DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This is in response to the above application filed on 08/18/2023 which is a 371 of PCT/JP2022/003449 filed on 01/28/2022 which claims foreign priority to Japan application JP2021-025576 filed on 02/19/2021. Claims 1 – 15 are examined.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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. Such claim limitation(s) is/are:
Claim 13, l. 6 “data acquisition unit configured to acquire…” invokes 112(f) interpretation. The “data acquisition” preceding “unit configured to acquire…” is not sufficient structure, material, or acts for performing the claimed function.
Claim 13, l. 7 “welding path determination unit configured to determine…” invokes 112(f) interpretation. The “welding path determination” preceding “unit configured to determine…” is not sufficient structure, material, or acts for performing the claimed function.
Claim 13, l. 10 “welding path classification unit configured to classify…” invokes 112(f) interpretation. The “welding path classification” preceding “unit configured to classify…” is not sufficient structure, material, or acts for performing the claimed function.
Claim 13, l. 16 “upper and lower layer division unit configured to divide…” invokes 112(f) interpretation. The “upper and lower layer division” preceding “unit configured to divide…” is not sufficient structure, material, or acts for performing the claimed function.
Claim 13, l. 20 “welding condition determination unit configured to determine…” invokes 112(f) interpretation. The “welding condition determination” preceding “unit configured to determine…” is not sufficient structure, material, or acts for performing the claimed function.
MPEP2181(I) stated that “configured to” was a linking word or phrase similar to the transition word "for" (e.g., "means for"). MPEP2181(I)(A) stated that “unit for” was among a list of non-structural generic placeholders that may invoke 35 U.S.C. 112(f) interpretation.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 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.
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 7 – 8, 12, and 13 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.
The term “gradually increase” in Claim 7 is a relative term which renders the claim indefinite. The term “gradually increase” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Specification Paras. [0069], [0078], and Fig. 17A does not provide a standard for ascertaining the requisite degree. Fig. 17A is not indicated as being to scale and there is nothing to define a numerical value of the period of time spanning the “restart” to time “ta” on the X-axis. Similarly, there is nothing to define a numerical value of the “filler metal feeding rate” spanning zero to the “set value” on the Y-axis. The claim limitation “feeding rate of the filler metal is set to be lower than a feeding rate before the stop of the formation of the weld beads to gradually increase from the low rate to the feeding rate before the stop of the formation” is rendered indefinite by the relative term “gradually increase”.
The term “gradually decreases” in Claim 8 is a relative term which renders the claim indefinite. The term “gradually decreases” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Specification Paras. [0069], [0079], and Fig. 17B does not provide a standard for ascertaining the requisite degree. Fig. 17B is not indicated as being to scale and there is nothing to define a numerical value of the period of time spanning the “restart” to time “ta” on the X-axis. Similarly, there is nothing to define a numerical value of the “welding rate” on the Y-axis spanning the unknown welding rate greater than the “set value” at the “restart” time to the “set value” at time “ta”. The claim limitation “welding rate gradually decreases from a welding rate of the intersection region paths to a welding rate of the constant region paths” is rendered indefinite by the relative term “gradually decreases”. Claim 12 depends from Claim 8 and is rejected for the same reasons.
