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 .
DETAILED ACTION
Pursuant to a preliminary amendment, claims 1-4, 6-10 and 15-25 are currently pending in the instant application.
Response to Election/Restriction
Applicant's election without traverse of Group II, claims 15-20, directed to a system; and the election with traverse of:
Species (A): further comprising an additional step or element such as, for example, further comprising (d) testing each of the first and second materials with respect to an electrical property, chemical property, optical property, or any combination thereof (claim 2);
Species (B): wherein testing comprises measuring an electrochemical impedance spectroscopy (ESI) spectrum for each of the first and second materials (claim 3);
Species (C): wherein determining (e) comprises use of a catalyst, a plasmonic nanoparticle, an energy storage device, an optoelectric device, etc. (claim 6);
Species (C1): a catalyst (claim 6);
Species (D): wherein subjecting (c) is effective to sinter the one or more first precursors together to form a first material…to form a second material (claim 10);
Species (E): wherein the first precursors comprise at least three elements in a first compositional ratio; and the second precursors comprise the same elements in a second compositional ratio different from the first compositional ratio (claim 13); and
Species (F): wherein the dispensing device comprises at least three reservoirs coupled to the nozzle, each reservoir containing a different element solution…and a computer (claim 18), in the reply filed on September 3, 2025 is acknowledged.
Claims 1-4 and 6-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a non-elected invention, there being no allowable generic or linking claim.
Claim 17 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a non-elected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on September 3, 2025.
Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election of invention has been treated as an election without traverse (MPEP
§ 818.03(a)).
Response to Traversals:
The traversal of is on the grounds that: (a) with respect to Species (A)-(F), the Office Action has not properly evaluated whether species as disclosed in the application are actually independent or related, as otherwise required by MPEP §§ 806.04(b) and 808.0l(a). Indeed, since many of the claims for identified Species A-F are disclosed as related in the application (and thus not mutually exclusive), restriction between such claims is improper (Applicant Remarks, pg. 7, fifth full paragraph through pg. 8, second full paragraph).
Regarding (a), With regard to Species (A)-(E), Applicant’s arguments are rendered moot in view of Applicant’s election of Group II for search and examination. Regarding Species (F), Applicant did not distinctly and specifically point out the supposed errors in the Examiner’s action as required by 37 CFR 1.111(b). Additionally, MPEP 806.04(f) indicates that:
“Where two or more species are claimed, a requirement for restriction to a single species may be proper if the species are mutually exclusive. Claims to different species are mutually exclusive if one claim recites limitations disclosed for a first species but not a second, while a second claim recites limitations disclosed only for the second species and not the first. This may also be expressed by saying that to require restriction between claims limited to species, the claims must not overlap in scope” (underline added).
Species (F) required an election between the different species of dispensing devices, wherein each species comprises different components, wherein claim 17 recites a dispensing device comprising ink jet printer heads, additive manufacturing printer head, pipette, and combinations thereof; and claim 18 recites a dispensing device comprising three reservoirs coupled to a nozzle, computer readable storage media, processors, control system, solutions, etc. As noted supra, one claim recites limitations disclosed for a first species but not a second, while a second claim recites limitations disclosed only for the second species and not the first. Moreover, each of the dispensing devices recited in claims 17 and 18 require different fields of search (e.g., searching different classes/subclasses or electronic resources, or employing different search queries); the prior art applicable to one species would not likely be applicable to another species; and/or the species are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph including searching the different components including Each species can comprise different classifications such as B01J14/00, B01J19/00, B01J19/0006, B01J/0046, B01J/004, B01J2219/00, B01J2291/00049, B01J2219/0036, etc.
The restriction requirement is still deemed proper and is therefore made FINAL.
The claims will be examined insofar as they read on the elected species.
Therefore, claims 15, 16 and 18-25 are under consideration to which the following grounds of rejection are applicable.
Priority
The present application filed March 9, 2022 claims the benefit of US Provisional Patent Application 63/158645, filed March 9, 2021.
Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of the first paragraph of 35 U.S.C. 112. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application 63/158645, filed March 9, 2021, fails to provide adequate support or enablement in the manner provided by the first paragraph of 35 U.S.C. 112 for one or more claims of this application. The specific method steps recited in independent claim 15 does not have support for; “a control system operatively coupled to the dispensing device and the heating device, comprising one or more processors and computer readable storage media”; “subject, via the heating device,, each of the first and second portion of the substrate …and to convert the deposited one or more second precursors into a second material”; and “the first time period is less than 60 seconds”. Therefore, the priority date for the presently claimed invention is March 9, 2022, the filing date of US Patent Application 17/690,767.
