DETAILED ACTION
Claims 7-17 are pending, and claims 7-10 and 16-17 are currently under review.
Claims 11-15 are withdrawn.
Claims 1-6 are cancelled.
Claims 16-17 are newly added.
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
The amendment filed 2/12/2026 has been entered. Claims 7-15 and newly submitted claim(s) 16-17 remain(s) pending in the application. Applicant’s amendments to the Claims have overcome each and every 112 rejection previously set forth in the Non-Final Office Action mailed 10/30/2025.
Claim Interpretation
The term “kit” is interpreted to refer to a plurality of different compositions as recited in [0051 instant spec.].
The term “high melting point” is interpreted to refer to a melting point from about 1000 to 4000 degrees C as recited in [0013 instant spec.].
The term “intermediate temperature range” is interpreted to refer to any temperature below a sintering temperature as recited in [0017, 0020-0021, 0033 instant spec.].
Note
The only outstanding rejections are the double patenting rejections noted below. In the event that said double patenting rejections are overcome, the examiner notes that the withdrawn method claims 11-15 are not currently appropriate for rejoinder because the nonelected claims do not require all the limitations of an allowable claim. The examiner suggests amending the withdrawn method claims accordingly to allow for expeditious examination.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 7-10 and 16-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 12,138,685 in view of in view of Kasperchik et al. and Olubummo et al. as relied in the previous office action. The only difference between the instant claims and patent claims are overlapping ranges, which is prima facie obvious, as well as recitations of stainless steel as the build material powder and a metal complex as recited in claim 9. See MPEP 2144.05(I). However, these features would have been obvious in view of Kasperchik et al. and Olubummo et al., respectively, because Kasperchick et al. establishes obviousness of utilizing a stainless steel build powder and Olubummo et al. establishes obviousness of utilizing the metal complex as recited in claim 9. See previous action for detailed obviousness rationale discussion.
Response to Arguments
The previous 103 rejections are withdrawn in view of applicant’s amendments.
The previous double patenting rejections over application 17/052,885 have been withdrawn in view of applicant’s remarks that said application has been abandoned.
Applicant's arguments 2/12/2026 regarding the double patenting rejections over US 12,138,685 have been fully considered but they are not persuasive.
Applicant argues that the instant claims are distinct from the aforementioned patented claims. However, applicant does not provide any further explanation or reasoning to support this point, such that the examiner cannot concur with applicant’s mere conclusory remarks. The aforementioned patented claims are substantially identical to the instant claims, with the exception of overlapping ranges of the patented shaping composition including 20 to 30 weight percent water and 65 to 75 weight percent of a mixture of aluminum containing particles and iron containing particles, which overlaps with the instant claim scope. Although the instant claim recites further limitations of functional language of the shaping composition, these limitations are merely functional and do not require any further structure/composition that would be absent from the claim scope of the patented claims.
Applicant's arguments 2/12/2026 regarding the request for rejoinder have been considered and is not persuasive.
Applicant argues that the withdrawn claims require “the same technical features” of claim 7 and are therefore proper for rejoinder. The examiner cannot concur. Firstly, it is the examiner’s understanding that “technical feature” as referred to by applicant herein refers to the definition of a “technical feature” as set forth when determining unity of invention. However, rejoinder requires that a nonelected invention must depend from or otherwise require all the limitations of an allowable claim (emphasis added). See MPEP 821.04 & MPEP 823. Since the withdrawn claims currently do not recite all of the limitations of claim 7, rejoinder would not be appropriate (emphasis added).
Conclusion
THIS ACTION IS MADE FINAL. 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 NICHOLAS A WANG whose telephone number is (408)918-7576. The examiner can normally be reached usually M-Th: 7-5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Johnson can be reached at 5712721177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS A WANG/Primary Examiner, Art Unit 1734