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 .
Response to Arguments
Applicant’s arguments filed 18 February 2026 have been fully considered but they are not persuasive.
The Office apologizes, but it has thoroughly reviewed the claims, and found numerous issues that warrant the new rejections in this Office action. This Office action is non-final.
In anticipation of a possible rejection of at least claim 15 under § 101, Applicant puts forth arguments for why the claim (particularly, prior to amendment) satisfies the requirements of subject matter eligibility.
Applicant argues that a transformation is not strictly required to satisfy the requirements of subject matter eligibility (under MPEP § 2106.05(c)) (p. 12). The Office understands and agrees, in general; but in the present application, without the transformation (i.e. the structure or the actual manufacture thereof), the improvement (and, therefore, the practical application) is not manifest. The Office elaborates below.
Applicant argues that, under the two-step process laid out in MPEP § 2106.04(d) for determining whether a claimed invention integrates the judicial exception into a practical application, the claimed invention satisfies Step 2A because it clearly sets forth an improvement (pp. 12–13). Applicant’s application of the law is somewhat incomplete, since Step 2A is a two-prong inquiry (MPEP § 2106.04.II.A.), and MPEP § 2106.04(d) only concerns the question of whether the second prong of the two-prong inquiry is satisfied, in particular in “Evaluating Improvements in the Functioning of a Computer, or an Improvement to Any Other Technology or Technical Field.” Applicant’s arguments are unpersuasive because the improvement at issue does not concern the improved functioning of a computer, but the method of making, or the product made, involving the direction of powder-bed based additive manufacturing according to the vectors of the instructions outlined in the claims. Without an actual manufacturing of the structural part according to the instructions, the benefits of said structural part cannot reasonably be appreciated, and therefore, the judicial exception is not integrated into a practical application under the second prong of Step 2A. The provided manufacturing instructions in claim 15 (which, we must grant, are not even required to be a part of a computer, not that such would be enough for a practical application) are an abstract idea of such a nature (by themselves, a mental process of how additive manufacturing would happen) that whether or not the claim requires a transformation (MPEP § 2106.05(c)) is likely the most important evaluative framework for determining whether or not the claim satisfies the requirements of patent subject matter eligibility under § 101.
On review, the Office reverses its previous position that the language of “a method of additively manufacturing a structural part” in a preamble of a claim means that the claim positively recites, and results in, the additive manufacturing of the structural part, since this preamble is better understood as a statement of purpose (under MPEP § 2111.02.II.) rather than a positive recitation of a limitation (under MPEP § 2111.02.I., which concerns limitations directed to structure more particular than a recitation of a purpose or intended use). The Office apologizes for its inconsistency in these matters.
Drawings
The drawings were received on 18 February 2026. These drawings are unacceptable because the reference characters V2 point to a blank space rather than something properly identifiable as a vector. That ¶ 81 of the submitted specification explains that the “dense structure” (formed by the second irradiation vectors V2) is indicated by the background of fig. 3 (and 4) does not mean that the background depicts these vectors, as it is merely a white space.
The drawings are objected to under 37 CFR 1.83(a) because they fail to show the second irradiation vectors V2 in the background of fig. 3 as described in the specification (mentioned in ¶ 81 of the submitted specification). Any structural detail that is essential for a proper understanding of the disclosed invention should be shown in the drawing. MPEP § 608.02(d).
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections — 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 15–24 and 26–32 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s) providing manufacturing instructions for additive manufacturing, including irradiation vectors for a layer and a following layer. This judicial exception is not integrated into a practical application because the claimed features remain as instructions and do not cause any transformation (see MPEP § 2106.05(c)), nor do they produce any useful information able to be output to a user. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the method claim does not require any that its instructions be used to perform any additive manufacturing. This carries through to all claims that depend from, or incorporate, independent claims 15, 29, and 31, except for claim 25.
