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, 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 09/12/2025 has been entered.
Response to Amendments
The amendment filed on 08/29/2025 has been entered. Claims 1 – 2, 4 – 11, 13 – 14, 16 – 17, and 19 – 20 remain pending. Claim 22 is newly added and finds support in at least page 5. Claims 1 – 2, 4 – 11, 13 and 16 are withdrawn. Claims 14, 17, 19 – 20 and 22 are under examination.
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.
Claims 14, 17, 19 – 20 and 22 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.
The term “flexible” in claim 14 is a relative term which renders the claim indefinite. The term “flexible” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For purposes of examination, any metal powder-polymer matrix film will be interpreted as having flexibility.
The limitation of “new layer” of claim 14 and 22 is indefinite. The phrase is indefinite because the plain meaning of “new” is fresh/not before used. However, claim 22 then states that the “new layer” is the previous flexible film used, which is contrary the plain meaning of using a new layer of flexible film in claim 14. As such, the metes and bounds of the limitation are indefinite. For purposes of examination, the limitation with be interpreted as the new layer being an unused portion of the flexible film.
Claims 17 and 19 – 20 are rejected by virtue of dependency.
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 14, 17, 19 – 20 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Spears (US2018/0214946, cited with the OA on 07/01/2024) in view of Kamakura (US2016/0101470, cited with the OA on 11/13/2024), as evidenced by Impact Plastics (NPL, 2017)
Regarding claim 14, Spears teaches a bound metal powder sheet, meeting the limitation of incorporated within, comprising powder and a binder [0021]. The binder may be a polymer [0020] and that the metal powder may be more than 80% of the total volume of the bound metal powder sheet [0021], which overlaps with the claimed range of at least 90 wt%. Wherein more than 80 vol% would include amounts near 100 vol% which overlaps with 90 wt%.
Spears shows that the method includes:
bound metal powder sheet is applied onto a build plate [Fig 2, 0010], meeting the claimed limitation of “applying the metal powder-polymer matrix flexible film to a build plate”
irradiated with an energy beam [0010] that can be a laser or electron beam to define the product to be made and debind the powder [0026], meeting the claimed limitation of “irradiating the metal powder-polymer matrix flexible film to vaporise the polymer and melt the metal particles together to form a 2D layer”
Applying another sheet to the stack [Fig 2, 0010], meeting the claimed limitation of “placing a new layer of metal powder-polymer matrix flexible film on top of the previous 2D layer, and repeating the application of the heat source for a number of cycles to produce the desired 3D product.”
Spears does not explicitly teach that an additional irradiation step is performed to vaporize any residual polymer.
However, mere duplication of parts has no patentable significance unless a new and unexpected result is produced In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960) (MPEP 2144.04 V I B). In this case, the mere duplication of the step of irradiating the metal powder-polymer mixture to ensure that no polymer is remaining has no patentable significance unless a new and unexpected result is produced. In the instant invention, it is explicitly stated that the additional irradiation is performed only if polymer (which is not desired) is still present after the initial irradiation in order to ensure removal of the polymer [instant invention, page 13, line 30 – 35]. However, the repeating of the irradiation step with no change in its respective function is a duplication of the step. The benefit achieved (i.e. further vaporization/removal of the polymer) from said duplication would not be unexpected given that a person of ordinary skill in the art would reasonably expect that performing an additional irradiation when undesirable polymer was still present would further lower the polymer content. "Expected beneficial results are evidence of obviousness of a claimed invention, lust as unexpected results are evidence of unobviousness thereof.” in re Gershon, 372 F.2d 535, 538, 152 USPQ 602, 604 (GGPA 1867) (MPEP 716. 02(c)).
Spears discloses that the binder material can be a polymer [0016, 0020], but does not state or suggest that the polymer is a thermoplastic.
Kamakura teaches a method in which metal powder and binder are formed into a sheet shape, deposited a layer/sheet onto a build plate [Fig 3., 0017], and forming a metal layer of the metal powder [Fig 5., 0088, Fig 4]. Kamakura teaches that the binder of the sheet is a thermoplastic resin [0081], the thermoplastic meeting the claimed limitation of thermoplastic polymer and wherein as evidenced by “impact plastic” (NPL), thermoplastics are recyclable [Page 2] and as such, the sheets of thermoplastic polymer and metal powder of Spears in view of Kamakura meets the limitation of recyclable
It would have been obvious to one of ordinary skill in the art before the effective filing date to have taken the method of Spears and used the thermoplastic resin as the polymer binder, as taught by Kamakura. Spears and Kamakura are directed to the production of objects using sheet material that is stacked layer-by-layer, wherein the sheet material is a mixture of build material (i.e. metal powder) and binder. Additionally, Spears explicitly recognizes that a polymer material can be used as the binder. As such, an ordinarily skilled artisan would have a reasonable expectation of success in combining the teachings of Spears and Kamakura to use a thermoplastic resin as the polymer binder in the method of Spears. The thermoplastic resin and polymer binder would merely perform the same function as disclosed in their respective references of Kamakura and Spears.