Claim 13, l. 6 limitation “data acquisition unit configured to acquire…” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Functional block diagram Fig. 3 just showed a rectangle labeled “data acquisition unit” with four other rectangles all inside another rectangle labeled “deposition planning unit”. Specification Paras. [0023], [0024], and [0050] just disclose “data acquisition unit” without any additional details. Specification Paras. [0007] and [0081] just repeat the claim language without any additional details. Consequently, the written description is devoid of adequate structure to perform the claimed function of “acquire the shape data”. As would be recognized by one of ordinary skill in the art, the function of “acquire the shape data” can be performed in any number of ways with different hardware, different software, and/or different combinations of hardware and software. The written description does not provide sufficient details such that one of ordinary skill in the art would understand which structure or combination of structures perform(s) the claimed function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim 13, l. 7 limitation “welding path determination unit configured to determine…” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Functional block diagram Fig. 3 just showed a rectangle labeled “welding path determination unit” with four other rectangles all inside another rectangle labeled “deposition planning unit”. Specification Paras. [0023], [0024], and [0050] just disclose “welding path determination unit” without any additional details. Specification Paras. [0007] and [0081] just repeat the claim language without any additional details. Consequently, the written description is devoid of adequate structure to perform the claimed function of “determine a plurality of welding paths along which each of layers sliced from the three-dimensional shape of the additively manufactured object represented by the shape data is formed using the weld beads”. As would be recognized by one of ordinary skill in the art, the function of “determine a plurality of welding paths along which each of layers sliced from the three-dimensional shape of the additively manufactured object represented by the shape data is formed using the weld beads” can be performed in any number of ways with different hardware, different software, and/or different combinations of hardware and software. The written description does not provide sufficient details such that one of ordinary skill in the art would understand which structure or combination of structures perform(s) the claimed function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim 13, l. 10 limitation “welding path classification unit configured to classify…” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Functional block diagram Fig. 3 just showed a rectangle labeled “welding path classification unit” with four other rectangles all inside another rectangle labeled “deposition planning unit”. Specification Paras. [0023], [0024], and [0050] just disclose “welding path classification unit” without any additional details. Specification Paras. [0007] and [0081] just repeat the claim language without any additional details. Consequently, the written description is devoid of adequate structure to perform the claimed function of “classify the plurality of the welding paths in the same layer of each of the layers into intersection region paths corresponding to an intersection portion and constant region paths corresponding to constant portions other than the intersection portion, the intersection portion being formed by intersection of a portion where a plurality of the weld beads are formed adjacent to each other with another plurality of the weld beads”. As would be recognized by one of ordinary skill in the art, the function of “classify the plurality of the welding paths in the same layer of each of the layers into intersection region paths corresponding to an intersection portion and constant region paths corresponding to constant portions other than the intersection portion, the intersection portion being formed by intersection of a portion where a plurality of the weld beads are formed adjacent to each other with another plurality of the weld beads” can be performed in any number of ways with different hardware, different software, and/or different combinations of hardware and software. The written description does not provide sufficient details such that one of ordinary skill in the art would understand which structure or combination of structures perform(s) the claimed function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim 13, l. 16 limitation “upper and lower layer division unit configured to divide…” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Functional block diagram Fig. 3 just showed a rectangle labeled “upper and lower layer division unit” with four other rectangles all inside another rectangle labeled “deposition planning unit”. Specification Paras. [0023], [0024], and [0050] just disclose “upper and lower layer division unit” without any additional details. Specification Paras. [0007] and [0081] just repeat the claim language without any additional details. Consequently, the written description is devoid of adequate structure to perform the claimed function of “divide each of the intersection region paths into a lower layer path along which a lower layer of the intersection portion is formed and an upper layer path along which an upper layer of the intersection portion is formed”. As would be recognized by one of ordinary skill in the art, the function of “divide each of the intersection region paths into a lower layer path along which a lower layer of the intersection portion is formed and an upper layer path along which an upper layer of the intersection portion is formed” can be performed in any number of ways with different hardware, different software, and/or different combinations of hardware and software. The written description does not provide sufficient details such that one of ordinary skill in the art would understand which structure or combination of structures perform(s) the claimed function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim 13, l. 20 limitation “welding condition determination unit configured to determine…” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Functional block diagram Fig. 3 just showed a rectangle labeled “welding condition determination unit” with four other rectangles all inside another rectangle labeled “deposition planning unit”. Specification Paras. [0023], [0024], and [0050] just disclose “welding condition determination unit” without any additional details. Specification Paras. [0007] and [0081] just repeat the claim language without any additional details. Consequently, the written description is devoid of adequate structure to perform the claimed function of “determine welding conditions of the intersection region paths such that an upper layer deposit amount per unit length of weld beads formed along the upper layer path is more than a lower layer deposit amount per unit length of weld beads formed along the lower layer path, a sum of the upper layer deposit amount and the lower layer deposit amount is equal to a deposit amount per unit length of weld beads formed along the constant region paths, and in a cross-section orthogonal to a longitudinal direction of the weld beads formed along the upper layer path, profiles of the weld beads adjacent to each other overlap each other”. As would be recognized by one of ordinary skill in the art, the function of “determine welding conditions of the intersection region paths such that an upper layer deposit amount per unit length of weld beads formed along the upper layer path is more than a lower layer deposit amount per unit length of weld beads formed along the lower layer path, a sum of the upper layer deposit amount and the lower layer deposit amount is equal to a deposit amount per unit length of weld beads formed along the constant region paths, and in a cross-section orthogonal to a longitudinal direction of the weld beads formed along the upper layer path, profiles of the weld beads adjacent to each other overlap each other” can be performed in any number of ways with different hardware, different software, and/or different combinations of hardware and software. The written description does not provide sufficient details such that one of ordinary skill in the art would understand which structure or combination of structures perform(s) the claimed function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 13 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. MPEP2163.03(V) stated “An original claim may lack written description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved or (2) a broad genus claim is presented but the disclosure only describes a narrow species with no evidence that the genus is contemplated. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349-50 (Fed. Cir. 2010) (en banc). The written description requirement is not necessarily met when the claim language appears in ipsis verbis in the specification. "Even if a claim is supported by the specification, the language of the specification, to the extent possible, must describe the claimed invention so that one skilled in the art can recognize what is claimed. The appearance of mere indistinct words in a specification or a claim, even an original claim, does not necessarily satisfy that requirement." Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 968, 63 USPQ2d 1609, 1616 (Fed. Cir. 2002)”. For each of the written description rejections below, the claims defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved.
