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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the focused energy source positioned to direct energy at a location on the metal object being formed on the platform where metal is to be deposited of claim 17 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities:
¶ 7 of the as-filed specification should be amended to recite “technologies used to manufacture metal objects.”
¶ 17 of the as-filed specification should be amended to recite “a[[n]] non-contact object heater 62.”
Claim Objections
Claims 1–10 and 16 are objected to because of the following informalities:
Claim 1, ll. 3–4, should be amended to recite “the melted metal drop ejecting device.”
Each of claims 5 and 16 provide for “a contact heater.” However, it’s fairly clear from the specification that this should be “a non-contact heater,” as the list of alternatives in the claim indicate it is referring to element 62 of the disclosure, which is different from the contact heating element 42 that is separately clamed as the “heating element” in claim 10.
Claims 2–4 and 6–10 are objected to due to dependency upon an objected-to claim.
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 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) 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):
(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). The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) 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). The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) 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), 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), except as otherwise indicated in an Office action.
Comment: Although the “melted metal drop ejecting device” and the “tool . . . configured to either add metal or remove metal” of claims 1 and 11 are formulated as limitations to be interpreted under § 112(f), they is not, since the first is well-known as a device that melts a powder, wire, or other feedstock in a chamber and releases molten droplets from the chamber, and for the second, additive and subtractive manufacturing tools are well-known in the art. See MPEP § 2181.I.C.: “Examiners will apply 35 U.S.C. 112(f) to a claim limitation that uses the term ‘means’ or generic placeholder associated with functional language, unless that term is (1) preceded by a structural modifier, defined in the specification as a particular structure or known by one skilled in the art, that denotes the type of structural device (e.g., ‘filters’), or (2) otherwise modified by sufficient structure or material for achieving the claimed function.”
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.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mark (US Pub. 2017/0087632).
Mark discloses a metal hybrid manufacturing system comprising:
a platform (16);
a melted metal drop ejecting device (10a, 202) coupled to a member (see 10 in fig. 1), the melted drop ejecting device being configured to eject discrete melted metal drops toward the platform to form a metal object on the platform (see e.g. ¶¶ 37 and 38);
a tool (502) coupled to the member (see 502 and 10 in fig. 1), the tool being configured to either add metal or remove metal from the metal object being formed on the platform (grinding wheel 502 would remove metal); and
a controller (20) operatively connected to the melted metal drop ejecting device (¶ 40 explains that the steps shown in fig. 3 are performed by controller 20, including printing step S4) and the tool (see ¶ 56), the controller being configured to:
operate the melted metal drop ejecting device to form portions of the metal object on the platform (see ¶ 40 and fig. 3, inter alia); and
operate the tool to either shape or form other portions of the metal object being formed on the platform (see ¶¶ 56 and 57).
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 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.
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.
Claims 4–10 are rejected under 35 U.S.C. 103 as being unpatentable over Mark as applied to claim 1 above, and further in view of Maeda (US Pub. 2023/0339024).
Claim 4: Mark may not disclose a heater configured to heat at least a portion of the object being formed on the platform (the Office at least choses not to rely on the “heating of the soluble support surface” mentioned in ¶ 73 since its structure is not completely clear).
However, Maeda discloses a similar apparatus with a heater (102, 144) configured to heat a portion of an object (116, 118) being formed on a platform (106, 128).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to add the heater of Maeda to the system of Mark to better control the manufacturing process (see ¶ 52 of Maeda).
Claim 5: Modified as per claim 4 above, Maeda discloses that the heater is one of a non-contact heater (see the objection above; 102/144 qualify as a non-contact heater) and a radiation heater (102/144 emit laser radiation).
Claim 6: Mark does not disclose a focused energy source positioned to direct energy at a location on the object being formed on the platform where melted metal drops are to be ejected or metal deposited.
However, Maeda disclose a similar apparatus with a focused energy source (102, 144) positioned to direct energy at a location on the object being formed (116, 118) on a platform (106, 128) where melted metal drops are to be ejected or metal deposited (see fig. 1).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to add the focused energy source of Maeda to the system of Mark to better control the manufacturing process (see ¶ 52 of Maeda).
Claim 7: Modified as per claim 6 above, Maeda discloses that the focused energy source is a laser (102, 144).
Claim 8: Modified as per claim 6 above, Maeda discloses that the laser is one of a fiber laser, a fiber coupled laser, and a diode laser (¶ 54, “the laser(s) include a fiber laser”).
Claim 9: Modified as per claim 6 above, Maeda does not seem to disclose that its melted metal drop ejecting device and focused energy source are integrated.
