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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 08/18/20205 has been entered.
Response to Amendment
In view of the amendment filed 08/18/2025:
The 35 U.S.C. 112(b) rejection of claims 2-19 is withdrawn.
The Double Patenting rejection of claims 2-21 is maintained.
Claims 2-5, 7, and 10-21 are pending.
Claims 1, 6, 8, and 9 are cancelled.
Terminal Disclaimer
The terminal disclaimer filed 08/18/2025 was not approved on 08/26/2025, because the terminal disclaimer identifies a party who is not the applicant. The DISQ form filed 08/26/2025 describes how to remedy the terminal disclaimer disapproval.
Allowable Subject Matter
Claims 2-5, 7, and 10-21 would be allowable if the rejection(s) under Double Patenting set forth in this Office action are overcome by the filing of a Terminal Disclaimer and if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action as interpreted for the purposes of examination.
An examiner’s statement of reasons for indicating allowable subject matter was provided on pg. 7-14 of the Office Action mailed 03/17/2025.
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 2-5,7,11-13, 18, 20, and 21 are rejected on the ground of nonstatutory double
patenting as being unpatentable over claims 1, 8, 9, of U.S. Patent No. 11,858,852 (Herein
referred to as “Reference Patent”) in view of Guenther et al. (US20070049487).
Regarding claim 2, claim 1 of Reference Patent teaches a method for preparing a three-
dimensional printing material, the method comprising (claim 1, line 1-2):
grinding in situ rock material into an amount of rock powder (claim 1, line 3-4);
heating the amount of the rock powder to a temperature greater than or equal to
approximately 1,100°C at the electrical reactor assembly (claim 1, line 5-6);
maintaining the amount of the rock powder at a temperature greater than or equal to
approximately 1,100°C between about one minute and approximately 45 minutes to form a
molten material (claim 1, line 7-9);
extruding the molten material through a nozzle to form an elongated bead of molten
material at any one or more points defined by an x axis, a y axis, and a z axis (claim 1, line 10-
11); and
cooling the molten material to form a hardened material to the hardened state at a rate
of about 300°C per minute for at least two minutes (claim 1, line 12-13).
However, Reference Application fails to teach separating a first subset of sizes of the
rock powder from a second subset of sizes of the rock powder at a sieve;
introducing the second subset of sizes of the rock powder into a hopper;
transferring the second subset of sizes of the rock powder from the hopper to an
electrical reactor assembly using an auger.
In the same field of endeavor pertaining to extruding rock material, Guenther teaches
separating a first subset of sizes of the rock powder from a second subset of sizes of the rock
powder at a sieve ([0079] A composite of drill-core samples taken from metavolcanic (andesite,
dacite, diabase, and others) rock from the Idaho-Maryland mine ("development rock") was air-
dried to less than 3% moisture, and ground to a size fine enough to pass 100% through a 516-
micron (30-mesh) screen. The development rock powder had a composition as shown in Table
1. The development rock powder, without additives, was processed);
introducing the second subset of sizes of the rock powder into a hopper (hopper 150;
Figure 8);
transferring the second subset of sizes of the rock powder from the hopper to an
electrical reactor assembly using an auger ([0098] Outlet 61 of hopper 150 is connected to
feeder 160 at inlet flange 161. Feeder 160 may function as a reciprocating ram, or as an auger or as both. Auger 162 is rotated by shaft 163 and drive 164, thereby conveying particulate
synthetic hybrid rock material forward into extruder barrel 180).
It would have been obvious before the effective filing date of the claimed invention to a
person having ordinary skill in the art to process the rock powder of Reference Patent by a
sieve, as taught by Guenther, since one of ordinary skill would be motivated to process rock
powder with a small enough size range that avoids inhomogeneous heating the of melt. Further
one of ordinary skill would look to using a hopper to feed the powder from to an electrical
reactor assembly using an auger to achieve the predictable results of extruding the rock
material. There would have been a reasonable expectation of success for the powder of
Reference Patent to be fed into a hopper and transferred to an electrical reactor assembly
using an auger, since both Reference Patent and Guenther extrude powdered rock material,
and the extruder of Guenther heats the rock powder to a similar temperature range as that of
Reference Patent’s extruder (see [0038] of Guenther).
Claim 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of Reference Patent (claim 1, line 3-4).
Claim 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of Reference Patent (claim 1, line 7-9).
Claim 5 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of Reference Patent.
Claim 7 is rejected on the ground of nonstatutory double patenting as being
unpatentable over claim 1 of Reference Patent (claim 1, line 5-6).
Claim 11 is rejected on the ground of nonstatutory double patenting as being
unpatentable over claim 9 of Reference Patent.
Regarding claim 12, claims 10, 12, and 13 of Reference Patent teaches a method for
constructing a building structure, the method comprising (claim 10, line 1-2):
grinding in situ igneous anorthosite rock into an amount of aluminosilicate powder
(claim 10, line 2-4);
heating the amount of the aluminosilicate powder to a temperature between
approximately 1,100°C and approximately 1,750°C (claim 10, line 5-6);
maintaining the aluminosilicate powder at a temperature between approximately
1,100°C and approximately 1,750°C for approximately 45 minutes to form a molten
aluminosilicate material (claim 10, line 7-9);
moving a nozzle using a rock processing system along three orthogonal axes and in
angles therebetween and extruding the molten aluminosilicate material through the nozzle
onto a foundation or a previous layer to form a bead of molten aluminosilicate material (claim
10, line 10-12);
cooling the molten aluminosilicate material to form a hardened aluminosilicate material
to the hardened state at a rate of about 300°C per minute for at least two minutes (claim 10, line 11-12), the hardened aluminosilicate material including between about 50% and about 90%
feldspar (claim 13) and having a porosity between approximately 10% and 20% (claim 12); and
extruding additional molten aluminosilicate material through the nozzle to form additional beads of molten aluminosilicate material stacked vertically upward atop one another to form the building structure (claim 10, line 13-15).
