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
Request to Continue Examination
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 05/26/26 has been entered.
Response to Amendments
The amendment filed on 05/26/26 has been entered. Claims 1 – 3, 5 – 10, and 12 – 21 are pending. Claims 7 – 10 and 12 – 15 remain withdrawn. Claims 1 – 3, 5 – 6, and 16 – 21 are under examination. The newly added claims of 19 – 21 find support in at least [0008] and the original claim set.
Specification Objections
The disclosure is objected to because of the following informalities: 1,4 – dioxone appears improperly spelled and intended to be 1,4 – dioxane.
Appropriate correction is required.
Claim Objections
Claim 1 is objected to because of the following informalities: 1,4 – dioxone appears improperly spelled and intended to be 1,4 – dioxane. Appropriate correction is required.
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 (i.e., changing from AIA to pre-AIA ) 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 1 – 3, 6, 16 – 18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Aotani (US2020/0206812) in view of Renner (US2021/0053113)
Regarding claim 1, Aotani teaches producing an additive manufacturing device and method [Title]. Aotani teaches that the materials used for the process include a first liquid [0029] (interpreted as the binding agent) which comprises a binding liquid [0042]. The binding liquid contains a binder which can be thermoplastic or thermosetting resins (meeting the claimed limitation of a polymeric binder) [0069] in an amount of at least 1 wt% [0070], which overlaps with the claimed range, and water as an aqueous medium (meeting the claimed limitation of a liquid vehicle) in an amount of 10 – 95% [0072, 0073], which overlaps with the claimed range.
Aotani further teaches that the material used for the process further contains a second liquid [0042] (interpreted as the claimed wetting agent). The second liquid comprises water in a range of 10 – 95 wt% [0082], which overlaps with the claimed range, another organic solvent in a range of at least 5 wt% [0081, 0082], which overlaps with the claimed range, and a surfactant in an amount of 0.1 – 3.0 wt% [0083, 0084], which falls within the claimed range.
Lastly, Aotani teaches that the build material used (which the first and second liquids are deposited on) can be a metal powder [0031], meeting the claimed limitation, and teaches an example in which the average particle size used is 20 µm, which falls within the claimed range [0101].
Aotani teaches that the water-soluble solvent for the second liquid can be any conventionally used water-soluble organic solvent, but does not expressly teach the specific compounds claimed.
Renner teaches a method of three-dimensional printing using a binder composition to form a part via sintering [0066]. Renner teaches that the build material is metal powder [0066] and that a binder formulation is deposited onto the metal powder. Renner discloses that a water-soluble co-solvent can be used in the process [0102] and specifically discloses that butanone can be used [0102], meeting the claimed limitation of methyl ethyl ketone.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have taken the printing material, in the particular the water-soluble cosolvent of Aotani, and used butanone (i.e., methyl ethyl ketone) as taught by Renner to achieve predictable results. Aotani and Renner are directed binder jetting additive manufacturing of metal material (i.e. same field of endeavor) and an ordinarily skilled artisan would have had a reasonable expectation of success in using the co-solvent disclosed by Renner because Aotani explicitly discloses that the co-solvent can be any conventionally used water-soluble organic solvent.
The combination of prior art elements to yield predictable results is a prima facie case of obviousness (See MPEP 2143 A). The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)(MPEP 2144.07).
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 claims 2 – 3, Aotani in view of Renner teaches the invention as applied in claim 1. Aotani teaches that the surfactant used in the second liquid (interpreted as the claimed wetting agent) can be a nonionic surfactant [0084], which meets the claimed limitation of claim 2, and specifically states that the nonionic surfactant can be an ethylene oxide adduct [0084], meeting the claimed limitation of ethyoxylated nonionic surfactant of claim 3.
Regarding claim 6, Aotani in view of Renner teaches the invention as applied in claim 1. Aotani teaches an example in which the build material particles are stainless steel [0101], meeting the claimed limitation.
Regarding claim 16, Aotani in view of Renner teaches the invention as applied in claim 1. Wherein the first liquid and second liquid are separate compositions [0042].
