24DETAILED ACTION
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 .
Response to Amendment
This action has been made non-final because the new grounds are not directly and only necessitated by applicant's amendments.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 21, 26-28, 33 and 36-37 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 21, there does not appear to be support for the adhesive layer as presently claimed. As presently recited in the claims, the adhesive layer can be of a different composition than the deposited layers. However, in the specification in paragraph [0071], it appears that the “adhesive layer” is a self- adhesive with the same composition as the 3D ink (first and second deposited layer). The specification additionally seems to support the adhesive layer only if all three layers are of the same material.
Regarding claims 26-27, there does not appear to be support for the solidified first layer and/or the solidified second layer to have been “rolled, folded, and cut in a dry state without having to be re-wetted” or “is a cylinder or is rolled into a tube-like shape”. Rather, it is the object itself which has these properties. However, none of the objects in the specification which incorporate an adhesive layer appeared to have been “rolled, folded, and cut in a dry state without having to be re-wetted”, “is a cylinder or is rolled into a tube-like shape”.
Regarding claim 28, there does not appear to be support for the solidified first layer and/or the solidified second layer “is printed with curvatures and spanning gaps”. Rather, it is the object itself which has these properties.
Regarding claim 33, there does not appear to be support for the first deposited layer and the second deposited layer to be different compositions. In paragraph [0071], it seems to indicate that all three layers, the first, second and adhesive layers need to be the same ink composition as in “self-adhesive”. Figure 24 shows two different materials, but there is no adhesive layer between them.
Regarding claim 36, there does not appear to be support for the layer to have hollow cavities, rather it is the object made from the layers which has hollow cavities.
Regarding claim 37, there does not appear to be support for the majority of these compositions. Referring to paragraph [0087] of the specification, the only two compositions which has a first deposited layer and a second deposited layer and an adhesive layer between appears to be in manufacture of the skull in figure 11 and the manufacture of the Chinese lantern in figure 23C. Those compositions are 60% vol graphene and 70 vol% Fe2O3 ink, the other compositions do not read on the limitations set forth in the independent claim.
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.
Claim 29 recites the limitation "fibers". There is insufficient antecedent basis for this limitation in the claim.
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.
Claim(s) 21-24, 30, 32, 34-36 and 38 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Michna et al (Concentrated hydroxyapatite inks for direct-write assembly of 3-D periodic scaffolds, Biomaterials 26 (2005) 5632-5639).
Regarding claims 21-24, 30, 32, 34-36 and 38, given that this claim is drawn to the final multi-part three-dimensional object with the solvents evaporated, it is noted then that those limitations are considered product-by-process and do not carry much patentable weight. Also, it is noted that per the specification, the “adhesive layer” is the same composition as the ink and that, per the specification in [0071], the adhesive layer seamlessly melds the objects together. As there is no seam, the order of the formation of the layers is not critical and is considered also a product-by-process limitation and does not carry much patentable weight.
Michna teaches a multi part (many layer) three-dimensional object (Figure 1b). The recited first and second layers run parallel to each other and the orthogonal layer between the two parallel layers is considered the recited adhesive layer. These layers are self-supporting (section 1 introduction) and comprise a non-soluble particle component, HA hydroxyapatite and a soluble polymer polyacrylate (Section 2.1 materials). Michna teaches the grid-like pattern in Figure 1b which has unsupported features over one or more hollow cavities. Michna teaches that the HA particles are at least 50% vol of the solids content (Experimental and Introduction, last paragraph).
Claim(s) 21-24, 30, 32, 36 and 38 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ahn et al (Printed Origami Structures, Adv. Mater. 2010, 22, 2251-2254).
Regarding claims 21-24, 30, 32, 36 and 38, given that this claim is drawn to the final multi-part three-dimensional object with the solvents evaporated, it is noted then that those limitations are considered product-by-process and do not carry much patentable weight. Also, it is noted that per the specification, the “adhesive layer” is the same composition as the ink and that, per the specification in [0071], the adhesive layer seamlessly melds the objects together. As there is no seam, the order of the formation of the layers is not critical and is considered also a product-by-process limitation and does not carry much patentable weight.
Ahn teaches a multi part (many layer) three-dimensional object (Figure 1b). The recited first and second layers run parallel to each other and the orthogonal layer between the two parallel layers is considered the recited adhesive layer. These layers are self-supporting (page 2251, first column) and comprise a non-soluble particle component (titanium hydride), a soluble polymer such as an acrylate-based triblock copolymer (page 2252, first column).
Claim Rejections - 35 USC § 103
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.
Claim(s) 26-29 and 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ahn et al (Printed Origami Structures, Adv. Mater. 2010, 22, 2251-2254).
The discussion regarding Ahn in paragraph 9 above is incorporated here by reference.
Regarding claim 26-28, Ahn teaches that the patterned scaffolds can be readily manipulated to created 3D object of nearly arbitrary shape. There are examples of rolling, folding, cut and printed in curvatures and spanning gaps (Figures).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to use the teachings of Ahn to arrive at the presently claimed invention. It would have been nothing more than using known techniques in a typical manner to achieve predictable results. KSR v. Teleflex, 550 U.S. _, 82 USPQ2d 1385 (2007).
Regarding claim 29, Ahn teaches that the layers can be made into patterns such as sinusoidal patterned filaments and wavy structures (Figure 1). Figure 1b middle image can be considered a honeycomb pattern.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to use that pattern in the multi-part system as previously recited. It would have been nothing more than using known techniques in a typical manner to achieve predictable results. KSR v. Teleflex, 550 U.S. _, 82 USPQ2d 1385 (2007).
Regarding claim 31, Ahn teaches the following printed structure:
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The limitation “wherein at least one of the solidified first deposited layer and the second deposited layer is modified by the primary organic solve by dissolution” is a product-by-process limitation and does not carry much patentable weight. Ahn teaches in Figure 2b a structure which reads on the claim as the structure is a rectangle with parts “removed” to form a cross shape. That the cross was printed initially rather than dissolved with solvent is not critical as the final object remains is the same.
As claim 31 is a product-by-process claim, patentability of said claim is based on the recited product and does not depend on its method of production. Since the product as presently is the same as product disclosed by Ahn the claim is unpatentable even though the Ahn product was made by a different process. In re Marosi, 710 F2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983). See MPEP 2113.
Response to Arguments
Applicant’s arguments field on July 24, 2025 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DORIS L LEE whose telephone number is (571)270-3872. The examiner can normally be reached M-F 8 am - 5 pm.
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DORIS L. LEE
Primary Examiner
Art Unit 1764
/DORIS L LEE/ Primary Examiner, Art Unit 1764