Applicants are invited to specifically indicate the location of the cited phrase pertinent to claim 15 of the instant application.
Information Disclosure Statement
The information disclosure statements (IDSs) submitted on March 6, 2022 and June 22, 2022 have been considered. Initialed copies of the IDSs accompany this Office Action.
Claim Objections/Rejections
Claim Interpretation
The system of claim 15 is interpreted to comprise: (a) a dispensing device having a nozzle facing a surface of a substrate, wherein the substrate comprises a first portion and a second portion, which are spaced apart from one another; and wherein the nozzle or the substrate is movable with respect to the other; (b) a heating device that can generate a temperature of at least 500 oC; and (c) a control system comprising one or more processors and computer readable storage media, operatively coupled to the dispensing device and the heating device.
Claim Rejections - 35 USC § 112(b)
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 15, 16 and 18-25 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
Claims 15, 16 and 18-25 are indefinite because the claims appear to recite both a product and process in the same claim. The examiner cautions that according to the MPEP 2173.05(p)(II) states that a single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112, second paragraph. PXL Holdings v. Amazon.com, Inc., 430 F.2d 1377, 1384, 77 USPQ2d 1140, 1145 (Fed. Cir. 2005); Ex parte Lyell, 17 USPQ2d 1548 (Bd. Pat. App. & Inter. 1990) (claim directed to an automatic transmission workstand and the method of using it held ambiguous and properly rejected under 35 U.S.C. 112, second paragraph). For example, claim 15 is directed to “a system” such as recited in claim 15, line 1, where the system comprises: “a dispensing device having a nozzle facing a surface of a substrate” in line 2; ”a heating device” in line 5; and “a control system comprising one or more processors and computer readable storage media, operatively coupled to the dispensing device and the heating device” in lines 6-7; while claim 15 also recites: “storing instructions that, when executed by the one or more processors, cause the control system to: control the dispensing device to position the nozzle” in line 10; “deposit, via the nozzle, one or more first precursors on the first portion” in line 12; “control the dispensing device to position the nozzle with respect to a second portion of the substrate” in lines 13-14; “deposit, via the nozzle, one or more second precursors” in line 15; and “subject, via the heating device, each of the first and second portions of the substrate to the first temperature for a first time period so to convert the deposited one or more first precursors into a first material and to convert the deposited one or more second precursors into a second material, wherein the first material has a different composition than the second material, and a duration of the first time period is less than 60 seconds” in lines 17-22. Such claims can also be rejected under 35 U.S.C. 101 based on the theory that the claim is directed to neither a “process” nor a “machine,” but rather embraces or overlaps two different statutory classes of invention set forth in 35 U.S.C. 101 which is drafted so as to set forth the statutory classes of invention in the alternative only. Id. at 1551. It is noted that instant claim 15 does not define the product in terms of the process by which it is made (See, MPEP 2173.05(p)); and does not focus on capabilities of the system. Instead, instant claim 15 clearly recites a product, and a process of using the product.
Claim 15 is indefinite for the recitation of the term “the first and second portions” such as recited in claim 15, line 17. There is insufficient antecedent basis for the term “the first and second portions” in the claim because claim 15, lines 10-11 and 13-14 recite the terms “a first portion of the substrate” and “a second portion of the substrate”.
Claim 18 is indefinite for the recitation of the term “the dispensing device comprises…the one or more second precursors for deposition” in claim 18, lines 1-11 because claim 18 depends from claim 15, wherein claim 15 already recites what the dispensing device and the computer readable storage media comprise. Thus, dependent claim 18 cannot change what the dispensing device and the computer readable storage media are recited to comprise in independent claim 15. Moreover, claim 15 does not recite the presence of elements, additional instructions, and/or solutions and, thus, the metes and bounds of the claim cannot be determined.
Claims 19-23 are indefinite for the recitation of the term “the first and second materials” such as recited in claim 19, line 6. There is insufficient antecedent basis for the term “the first and second materials” in the claim because claim 15, lines 19-20 recite the terms “a first material” and “a second material”.