Regarding claim 17, Aotani in view of Renner teaches the invention as applied in claim 2. The second liquid (interpreted as the claimed wetting agent) comprises water in a range of 10 – 95 wt% [0082], another organic solvent, and a surfactant in an amount of 0.1 – 3.0 wt% [0083, 0084], which overlaps with the claimed range. 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 18, Aotani in view of Renner teaches the invention as applied in claim 1. The second liquid (interpreted as the claimed wetting agent) comprises water in a range of 10 – 95 wt% [0082], another water-soluble organic solvent in a range of at least 5 wt% [0081, 0082], which overlaps with the claimed range, and a surfactant in an amount of 0.1 – 3.0 wt% [0083, 0084]. 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 20, Aotani in view of Renner teaches the invention as applied in claim 1. Aotani teaches that the materials used for the process include a first liquid [0029] (interpreted as the binding agent) comprising a binding liquid [0042]. The binding liquid contains a binder which can be thermoplastic or thermosetting resins, water and a water-soluble organic solvent [0072], and a surfactant [0075], meeting the claimed limitations of claim 20. The water-soluble organic solvent being at least 5 wt%, which overlaps with the claimed range of claim 20 [0073].
Aotani teaches that “Any conventionally used water-soluble organic solvent can be used” as the organic co-solvent for the binding liquid [0072] and as such, it would have been obvious to one of ordinary skill in the art before the effective filing date to have used butanone (i.e., methyl ethyl ketone) as taught by Renner to achieve predictable results. Aotani and Renner are directed binder jetting additive manufacturing of metal material (i.e. same field of endeavor) and an ordinarily skilled artisan would have had a reasonable expectation of success in using the co-solvent disclosed by Renner to achieve predictable results because Aotani explicitly discloses that the co-solvent can be any conventionally used water-soluble organic solvent. The combination of prior art elements to yield predictable results is a prima facie case of obviousness (See MPEP 2143 A). The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)(MPEP 2144.07). Moreover, using the same co-solvent for both the suppressing liquid (interpreted as the claimed wetting agent) and the binding liquid (interpreted as the claimed binding agent) would have the benefit of reducing the number of components used in the process and therefore the complexity.
Claims 5 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Aotani (US2020/0206812) in view of Renner (US2021/0053113), as applied to claim 1, in further view of Ingle (WO2018/156938, cited with OA of 03/28/25)
Regarding claims 5 and 19, Aotani in view of Renner teaches the invention as applied in claim 1. Aotani teaches that thermoplastic or thermosetting resins can be used as the resin binder [0069] and that the binder can be in a range of at least 1 wt%, which overlaps with the claimed range of claim 19. Aotani does not expressly teach latex. Aotani also teaches metal nanoparticles with a size of 1 – 1000 nm can be used as the binder, but does not state that the particle diameter size also applies to the resins.
Ingles teaches a method of three-dimensional printing using a binder fluid to form a green part and sintering [0007]. Ingles teaches that the binder fluid used is based on an aqueous fluid and the binder is latex polymer particles with a size of 10 – 300 nm [0018] and is deposited onto metal particles [0018]. Lastly, Ingles discloses that latex polymer particles are capable of being dispersed in an aqueous medium [0111].
It would have been obvious to one of ordinary skill in the art before the effective filing date to have taken the printing material, in the particular the binder of Aotani, and used latex polymer particles with a size of 10 – 300 nm as taught by Ingles to achieve predictable results. Aotani and Ingles are directed binder jetting additive manufacturing of metal material (i.e. same field of endeavor) and an ordinarily skilled artisan would have a reasonable expectation of success in using the binder material disclosed by Ingles because Aotani and Ingles both use binder fluid with an aqueous based medium/vehicle and Aotani discloses that thermoplastic or thermosetting resins can be used.
The combination of prior art elements to yield predictable results is a prima facie case of obviousness (See MPEP 2143 A). The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)(MPEP 2144.07)
Claims 1 – 3, 6, 16 – 18 and 20 – 21 are rejected under 35 U.S.C. 103 as being unpatentable over Aotani (US2020/0206812) in view of Otaki (JP2016190321, using espacenet translation)
Regarding claims 1 and 21, Aotani teaches producing an additive manufacturing device and method [Title]. Aotani teaches that the materials used for the process include a first liquid [0029] (interpreted as the binding agent) which comprises a binding liquid [0042]. The binding liquid contains a binder which can be thermoplastic or thermosetting resins (meeting the claimed limitation of a polymeric binder) [0069] in an amount of at least 1 wt% [0070], which overlaps with the claimed range, and water as an aqueous medium (meeting the claimed limitation of a liquid vehicle) in an amount of 10 – 95% [0072, 0073], which overlaps with the claimed range.
