DETAILED 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 .
Status of the Claims
Claims 11 – 12 have been cancelled. Claim 1 has been amended. Claims 2 – 10 are as previously presented. Claim 13 is new. Therefore, claims 1 – 10 and 13 are currently pending and have been considered below.
Response to Amendment
The amendment filed on 3/10/2026 has been entered. Applicant’s amendment overcomes the interpretations of “material supply unit” and “irradiation unit” under 35 U.S.C. § 112(f).
Response to Arguments
Applicant's arguments filed 3/10/2026 have been fully considered but they are not persuasive. On pages 5 – 6, Applicant argues that Sumner fails to teach the amended limitation, which recites, “wherein the new unit bead is formed at a position in contact with a flattened portion of the formed unit bead that has been flattened.”
However, when the cited prior art teaches all of the positively recited structure of the claimed apparatus, the courts have held that the prior art apparatus is capable of performing all of the claimed functional limitations of the claimed apparatus. The courts have held that: (1) "apparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990), and (2) a claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). MPEP § 2114.
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 (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 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 1 – 2, 4, and 9 – 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sumner (US 2014/0034615).
Regarding claim 1, Sumner discloses an additive manufacturing apparatus (“system and method for edging a deposit layer in any of cladding, building up, and hard-facing applications” [Abstract]) that manufactures a shaped object by stacking layers in each of which unit beads that are solidified products of a molten material are laid side by side (the system is capable of manufacturing the described shaped object), the additive manufacturing apparatus comprising:
a material supply to supply the material to a workpiece (Fig. 1, material supply unit comprises “wire feeder 150” [0021] (shown in Fig. 1 as comprising a wire spool), wire nozzle / “contact tube 160” [0021], wire feeder 150 necessarily comprises a motor (considered an equivalent to a rotary motor) for feeding “wire 140” to the workpiece);
a beam irradiator to emit a beam that melts the material supplied (Figs. 1-5, irradiator comprises “energy source system 100”: “system 100 includes a laser subsystem 130/120 capable of focusing a laser beam 110 onto a workpiece 115 to heat the workpiece 115 and create a melt puddle 145. The laser subsystem is a high intensity energy source. The laser subsystem can be any type of high energy laser source, including but not limited to carbon dioxide, Nd:YAG, Yb-disk, YB-fiber, fiber delivered or direct diode laser systems” [0018]; irradiation unit also comprises edging lasers 220 and 320: “ as illustrated in FIG. 3, the cladding system of FIG. 1 will include an edging system such as laser 220 and/or 320 to change/modify the edge of the cladding layer 117. The lasers 220/320 are powered by power supplies 230/330, respectively, and emit beams 210/310 to each side of the cladding layer 117. The lasers 220/320 can melt and/or vaporize the edge of cladding 117 to a desired profile” [0024]); and
a controller device to control the material supply and the beam irradiator to form a unit bead (Fig. 1, “control unit 195”: “power supply 170, wire feeder 150, and laser power supply 130 may be operatively connected to sensing and control unit 195” [0022]), wherein
in forming unit beads that are brought into contact with each other to form the layer, the controller device performs control such that the formed unit bead is flattened by irradiation with the beam (Figs. 2-5 show “cladding layer 117” [0023], which is flattened on a side by lasers 220/320 (Fig. 3), resulting in a unit bead with a flattened side as shown in Fig. 5A: “as shown in FIG. 5A, the cladding layer 17 was deposited with its edges rounded (dotted line) and extending beyond a desired cladding layer profile (solid line). In this case, the shaded region needs to be removed. In an exemplary embodiment, the motors 225/325 (and/or optics) will position the lasers 220/320 over the shaded portion and beams 210/310 will scan over the shaded portions to remove the undesired material” [0027]) and a new unit bead is formed in contact with the formed unit bead that has been flattened, and wherein the new unit bead is formed at a position in contact with a flattened portion of the formed unit bead that has been flattened (the apparatus of Sumner is capable of forming a unit bead in contact with the formed unit bead that has been flattened, and wherein the new unit bead is formed at a position in contact with a flattened portion of the formed unit bead that has been flattened, by depositing another cladding layer 117 to contact the formed/flattened portion of the unit bead; when the cited prior art teaches all of the positively recited structure of the claimed apparatus, the courts have held that the prior art apparatus is capable of performing all of the claimed functional limitations of the claimed apparatus. The courts have held that: (1) "apparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990), and (2) a claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). MPEP § 2114).