However, Reference Patent fails to teach separating a first subset of sizes of the aluminosilicate powder from a second subset of sizes of the aluminosilicate powder at a sieve;
introducing the second subset of sizes of the aluminosilicate powder into a hopper;
transferring the second subset of sizes of the aluminosilicate powder from the hopper
to an electrical reactor assembly.
In the same field of endeavor pertaining to extruding rock material, Guenther teaches
separating a first subset of sizes of the aluminosilicate powder from a second subset of sizes of
the aluminosilicate powder at a sieve ([0079] A composite of drill-core samples taken from
metavolcanic (andesite, dacite, diabase, and others) rock from the Idaho-Maryland mine
("development rock") was air-dried to less than 3% moisture, and ground to a size fine enough
to pass 100% through a 516-micron (30-mesh) screen. The development rock powder had a
composition as shown in Table 1. The development rock powder, without additives, was
processed);
introducing the second subset of sizes of the aluminosilicate powder into a hopper
(hopper 150; Figure 8);
transferring the second subset of sizes of the rock powder from the hopper to an
electrical reactor assembly ([0098] Outlet 61 of hopper 150 is connected to feeder 160 at inlet
flange 161. Feeder 160 may function as a reciprocating ram, or as an auger, or as both. Auger
162 is rotated by shaft 163 and drive 164, thereby conveying particulate synthetic hybrid rock
material forward into extruder barrel 180).
It would have been obvious before the effective filing date of the claimed invention to a
person having ordinary skill in the art to process the aluminosilicate powder of Reference
Patent by a sieve, as taught by Guenther, since one of ordinary skill would be motivated to
process aluminosilicate powder with a small enough size range that avoids inhomogeneous
heating the of melt. Further one of ordinary skill would look to using a hopper to feed the
powder to an electrical reactor assembly to achieve the predictable results of extruding the
aluminosilicate material. There would have been a reasonable expectation of success for the
powder of Reference Patent to be fed into a hopper and transferred to an electrical reactor
assembly, since both Reference Patent and Guenther extrude powdered aluminosilicate
material, and the extruder of Guenther heats the aluminosilicate powder to a similar
temperature range as that of Reference Patent’s extruder (see [0038] of Guenther).
Claim 13 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 10 of Reference Patent (line 3-4).
Claim 18 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of Reference Patent.
Regarding claim 20, claims 6, 12, and 14 of Reference Patent teaches a method for
preparing a three-dimensional printing material to build a structure comprising (claim 14, line
1-2): providing a system including:
a hopper configured to receive an igneous anorthosite rock (claim 14, line 4);
a tubular member (claim 14, line 5);
an auger powered by an auger motor (claim 14, line 6); and
an electric reactor assembly (claim 14, line 7);
wherein the system is mounted within a robotic motion platform (claim 14, line 8);
grinding in situ the igneous anorthosite rock having into an amount of aluminosilicate
powder (claim 14, line 9-10);
placing the amount of aluminosilicate powder into the hopper (claim 14, line 11);
directing the aluminosilicate powder through the tubular member and into the electric
reactor assembly via the auger (claim 14, line 12-13);
heating the aluminosilicate powder in the electric reactor assembly to a temperature
between approximately 1,100°C and approximately 1,750°C to form a molten aluminosilicate
material (claim 14, line 14-15);
maintaining the molten aluminosilicate material at the temperature between
approximately 1,100°C and approximately 1,750°C for a minimum of 45 minutes (claim 14, line
16-17);
extruding the molten aluminosilicate material from the system through a nozzle
mounted on the robotic motion platform (claim 14, line 18-19);
cooling the molten aluminosilicate material to form a hardened aluminosilicate material
to the hardened state at a rate of about 300°C per minute for about two minutes (claim 14, line
20-21), the hardened aluminosilicate material including between approximately 50% and
approximately 90% albite/anorthite feldspar (claim 6) and having a porosity between
approximately 10% and 20% (claim 12); and
extruding additional molten aluminosilicate material through the nozzle to form
additional beads of molten aluminosilicate material stacked atop one another to form the
building structure (claim 14, line 22-23).
However, Reference Patent fails to teach a sieve to separate a first subset of igneous
anorthosite rock having a first size from a second subset of the igneous anorthosite rock having
a second size.
In the same field of endeavor pertaining to extruding rock material, Guenther teaches
teach a sieve to separate a first subset of igneous anorthosite rock having a first size from a
second subset of the igneous anorthosite rock having a second size ([0079] A composite of drill-
core samples taken from metavolcanic (andesite, dacite, diabase, and others) rock from the
Idaho-Maryland mine ("development rock") was air-dried to less than 3% moisture, and ground
to a size fine enough to pass 100% through a 516-micron (30-mesh) screen. The development
rock powder had a composition as shown in Table 1. The development rock powder, without
additives, was processed).
It would have been obvious before the effective filing date of the claimed invention to a
person having ordinary skill in the art to process the aluminosilicate powder of Reference
Patent by a sieve, as taught by Guenther, since one of ordinary skill would be motivated to process aluminosilicate powder with a small enough size range that avoids inhomogeneous
heating the of melt.
Claim 21 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of Reference Patent (see claim 14 line 9-10 of Reference Patent).
Conclusion
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/ARIELLA MACHNESS/Examiner, Art Unit 1743