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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-5 and 8-11, in the reply filed on May 15, 2026 is acknowledged.
The traversal is on the ground(s) that each of product claims 6-7 and 12-13 expressly requires the process of claim 1. The Office has not established that the claimed inventions are distinct. Under MPEP 806.05(f), a process of making and a product made by that process are distinct only if it can be shown either that the process can be used to make a materially different product, or that the product as claimed can be made by a materially different process. Here, claims 6-7 and 12-13 are product-by-process claims that expressly recites the product made according to the process of claim 1. By its own terms, claims 6-7 and 12-13 are limited to the product produced by the process of claim 1 and do not read on a product made by any other process. The Office therefore cannot show that the product as claimed can be made by a materially different process, and the requirement does not satisfy the distinctness standard of MPEP 806.05(f). Independently, the restriction requirement should be withdrawn because the Office has not established a serious search and examination burden, as required by MPEP 803 and 808.02. Because claims 6-7 and 12-13 incorporate every limitation of the process of claim 1, any search and examination of the elected process claims necessarily encompasses the subject matter of the product-by-process claim. The claims share the same field of search and the same prior art, and the Office has identified no separate classification, separate status in the art, or distinct field of search that would impose an additional burden if the claims were examined together. Absent both distinctness and a demonstrated burden, the requirement is improper.
This is not found persuasive because, as stated in MPEP 806.05(f), a product defined by the process by which it can be made is still a product claim (In re Bridgeford, 357 F.2d 679, 149 USPQ 55 (CCPA 1966)) and can be restricted from the process if the examiner can demonstrate that the product as claimed can be made by another materially different process. The Examiner demonstrated that the product as claimed can be made by another materially different process in the Restriction mailed on April 24, 2026. Although there may be some overlap of the search for the two inventions there is nothing to indicate that the search for both inventions would be coextensive, as the product can be made by another materially different process. Also, the examination on the merits of method claims differs from the examination on the merits of product claims. Therefore, the extra search and/or examination for both inventions poses a serious burden on the examiner making the restriction requirement proper.
The requirement is still deemed proper and is therefore made FINAL.
Claims 6-7 and 12-13 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 timely traversed the restriction (election) requirement in the reply filed on May 15, 2026.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 1, 3-5, 8 and 10-11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Swartz et al. (US 2020/0406538).
Swartz et al. (US 2020/0406538) discloses a process for producing CBAM parts and/or components (fig. 1B; abstract; [0006], [0010]-[0012], [0048]-[0049], [0051]-[0054]), wherein the process employs a predetermined processing temperature, and wherein the process comprises:
combining respective effective amounts of fibers fused together by a binder (sodium silicate) and a preselected thermoplastic material (engineered thermoplastic powders), for producing a CBAM stack (e.g., abstract); and
heating the CBAM stack at a preselected part-producing or component-producing temperature, for producing the CBAM parts and/or components,
wherein the binder has a flash point temperature greater than the processing temperature, and no binder exothermic reactions are present when the processing temperature is less than 340 °C (fig. 1B; abstract; [0006], [0010]-[0012], [0048]-[0049], [0051]-[0054], the stack is heated to melt the thermoplastic material (i.e., heating at a preselected part-producing or component-producing temperature/a predetermined processing temperature/a fabrication temperature) for producing the CBAM parts and/or components, the sodium silicate binder does not suffer from burning at the high temperatures needed for some fabrication (i.e., the binder has a flash point temperature greater than the processing temperature), as the binder is sodium silicate, it is inherent that no binder exothermic reactions are present when the processing temperature is less than 340 °C);
(Claims 3) wherein the binder is a sodium silicate (e.g., abstract);
(Claims 4 and 10) wherein the fiber is a carbon fiber (e.g., [0011]);
(Claims 5 and 11) wherein the fiber is a fiberglass material (glass fibers) (e.g., [0012]); and
(Claim 8) wherein the respective effective amounts of fibers are glued together by the binder and the preselected thermoplastic material (e.g., [0051], sodium silicate binder is an adhesive; [0053], the melted thermoplastic powder bonds the substrate layer (including fibers) together).
Claim(s) 1-2 and 8-9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jang et al. (US 6,471,800).
Jang et al. (US 6,471,800) teach a process for producing CBAM parts and/or components (col. 4, line 65, to col. 6, line 23; composite based additive manufacturing CBAM parts/components are made by forming layers into a stack to fabricate a 3D object), wherein the process employs a predetermined processing temperature, and wherein the process comprises:
combining respective effective amounts of fibers fused together by a binder and a preselected thermoplastic material, for producing a CBAM stack (col. 5, line 32, to col. 6, line 17; the layers contain fibers fused together in respective effective amounts by a binder (polyimide resins) and thermoplastic material (polyethylene oxide) for producing a layer stack);
and heating the CBAM stack at a preselected part-producing or component-producing temperature, for producing the CBAM parts and/or components (col. 5, line 56, to col. 6, line 2; heated to a support collapsing temperature for collapsing the support structure to reveal the 3D part/component),
wherein the binder has a flash point temperature greater than the processing temperature, and no binder exothermic reactions are present when the processing temperature is less than 340 °C (col. 5, line 56, to col. 6, line 17; the support collapsing temperature (i.e., the processing temperature) is higher than the melting point of polyethylene oxide (63 °C) and lower than either the melting point or degradation temperature of polyimide resin (i.e., lower than a flash point temperature of polyimide resin); thus the binder (polyimide resin) has a flash point temperature greater than the support collapsing temperature (i.e., the processing temperature); as the binder is polyimide resin, it is inherent that no binder exothermic reactions are present when the processing temperature is less than 340 °C);
(Claims 2 and 9) wherein the binder is a polyimide (col. 6, lines 3-5); and
(Claim 8) wherein the respective effective amounts of fibers are glued together by the binder and the preselected thermoplastic material (col. 4, line 65, to col. 6, line 23; the respective effective amounts of fibers are glued together by the binder (polyimide resins) and the thermoplastic material (polyethylene oxide) before the support structure is collapsed).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 4-5 and 10-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jang et al. (US 6,471,800) in view of Paton et al. (US 2008/0260954).
Jang et al. (US 6,471,800) discloses the method substantially as claimed, as mentioned above, except for the limitations of claims 4-5 and 10-11.
Paton et al. (US 2008/0260954) discloses a process for producing CBAM parts and/or components including forming layers into a stack 16 for producing the part and/or component (figs. 1a-1e; [0052]-[0059]), wherein the layers include reinforcing fibers such as carbon or glass fibres [0003].
It would have been obvious to one of ordinary skill in the art, at the time the invention was made, to modify the fibers of the layers of Jang et al. (US 6,471,800) to be carbon fibers or fiberglass, as disclosed by Paton et al. (US 2008/0260954), because such a modification is known in the art and would provide an alternative configuration for the fibers known to be operable in the art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH S LEYSON whose telephone number is (571)272-5061. The examiner can normally be reached M-F 8am-4:30pm.
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, Sam Xiao Zhao can be reached at 5712705343. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J.S.L/Examiner, Art Unit 1744
/XIAO S ZHAO/Supervisory Patent Examiner, Art Unit 1744
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