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Fig. 1 of Sumner
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Figs. 2 and 3 of Sumner
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Figs. 5A-5C of Sumner
Regarding claim 2, Sumner discloses wherein the controller device performs control such that the formed unit bead is flattened by causing an edge of the formed unit bead to be irradiated with the beam (Fig. 5A shows wherein an edge (left edge in Fig. 5A) has been irradiated to flatten the edge; “ In an exemplary embodiment, the motors 225/325 (and/or optics) will position the lasers 220/320 over the shaded portion and beams 210/310 will scan over the shaded portions to remove the undesired material” [0027]).
Regarding claim 4, Sumner discloses wherein the controller device performs control such that the formed unit bead is flattened by causing a top of the formed unit bead to be irradiated with the beam (in Fig. 5C, a top of the formed unit bead is flattened: “as shown in FIG. 5C, the edge and cladding surfaces are rough and irregular. The laser beams 210/310 of the present invention can be adjusted/pulsed as discussed above to melt and/or evaporate a thin layer of the surface to remove the roughness and leave a finished smooth surface. Thus, in exemplary embodiments the lasers can be used to provide a polishing or finishing step after the deposition of the cladding layer” [0027]).
Regarding claim 9, claim 9 recites, “wherein the controller device performs control such that the layer including a plurality of the unit beads that have been flattened is formed.” This language includes a functional limitation drawn toward the intended use or manner of operating the claimed apparatus. The functional limitations is: “the layer including a plurality of the unit beads that have been flattened is formed.” When the cited prior art teaches all of the positively recited structure of the claimed apparatus, it will be held that the prior art apparatus is capable of performing all of the claimed functional limitations of the claimed apparatus. The courts have held that: (1) "apparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990), and (2) a claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). MPEP § 2114. In this case, the controller of Sumner is capable of performing control such that the layer including a plurality of the unit beads that have been flattened is formed.
Regarding claim 10, Sumner discloses wherein the material is a wire (Fig. 1, “wire 140” [0020]).
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.
Claims 3, 5 – 6, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Sumner (US 2014/0034615).
Regarding claim 3, Sumner does not expressly disclose wherein the controller device performs control such that the formed unit bead is flattened by irradiation with a beam having a lower intensity than the beam used in forming the unit bead.
However, Sumner states the following regarding laser beam intensity: “any combination of laser beam intensity, frequency of laser pulses, speed of motors 225/325 (or optics), wire feed speed can be used to create the desired cladding profile.” It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein the controller device performs control such that the formed unit bead is flattened by irradiation with a beam having a lower intensity than the beam used in forming the unit bead, because this would have been obvious to try. There are three possible options regarding the relative intensities of the beam used in forming the unit bead, hereinafter beam 1, and the beam used to flatten the formed unit bead, hereinafter beam 2: (a) the intensity of beam 1 is greater than the intensity of beam 2, (b) the intensity of beam 1 is less than the intensity of beam 2, or (c) the intensity of beam 1 is equal to the intensity of beam 2. One of ordinary skill in the art would have had a reasonable expectation of success in implementing any of these three solutions, especially given that Sumner describes that the intensity can be adjusted.
Regarding claim 5, Sumner does not expressly disclose wherein the controller device performs control such that the formed unit bead is flattened by irradiation with a beam having a higher intensity than the beam used in forming the unit bead.
However, Sumner states the following regarding laser beam intensity: “any combination of laser beam intensity, frequency of laser pulses, speed of motors 225/325 (or optics), wire feed speed can be used to create the desired cladding profile.” It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein the controller device performs control such that the formed unit bead is flattened by irradiation with a beam having a higher intensity than the beam used in forming the unit bead, because this would have been obvious to try. There are three possible options regarding the relative intensities of the beam used in forming the unit bead, hereinafter beam 1, and the beam used to flatten the formed unit bead, hereinafter beam 2: (a) the intensity of beam 1 is greater than the intensity of beam 2, (b) the intensity of beam 1 is less than the intensity of beam 2, or (c) the intensity of beam 1 is equal to the intensity of beam 2. One of ordinary skill in the art would have had a reasonable expectation of success in implementing any of these three solutions, especially given that Sumner describes that the intensity can be adjusted.