With regards to the overlapping ranges taught, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention to have selected overlapping ranges as disclosed. Selection of overlapping ranges has been held to be a prima facie case of obviousness (See MPEP § 2144.05 I). “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)”
Regarding claim 17, Spears in view of Kamakura teaches the invention as applied in claim 14. Spears teaches that the metal powder sheet is irradiated with a laser [0017], meeting the limitation.
Regarding claim 19, Spears in view of Kamakura teaches the invention as applied in claim 14. Spears teaches that the metal powder sheet is irradiated with a laser [0017] to melt or sinter [0026], meeting the limitation of laser melting and laser sintering. Spears also states the selective laser sintering/melting are common industry terms for laser beam sintering/melting in additive manufacturing [0003].
Regarding claim 20, Spears in view of Kamakura teaches the invention as applied in claim 14. Spears does not teach a special environment/atmosphere for performing the method in. As such, a person of ordinary skill in the art would reasonably understand the process to be performed at atmospheric pressure, meeting the claimed limitation.
Regarding claim 22, Spears in view of Kamakura teaches the invention as applied in claim 14. Spears teaches that the sheet can be unrolled [Fig 3], wherein the unused portions (i.e. the portions of the sheet/layer that are still rolled) would eventually be rolled out and subjected to laser irradiation, meeting the broadest reasonable interpretation of using an unused area of the film as the “new layer”.
Claims 14, 17, 19 – 20, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Spears (US2018/0214946, cited with the OA on 07/01/2024) in view of Kamakura (US2016/0101470, cited with the OA on 11/13/2024), as evidenced by Impact Plastics (NPL, 2017), and in further view of Jurg (US2021/0078076, cited with the OA of 11/13/24)
Regarding claim 14, Spears teaches a bound metal powder sheet, meeting the limitation of incorporated within, comprising powder and a binder [0021]. The binder may be a polymer [0020] and that the metal powder may be more than 80% of the total volume of the bound metal powder sheet [0021], which overlaps with the claimed range of at least 90 wt%. Wherein more than 80 vol% would include amounts near 100 vol% which overlaps with 90 wt%.
Spears shows that the method includes:
bound metal powder sheet is applied onto a build plate [Fig 2, 0010], meeting the claimed limitation of “applying the metal powder-polymer matrix flexible film to a build plate”
irradiated with an energy beam [0010] that can be a laser or electron beam to define the product to be made and debind the powder [0026], meeting the claimed limitation of “irradiating the metal powder-polymer matrix flexible film to vaporise the polymer and melt the metal particles together to form a 2D layer”
Applying another sheet to the stack [Fig 2, 0010], meeting the claimed limitation of “placing a new layer of metal powder-polymer matrix flexible film on top of the previous 2D layer, and repeating the application of the heat source for a number of cycles to produce the desired 3D product.”
Spears discloses that the binder material can be a polymer [0016, 0020], but does not state or suggest that the polymer is a thermoplastic. Spears does not explicitly teach that an additional irradiation step is performed to vaporize any residual polymer.
Kamakura teaches a method in which metal powder and binder are formed into a sheet shape, deposited a layer/sheet onto a build plate [Fig 3., 0017], and forming a metal layer of the metal powder [Fig 5., 0088, Fig 4]. Kamakura teaches that the binder of the sheet is a thermoplastic resin [0081], the thermoplastic meeting the claimed limitation of thermoplastic polymer and wherein as evidenced by “impact plastic” (NPL), thermoplastics are recyclable [Page 2] and as such, the sheets of thermoplastic polymer and metal powder of Spears in view of Kamakura meets the limitation of recyclable.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have taken the method of Spears and used the thermoplastic resin as the polymer binder, as taught by Kamakura. Spears and Kamakura are directed to the production of objects using sheet material that is stacked layer-by-layer, wherein the sheet material is a mixture of build material (i.e. metal powder) and binder. Additionally, Spears explicitly recognizes that a polymer material can be used as the binder. As such, an ordinarily skilled artisan would have a reasonable expectation of success in combining the teachings of Spears and Kamakura to use a thermoplastic resin as the polymer binder in the method of Spears. The thermoplastic resin and polymer binder would merely perform the same function as disclosed in their respective references of Kamakura and Spears.
Spears in view of Kamakura does not explicitly teach that an additional irradiation step is performed to vaporize any residual polymer. However, an ordinarily skilled artisan would reasonably understand that Spears intends to completely remove the binder (i.e. polymer) during the sintering/melting step and as such, would consider the polymer an impurity that needed removing, if not completely removed initially.