Specification Para. [0016] disclosed “The controller 13 includes a deposition planning unit 27, a storage unit 29, and a control unit 31 to which these units are connected. The controller 13 is configured by a computer device including a CPU, a memory, and a storage.” Fig. 1 showed a rectangle labeled “deposition planning unit” inside a rectangle with reference character “13”. Functional block diagram Fig. 3 just showed five (5) rectangles with different labels all inside another rectangle labeled “deposition planning unit”. Therefore, Claim 13 is interpreted as a computer-implemented functional claim. MPEP 2161.01(I) applies to the following 35 U.S.C. 112(a) rejections for failing to comply with the written description requirement. MPEP2161.01(I), third paragraph stated “Regents of the Univ. of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1568, 43 USPQ2d 1398, 1405-06 (Fed. Cir. 1997) ("The description requirement of the patent statute requires a description of an invention, not an indication of a result that one might achieve if one made that invention."). Problems satisfying the written description requirement for original claims often occur when claim language is generic or functional, or both. Ariad, 593 F.3d at 1349, 94 USPQ2d at 1171 ("The problem is especially acute with genus claims that use functional language to define the boundaries of a claimed genus. In such a case, the functional claim may simply claim a desired result, and may do so without describing species that achieve that result. But the specification must demonstrate that the applicant [inventor] has made a generic invention that achieves the claimed result and do so by showing that the applicant [inventor] has invented species sufficient to support a claim to the functionally-defined genus.") MPEP2161.01(I), sixth paragraph stated “Similarly, original claims may lack written description when the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved. For software, this can occur when the algorithm or steps/procedure for performing the computer function are not explained at all or are not explained in sufficient detail (simply restating the function recited in the claim is not necessarily sufficient). In other words, the algorithm or steps/procedure taken to perform the function must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed.” The computer-implemented functional limitations of Claim 13 simply claim “units” that achieve desired results and the algorithm or steps/procedure for performing the computer functions are not explained at all or are not explained in sufficient detail because the Specification simply restates the functions recited in the claims. MPEP 2161.01(I), eighth paragraph stated “When examining computer-implemented functional claims, examiners should determine whether the specification discloses the computer and the algorithm (e.g., the necessary steps and/or flowcharts) that perform the claimed function in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor possessed the claimed subject matter at the time of filing. An algorithm is defined, for example, as "a finite sequence of steps for solving a logical or mathematical problem or performing a task." Microsoft Computer Dictionary (5th ed., 2002). Applicant may "express that algorithm in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure." Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008) (internal citation omitted). It is not enough that one skilled in the art could write a program to achieve the claimed function because the specification must explain how the inventor intends to achieve the claimed function to satisfy the written description requirement. See, e.g., Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 681-683, 114 USPQ2d 1349, 1356, 1357 (Fed. Cir. 2015) (reversing and remanding the district court’s grant of summary judgment of invalidity for lack of adequate written description where there were genuine issues of material fact regarding "whether the specification show[ed] possession by the inventor of how accessing disparate databases is achieved"). If the specification does not provide a disclosure of the computer and algorithm in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention a rejection under 35 U.S.C. 112(a) for lack of written description must be made.” For all the reasons discussed below, the original disclosure failed to provide a description of the computer and algorithm(s) in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the full scope of the claimed invention. By failing to provide a description of the computer and algorithm(s) in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the full scope of the claimed invention Applicant is trying to claim any and all means for achieving the claimed invention.