Aotani further teaches that the material used for the process further contains a second liquid [0042] (interpreted as the claimed wetting agent). The second liquid comprises water in a range of 10 – 95 wt% [0082], which overlaps with the claimed range, another organic solvent in a range of at least 5 wt% [0081, 0082], which overlaps with the claimed range, and a surfactant in an amount of 0.1 – 3.0 wt% [0083, 0084], which falls within the claimed range.
Lastly, Aotani teaches that the build material used (which the first and second liquids are deposited on) can be a metal powder [0031], meeting the claimed limitation, and teaches an example in which the average particle size used is 20 µm, which falls within the claimed range [0101].
Aotani teaches that the water-soluble solvent for the second liquid can be any conventionally used water-soluble organic solvent, but does not expressly teach the specific compounds claimed.
Otaki teaches a method of three-dimensional printing using a binder composition to form a part via sintering [0001, 0011]. Otaki teaches that the build material is metal powder [0011, 0012] and that a liquid formulation is deposited onto the build material to create the three-dimensional part [0045]. Otaki discloses that liquid component is a mixture of water and a water-soluble solvent [0047] and that the water-soluble organic solvent can be 1,2-butanediol or others [0049]. Wherein 1,2-butanediol meets the claimed limitation of claim 1 and claim 21.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have taken the printing material, in the particular the water-soluble cosolvent of Aotani, and used 1,2-butanediol as taught by Otaki to achieve predictable results. Aotani and Otaki are directed to additive manufacturing of green parts including of metal green parts using liquids containing water and organic solvents (i.e. same field of endeavor) and an ordinarily skilled artisan would have had a reasonable expectation of success in using the co-solvent disclosed by Otaki to achieve predictable results because Aotani explicitly discloses that the co-solvent can be any conventionally used water-soluble organic solvent.
The combination of prior art elements to yield predictable results is a prima facie case of obviousness (See MPEP 2143 A). The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)(MPEP 2144.07)
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 claims 2 – 3, Aotani in view of Otaki teaches the invention as applied in claim 1. Aotani teaches that the surfactant used in the second liquid (interpreted as the claimed wetting agent) can be a nonionic surfactant [0084], which meets the claimed limitation of claim 2, and specifically states that the nonionic surfactant can be an ethylene oxide adduct [0084], meeting the claimed limitation of ethyoxylated nonionic surfactant of claim 3.
Regarding claim 6, Aotani in view of Otaki teaches the invention as applied in claim 1. Aotani teaches an example in which the build material particles are stainless steel [0101], meeting the claimed limitation.
Regarding claim 16, Aotani in view of Otaki teaches the invention as applied in claim 1. Wherein the first liquid and second liquid are separate compositions [0042].
Regarding claim 17, Aotani in view of Otaki teaches the invention as applied in claim 2. The second liquid (interpreted as the claimed wetting agent) comprises water in a range of 10 – 95 wt% [0082], another organic solvent, and a surfactant in an amount of 0.1 – 3.0 wt% [0083, 0084], which overlaps with the claimed range. 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 18, Aotani in view of Otaki teaches the invention as applied in claim 1. The second liquid (interpreted as the claimed wetting agent) comprises water in a range of 10 – 95 wt% [0082], another water-soluble organic solvent in a range of at least 5 wt% [0081, 0082], which overlaps with the claimed range, and a surfactant in an amount of 0.1 – 3.0 wt% [0083, 0084]. 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 20, Aotani in view of Otaki teaches the invention as applied in claim 1. Aotani teaches that the materials used for the process include a first liquid [0029] (interpreted as the binding agent) comprising a binding liquid [0042]. The binding liquid contains a binder which can be thermoplastic or thermosetting resins, water and a water-soluble organic solvent [0072], and a surfactant [0075], meeting the claimed limitations of claim 20. The water-soluble organic solvent being at least 5 wt%, which overlaps with the claimed range of claim 20 [0073].