Claim 19 is indefinite for the recitation of the term “wherein the computer readable storage media stores additional instructions… cause the control system to test each of the first and second materials” such as recited in claim 19, lines 4-5 because claim 19 depends from claim 15, wherein claim 15 already recites that the computer readable storage media stores instructions to control the system. It is unclear whether the evaluation device of claim 19 “further comprises” computer readable storage media. Moreover, claim 15 does not recite the presence of any materials and/or testing materials and, thus, the metes and bounds of the claim cannot be determined.
Claim 20 is indefinite for the recitation of the term “wherein the computer readable storage media stores additional instructions…to determine a composition of a material” such as recited in claim 20, lines 1-3 because claim 20 depends from claims 15 and 19, wherein claim 15 already recites that the computer readable storage media stores instructions to control the system; and wherein claim 19 already recites that the computer readable storage media stores additional instructions…cause the control system to test each of the first and second materials, such that it is unclear whether the storage media of claim 20 stores ‘additional additional instructions’ after the “additional instructions” recited in claim 19; and it is unclear whether ‘testing the material’ as recited in claim 19 is the same (or different) from ‘determining the composition of the material’ as recited in claim 20. Moreover, claims 15 and 19 do not recite any predetermined applications, and/or compositions of materials and, thus, the metes and bounds of the claim cannot be determined.
Claim 21 is indefinite for the recitation of the term “the first and second channels” such as recited in claim 21, line 6. There is insufficient antecedent basis for the term “the first and second channels” in the claim because claim 21, lines 4-5 recite the terms “a first channel” and “a second channel”.
Claims 24 and 25 are indefinite for the recitation of the terms “the first temperature” and “the first time period” such as recited in claim 24, line 1 because the claims are directed to a system and not to a method of making or using the system. Although claims 24 and 25 depend from claim 15, the system of claim 15 does not comprise precursors and/or materials that are dispensed, heated, and/or converted over a period of time and, thus, the metes and bounds of the claim cannot be determined.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 18-20 are rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 18 recites (in part): “wherein the dispensing device comprises at least three reservoirs, each reservoir containing a different solution…one or more second precursors for deposition” in lines 1-11 because claim 18 depends from claim 15, wherein claim 15 already recites what the dispensing device and the computer readable storage media comprise; and claim 15 does not recite the presence of elements, additional instructions, and/or solutions. Thus, claim 18 is an improper dependent claims for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 19 recites (in part): “wherein the computer readable storage media stores additional instructions that, when executed by the one or more processors, cause the control system to test, via the evaluation device, each of the first and second materials” in lines 4-6 because claim 19 depends from claim 15, wherein claim 15 already recites that the computer readable storage media stores instructions to control the system; and claim 15 does not recite the presence of any materials and/or testing materials.
Thus, claim 19 is an improper dependent claims for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 20 recites (in part): “wherein the computer readable storage media stores additional inst1uctions that, when executed by the one or more processors, cause the control system to determine a composition of a material for use in a predetermined application based at least in part on results of the testing” in lines 1-4 because claim 20 depends from claims 15 and 19, wherein claim 15 already recites that the computer readable storage media stores instructions to control the system; and wherein claim 19 already recites that the computer readable storage media stores additional instructions…cause the control system to test each of the first and second materials. Moreover, claims 15 and 19 do not recite any predetermined applications, and/or compositions of materials. Thus, claim 20 is an improper dependent claims for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Applicant may cancel the claim, amend the claim to place the claim in proper dependent form, rewrite the claim in independent form, or present a sufficient showing that the dependent claim complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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 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.
Claims 15, 16, 18-20 and 22-25 is rejected under 35 U.S.C. 102(a)(1)/102(a)(2) as being anticipated by Lewis et al. (hereinafter “Lewis”) (US Patent No. 10462907, issued October 29, 2019).