Claim 13, l. 6 recites “data acquisition unit configured to acquire…” which invokes 35 U.S.C. 112(f) interpretation. As discussed in the 112(b) rejection above, Specification Paras. [0023], [0024], and [0050] just disclose “data acquisition unit” without any additional details. Specification Paras. [0007] and [0081] just repeat the claim language without any additional details. Functional block diagram Fig. 3 illustrates the “data acquisition unit” as an empty rectangular box with reference character (33) with four other empty rectangular boxes all inside another rectangle labeled “deposition planning unit”. Consequently, disclosure does not provide an adequate description of the structure to perform the claimed function of “acquire the shape data”. The specification does not demonstrate that applicant has made an invention that achieves the claimed function because the invention is not described with sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor had possession of the claimed invention. Claim 13 is rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement.
Claim 13, ll. 7 - 9 recites “welding path determination unit configured to determine…” which invokes 35 U.S.C. 112(f) interpretation. As discussed in the 112(b) rejection above, Specification Paras. [0023], [0024], and [0050] just disclose “welding path determination unit” without any additional details. Specification Paras. [0007] and [0081] just repeat the claim language without any additional details. Functional block diagram Fig. 3 illustrates the “welding path determination unit” as an empty rectangular box with reference character (35) with four other empty rectangular boxes all inside another rectangle labeled “deposition planning unit”. Consequently, disclosure does not provide an adequate description of the structure to perform the claimed function of “determine a plurality of welding paths along which each of layers sliced from the three-dimensional shape of the additively manufactured object represented by the shape data is formed using the weld beads”. The specification does not demonstrate that applicant has made an invention that achieves the claimed function because the invention is not described with sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor had possession of the claimed invention. Claim 13 is rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement.
Claim 13, ll. 10 - 15 recites “welding path classification unit configured to classify…” which invokes 35 U.S.C. 112(f) interpretation. As discussed in the 112(b) rejection above, Specification Paras. [0023], [0024], and [0050] just disclose “welding path classification unit” without any additional details. Specification Paras. [0007] and [0081] just repeat the claim language without any additional details. Functional block diagram Fig. 3 illustrates the “welding path classification unit” as an empty rectangular box with reference character (37) with four other empty rectangular boxes all inside another rectangle labeled “deposition planning unit”. Consequently, disclosure does not provide an adequate description of the structure to perform the claimed function of “determine a plurality of welding paths along which each of layers sliced from the three-dimensional shape of the additively manufactured object represented by the shape data is formed using the weld beads”. The specification does not demonstrate that applicant has made an invention that achieves the claimed function because the invention is not described with sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor had possession of the claimed invention. Claim 13 is rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement.
Claim 13, ll. 16 - 19 recites “upper and lower layer division unit configured to divide…” which invokes 35 U.S.C. 112(f) interpretation. As discussed in the 112(b) rejection above, Specification Paras. [0023], [0024], and [0050] just disclose “upper and lower layer division unit” without any additional details. Specification Paras. [0007] and [0081] just repeat the claim language without any additional details. Functional block diagram Fig. 3 illustrates the “upper and lower layer division unit” as an empty rectangular box with reference character (39) with four other empty rectangular boxes all inside another rectangle labeled “deposition planning unit”. Consequently, disclosure does not provide an adequate description of the structure to perform the claimed function of “divide each of the intersection region paths into a lower layer path along which a lower layer of the intersection portion is formed and an upper layer path along which an upper layer of the intersection portion is formed”. The specification does not demonstrate that applicant has made an invention that achieves the claimed function because the invention is not described with sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor had possession of the claimed invention. Claim 13 is rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement.
Claim 13, ll. 20 - 27 recites “welding condition determination unit configured to determine…” which invokes 35 U.S.C. 112(f) interpretation. As discussed in the 112(b) rejection above, Specification Paras. [0023], [0024], and [0050] just disclose “welding condition determination unit” without any additional details. Specification Paras. [0007] and [0081] just repeat the claim language without any additional details. Functional block diagram Fig. 3 illustrates the “welding condition determination unit” as an empty rectangular box with reference character (41) with four other empty rectangular boxes all inside another rectangle labeled “deposition planning unit”. Consequently, disclosure does not provide an adequate description of the structure to perform the claimed function of “determine welding conditions of the intersection region paths such that an upper layer deposit amount per unit length of weld beads formed along the upper layer path is more than a lower layer deposit amount per unit length of weld beads formed along the lower layer path, a sum of the upper layer deposit amount and the lower layer deposit amount is equal to a deposit amount per unit length of weld beads formed along the constant region paths, and in a cross-section orthogonal to a longitudinal direction of the weld beads formed along the upper layer path, profiles of the weld beads adjacent to each other overlap each other”. The specification does not demonstrate that applicant has made an invention that achieves the claimed function because the invention is not described with sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor had possession of the claimed invention. Claim 13 is rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement.