Regarding claim 6, Sumner does not expressly disclose wherein the controller device performs control such that the formed unit bead is flattened by irradiation with a beam having a larger diameter than the beam used in forming the unit bead.
However, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein the controller device performs control such that the formed unit bead is flattened by irradiation with a beam having a larger diameter than the beam used in forming the unit bead, because this would have been obvious to try. There are three possible options regarding the relative diameters of the beam used in forming the unit bead, hereinafter beam 1, and the beam used to flatten the formed unit bead, hereinafter beam 2: (a) the diameter of beam 1 is greater than the diameter of beam 2, (b) the diameter of beam 1 is less than the diameter of beam 2, or (c) the diameter of beam 1 is equal to the diameter of beam 2. One of ordinary skill in the art would have had a reasonable expectation of success in implementing any of these three solutions.
Regarding claim 8, Sumner does not expressly disclose wherein the controller device performs control such that the formed unit bead is flattened with a beam having a higher scanning speed than the beam used in forming the unit bead.
However, Sumner states the following regarding scanning speed: “any combination of laser beam intensity, frequency of laser pulses, speed of motors 225/325 (or optics), wire feed speed can be used to create the desired cladding profile.” Note: the speed of motors 225/325 refers to the scanning speed: “lasers 220/230 can be moved by motors 225/325” [0024]; see also claims 3 and 6, which refer to “a positioning system to position an impingement point of each said laser beam“ and recite “a speed of said positioning is adjustable to control an amount of said deposit layer that is melted or vaporized.” It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein the controller device performs control such that the formed unit bead is flattened with a beam having a higher scanning speed than the beam used in forming the unit bead, because this would have been obvious to try. There are three possible options regarding the relative scanning speeds of the beam used in forming the unit bead, hereinafter beam 1, and the beam used to flatten the formed unit bead, hereinafter beam 2: (a) the scanning speed of beam 1 is greater than the scanning speed of beam 2, (b) the scanning speed of beam 1 is less than the scanning speed of beam 2, or (c) the scanning speed of beam 1 is equal to the scanning speed of beam 2. One of ordinary skill in the art would have had a reasonable expectation of success in implementing any of these three solutions, especially given that Sumner describes that the scanning speed can be adjusted.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Sumner (US 2014/0034615) in view of McGregor et al. (US 2003/0116542).
Regarding claim 7, Sumner does not expressly disclose wherein the unit bead is a bead having a ball shape.
McGregor is directed to an additive manufacturing apparatus [0004]. McGregor discloses a bead having a ball shape (“create essentially a spherically shaped volume of molten material” [0045]).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include wherein the unit bead is a bead having a ball shape, as this is a known shape of a unit bead, applied to a known device, to achieve predictable results. Additionally, the courts have held that a change in shape alone, without demonstration of the criticality of a specific limitation, may be considered obvious to a person of ordinary skill in the art. MPEP § 2144.04-IV-B.
Allowable Subject Matter
Claim 13 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The prior art of record does not teach, disclose, or suggest wherein the controller device performs control such that the formed unit bead is flattened when a contact angle of the formed unit bead is larger than 45 degrees or a flatness of the formed unit bead is less than five, wherein the contact angle of the formed unit bead is an angle formed by a surface of the workpiece and a surface of the formed unit bead and containing the formed unit bead, and the flatness of the formed unit bead is a ratio between a width of the formed unit bead in a direction in which multiple said unit beads are laid side by side and a height of the formed unit bead from the surface of the workpiece.
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 ELIZABETH KERR whose telephone number is (571)272-3073. The examiner can normally be reached M - F, 8:30 AM - 4:30 PM.
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/ELIZABETH M KERR/Primary Examiner, Art Unit 3761