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 11/19/2025 has been entered. Claims 4 and 11 have been canceled. Claims 1 – 3, 5 – 10, and 12 – 16 remain pending. Claims 17 – 18 are newly added and find support in at least [0009] of the specification. Claims 7 – 10 and 12 – 15 remain withdrawn.
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, and 16 – 18 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 alcohols, glycols, alkylene glycols, polyethylene glycols, nitrogen-containing compounds, and sulfur-containing compounds, 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 alcohols can be used including ethanol or methanol in combination with the water, meeting the claimed limitation.
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 dipropylene glycol, ethanol, or methanol 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 a reasonable expectation of success in using the co-solvent disclosed by Renner because Aotani explicitly discloses that the co-solvent should be water soluble and can be an alkylene glycol/glycol and/or alcohols.
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)”
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Aotani (US2020/0206812) in view of 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 claim 5, 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], but 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 11/19/2025 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 (relied upon for the teaching of the specific compounds of claim 1) is used in a binder composition. As such, Renner does not teach that the co-solvent can be 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.
This has been fully considered but is not persuasive because “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]. 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 an alcohol including ethanol or methanol [0102]. Therefore, Renner expressly discloses an organic co-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 ethanol or methanol 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 Aotani teaches away from using a polymer binder because Aotani states that when metal powder is used as the raw material powder, the binder is preferably metal nanoparticles [page 4 of remarks]. This not found persuasive. “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). Aotani states that the binding liquid contains a binder which can be thermoplastic or thermosetting resins (meeting the claimed limitation of a polymeric binder) [0069]. While Aotani may preference metal nanoparticles as the binder material in combination with metal powder, this does not constitute a teaching away from the broader disclosure that a polymeric binder can be used instead. Therefore, applicant’s arguments are not found persuasive.
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