Regarding claims 15, 18, 20, 24 and 25, Lewis teaches a printed 3D functional part including a 3D structure comprising a structural material, and at least one functional electronic device is at least partially embedded in the 3D structure, wherein the functional electronic device has a base secured against an interior surface of the 3D structure; and one or more conductive filaments are at least partially embedded in the 3D structure and electrically connected to the at least one functional electronic device (interpreted as a system comprising a control system, claim 15) (Abstract). Lewis teaches a 3D printer that comprises two or more computer-controlled modular printheads removably mounted adjacent to each other, wherein each printhead includes at least one nozzle for extruding and depositing structural and/or functional filaments (interpreted as a dispensing device having a nozzle facing a surface to deposit precursors on a substrate; nozzle movable with respect to the substrate; and a computer control system, claims 15 and 18-20) (col 2, lines 35-39). Lewis teaches in Figure 13, a photograph of a customized 3D printer including a dual printhead designed and built at Harvard University (interpreted as a nozzle facing a surface of a substrate and constructed to deposit precursors onto the substrate, claim 15) (col 3, lines 51-53; and Figure 13). Figure 13 is shown below:
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Lewis teaches that the 3D printer employed for extrusion and deposition can include a single printhead or multiple printheads (e.g., from two to eight printheads), where each printhead is modular and independently computer-controlled, wherein the modular, computer-controlled printheads can be operated simultaneously for co-printing of different materials, wherein each printhead includes at least one nozzle (or multi-nozzle array) for extruding a structural and/or functional filament, where the term "functional filaments" refers to conductive and/or device filaments, such that the 3D printer can further include a build platform or substrate underlying the computer-controlled, modular printheads for deposition of extruded structural or functional filaments (interpreted as comprising a dispensing device coupled to a nozzle; substrates comprising portions; at least three reservoirs each with a different element; and storing additional instructions, claims 15 and 18) (col 15, lines 30-46). Lewis teaches referring to Figure 4, where each printhead or nozzle is configured to be able to translate in the x, y and/or z directions by attachment to a standard CNC (computer numerical controlled) stage, such that the nozzle can also be rotated about the x-, y- and/or z-axis for 6-degre of freedom movement, wherein the nozzle can be in fluid communication with multiple ink channels that allow for printing with different inks by selection of an appropriate channel (interpreted as movable with respect to the substrate; and channels, claims 15 and 21) (col 15, lines 47-51). Lewis teaches that the computer-controlled printhead can comprise at least one elevated temperature printhead that includes a heater for extrusion at elevated temperatures, wherein each can be configured to receive a continuous feed of a monofilament of material (thermoplastic polymer or ink from an ink reservoir that can be extruded (interpreted as computer controlled; heating device; and comprising at least three reservoirs, claims 15 and 18) (col 15, line 67; and col 16, lines 1-6). Lewis teaches that the first electrochemically active material can comprise a single or multicomponent oxide, such as (where M = metal such as Co, Ni, Fe, Mn, Ti, V, etc.): LixMn1-y, etc.; and the second electrochemically active material can be selected from the group consisting of (where M = metal such as Co, Ni, Fe, Mn, Ti, V, etc.): Li4Ti5O12 (LTO), TiO2, SnO2, SnO2, SN, Si, C, LiMyN2 with M in a low oxidation state (interpreted as different materials, col 14, lines 38-49). Lewis teaches that after printing, the 3D structure, which can be a hearing aid, cell phone housing, or any of a wide range of possible structures, can optionally be heated to a temperature sufficient to induce sintering of the structural and/or conductive materials, wherein the selected temperature for sintering can be in the range of at a minimum of about 80 °C to about 150°C (interpreted as encompassing ability to heat to at least 500C; and 1000-3000C for any length of time, claims 15, 24 and 25) (col 14, lines 59-65). Lewis teaches that a monofilament of a suitable material, such as a thermoplastic polymer, can be fed to the elevated temperature printhead from a spool, and the extrusion can be carried out at temperatures in the range of, for example, about 100° C to about
400° C (col 16, lines 34-37). Lewis teaches that commercially available computer aided design software such as SolidWorks or AutoCAD can be used to produce a digital 3D model of the desired printed structure, wherein these software packages are capable of exporting the 3D models as .STL files (interpreted as computer controlled and programmable, claims 15, and 18-20) (col 16, lines 61-67).
Regarding claim 16, Lewis teaches that the functional electronic devices can also be printed along with the 3D structure itself using direct-write fabrication, such that it is further contemplated that direct-write technology can be integrated with other 3D printing methods (e.g., inkjet printing on a powder bed, selective laser sintering of a powder bed, stereolithography, fused deposition modeling, direct inkjet printing of UV curable resins), so that different components, devices or regions of a single 3D part can be produced using different 3D printing approaches (interpreted as comprising a laser, claim 16) (col 4, lines 10-20).