However, fig. 3 of Maeda shows an optical device 160 (which may correspond to the laser 144, see ¶ 71) positioned “near one end of the heat shield 132” (¶ 71).
Before the effective filing date of the claimed invention, one of ordinary skill in the art would have recognized that Maeda is effectively teaching that the melted metal drop ejecting device and focused energy source may be very close to, or even touching, each other, and would have found it obvious to make these elements integral so that they could move with, and function with, each other (MPEP § 2144.04.V.B.).
Claim 10: Mark does not disclose the platform further comprising: a heating element operatively connected to the controller.
However, Maeda disclose a similar apparatus where its platform (106, 128) comprises a heating element (136).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to add the heating element of Maeda to the platform of Mark, as an additional means to control the manufacturing (one of ordinary skill in the art would appreciate that it would have advantages similar to those described in Maeda’s ¶ 52 for its laser heating system).
Maeda never explicitly discloses that its heating element is operative connected to its controller 108, but before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to connect these elements so the platform heating element could be controlled.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Mark in view of Maeda.
Mark discloses a metal hybrid manufacturing system comprising:
a platform (16);
a member (see 10 in fig. 1);
a melted metal drop ejecting device (10a, 202) mounted to the member (see fig. 1), the melted metal drop ejecting device configured to eject discrete melted metal drops toward the platform to form a metal object on the platform (see e.g. ¶¶ 37 and 38);
a tool (502) mounted to the member (see fig. 1), the tool being configured to either add or remove metal from the metal object on the platform (grinding wheel 502 would remove metal); and
a controller (20) operatively connected to the melted metal drop ejecting device (¶ 40 explains that the steps shown in fig. 3 are performed by controller 20, including printing step S4) and the tool (see ¶ 56), the controller being configured to:
operate the melted metal drop ejecting device to form portions of a metal object on the platform (see ¶ 40 and fig. 3, inter alia); and
operate the tool to shape or form other portions of the metal object on the platform (see ¶¶ 56 and 57).
Mark does not disclose a heater configured to heat at least a portion of the metal object being formed on the platform, nor its controller configured to operate the heater to heat the metal object on the platform.
However, Maeda discloses a similar apparatus with a heater (102, 144) configured to heat a portion of an object (116, 118) being formed on a platform (106, 128), as well as a controller (108) configured to operate the heater to heat the metal object on the platform (see ¶ 58).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to add the heater of Maeda to the system of Mark to better control the manufacturing process (see ¶ 52 of Maeda).
Allowable Subject Matter
Claims 2 and 12–20 are 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.
The following is a statement of reasons for the indication of allowable subject matter:
The prior art does not disclose or render obvious the limitations of claims 2 and 12 in combination with the limitations of the independent claims, which is made clear with the discussion of the prior art below. Claims 13–20 each depend from claim 12.
At the outset, the most important piece of evidence is Applicant’s assertion that “hybrid manufacturing systems have not included MHD printers or the like because the temperature of the melted metal ejected by such printers make the environment harsh” (¶ 7 of the as-filed specification). This prevents finding obvious some combinations and modifications of prior art.
Carbone (US Pub. 2005/0173380) is an example of a reference which shows a metal deposition tool and a subtractive manufacturing tool which seem to be mounted to a same member, but it provides no disclosure regarding a melted metal drop ejecting device.
Mirzendehdel et al. (US Pub. 2023/0076817), Galle (EP 3 533 537 A1, cited by the Office) are similar to Maeda, but do not disclose a melted metal drop ejecting device as well as a tool to remove metal being coupled to the same member.
Qi et al. (CN 111940732 A, cited by the Office) discloses an apparatus with a metal droplet spraying component and an additive tool, but the additive tool is for adding a polymer.
Du et al. (CN 111515399 A, cited by the Office) and Wei (CN 115055699 A, cited by the Office) both disclose a melted metal drop ejecting device along with an additive tool, but the additive tool is for adding ceramic powder rather than metal as claimed.
Shan et al. (WO 2014/101020 A1, cited by the Office) discloses an apparatus with multiple liquid metal depositors, but they are spray nozzles, which do not release “discrete melted metal drops” as claimed, nor are these nozzles coupled to a common member.
Wu et al. (US Pub. 2023/0294357), Yun et al. (US Pub. 2021/0362225), Smolik et al. (WO 2017/103849 A1, cited by the Office), and Zhao (CN 113070472 A, cited by the Office) are also cited as relevant prior art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to John J. Norton whose telephone number is (571) 272-5174. The examiner can normally be reached 9:00 AM to 5:00 PM EST.
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/JOHN J NORTON/ Primary Examiner, Art Unit 3761
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