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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 26 May 2026 has been entered.
Status of Claims
Responsive to the amendment filed 26 May 2025, claim 6 is amended and claims 1-5, 10, 14, 16, and 18-20 are cancelled. Claims 6-9, 11-13, 15, and 17 are currently under examination.
Status of Previous Rejections
Responsive to the amendment filed 26 May 2025, new grounds of rejection are presented responsive to the amendment.
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.
Claims 6-9, 11-13, 15, and 17 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 6 recites that a component is scanned in order to provide scanned data in step a). Step d) as amended now requires that a single set of scanned data is used in step a) and step b). It is not clear what is happening in claim 6. The specification does not provide literal support for the new limitation and it is not clear whether this limitation is disclosed implicitly. Step a) as recited requires the scanning to generate scanned data. Step b) clearly uses the scanned data to generate additive manufacturing data. It is not clear how a single set of scanned data is used in step a). No provision for its use is described in step a) within the claim or specification. In the Remarks of 26 May 2026, applicant argues that the same data set is used to both provide the additive manufacturing data and to determine the predicted characteristics. This would seem to be a reference to using a single set of data in step d), rather than step a). Further, the “set of scanned data” by its definition requires more than one thing is held in the set. The distinguishing characteristic that would define a “single set” as opposed to a multiple set or more than one set collated for the process is undefined. If multiple scans are used within step a) to generate a set of data, would that be a “multiple set” or still a single set? If more than one sweep of a scanner is used to generate the tomographic data is that a “single set?” If multiple parts are made in the same build is that a “single set” or not? No guidance is provided in this context. Based on the arguments as well as the claim when taken in light of the specification, the meaning of these limitations is unclear.
The point of infringement of claim 6 cannot be determined and the claim is indefinite. Each of claims 7-9, 11-13, 15, and 17 depends from claims 1 or 15, respectively, and is also indefinite.
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.
Claim 6-9, 11-13, 15, and 17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/116559 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 6 differs from copending claim 6 in that the material in the copending claim is not melted. However, copending claims 10-11 disclose melting the material, and thus claim 6 is obvious. Other instant claims are similarly detailed by the copending claims. For example instant claim 7 corresponds to copending claim 2, instant claim 8 corresponds to copending claim 3, instant claim 9 corresponds to copending claim 4, and so on.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 6-9, 11-13, 15, and 17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 17/942045 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 6 differs from copending claim 1 in that the method of the copending claim recites that the copending claim 1 does not include the same comparing step. However copending claim 3 does include the comparing step, and it is considered obvious to have practiced the method of copending claim 3. Other instant claims are similarly detailed by the copending claims. For example instant claim 7 corresponds to copending claim 4, instant claim 38 corresponds to copending claim 8, instant claim 9 corresponds to copending claim 9, and so on.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 6-9, 11-13, 15, and 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 12643152. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 differs from patent claim 1 in that the method of the copending claim includes does not include a step of scanning using computed tomography. However, patent claims 2-3 require the use of scanning using computed tomography. Thus the process using copending claim 3 would have been obvious to the skilled artisan. Other instant claims are similarly detailed by the copending claims. For example instant claim 2 corresponds to copending claim 5, instant claim 3 corresponds to copending claim 6, instant claim 4 corresponds to copending claim 7, and so on.
Response to Arguments
Applicant's arguments filed 26 May 2026 have been fully considered. Applicant argues that Heinrich does not teach or make obvious the claimed subject matter. In response, no rejection is made over Heinrich at this time. New grounds of rejection are presented, which are accordingly non-final.
Applicant argues that the claims are described by the specification, citing paragraph [0031] of the disclosure. In response, the rejections under 35 USC 112 for lack of written description are withdrawn.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER S KESSLER whose telephone number is (571)272-6510. The examiner can normally be reached 9-5:30.
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CHRISTOPHER S. KESSLER
Primary Examiner
Art Unit 1734
/CHRISTOPHER S KESSLER/ Examiner, Art Unit 1759
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