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
Response to Amendments
The amendment filed on 03/23/26 has been entered. Claim 23 is newly added and finds support in at least the original claim set. Claim 22 has been canceled. The amendments to claim 14 find support in at least Page 3, line 29 – 35. Claims 1 – 2, 4 – 11, 13 – 14, 16 – 17, 19 – 20, and 23 are pending. Claims 1 – 2, 4 – 11, 13, and 16 remain withdrawn. Claims 14, 17, 19 – 20, and 23 are under examination.
Applicant’s amendments have overcome the previous rejections under 112(b).
Claim Interpretation
The term “flexible” is defined as any material that is capable of bending or flexing.
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, and 19 – 20 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 [Fig 3]:
The bound metal powder sheet is supplied as a continuous roll [0019], meeting the claimed limitation of a flexible film and “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”
Wherein later/inner portions of the roll that are supplied later are considered to be “unused portions” of the sheets because it is a continuous roll, meeting the claimed limitation of “placing an used portion of the 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.” and performing a continuous method (i.e., the method steps are repeated).
The disclosure that a cutter may cut the continuous roll into sheets prior to deposition is considered an alternative/preferred embodiment [0019]. “A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971)” (MPEP 2123 I and II)
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.
Claim 23 under 35 U.S.C. 103 as being unpatentable over Spears (US2018/0214946) in view of Kamakura (US2016/0101470), as applied to claim 14, in further view of Xu (US2019/0054536)
Regarding claim 23, Spears in view of Kamakura teaches the invention as applied in claim 14. Spears in view of Kamakura teach that the thermoplastic for binding the particles can be polylactic acid (PLA), polypropylene (PP), polyphenylene sulfide (PPS), polyamide (PA), ABS, or polyether ether ketone (PEEK) as well as polyvinyl alcohol (PVA) or polyvinyle butyral (PVB) [0081, Kamakura]. However, polycaprolactone is not expressly disclosed.
Xu teaches a method of extruding a composite of polymer and metal powder that then forms a filament [0006, 0008]. Xu discloses various polymers that are capable of binding the metal powder in amounts of high metal powder content (i.e., about 85 wt% of metal powder or more) [0162]. Xu discloses that polycaprolactone is one such polymer, along with poly(lactic) acid [0026]. Moreover, Xu discloses that the polymer is capable of being thermally decomposed to leave the particles behind [0066].
It would have been obvious to one of ordinary skill in the art before the effective filing date to have substituted the polylactic acid polymer disclosed by Spears in view of Kamakura with polycaprolactone, as disclosed by Xu. Both Spears in view of Kamakura and Xu are in the same field of endeavor of additive manufacturing, including printing with a material that comprises both polymer and metal powder. As such, an ordinarily skilled artisan would have considered the teachings of Xu to be pertinent to the disclosures of Spears and Kamakura. Moreover, Xu acknowledges that polycaprolactone can serve as a polymer for binding metal powder in additive manufacturing with high metal powder content and can be thermally decomposed (i.e. as in the method of Spears in Kamakura). As such, an ordinarily skilled artisan would have had a reasonable expectation of success in substituting the polymer disclosed in Spears in view of Kamakura with polycaprolactone disclosed by Xu to achieve predictable results. That is, to achieve a polymer-metal powder composite that is capable of solidifying and the polymer being capable of being thermally decomposed.
The selection of a known material based on its suitability for its intended use is a prima facie case of obviousness (In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960)) (See MPEP 2144.07).
Claims 14, 17, and 19 – 20 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:
The bound metal powder sheet is supplied as a continuous roll [0019], meeting the claimed limitation of a flexible film and “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”
Wherein later/inner portions of the roll that are supplied later are considered to be “unused portions” of the sheets because it is a continuous roll, meeting the claimed limitation of “placing an used portion of the 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.” and performing a continuous method (i.e., the method steps are repeated).
The disclosure that a cutter may cut the continuous roll into sheets prior to deposition is considered an alternative/preferred embodiment [0019]. “A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971)” (MPEP 2123 I and II)
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 Jurg 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 Jurg 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 Jurg 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.
Claim 23 under 35 U.S.C. 103 as being unpatentable over Spears (US2018/0214946) in view of Kamakura (US2016/0101470) and Jurg (US2021/0078076), as applied to claim 14, in further view of Xu (US2019/0054536)
Regarding claim 23, Spears in view of Kamakura and Jurg teaches the invention as applied in claim 14. Spears in view of Kamakura and Jurg teach that the thermoplastic for binding the particles can be polylactic acid (PLA), polypropylene (PP), polyphenylene sulfide (PPS), polyamide (PA), ABS, or polyether ether ketone (PEEK) as well as polyvinyl alcohol (PVA) or polyvinyle butyral (PVB) [0081, Kamakura]. However, polycaprolactone is not expressly disclosed.
