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 .
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.
Note that the claims are directed towards an apparatus and as such will be examined under such conditions. The material worked upon or the process of using the apparatus are viewed as recitation of intended use and are given little patentable weight (Please see MPEP 2114 R1-2115 R2 for further details).
Claims 1-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hardwick et al. (WO 2019/089764 A1, hereinafter Hardwick).
Regarding Claims 1-3, Hardwick teaches in Figure 1A a solid state additive manufacturing system comprising:
a material feed system 101 configured to provide solid material (per [00080-00081]);
tooling 103 configured to receive the solid material from the material feed throat and add the received solid material on a substrate (per [00080-00081], wherein workpiece 105 is the substrate, and [0071] discloses that the goal of the invention of is to bond the deposited solid material to the workpiece);
an accessory device (workpiece platform 109 per [00083]) configured to receive the substrate/workpiece 105; and
a processor electrically coupled to the tooling and the accessory device, wherein the processor is programmed to control the tooling and to control movement of the accessory device to add the received solid material in the tooling onto the received substrate/workpiece 105 to form a solid part (per [00082]-[00083] wherein it Is understood that the recited purpose of 3D printing and the recited ability of the tool and workpiece platform to rotate independently in their own x, y, and z directions by operating on a path per [0076] (further reading on Claims 2 and 3) is understood to imply that the process-controlling software 115 controls both the tool and workpiece platform to form a solid part on the substrate/workpiece during movement of the accessory device, wherein the formed solid part comprises the substrate and the received solid material).
Regarding Claims 4 and 15, since the workpiece platform can move in directions parallel to some reference plane, it is regarded as a parallel manipulator.
Regarding Claims 5 and 6, Hardwick teaches in [0080] that devices to heat and/or stimulate with electric/magnetic fields comprise the system.
Regarding Claims 7-14, and 16-20, that three-dimensional movement ability of the tool and workpiece platform/accessory device establishes the capability of printing configurations such as the hollow or non-hollow parts of Claims 7 and 19, the shaped parts of Claims 8 and 20, the tapered parts of Claim 9, hollow metal parts with varying wall thickness as in Claim 10, tilted or non-planar solid parts of Claim 11, large parts with the methodology of Claim 13, and the ability to rotate and add material to formed solid parts as in Claims 12 and 14 as well as rotate for use with a 3-axis stationary machine to provide heating/cooling per Claim 16, additional field exposure per Claim 17, and additional measurements per Claim 18.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 and 19-20 of U.S. Patent No. 11,311,959 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are merely broader recitations of the subject matter claimed in ‘959, noting the control unit that per ‘959’s Claim 1 controls the tool/tooling unit and the workpiece platform/accessory device as required by instant Claim 1, with ‘959’s Claim 7 demonstrating capability to move in x, y, and z directions that allows for the instantly-claimed capabilities of instant Claims 2-3, 7-14, and 16-20, and wherein the workpiece platform can be considered a parallel manipulator thus reading on instant Claims 4 and 15, and wherein workpiece itself (defined to exist by the “workpiece and/or a workpiece platform” in Line 21 of Claim 1) is the substrate received by the accessory device.
Additionally:
Claim 10 of ‘959 teaches heating and/or cooling systems corresponding to instant Claim 5
Claim 16 of ‘959 teaches stimulating devices corresponding to instant Claim 6.
Response to Arguments
Applicant's arguments filed December 5, 2025 have been fully considered but they are not persuasive based on the new claim mapping applied in the rejections above which makes it clear that the solid material is added on the substrate during movement of the accessory device, wherein the formed solid part comprises the substrate and received solid material.
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 RYAN M OCHYLSKI whose telephone number is (571)270-7009. The examiner can normally be reached Monday-Friday 9-6.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Galen Hauth can be reached at (571) 270-5516. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RYAN M OCHYLSKI/Primary Examiner, Art Unit 1743
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