Jurg teaches a process of additive manufacturing [Abstract]. Jurg teaches that the method can include an additive manufacturing system such as selective laser sintering, melting, or electron beam melting [0035]. Jurg teaches that the system includes defect detection following formation of a layer and that said defect is corrected by re-exposing the layer/area to the energy projection [0088, 0089].
As such, it would have been obvious to one of ordinary skill in the art before the effective filing date to have re-exposed the printed layers of Spears when a defect was detected in order to improve quality control, as taught by Jurg. The presence of residual binder (i.e. polymer) in Spears following the debinding and sintering/melting step would be considered a defect by an ordinarily skilled artisan given that the intention of the step is remove the binder/polymer (as well as solidify the metal powder/particles). Given that Spears and Jurg are in the same field of endeavor of laser/electron beam based additive manufacturing, a person of ordinary skill in the art would have a reasonable expectation of success in achieving predictable results and would be motivated to combine the teachings in order to prevent the presence of undesired binder/polymer in the final product.
With regards to the overlapping ranges taught, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention to have selected overlapping ranges as disclosed. Selection of overlapping ranges has been held to be a prima facie case of obviousness (See MPEP § 2144.05 I). “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)”
Regarding claim 17, Spears in view of Kamakura and Spears teaches the invention as applied in claim 14. Spears teaches that the metal powder sheet is irradiated with a laser [0017], meeting the limitation.
Regarding claim 19, Spears in view of Kamakura and Spears teaches the invention as applied in claim 14. Spears teaches that the metal powder sheet is irradiated with a laser [0017] to melt or sinter [0026], meeting the limitation of laser melting and laser sintering. Spears also states the selective laser sintering/melting are common industry terms for laser beam sintering/melting in additive manufacturing [0003].
Regarding claim 20, Spears in view of Kamakura and Spears teaches the invention as applied in claim 14. Spears does not teach a special environment/atmosphere for performing the method in. As such, a person of ordinary skill in the art would reasonably understand the process to be performed at atmospheric pressure, meeting the claimed limitation.
Regarding claim 22, Spears in view of Kamakura and Spears teaches the invention as applied in claim 14. Spears teaches that the sheet can be unrolled [Fig 3], wherein the unused portions (i.e. the portions of the sheet/layer that are still rolled) would eventually be rolled out and subjected to laser irradiation, meeting the broadest reasonable interpretation of using an unused area of the film as the “new layer”.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant argues that flexible is not indefinite because relative terminology is not indefinite per se and that the specification provides guidance and a patentee need not define an invention with mathematical precision. Applicant further argues that the use of flexible is consistent with its plain meaning. This is not found persuasive. The term flexible is relative and applicant does not provide a clear standard for ascertaining what material is “flexible” and what is not. Applicant’s argument that the term is consistent with its plain meaning does not mean that the term clearly sets forth the metes and bounds of patent protection sought.
“The primary purpose of this requirement of definiteness of claim language is to ensure that the scope of the claims is clear so the public is informed of the boundaries of what constitutes infringement of the patent.” “It is of utmost importance that patents issue with definite claims that clearly and precisely inform persons skilled in the art of the boundaries of protected subject matter.” (MPEP 2173)
Applicant cites Dictionary.com as a plain meaning. However this definition, in addition to the definition of the specification, states that it is an ability to bend or flex easily. This is not an objective standard for ascertaining the requisite degree so as to clearly set forth the metes and bounds of patent protection sought because what constitutes bending or flexing “easily” is itself relative/subjective. Therefore, this argument is not found persuasive and the rejection is maintained.
Applicant argues that the Office’s reliance on inherency that the range disclosed by Spears that the metal powder may be more than 80% of the total volume of the bound metal powder sheet [0021] overlaps with the claimed range of metal powder being 90 wt% is improper because the Office has not basis for reasoning to show this is true. This is not found persuasive. The Office does not rely on inherency to teach this feature. Spears make clear that the volume of metal powder can be more than 80 vol%. This reasonably suggests values of nearly 100 vol% which a person of ordinary skill in the art would reasonably understand to also fall within the claimed range of 90 wt% or more. “reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art” (MPEP 2123 I). As such, the Office did not rely on an inherency assertion but instead on what the disclosure of Spears reasonably suggests to a person of ordinary skill in the art. Additionally, selection of overlapping ranges has been held to be a prima facie case of obviousness (See MPEP § 2144.05 I). “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)”.
As additional evidence, Spears states that metal or metal alloys with densities of up to 23 g/cm3 can be used [0021], which is considerably higher than polymer densities. As such, the conversion of % from vol to mass for metal powder would result in higher values. That is, the mass% of a dense metal powder would higher than 80 at 80 vol%.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AUSTIN POLLOCK whose telephone number is (571)272-5602. The examiner can normally be reached M - F (8 - 5).
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 on (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
Prosecution Insights