DETAILED CORRESPONDENCE
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 .
Allowable Subject Matter
Claim 12 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.
Election/Restrictions
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
The groups of inventions listed in the prior restriction do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
The groups lack unity of invention because even though the inventions of these groups require the technical feature of the printhead, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of the figures in Friedrich (US 20220023938 A1)
Friedrich discloses a printhead for printing molten metal for additive manufacturing of a component (“print head (1) for additively manufacturing three-dimensional workpieces” [Abstract]), including:
a nozzle component having a nozzle outlet opening (Fig 1, annotated copy shown below),
a piston configured to eject the molten metal through the nozzle outlet opening,
an actuator assembly having an actuator (Fig 1, annotated copy shown below), and
a biasing element (Fig 1 element 13)
wherein:
by actuating the actuator, the piston is movable in an actuation direction (y) from an extended position to a retracted position, in which a first piston end that faces the nozzle outlet opening is farther away from the nozzle outlet opening than in the extended position (Fig 1, annotated copy shown below), and
the biasing element biases the piston, at least when the piston is located in the retracted position, towards the … position (Fig 1 element 13 and P0035).
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Friedrich explains that “The piston 5 can be returned to a starting position without actuating the actuator 12 by a spring 13, wherein the spring 13 is arranged in the recess 30 of the cooling flange 25 between a shoulder 24 and the actuator 12. The spring takes the form of a disk spring.” (P0035) but does not indicate if the spring is under tension or compression.
Friedrich further explains, however, that “opening 29 can be closed by a device 32 such that it is preferably open only when the material 14 is being delivered” (P0036).
In other words, Friedrich suggests that the opening should be closed except when the device is ejecting material. Thus, a person of normal skill would understand that Friedrich intends for the opening to be biased in the closed position.
For example, if the device was turned off suddenly, the biasing element would bias the piston in an extended position and thereby close the opening.
Therefore, it would have been obvious that the biasing element is configured such that the biasing element biases the piston, at least when the piston is located in the retracted position, towards the extended position in order to close the opening as claimed.
Applicant’s election of invention and/or species, and corresponding claims is/are acknowledged. The election has been made with traverse. Non-elected claims are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Applicant’s arguments have been considered but are moot because the new ground of restriction does not rely on any reference applied in the prior restriction of record for any teaching or matter specifically challenged in the argument. See prior art rejection below, which demonstrates that unity is lacking.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C.
“biasing element” is interpreted under 35 USC 112(f)
112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 1 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of U.S. Patent No. US 12365034 B2. Although the claims at issue are not identical, they are not patentably distinct from each other.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 1-11 and 16-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Friedrich (US 20220023938 A1)
In reference to claim 1, Friedrich discloses a printhead for printing molten metal for additive manufacturing of a component (“print head (1) for additively manufacturing three-dimensional workpieces” [Abstract]), including:
a nozzle component having a nozzle outlet opening (Fig 1, annotated copy shown below),
a piston configured to eject the molten metal through the nozzle outlet opening,
an actuator assembly having an actuator (Fig 1, annotated copy shown below), and
a biasing element (Fig 1 element 13)
wherein:
by actuating the actuator, the piston is movable in an actuation direction (y) from an extended position to a retracted position, in which a first piston end that faces the nozzle outlet opening is farther away from the nozzle outlet opening than in the extended position (Fig 1, annotated copy shown below), and
the biasing element biases the piston, at least when the piston is located in the retracted position, towards the … position (Fig 1 element 13 and P0035).
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1238
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Friedrich explains that “The piston 5 can be returned to a starting position without actuating the actuator 12 by a spring 13, wherein the spring 13 is arranged in the recess 30 of the cooling flange 25 between a shoulder 24 and the actuator 12. The spring takes the form of a disk spring.” (P0035) but does not indicate if the spring is under tension or compression.
Friedrich further explains, however, that “opening 29 can be closed by a device 32 such that it is preferably open only when the material 14 is being delivered” (P0036).
In other words, Friedrich suggests that the opening should be closed except when the device is ejecting material. Thus, a person of normal skill would understand that Friedrich intends for the opening to be biased in the closed position.
For example, if the device was turned off suddenly, the biasing element would bias the piston in an extended position and thereby close the opening.
Therefore, it would have been obvious that the biasing element is configured such that the biasing element biases the piston, at least when the piston is located in the retracted position, towards the extended position in order to close the opening as claimed.
In reference to claim 2-11, see annotated figures above.
See description of Friedrich Fig 1.
In reference to claim 12, see allowable subject matter above.
In reference to claim 16-20, see annotated figures above.
See description of Friedrich Fig 1.
Conclusion
Any prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2023003140 1A1 relates to a print head (1) for a 3D printer, in particular a metal printer, comprising a housing (3), a device (28) for feeding a metal (14), a piston (5), a reservoir (7, 27) with an outlet opening (10) and an actuator device (12) for displacing the piston (5), wherein the reservoir (7, 27) has a melt region (20) and a displacement body chamber (21) for a liquid phase (8) of the metal (14), wherein the melt region (20) adjoins an inert atmosphere (22) and is connected to the displacement body chamber (21) such that, as a result of the displacement of the piston (5), the liquid phase (8) of the metal (14) can be stimulated to pass through the outlet opening (10), said housing (3) having a multi-part design and comprising at least one cooling flange (25), an insulating plate (26) and the reservoir (7, 27). The invention is characterized in that the reservoir (7, 27) is connected to the cooling flange (25) and/or theinsulating plate (26) by a centering device (50). The invention also relates to a method for operating and/or starting up a print head (1).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS KRASNOW whose telephone number is (571)270-1154. The examiner can normally be reached M-R: 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Xiao Zhao can be reached on 571-270-5343. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Examiner has utilized USPTO approved search resources, such as EIC or external tools, beyond routine search tools and/or leveraged experts in the field. Examiner has cited and explained the relevance of prior art not used in rejections but pertinent to the claims or disclosure. Examiner has provided detailed search documentation through detailed Search Notes, such as annotated search results that identify which data sets were reviewed. When citing the prior art examiner has used annotations clearly in prior art rejections such as, using item-to-item matching to the prior art, pairing exact claim language to particular language used in the prior art, and/or clearly explaining examiner’s interpretation as to how a citation maps to claim language especially when there is not a one-to-one matching of terms.
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/NICHOLAS KRASNOW/Examiner, Art Unit 1744
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