Claim 13 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. As discussed above, Claim 13 is interpreted as a computer-implemented functional claim. As discussed above, Claim 13 recites five (5) limitations which are interpreted as invoking 112(f) interpretation. Claim 13, l. 6 recites “a data acquisition unit configured to acquire the shape data”. Claim 13, ll. 7 - 9 recites “a welding path determination unit configured to determine a plurality of welding paths along which each of layers sliced from the three-dimensional shape of the additively manufactured object represented by the shape data is formed using the weld beads”. Claim 13, ll. 10 - 15 recites “a welding path classification unit configured to classify the plurality of the welding paths in the same layer of each of the layers into intersection region paths corresponding to an intersection portion and constant region paths corresponding to constant portions other than the intersection portion, the intersection portion being formed by intersection of a portion where a plurality of the weld beads are formed adjacent to each other with another plurality of the weld beads”. Claim 13, ll. 16 - 19 recites “an upper and lower layer division unit configured to divide each of the intersection region paths into a lower layer path along which a lower layer of the intersection portion is formed and an upper layer path along which an upper layer of the intersection portion is formed”. Claim 13, ll. 20 - 27 recites “a welding condition determination unit configured to determine welding conditions of the intersection region paths such that an upper layer deposit amount per unit length of weld beads formed along the upper layer path is more than a lower layer deposit amount per unit length of weld beads formed along the lower layer path, a sum of the upper layer deposit amount and the lower layer deposit amount is equal to a deposit amount per unit length of weld beads formed along the constant region paths, and in a cross-section orthogonal to a longitudinal direction of the weld beads formed along the upper layer path, profiles of the weld beads adjacent to each other overlap each other”. MPEP2164.06(c), third paragraph stated “In a typical computer application, system components are often represented in a "block diagram" format, i.e., a group of hollow rectangles representing the elements of the system, functionally labeled, and interconnected by lines. Such block diagram computer cases may be categorized into (A) systems that include but are more comprehensive than a computer and (B) systems wherein the block elements are totally within the confines of a computer.”. Fig. 1 showed a rectangle labeled “deposition planning unit” inside a rectangle with reference character “13”. Para. [0016] disclosed “The controller 13 is configured by a computer device including a CPU, a memory, and a storage”. Functional block diagram Fig. 3 just showed five (5) rectangles with different labels all inside another rectangle labeled “deposition planning unit” which is shown as a rectangle inside “controller 13” in Fig. 1. Fig. 3 is just a functional block diagram with a bunch of labeled rectangles where each rectangle was essentially a “black box” unconnected to the other “black boxes” where there are no descriptions of the specific hardware of box/module and no descriptions of the algorithm, i.e., calculations performed by software of each box/module. Consequently, Applicant’s Figs 1 and 3 are categorized as “(B) systems wherein the block elements are totally within the confines of a computer”. In other words, Applicant’s claimed invention involves a computer system which include hardware units and/or software units inside the computer.
