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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/4/2025 has been entered.
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.
(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 1-7 and 16 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Muela (WO 2015/106844).
Claim 1: Muela discloses a three-dimensional printer (¶ 14). The printer includes a delivery device containing a light absorbing agent and capable of depositing a light absorbing agent onto selected areas of a layer of build material particles, the delivery device being a thermal inkjet printhead or a piezoelectric printhead (¶ 39), wherein the light absorbing agent absorbs light having wavelengths that are around the ultraviolet wavelength range (¶ 15); and a light source capable of applying light onto the light absorbing agent and the layer of the build material particles, the light source being a laser (¶ 38), wherein the light absorbing agent absorbs UV light having wavelengths that are below 420 nm (¶ 19), from the light and becomes heated to a temperature that causes the build material particles upon which the light absorbing agent has been deposited to melt and to fuse together following cessation of the application of the light (¶ 15).
Apparatus claims are not limited by the function they perform, as per MPEP §2114. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. As the apparatus of the prior art and the claimed apparatus are patentably indistinguishable in terms of structure, the apparatus of the prior art is reasonably expected to be able to perform the claimed functionalities. Furthermore, Apparatus claims are not limited by the material worked upon as per MPEP §2115. A claim is only limited by positively recited elements. Thus, "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935). Here, the light absorbing agent is consumed during the process of using the apparatus and is therefore a material to be worked upon by the apparatus.
Claim 2: Muela discloses the printer being capable of depositing a second agent that has a property that differs from a property of the light absorbing agent (¶ 15).
Claim 3: Muela discloses the second agent absorbing light in the infrared wavelength (¶ 15).
Claim 4: Muela discloses the agents generate heat and melt the build material (¶ 15).
Claims 5-6: Muela discloses that the agents can be colored (¶ 18), and the three-dimensional printer is therefore capable of depositing colored agents.
Claim 7: Muela discloses a processor capable of controlling the delivery device and the light source (¶¶ 61-62).
Claim 16: Muela discloses a second agent distributor, wherein the second agent distributor is a thermal inkjet printhead or a piezoelectric printhead (claim 4; ¶¶ 37-39).
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 17 is rejected under 35 U.S.C. 103 as being unpatentable over Muela (WO 2015/106844), as applied to claim 16 above.
As discussed above, Muela discloses a second agent distributor wherein the second agent distributor is a thermal inkjet printhead or a piezoelectric printhead, but is silent as to a third agent distributor. However, Muela discloses that “one or more additional material and/or agent distributors may also be provided” (¶ 37). It would have been obvious to one having ordinary skill in the art prior to the effective filing date of the application to have utilized a third agent distributor because Muela teaches that multiple agent distributors allow multiple agents to be deposited. Moreover, it has been held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. In re Harza 245 F.2d 669, 124 USPQ 378 (CCPA 1960).
Response to Arguments
Applicant's arguments filed June 16, 2025 have been fully considered but they are not persuasive.
Applicant argues that the light absorbing agent recited in independent claim 1 should be given patentable weight in view of PTAB decision of U.S. Application No. 14/071,774 (‘774). This argument has been considered but is not persuasive. Claim analysis is highly fact dependent and claims are to be limited only to positively recited elements (MPEP 2115). The instant application teaches that “the delivery device 110 may be scanned across the layer 122 in one or multiple directions to enable droplets of the light absorbing agent 110 to be delivered . . .” (¶ 14). This teaching makes clear that the light absorbing agent is not part of the device, but rather an agent that is delivered by the delivery device. That is, the light absorbing agent does not actively function as part of the device. The light absorbing agent is part of the final product. In contrast, the claims in ‘774 recited a fluidized bed of powdered metal and flux in the chamber. As explained in the PTAB decision, “the fluidized bed of powdered material is not the final product.” (pp. 7-8; emphasis added). Although “a small amount of the powdered material of the fluidized bed is consumed in the process of using the apparatus for forming or repairing a component, . . . the fluidized bed actively functions as part of the apparatus.” (p. 8; emphasis added).
In contrast to ‘774, the instant claims do not recite a fluidized bed of powdered metal and flux. The instant claims recite a light absorbing agent that is consumed during the process of using the apparatus, is part of the final product, and does not actively function as part of the apparatus. The agent is therefore a material to be worked upon by the apparatus.
Conclusion
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/LARRY W THROWER/Primary Examiner, Art Unit 1754