to the second subtracted area of claim 81.
Claims 1 – 2, 13 – 18, 20, and 81 are rejected under 35 U.S.C. 103 as being unpatentable over Kandasamy (US2016/0175982, cited in the OA on 12/27/24) in view of Jones (US2015/0183070, cited in the OA of 06/05/2024)
Regarding claims 1 – 2, Kandasamy teaches a method of additive manufacturing [Abstract]. Kandasamy teaches that a filler material is fed through a friction stir tool while being heated and plasticized due to the heat and rotational friction such that the material extruded onto a substrate surface [0060], meeting the claimed limitation of “depositing solid filler material(s) on a substrate by a hybrid manufacturing system by way of one or more additive steps to form a 3D printed part, wherein the one or more additive steps comprise”.
Kandasamy states that the frictional and adiabatic heating that occurs at the interface results in a severe plastic deformation at the tool-metal interface [0060] and as the applied load is increased, the filler material and substrate at the tool-substrate interface become malleable as a result of frictional and adiabatic heating and are caused to bond together under the compressive load [0062], meeting the claimed limitation of “generating plastic deformation of the solid filler material(s) and the substrate by applying normal, shear and/or frictional forces by way of a rotating shoulder of the hollow spindle or tool such that the solid filler material(s) and/or the substrate are in a malleable and/or visco-elastic state in an interface region”.
Kandasamy states that the filler material can be a rod or powder (i.e. solid) and that the tool has a shoulder [0037]. The tool also possesses a “throat” [0042]. “feeding one or more solid filler material(s) through a tool of the hybrid manufacturing system, wherein the tool comprises a shoulder and a throat configured to receive the one or more solid filler materials”.
Kandasamy states that the method further includes machining the previously deposited layer to form grooves then depositing a third layer [0031]. This meets the claimed limitation of “depositing additional solid filler material(s) in the tool by generating plastic deformation of the additional solid filler material(s) and the subtracted area by applying normal, shear and/or frictional forces by way of rotating the tool comprising the shoulder such that the additional solid filler material(s) is in a malleable and/or visco-elastic state to deposit the additional solid filler material on the subtracted area in a plasticly deformed state to form a finished 3D printed part”
Wherein machining of the part would necessarily be performed on or within the part by broadest reasonable interpretation, meeting the claimed limitation of one or more subtractive steps performed on and/or within the 3D printed parts.
Kandasamy does not explicitly teach using a hybrid manufacturing system to perform the additive and subtractive steps.
Jones teaches an apparatus for workpiece processing and method thereto [Title]. Jones teaches manufacturing a workpiece by a hybrid additive manufacturing process including deposition (i.e. additive) and a subtractive process [0108]. The hybrid additive manufacturing process is performed by a “machine tool” [0027]. The machine tool includes a processing head to perform deposition of a material (interpreted as the “filler material”) [0061 – 0062]. The machine tool also has a machining head [0061] for material removal [0134]. Jones states that the deposition material can be solid [0025, 0071]
Wherein the machine tool performs both the additive and subtractive steps, meeting the claimed limitation of the process not requiring additional tools, machines, equipment to complete the finished part of claim 2.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have taken the friction stir additive method of Kandasamy and performed the process in the hybrid manufacturing system of Jones. Kandasamy and Jones are directed to forming workpieces by additive deposition followed by subtractive steps and as such, a person of ordinary skill in the art would have a reasonable expectation of success in performing the friction stir additive method of Kandasamy in the hybrid system of Jones. Moreover, an ordinarily skilled artisan would have been motivated to do so because the apparatus/system of Jones allows for the manufacturing process to be performed within one machine.
Regarding claim 13, Kandasamy in view of Jones teaches the invention as applied in claim 1. Jones teaches that the controller in the machine tool can control an energy source to further process the workpiece, including a wide range of processing steps [0103], meeting the broadest reasonable interpretation that the process includes one or more “additional processing” steps.
Regarding claim 14, Kandasamy in view of Jones teaches the invention as applied in claim 1. Jones teaches that the material processing system controls a fluid supply that can use the fluid supply to perform shot peening [0099], meeting the claimed limitation of the additional processing steps comprising peening.
Regarding claim 15, Kandasamy in view of Jones teaches the invention as applied in claim 1. Jones teaches that the controller in the machine tool can control an energy source to further process the workpiece, including a wide range of processing steps [0103]. Jones teaches that the energy source can be a laser [0096], meeting the broadest reasonable interpretation of “lasering”.
