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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/22/2026 has been entered.
Status of Previous Rejection
Art rejections over Connor as well as 101 rejections are maintained from previous office action of 12/23/2025.
Art rejection over Connor’701 is withdrawn.
A new art rejection over Connor’426 and 112 2nd paragraph rejection are rendered in view of amendment of claim 1.
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 Claims 13-17, 19, 25-36 and 39 and 41 are withdrawn. Claim 1 is 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, instant claim 1 is amended to recite (1) “receiving signal by a sensing system” which is data gathering because sensing system can be a human mind; (2) “comparing, by a controller” which a controller is a general computer or a human mind; and (3)automatically adjusting by the controlled based on the comparing step” which are all mentals steps, deemed an abstract idea according to MPEP 2106.04(a).
In summary, claim 1 has been amended to provide more details on the instructions linked to the controller. These instructions entail the steps of observing and comparing of metrics and criteria which can be done in a human mind and therefore considered the abstract idea of mental process. See MPEP 2106.04(a)(III) and 2106.04(a)(III)(B)/(C)
The courts do not distinguish between mental processes that are performed entirely in the human mind and mental processes that require a human to use a physical aid (e.g., pen and paper or a slide rule) to perform the claim limitation. See, e.g., Benson, 409 U.S. at 67, 65, 175 USPQ at 674-75, 674 (noting that the claimed "conversion of [binary-coded decimal] numerals to pure binary numerals can be done mentally," i.e., "as a person would do it by head and hand."); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1139, 120 USPQ2d 1473, 1474 (Fed. Cir. 2016) (holding that claims to a mental process of "translating a functional description of a logic circuit into a hardware component description of the logic circuit" are directed to an abstract idea, because the claims "read on an individual performing the claimed steps mentally or with pencil and paper"). Mental processes performed by humans with the assistance of physical aids such as pens or paper are explained further below with respect to point B.
Step 2A, Prong 2: has the abstract ideas/law of nature/natural phenomenon been integrated into a particular practical application? Here, once the receiving and comparing step are done, nothing is done to apply the abstract idea into a practical application because automatically adjusting based on the comparison is not a practical application. The automatically adjusting step is recited at a high level of generality such that it amounts to no more than mere instructions to apply the abstract using a generic step. Accordingly, this additional step of adjusting does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
In addition, adjusting a parameter of the transformation process based on the comparing step until the transformation process is completed is a well understood routine and conventional as evidenced by Connor ([0045][0047][0048]) and Connor’426([0084]) below. See MPEP 2106.05(d)
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 and Connor’426. (see 102 art rejection below over Connor and Connor’426)
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.
Instant claim 1 recites “automatically adjusting based on the comparison”. Term “based on” is unclear as to what aspect(s) of the comparison it is "based on", and what parameters, factors, etc. go into the final output that was "based on". For example, some movies are "based on" the book, but when you read the book you think "what part of the book was it 'based on'?!".
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 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. Conner discloses a sensor 120 monitoring work piece temperature within a work volume (e.g. build volume), and the work piece temperature is dynamically adjusted by a control system 160 connected to the sensor 120 during/after the drying process. ([0045][0047][0048]) Hence, Connor supports a step of adjusting a parameter of the transformation process based on the comparing step until the transformation process is completed.
Hence, Connor anticipated instant claim 1.
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.
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’426 (US20190361426A1).
As for claims 1-5, 7 and 9-11, Connor discloses a method for facilitating part fabrication comprising depositing a metal paste substantially along a first, second, and third additive toolpaths; the method further comprises, after depositing the metal paste, drying the metal paste to form a green body; substantially following the first and second subtractive toolpaths comprises cutting the green body substantially along the first and second subtractive toolpaths; and the method further comprises, after cutting the green body, sintering the green body. Hence, Connor discloses claimed additive manufacturing which reads on claim 2 required printing and claim 3 required placing, transforming by drying with a lamp[0044] which reads on claim 7 required radiative heating and claim 4 required heating and claim 5 required drying, manipulating by removing which reads on claim 9 required removing, or cutting which reads on claim 10 required cutting and sintering the cut green body which reads on claim 11 forwarding.
Connor’426 explicitly discloses drying can include close loop controls, wherein drying actuator toolpaths can be modified (e.g., movement rates and/or dwell times changed, waypoints added and/or removed, etc.) in response to measurements sampled by the sensors. [0084]
Hence, Connor’426 supports a step of adjusting a parameter of the drying process based on the comparing step until the drying process is completed as required by instant claim 1 amendment.
Response to Argument
Applicant’s argument filed on 03/23/2026 is considered but is not persuasive because amendment of claim 1 is still directed to an abstract idea and rejected under 101 above. Hence, such amendment is not given patentable distinction over prior art.
Applicant argues the amendment address the technical problem and improvement, it should be noted simply automatically adjusting based on the comparison is not an actual integration into a practical application.
There can be no improvement as the supposed improvements would need to be actively applied in order for the improvements within the field of endeavor. This is NOT an improvement to the computer based on the below MPEP recitation.
2106.05(a) "it is important to keep in mind that an improvement in the abstract idea itself (e.g. a recited fundamental economic concept) is not an improvement in technology. For example, in Trading Technologies Int’l v. IBG, 921 F.3d 1084, 1093-94, 2019 USPQ2d 138290 (Fed. Cir. 2019), the court determined that the claimed user interface simply provided a trader with more information to facilitate market trades, which improved the business process of market trading but did not improve computers or technology." In the instant case, automatically adjusting the process parameter by a computer based on the comparison merely facilitates the transformation process, but did not improve computer or technology itself.
Furthermore, after the examiner has consulted the specification and determined that the disclosed invention improves technology, the claim must be evaluated to ensure the claim itself reflects the disclosed improvement in technology. Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1316, 120 USPQ2d 1353, 1359 (Fed. Cir. 2016) (patent owner argued that the claimed email filtering system improved technology by shrinking the protection gap and mooting the volume problem, but the court disagreed because the claims themselves did not have any limitations that addressed these issues). That is, the claim must include the components or steps of the invention that provide the improvement described in the specification. However, the claim itself does not need to explicitly recite the improvement described in the specification (e.g., "thereby increasing the bandwidth of the channel"). The full scope of the claim under the BRI should be considered to determine if the claim reflects an improvement in technology (e.g., the improvement described in the specification). In making this determination, it is critical that examiners look at the claim "as a whole," in other words, the claim should be evaluated "as an ordered combination, without ignoring the requirements of the individual steps." When performing this evaluation, examiners should be "careful to avoid oversimplifying the claims" by looking at them generally and failing to account for the specific requirements of the claims. McRO, 837 F.3d at 1313, 120 USPQ2d at 1100.
Because there is no alleged technical improvement such as real time feedback that creates spatial or temporal drying zone and reduced gradient/warping , yielding unform densification and machinability with respect to claim language, instant amended claim 1 remains rejected under 101.
As a result of maintained 101 rejection, all 102 art rejections are maintained.
Conclusion
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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