Aotani teaches that “Any conventionally used water-soluble organic solvent can be used” as the organic co-solvent [0072] and as such, it would have been obvious to one of ordinary skill in the art before the effective filing date to have used 1,2 – butanediol as taught by Otaki to achieve predictable results. Aotani and Otaki are directed to additive manufacturing of green parts including of metal green parts using liquids containing water and organic solvents (i.e. same field of endeavor) and an ordinarily skilled artisan would have had a reasonable expectation of success to achieve predictable results. The combination of prior art elements to yield predictable results is a prima facie case of obviousness (See MPEP 2143 A). The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)(MPEP 2144.07). Moreover, using the same co-solvent for both the suppressing liquid (interpreted as the claimed wetting agent) and the binding liquid (interpreted as the claimed binding agent) would have the benefit of reducing the number of components used in the process and therefore the complexity.
Claims 5 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Aotani (US2020/0206812) in view of Otaki (JP2016190321, using espacenet translation), as applied to claim 1, in further view of Ingle (WO2018/156938, cited with OA of 03/28/25)
Regarding claims 5 and 19, Aotani in view of Otaki teaches the invention as applied in claim 1. Aotani teaches that thermoplastic or thermosetting resins can be used as the resin binder [0069] and that the binder can be in a range of at least 1 wt%, which overlaps with the claimed range of claim 19. Aotani does not expressly teach latex. Aotani also teaches metal nanoparticles with a size of 1 – 1000 nm can be used as the binder, but does not state that the particle diameter size also applies to the resins.
Ingles teaches a method of three-dimensional printing using a binder fluid to form a green part and sintering [0007]. Ingles teaches that the binder fluid used is based on an aqueous fluid and the binder is latex polymer particles with a size of 10 – 300 nm [0018] and is deposited onto metal particles [0018]. Lastly, Ingles discloses that latex polymer particles are capable of being dispersed in an aqueous medium [0111].
It would have been obvious to one of ordinary skill in the art before the effective filing date to have taken the printing material, in the particular the binder of Aotani, and used latex polymer particles with a size of 10 – 300 nm as taught by Ingles to achieve predictable results. Aotani and Ingles are directed binder jetting additive manufacturing of metal material (i.e. same field of endeavor) and an ordinarily skilled artisan would have a reasonable expectation of success in using the binder material disclosed by Ingles because Aotani and Ingles both use binder fluid with an aqueous based medium/vehicle and Aotani discloses that thermoplastic or thermosetting resins can be used.
The combination of prior art elements to yield predictable results is a prima facie case of obviousness (See MPEP 2143 A). The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)(MPEP 2144.07)
Response to Arguments
Applicant's arguments filed 04/27/26 have been fully considered but they are not persuasive.
Applicant argues that an ordinarily skilled artisan would not have had a reasonable expectation of success in combining Aotani and Renner. Applicant argues that the liquid of Aotani interpreted as the wetting agent does not include a binder while the co-solvent of Renner is used for dissolution of the binder. As such, it would not be obvious to rely on the solvents disclosed by Renner as the co-solvents used in a non-binding composition (such as the liquid in Aotani interpreted as the wetting agent) and therefore, a reasonable expectation of success would not exist nor would any motivation. “A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421, 82 USPQ2d 1385, 1397 (2007) (MPEP 2141.03 I). In this case, Aotani teaches that the second liquid (interpreted as the claimed wetting agent) contains water as well as an organic solvent which is water soluble [0081]. Aotani states “Any conventionally used water-soluble organic solvent can be used”. Meanwhile, Renner teaches using a co-solvent which is miscible with the other solvent used and that when the first solvent is water the co-solvent used can be butanone (i.e., methyl ethyl ketone). Therefore, Renner expressly discloses an organic solvent which is water soluble and used in the same field of endeavor. As such, an ordinarily skilled artisan would have had a reasonable expectation of success in using butanone as the water-soluble organic solvent in Aotani. The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)(MPEP 2144.07)
Applicant further argues that the range of binder of “at least 1 wt%” in Aotani is unduly broad and does not teach or suggest the claimed range of 2 – 25 wt%. The examiner respectfully disagrees. At least 1 wt% implies/reasonably suggests values greater than 1 wt% including “about 2 wt%” and effectively encompasses the range that is claimed. It has been held that “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)”.
Moreover, "The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range." In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP 2144.05 III A). However, applicant has not provided any objective evidence or data to show that the particular range claimed is critical or produces unexpected results. Therefore, applicant’s arguments are unpersuasive.
Conclusion
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
Prosecution Insights