Regarding claims 16 – 17, Kandasamy in view of Jones teaches the invention as applied in claim 1. Jones teaches that the material processing system controls a fluid supply that can use the fluid supply to perform quenching [0099], meeting the claimed limitation of the additional processing steps comprising cooling of claim 16 and quenching of claim 17.
Regarding claim 18, Kandasamy in view of Jones teaches the invention as applied in claim 1. Jones teaches that the machine tool can perform drilling on the workpiece, which would be capable of creating both external/surface and internal features, including in areas desired based on the workpiece being created, such as the subtracted area [0103], meeting the limitations of claim 18.
Regarding claim 20, Kandasamy in view of Jones teaches the invention as applied in claim 1. Jones teaches that the controller in the machine tool can control an energy source to further process the workpiece, including drilling [0103]. Jones teaches that the energy source can be a laser [0096]. Wherein the process of “drilling” (including via laser) would be capable of forming heating or cooling channels in a workpiece, for example, by drilling a hole through the workpiece.
Regarding claim 81, Kandasamy in view of Jones teaches the invention as applied in claim 1. Kandasamy teaches that the method includes machining the deposited layer to possess grooves, depositing a third layer onto the previously deposited and machined layer, then repeating the process [0031]. The repeating of the machining and deposition meets the claimed limitation of subtracting/removing material from the deposited additional solid material and then further depositing solid material to the second subtracted area of claim 81.
Response to Arguments
Applicant's arguments filed have been fully considered but they are not persuasive.
Applicant argues that Jones does not teach or suggests that solid materials are deposited in the additive process of Jones. This is not persuasive.
Jones states “The machine tool may, in use, be arranged to supply at least one of the following: a metal, polymer, or ceramic material typically in powder or filament form” [0025]. Jones also states “In other embodiments the media may be selected from a group comprising metals, non-metals, polymers, ceramics, clay or dielectric materials. The media may be provided in any of the following forms: in powder form; filaments, rods, or wires, in semi- to fully liquid form. Alternatively media can be provided as, or in suspension in, a liquid, emulsion, gas, aerosol, slurry or paste” [0071]. As such, applicant’s assertion that Jones supply materials in liquid or molten form is not persuasive. Jones makes clear that the deposition material can be supplied in solid, semi-solid/semi-liquid, and liquid form.
Applicant further states that there is no teaching in Jones that solid material is deposited in the manner of claim 1. However, Kandasamy, not Jones, is relied upon for the specific additive manufacturing deposition tool and deposition process steps. Applicant's arguments against the references individually are not persuasive because one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant also briefly states at the bottom of page 2 of the remarks that Jones is wholly opposite to the limitation of claim 2 because it uses a different head tool to perform machining. This is not found persuasive. As discussed above, the metes and bounds of the limitation are indefinite. Moreover, in the process and system of Jones, the processing/additive deposition head is changed to a machining head to perform each of the steps, respectively, and as such, both of these heads (processing/deposition and machining) are part of the hybrid manufacturing machine/system disclosed by Jones to produce the finished part and thus meets the limitation(s) of producing a finished part by one or more additive steps and one or more subtractive steps using a hybrid manufacturing system. Claim 2 does not state, require, or otherwise imply that only one "tool"/head is present in the hybrid manufacturing system.
The currently pending rejections are as follows:
Claims 1 – 2, 13 – 18, 20, and 81 under 35 U.S.C. 103 as being unpatentable over Coates (US2017/0129180) in view of Kandasamy (US2016/0175982)
Claims 1 – 2, 13 – 18, 20, and 81 under 35 U.S.C. 103 as being unpatentable over Kandasamy (US2016/0175982) in view of Coates (US2017/0129180)
Claims 1 – 2, 13 – 18, 20, and 81 under 35 U.S.C. 103 as being unpatentable over Jones (US2015/0183070) in view of Kandasamy (US2016/0175982)
Claims 1 – 2, 13 – 18, 20, and 81 are rejected under 35 U.S.C. 103 as being unpatentable over Kandasamy (US2016/0175982) in view of Jones (US2015/0183070)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Austin M Pollock whose telephone number is (571)272-5602. The examiner can normally be reached M - F (11 - 8 ET).
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, Sally Merkling can be reached at (571) 272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/AUSTIN POLLOCK/Examiner, Art Unit 1738
/SALLY A MERKLING/SPE, Art Unit 1738
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