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 02/13/2025 has been entered. Claim 15 has been canceled. Claims 1 – 2, 4 – 11, 13 – 14, 16 – 17, and 19 – 21 remain pending. Claims 1 – 2, 4 – 11, 13, and 16 remain withdrawn per the restriction requirement on 07/01/2024. Claims 14, 17, and 19 – 21 are under examination. Claims 14, 17, and 19 – 21 have been amended.
The amendments to claims 17, 19 and 20 – 21 have overcome the previous rejections under 112(b)
Claim Rejections – U.S.C. § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 14 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 14, the claim limitation of “reformable” was not described in the specification in such a way as to reasonably convey to one skilled in the art that inventor(s) were in possession at the time of filing. Applicant points to [0022] of the pgpub (US2022/0126372) as providing support for the limitation of “reformable”. However, the paragraph describes recycling remaining scraps of the metal powder-polymer film into another film but does not appear to describe the metal-powder-polymer film being reformable. Additionally, there is no description or mention of the metal powder-polymer film being reformed (i.e. reshaped). As such, the limitation was not described in such a way as to reasonably convey to one skilled in the art that inventor(s) were in possession at the time of filing.
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, and 19 – 21 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.
Regarding claim 14, the term “reformable” is indefinite. The metes and bounds of what does and does not constitute being reformable is unclear. Applicant appears to describe reformable in the context of thermoplastics being able capable of being heated and changed into a different shape while retaining original properties due to not having cross-linking. However, applicant’s own specification describes that the polymer can be vulcanized rubber (vulcanization being a well-known cross-linking process)(see pgpub (US2022/0126372) [0013]). Additionally, the “reformable” could also means being capable of being changed into a different shape regardless of retaining original properties. As such, the metes and bounds of the limitation are unclear and therefore, indefinite. For purposes of examination, any metal powder-polymer film containing thermoplastic will be interpreted as being “reformable”.
Regarding claim 14, the phrase “the metal powder is incorporated within the thermoplastic polymer on the thermoplastic polymer sheet surface” is indefinite. The phrase is indefinite because it is not clear whether the metal powder is intended to be within the sheet on disposed on the surface of the sheet. Based on page 4, line 3 – 5 of the specification and because it appears the word “or” may have been accidentally deleted, it is interpreted that these were intended to be alternative limitations.
Regarding claim 19, the claim is indefinite. The claim is indefinite because it is not clear how the several of the Markush group alternatives are applied as “heating steps” in the method of claim 19 (which depends on claim 14). Specifically, “cold spray, kinetic spray, High-Velocity Oxygen Fuel (HVOF) spray coating, High Velocity Air-Fuel (HVAF) spray coating, plasma spray, arc spray,” are all methods of depositing/spraying/coating material on a substrate/surface and as such, it is not clear how these methods/processes are applied as heating steps, in the context of the method steps required by claim 14. Furthermore, “wire cladding” is a process by which cladding of a surface occurs using wire material as a feedstock, however, the method of claim 14 (from which 19 depends) requires depositing material using a metal-polymer film. This lack of clarity is further support by [0027] of the pgpub (US2022/0126372) which states that the process of producing the 3D product is selected from the list, thus specifying that the whole method is one of the listed processes, instead of the specific heating step. As such, it is also unclear how this process is applied as the heating step in the method of claim 14 and 19.
Regarding claim 19, the claim is indefinite because the claim appears to require that the heating step is performed by all of the steps because of the use of “and” without specifying the list as a Markush group (such as “one or more”). Therefore, based on the claim language it is unclear if all the processes listed now required in the heating step or one or more of them. For purposes of examination, it is interpreted as one or more of.
Claims 17 and 20 – 21 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, 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)
Regarding claim 14, Spears teaches a bound metal powder sheet 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%.
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 the same or 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.
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 “reformable”.
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.
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 21 is 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), or alternatively, in further view of Jurg (US2021/0078076)
Regarding claim 21, Spears in view of Kamakura teaches the invention as applied above in claim 14. 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)).
Additionally, 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.
To this, alternatively, the claim is rejected in view of the teachings of Spears (US2018/0214946) in view of Kamakura (US2016/0101470) and in further view of Jurg (US2021/0078076).
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.
Response to Arguments
Applicant's amendments and arguments thereto have been fully considered.
