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 .
Status of Previous Rejection
All art rejections are maintained from previous office action of 09/03/2025.
A new ground of 101 rejection is rendered in view of amendment of claim 1 filed on 12/03/2025.
Status of Claims
Claims 1-5, 7, 9-11, 13-17, 19, 25-36 and 39 and 41 are pending. claims 1-5, 7 and 9-11 are presented for this examination. Claims 13-17, 19, 25-36 and 39 and 41 are withdrawn. Claims 1, -3, 5, 7, 10, 13 and 41 are amended.
Information Disclosure Statement
The information disclosure statement (IDS) was submitted on 11/14/2025 and is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-5, 7 and 9-11 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
A detailed 101 analysis is made as follows:
Step 2A, Prong 1: identify the abstract ideas/law of nature/natural phenomenon. Here, checking one or more metrics to compare the one or more metrics to one or more known criteria for each metrics is an evaluation, which is deemed an abstract idea according to MPEP 2106.04(a). That is, “checking to compare” is a human mental step done by human mind, not a physical step.
Step 2A, Prong 2: has the abstract ideas/law of nature/natural phenomenon been integrated into a particular practical application? Here, once the checking step is done, nothing is done to apply the abstract idea into a practical application. It should also be noted even if there is an “applying it” for the abstract idea, it is still at most considered a general “apply it” which is not a practical application. See MPEP 2106.04(g)(f)
Step 2B: does the claim recite any elements which are significantly more than the abstract ideas/law of nature/natural phenomenon? Her we look at the features outside of the abstract idea such as additively manufacturing, transforming, manipulating, and repeating the steps of additively manufacturing, transforming, manipulating to form a part. However, these features appear to be well-understood, routine and conventional features as evidenced by Connor’701 and Connor. (see 102 art rejection below over Connor and Connor’71)
As a result of rejected claim 1 , all dependent claims are also rejected under the same statue.
Claim Rejections - 35 USC § 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 1-5, 7 and 9-11 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 pre-AIA the applicant regards as the invention.
Claim 1 required step of checking one or more metrics continuously during the transformation process to the one or more metrics to compare the one or more metrics to one or more known criteria for each of the one or more metrics is unclear as to what it means by checking one or more metrics continuously during the transformation process to the one or more metrics. Clarification is required.
As a result of rejected claim 1, all dependent claims are also rejected under the same statue.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-5, 7, 9 and 11 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Connor’701 (US20170327701A1).
As for claims 1-5, 7, 9 and 11, Connor’701 discloses an additive manufacturing method for depositing a metal paste to product a metal part (i.e. claimed completely physical part), comprising:
(a)Depositing a metal paste to form a wet film in layer by layer shape (paragraph [0051]). Hence, instant claim 1 required additive manufacturing a part via a first process is met. Depositing also meets instant claim 2 required deposition and instant claim 3 required placing.
(b)Drying the wet film until a solvent is removed from the wet layer by energy input, thereby forming a dried film. (paragraph [0051]) Hence, instant claim 1 required transforming step is met. Drying also meets instant claim 5 required drying. Drying by energy input supports instant claim 4 required heating. Solvent is removed by a heated convective air flow (paragraph [0160]). Hence, instant claim 7 “convective heating” is met.
©Performing a laser scribing in which material is selectively removed from the dried film by light excitation (paragraph [0053]) Hence, instant claim 1 required manipulating via a third process is met. Instant claim 9 required removing step is also met.
d) sintering the dried film
Repeating (a) to (d) to produce the metal part.
After the metal part is formed, there are assembly step and Post annealing the metal part (paragraph [0058]). Hence, instant claimed 11 forwarding step is met.
Hence, Connor’701 anticipated instant claims.
With respect to amendment of claim 1, it is rejected under 101 above. Hence, the amendment is considered but is not given patentable distinction over prior art because it is directed to abstract idea.
Claim(s) 1-5, 7 and 9-11 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Connor (US20180071819A1).
As for claim 1, Connor discloses a method for additive metal manufacturing (i.e. a completely physical part) comprising (paragraph [0073]):
depositing a layer of metal paste within a working volume by additive manufacturing. Hence, instant claimed additive manufacturing via first process is met.
removing solvent from the deposited layer (e.g., drying the layer). Hence, instant claimed transforming via a second process is met.
manipulating the dried layer (e.g., machining the dried layer). Hence, instant claimed manipulating via a third process is met.
sintering the dried layer, repeating the method for each successive layer of working material and/or support material until a workpiece with geometry approximating the virtual part model is formed.
With respect to amendment of claim 1, it is rejected under 101 above. Hence, the amendment is considered but is not given patentable distinction over prior art because it is directed to abstract idea.
As for claims 2-3, depositing a layer of metal paste meets instant claim 2 required deposition and instant claim 3 required placing. (paragraph [0032][0033])
As for claims 4-5, removing solvent from the deposited layer (e.g., drying the layer) meet instant claim 4 required heating and instant claim 5 required drying.
As for claim 7, removing solvent from the deposited layer includes a thermal mechanism such as a radiative heating lamp (paragraph [0055]) to dry the layer. Hence, radiative heating lamp meet instant claimed radiative heating.
As for claim 9, manipulating the dried layer (e.g., machining the dried layer) can include material removal mechanism. (paragraph [0060]) line 2) Hence, material removal mechanism meets instant claimed removing a portion of the transformed part.
As for claim 10, material removal mechanism includes a cutting tool (paragraph [0060]) which suggests cutting.
As for claim 11, sintering the dried layer meets instant claimed forwarding step.
Response to Argument
Applicant’s argument filed on 12/03/2025 is considered but is not persuasive because amendment of claim 1 is directed to an abstract idea and rejected under 101 above. Hence, such amendment is not given patentable distinction over prior art.
Applicant argues that additional steps of prior art does not anticipate applicant’s claims, argument is incommensurate in scope of claim 1 which recites open inclusive term “comprising”. Comprising does not (emphasis added) exclude any additional unrecited steps according to MPEP 2111.03 I Comprising.
Applicant argues varies metrics is evaluated and compared to known measure criteria to adjust and optimize the transformation process in the instant application, argument is incommensurate in scope of claim 1 which does not recite how the evaluation and comparison leads to adjust and optimize the transformation process, let alone a particular improvement of such transformation process.
It is further noted that overcome of 101 rejections can be done in a few different ways going through the 101 prongs above but the most common are integrating the exception into a practical application, showing that an integration of the exception results in an improvement to the field of use and technological environment or demonstrating that the claim limitations other than the exception amount to significantly more.
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 JENNY R WU whose telephone number is (571)270-5515. The examiner can normally be reached on 8:30 AM-5:00 PM.
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/JENNY R WU/Primary Examiner, Art Unit 1733
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