Xu teaches a method of extruding a composite of polymer and metal powder that then forms a filament [0006, 0008]. Xu discloses various polymers that are capable of binding the metal powder in amounts of high metal powder content (i.e., about 85 wt% of metal powder or more) [0162]. Xu discloses that polycaprolactone is one such polymer, along with poly(lactic) acid [0026]. Moreover, Xu discloses that the polymer is capable of being thermally decomposed to leave the particles behind [0066].
It would have been obvious to one of ordinary skill in the art before the effective filing date to have substituted the polylactic acid polymer disclosed by Spears in view of Kamakura and Jurg with polycaprolactone, as disclosed by Xu. Both Spears in view of Kamakura and Jurg, and Xu are in the same field of endeavor of additive manufacturing, including printing with a material that comprises both polymer and metal powder. As such, an ordinarily skilled artisan would have considered the teachings of Xu to be pertinent to the disclosures of Spears and Kamakura. Moreover, Xu acknowledges that polycaprolactone can serve as a polymer for binding metal powder in additive manufacturing with high metal powder content and can be thermally decomposed (i.e. as in the method of Spears in Kamakura). As such, an ordinarily skilled artisan would have had a reasonable expectation of success in substituting the polymer disclosed in Spears in view of Kamakura and Jurg with polycaprolactone disclosed by Xu to achieve predictable results. That is, to achieve a polymer-metal powder composite that is capable of solidifying and the polymer being capable of being thermally decomposed.
The selection of a known material based on its suitability for its intended use is a prima facie case of obviousness (In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960)) (See MPEP 2144.07).
Response to Arguments
Applicant's arguments filed have been fully considered.
The term “flexible” and applicant’s arguments directed to the term have been reconsidered and are persuasive. The examiner interprets “flexible” as any material capable of bending or flexing to meet the term.
Applicant’s arguments in regards to Spears have been fully considered but are not persuasive.
Applicant argues that the method is continuous whereas Fig 3 of Spears depicts a cutter for each sheet and therefore, is not continuous. First, the disclosure that a cutter may cut the continuous roll into sheets prior to deposition is considered an alternative/preferred embodiment, where Spears expressly teaches that the sheet can be provided as a continuous roll [0019]. “A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971)” (MPEP 2123 I and II)
Additionally, the term “continuous” as applied in the claim would limit that the method is continuously performed and the method as claimed includes specific steps of applying a film, heating, and placing an unused portion of the film onto the previously formed layer. As such, these steps as claimed are still required to be performed and the disclosure in Spears of applying a sheet, heating, and then applying a later portion (i.e., unused portion) of the roll as another sheet, meets the limitation of “continuous” in the claims because the method steps are being constantly repeated to produce a 3D component. Therefore, applicant’s argument regarding continuous and the term distinguishing from Spears is not commensurate with the scope of claim.
Applicant argues that Spears does not disclose that the film which was previously disposed is moved around again/repositioned after heating (which is repeated) until the sheet is exhausted and a new section of the continuous roll is introduced. This is not found persuasive because this is not commensurate with the scope of the claims. The claims require that an unused portion of the film is placed on top of the previous 2D layer and the heating step repeated. As discussed in the rejection above, the later/inner portions of the continuous roll of Spears that are supplied later are considered to be “unused portions” of the sheets because it is provided as a continuous roll, meeting the claimed limitation of “placing an used portion of the metal powder-polymer matrix flexible film on top of the previous 2D layer”.
The currently pending rejections are:
Claims 14, 17, and 19 – 20 under 35 U.S.C. 103 as being unpatentable over Spears (US2018/0214946) in view of Kamakura (US2016/0101470), as evidenced by Impact Plastics (NPL, 2017)
Claim 23 under 35 U.S.C. 103 as being unpatentable over Spears (US2018/0214946) in view of Kamakura (US2016/0101470), as applied to claim 14, in further view of
Claims 14, 17, and 19 – 20 under 35 U.S.C. 103 as being unpatentable over Spears (US2018/0214946) in view of Kamakura (US2016/0101470), as evidenced by Impact Plastics (NPL, 2017), and in further view of Jurg (US2021/0078076)
Claim 23 under 35 U.S.C. 103 as being unpatentable over Spears (US2018/0214946) in view of Kamakura (US2016/0101470), as evidenced by Impact Plastics (NPL, 2017)
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 Austin M Pollock whose telephone number is (571)272-5602. The examiner can normally be reached M - F (11 - 8 ET).
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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.
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/AUSTIN POLLOCK/Examiner, Art Unit 1738
/SALLY A MERKLING/SPE, Art Unit 1738
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