Regarding claim 19, Lewis teaches that the one or more conductive filaments at least partially embedded in the 3D structure and electrically connected to the at least one functional electronic device (interpreted as also comprising evaluation devices; and devices that measure an electrical property of a material, claim 19) (col 21, lines 15-18). Lewis teaches that a room temperature printhead is controlled pneumatically using an EFD pressure box (col 17, lines 43-44). Lewis teaches that Figures 7A-7C exemplify a 3D printed embedded antenna 700 including a 3D rendering of the antenna design, a schematic of a multi-material tool path for co-depositing the structural (matrix) material and the conductive ink, and an optical image of the embedded antenna after printing (interpreted as a device to measure an electrical or optical property, claim 19) (col 18, lines 7-11). Lewis teaches in Figures 9A-9C, an exemplary 3D printed torque wrench strain sensing device 900 that includes an Arduino board 904a, surface mount resistor 904b, strain sensor 904c comprising silver-doped silicone, silver conductive filaments 906, and bottom and top portions 902a, 902b of a matrix or structural body 902 made from PLA FIG. 9D including an analog voltage reading pin is incorporated into the device to monitor the voltage change between the resistors (FIG. 9E) (interpreted as an evaluation device that measures an electrical property of a material; and encompassing pogo pins, claim 19) (col 18, lines 52-57; and col 19, lines 24-26).
Regarding claims 22 and 23, Lewis teaches that the functional electronic device can be an active or passive electronic component (e.g., resistor, capacitor, etc.), an integrated circuit, a printed circuit (PCB) or another electronic device, such as a sensor, a resonator, an electromechanical component (e.g., motor, switch, fan, etc.) or an electrochemical component (e.g., battery) (interpreted as including pogo pins, claim 21) (col 11, lines 23-30). Lewis teaches 3D printed functional parts including an embedded circuit and sensor; and embedding a programable processor into the 3D component (interpreted as an optical sensor, claim 23) (col 18, line 67; and col 19, lines 1-2). Lewis teaches that the printed embedded circuit and printed circuit board as illustrated in Figure 8A shows exemplary 3D printed PCB or embedded circuit that includes a light emitting diode (LED) 804a, a magnetic read switch 804b, a resistor 804c to limit power consumption, and a battery 804d to power the LED 804a, wherein Figure 8B is an optical image of the bottom portion 802a of the structure 802 shown in Figure 8A, where the circuit components 804a, 804b, 804c, 804d and interconnects 806 are partially embedded in the bottom portion 802a (interpreted as an optical source and an optical detector that detects light; and interconnects as pogo pins, claims 22 and 23) (col 18, lines 19-28). Lewis teaches in Figures 9A-9C, an exemplary 3D printed torque wrench strain sensing device 900 that includes an Arduino board 904a, surface mount resistor 904b, strain sensor 904c comprising silver-doped silicone, silver conductive filaments 906, and bottom and top portions 902a, 902b of a matrix or structural body 902 made from PLA FIG. 9D including an analog voltage reading pin is incorporated into the device to monitor the voltage change between the resistors (FIG. 9E) (interpreted as an evaluation device that measures an electrical property of a material; and encompassing pogo pins, claim 22) (col 18, lines 52-57; and col 19, lines 24-26).
Lewis does not specifically exemplify electrodes (claim 21).
Lewis meets all the limitations of the claims and, therefore, anticipates the claimed invention.
Claim Rejections - 35 USC § 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.
Claims 15, 16 and 18-25 are rejected under 35 U.S.C. 103 as being unpatentable over Lewis et al. (hereinafter “Lewis”) (US Patent No. 10462907, issued October 29, 2019) in view of Fu et al. (hereinafter “Fu”) (Advanced Materials, 2017, 29:1603486, 1-20).
The teachings of Lewis as applied to claims 15, 16, 18-20, 21 (in part) and 22-25 are described supra.
Lewis does not specifically exemplify electrodes (claim 21, in part).