As stated above in the Response to Arguments section, the Office reverses its previous position that the language of “a method of additively manufacturing a structural part” in a preamble of a claim means that the claim positively recites, and results in, the additive manufacturing of the structural part, since this preamble is better understood as a statement of purpose (under MPEP § 2111.02.II.) rather than a positive recitation of a limitation (under MPEP § 2111.02.I., which concerns limitations directed to structure more particular than a recitation of a purpose of intended use). Therefore, the Office does not find that claim 15, as amended, requires that the claimed method result in the additive manufacturing of a structural part.
The same conclusion applies to new independent claims 29 and 31.
Regarding claim 23, the claim does not implement the manufacturing instructions into a practical application because the step of “implementing the manufacturing instructions” is broad enough to read on results other than the making of the structural part. For example, the implementation of the instructions could simply be loading said instructions into a manufacturing machine for use, without actually resulting in the manufacturing of the structural part according to the instructions. See also MPEP § 2106.05.I.A. discussing that “adding the words ‘apply it’ (or an equivalent) with the judicial exception” are not enough to qualify as “significantly more” than the judicial exception.
The same conclusion applies to new claims 29 and 31, which are structured similarly to claim 23.
Regarding claim 26, “use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more” (MPEP § 2106.05(f)).
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.
Claims 23, 30, and 32 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 the inventor or a joint inventor regards as the invention.
Claim 23 is directed to “A method of additively manufacturing a structural part by selective laser melting or electron beam melting, comprising: implementing the manufacturing instructions as claimed in claim 15.” However, claim 15 (incorporated into claim 23 as per MPEP § 2173.05(f)) is, itself, already directed to “A method of additively manufacturing a structural part,” there by “powder-bed-based additive manufacturing.” Claim 23 is indefinite because the manner in which it incorporates claim 15 renders it discordant, at least because claim 23 would seem to be properly formulated as a claim depending from claim 15 (because the claims are both directed to a method of additively manufacturing a structural part), and because claim 15 emphasizes that the additive manufacturing is powder-bed-based while claim 23 only emphasizes that the additive manufacturing is “by selective laser melting or electron beam melting.”
Claims 30 and 32 are structured and associated with independent claims 29 and 31, respectively, in a manner similar to claim 23 with independent claim 15, and are indefinite for the same reason.
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.
Claims 23, 25, 30, and 32 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 23 recites only one method step of “implementing the manufacturing instructions as claimed in claim 15.” The limitation fails to satisfy the requirement of a proper dependent claim because it parses out the manufacturing instructions of claim 15 for a step of “implementing,” but in order to be a proper independent claim, the claim must “shall include every limitation of the claim from which it depends” (MPEP § 608.01(n).III.). Because of how the manufacturing instructions themselves are parsed, the language of claim 23 suggests that the step of “providing [the] the manufacturing instructions” of claim 15 is not incorporated into the claim. “A dependent claim must be rejected under 35 U.S.C. 112(d) if it omits an element from the claim upon which it depends” (ibid.).
Claims 30 and 32 are each structured similarly to claim 23, and are rejected under § 112(d) for the same reason.
Claim 25 is directed to “a structural part manufactured according to the method as claimed in claim 23.” MPEP § 608.01(n).III. explains that, for example, “if claim 1 recites a method of making a specified product, a claim to the product set forth in claim 1 would not be a proper dependent claim if the product can be made by a method other than that recited in the base method claim.” In the present case, the specified product could be made by additive manufacturing methods other than the selective laser or electron beam melting of claim 23, or the powder-bed-based additive manufacturing of claim 15. For example, the apparatus manufactured according to claim 15 could be made by laminated object manufacturing, or fused deposition modeling. Therefore, claim 25 (under a product-by-process framework, see MPEP § 2113) does not necessarily include the limitations of the base claim, and is therefore not a proper dependent claim because it does not incorporate by reference all the limitations of the claim to which it refers.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Allowable Subject Matter
Claims 15–32 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 101, 112(b), and 112(d) set forth in this Office action.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to John J. Norton whose telephone number is (571) 272-5174. The examiner can normally be reached 9:00 AM to 5:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Edward (Ned) F. Landrum can be reached at (571) 272-8648. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN J NORTON/Primary Examiner, Art Unit 3761