The amendments have overcome the previous rejections of:
Claims 14, 17, and 19 – 20 under 35 U.S.C. 103 as being unpatentable over Spears (US2018/0214946)
Claim 21 under 35 U.S.C. 103 as being unpatentable over Spears (US2018/0214946) alone, or alternatively, in further view of Jurg (US2021/0078076)
Spears notes that thermoplastics are used as materials in additive manufacturing [0002, 0015] and that the binder can be a polymer [0016, 0020]. However, Spears alone does not teach or suggest that the thermoplastic is used as the polymer.
However, upon further consideration, a new rejection is made 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)
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Spears (US2018/0214946) in view of Kamakura (US2016/0101470), or alternatively, in further view of Jurg (US2021/0078076)
Applicant argues that “flexible” is not a relative term and that the specification defines the term and as such, the standard for determining flexibility is known. These are respectfully not found persuasive. As noted by the applicant the specification specifically defines the phrase as “the metal
powder-polymer matrix film is capable of bending or flexing easily without breaking”. However, even what constitutes bending or flexing “easily” is relative/subjective. Therefore, this argument is not found persuasive.
Applicant’s arguments are directed towards prior art previously used and as such a response is provided.
Applicant argues that the films of the claimed invention do not require cutting or shaping during the printing process and that the film of the claimed invention is moved, sintered, and moved to an unsintered section to build a new layer using the same sheet and is repeated until the sheet is exhausted [Page 3, bottom – Page 4, top of remarks]. This is not found persuasive because these limitations are not stated nor required in the claimed invention and limitations from the specification are not imported into the claims (See MPEP 2111.01 II).
Applicant argues [Page 4, middle] that Spears mentions thermoplastic but does not specifically teach thermoplastic polymer as a binder. The examiner agrees.
However, the use of a thermoplastic polymer as the binder would have been obviousness in the method of Spears in view of Kamakura (US2016/0101470).
Applicant states [Page 4, middle] that the Spears does not teach the use of a metal powder and polymer mix. This is not found persuasive. Spears explicitly states “A sheet of bound powder may be formed of any powder material used in powder-based additive manufacturing. For example, the powder may include metal, ceramic, or polymer powder. The powder particles may be bound with a polymer or non-polymer binder.” [0020]. As such, Spears reasonably suggests that metal powder may be bound by a polymer.
Applicant argues that Spears is silent to reusing the bound powder sheets [page 4, bottom]. This is not persuasive because this is not required by the claims and limitations of the specification are not imported (See MPEP 2111.01 II).
Applicant argues that because Spears lists several acrylic-based monomers that are used to bound the feedstock material, that cross-linking is necessary in Spears and therefore, would produce rigid-like films. Applicant argues that because Spears requires thermoset polymers, it does not meet the claimed limitations. This is not persuasive because Spears states that the “The liquid monomers and/or oligomers can be made to polymerize and/or crosslink to form a firm, strong gel matrix or “green body” [0022]. The use of and/or implies that crosslinking is not required. Further still, [0022] is directed to disclosed examples wherein [0016] and [0020] of Spears teach a broader disclosure that the binder material can be a polymer. 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 II). As such, Spears does not state or imply that thermoset polymers are required and does not teach away from the use of thermoplastic polymers.
Applicant provides additional arguments regarding thermoset polymers not being capable of being reused or recycled [Page 5 – 6]. First, the claims do not require the polymers are reused. The claim state that the film is “reformable” which the use of thermoplastic polymer as the binder material in the method of Spears in view of Kamakura would meet. Additionally, Spears does not state or imply that the use of thermoset polymers are required or teach away from using thermoplastic polymers, as discussed above. Therefore, these arguments are not found persuasive.
Applicant argues that Spears in view of Jurg does not teach the limitation of claim 21 because the additional step is not simply for the removal of an impurity. This is not found persuasive because claim 21 explicitly states an additional step of heating “to vaporise any residual thermoplastic polymer that may be left over from the initial heating step”.
Applicant argues that the cited pertinent prior art did not include reasons they were pertinent [page 8, middle]. This is not persuasive because the cited pertinent prior of the office action on 11/13/2024 included a brief description of relevance to the claimed invention (see page 12 of the office action on 11/13/24).
Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 11,305,455 – Stacked sheet layers to form a 3D object by heating. The sheets are ceramic/metal particles bound by polymer.
US2019/0054685 – Building up a workpiece by transferring and depositing layers/sheet of preformed material including build material and support material made of polymer
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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/AUSTIN POLLOCK/Examiner, Art Unit 1738
/SALLY A MERKLING/SPE, Art Unit 1738