Regarding claim 21 (in part), Fu teaches additive-manufacturing (AM) technique, known as three-dimensional (3D) printing that has been developed for a variety of applications, wherein printable inks are the most important component for 3D printing, and are related to the materials, the printing method, and the structures of the final 3D-printed products (Abstract). Fu teaches the 3D printing of emerging devices for energy-related applications based on carbon materials, including energy-storage applications, electronic circuits, and thermal-energy applications at high temperature (Figure 1), wherein energy-storage applications, 3D-printed batteries and 3D-printed supercapacitors are reviewed, such that 3D-printing technology not only provides an alternative way to fabricate miniature batteries, but also helps to improve the electrochemical performance of batteries in terms of high power and high energy density including electronic circuits, 3D-printed flexible circuits and 3D-circuit composites, high-temperature thermal applications, 3D-printing-enabled lighting, high-temperature furnaces, and thermal-energetic applications (pg. 2, col 1, last partial paragraph). Fu teaches high temperature reached by electrical Joule heating, a carbon filament can light up at high temperature, and be used as a lighting source, which was first explored by Thomas Edison (interpreted as joule heating, claim 16) (pg. 15, col 1, first partial paragraph). Fu teaches that the 3D-printed heater enables flexible shape design at the microscale or millimeter level for specific heating requirements, such that compared with existing techniques (high-power lasers, micro-hotplate) for microscale heating, the 3D-printable rGO heater has the following features: (i) a 3D heating strategy with 3D-printing shape control; (ii) higher temperature up to 3000 K and ultrafast heating rate; (iii) an ultrafast prototype by 3D printing; (iv) the low cost of the materials and fabrication, wherein 3D printing not only enables patterns to be designed for localized heating, but also provides porous structures with higher heating resistance to cultivate Joule heat for effective (interpreted as heaters; lasers, Joule heat; and heating greater than 500, 1000 or 3000C, claim 15 and 24) (pg. 15, col 2, first partial paragraph). Fu teaches that by preparing printable inks, 3D-printed electrodes can be achieved (interpreted as electrodes, claim 21) (pg. 4, col 1, first partial paragraph). Fu teaches that 3D-printing technology can be used to develop miniature micropower sources; more importantly, this technology can be applied with a tunable design of materials and structures to address some fundamental challenges, such as building 3D interconnected electrodes to attain both high power and high capacity, including multilayer electrodes, and interdigitated electrodes (interpreted as electrodes, claim 21) (pg. 6, col 1, first partial paragraph; and pg. 17, col 2, first partial paragraph). Fu teaches that a solid electrolyte, having poly(vinylidene fluoride)-co-hexa-fluoropropylene (PVDF-co-HFP) and Al2O3 nanoparticles soaked by the liquid electrolyte, was prepared, and the channels between the two interdigitated electrodes were printed, serving as an electrically insulated separator and gel polymer electrolyte (interpreted as bioreactor, claim 21) (pg. 6, col 1, first full paragraph).
“It is prima facie obvious to combine prior art elements according to known methods to yield predictable results; the court held that, "…a conclusion that a claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded nothing more than predictable results to one of ordinary skill in the art. KSR International Co. v. Teleflex Inc., 550 U.S. ___, ___, 82 USPQ2d 1385, 1395 (2007); Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 453 (1976); Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 62-63, 163 USPQ 673, 675 (1969); Great Atlantic & P. Tea Co. v. Supermarket Equipment Corp., 340 U.S. 147, 152, 87 USPQ 303, 306 (1950)”. Therefore, in view of the benefits of using carbon-based printable inks as exemplified by Fu, it would have been prima facie obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify the systems and methods to simultaneously print 3D functional parts and functional structures including for electronic devices as disclosed by Lewis to include the methods and systems for the 3D printing of carbon-based materials such as graphene oxide-based inks as taught by Fu with a reasonable expectation of success in producing printed, tunable components and/or printed structures for energy-related devices including lighting, micro-batteries, thermal energetic circuits, flexible circuits, high-temperature furnaces, and super-capacitors; and/or in reducing the time and cost for the fabrication and/or production of functional electronic, electrical, and/or energetic storage devices including batteries, wireless sensors, implantable devices, electrodes, and/or their components.
Thus, in view of the foregoing, the claimed invention, as a whole, would have been obvious to one of ordinary skill in the art at the time the invention was made. Therefore, the claims are properly rejected under 35 USC §103 as obvious over the art.
Conclusion
Claims 15, 16 and 18-25 are rejected.
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/AMY M BUNKER/Primary Examiner, Art Unit 1684