When determining whether “undue experimentation” would have been needed to make and use the claimed invention the following factors, MPEP 2164.01(a), are considered: (A) the breadth of the claims – applicant claims a deposition plan making apparatus that makes a deposition plan in which an additively manufactured object is formed using shape data representing a three- dimensional shape of the additively manufactured object by an additive manufacturing apparatus that deposits weld beads obtained by melting and solidifying a filler metal.; (B) the nature of the invention – For the reasons discussed above the claims are interpreted as MPEP 2164.06(c)(II) Block Elements Within a Computer, i.e., a computer system which include hardware units and/or software units inside the computer.; (C) The state of the prior art – As discussed in the 35 USC §102 rejection of Claim 1 below, He Zhi et al. (CN111037051A, cited in the 08/07/2024 IDS) taught method steps similar to the claimed computer-implemented functional limitations.; (D) The level of one of ordinary skill - MPEP 2164.06(c), second paragraph stated “In computer applications, it is not unusual for the claimed invention to involve two areas of prior art or more than one technology, e.g., an appropriately programmed computer and an area of application of said computer. White Consol. Indus. v. Vega Servo-Control, Inc., 214 USPQ 796, 821 (S.D.Mich. 1982). In regard to the "skilled in the art" standard, in cases involving both the art of computer programming, and another technology, the examiner must recognize that the knowledge of persons skilled in both technologies is the appropriate criteria for determining sufficiency. See In re Naquin, 398 F.2d 863, 158 USPQ 317 (CCPA 1968); In re Brown, 477 F.2d 946, 177 USPQ 691 (CCPA 1973); White Consol. Indus., 214 USPQ at 822, aff’d on related grounds, 713 F.2d 788, 218 USPQ 961 (Fed. Cir. 1983). Therefore a person of ordinary skill in the art would be a computer systems engineer with at least a Masters degree in Computer Systems Engineering and at least 5 years of relevant work experience combining hardware and writing software for additive manufacturing using weld beads.; (E) the level of predictability in the art – low predictability per the sections of MPEP 2164.06(C)(I) and (C)(II) discussed below; (F) the amount of direction provided by the inventor – Applicant's disclosure does not teach how to make or use the invention because the Specification merely repeats the claim language without any additional details. The Specification failed to include any references to (1) an identified prior art computer system and (2) an operative computer program for the referenced prior art computer system. MPEP 2164.06(c)(II), first paragraph stated “It must be emphasized that because of the significance of the program listing and the reference to and reliance on an identified prior art computer system, absent either of these items, a block element disclosure within the confines of a computer should be scrutinized in precisely the same manner as the first category of block diagram cases discussed above.” Fig. 3 is a block diagrams with a bunch of labeled rectangles/boxes/modules where each rectangle or box/module was essentially a “black box” where there are no descriptions of the calculations performed by each box or how each box was precisely coordinating with the other “black boxes”. The original Specification Para. [0023] disclosed “Fig. 3 is a functional block diagram of the deposition planning unit 27. The deposition planning unit 27 includes a data acquisition unit 33, a welding path determination unit 35, a welding path classification unit 37, an upper and lower layer division unit 39, and a welding condition determination unit 41.” The original disclosure failed to provide a disclosure of the computer and algorithm, i.e., software, in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention. The original Specification merely repeats the language of the claims without any additional details. Consequently, Applicant’s original disclosure failed to describe sufficient details of Applicant’s hardware (i.e., prior art computer system) and Applicant’s custom programming, i.e., program listings/algorithms. Therefore, it is impossible for Applicant’s original disclosure to show enablement of the full scope of the claimed subject matter at the time of filing. MPEP 2164.06(a)(I), second paragraph stated “A disclosure of an electrical circuit apparatus, depicted in the drawings by block diagrams with functional labels, was held to be nonenabling in In re Gunn, 537 F.2d 1123, 1129, 190 USPQ 402, 406 (CCPA 1976), where there was no indication in the specification as to whether the parts represented by boxes were "off the shelf" or must be specifically constructed or modified for applicant’s system. Also there were no details in the specification of how the parts should be interconnected, timed and controlled so as to obtain the specific operations desired by the applicant.” The Board in In re Gunn focused on the fact that the drawings were "block diagrams, i.e., a group of rectangles representing the elements of the system, functionally labeled and interconnected by lines." 442 F.2d at 991, 169 USPQ at 727. The specification did not particularly identify each of the elements represented by the blocks or the relationship therebetween, nor did it specify particular apparatus intended to carry out each function. The Board further questioned whether the selection and assembly of the required components could be carried out routinely by persons of ordinary skill in the art. Similarly in this case, Applicant’s original disclosure did not particularly identify each of the elements represented by the blocks or the relationship therebetween, nor did it specify particular apparatus intended to carry out each function. There was no indication in Applicant’s Specification as to whether the parts represented by the “black boxes” were "off the shelf" or must be specifically constructed or modified for applicant’s invention. Also there were no details in Applicant’s Specification of how the various “black boxes” should be interconnected, timed and controlled so as to obtain the full scope of the specific operations desired by Applicant’s claimed invention. Therefore, similar to In re Gunn, Applicant’s disclosure has failed to apprise one of ordinary skill how to make and use the full scope of the claimed invention. Applicant’s disclosure failed to describe the program listings/software algorithms that performed all the claimed functional limitations in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the original disclosure FAILED TO ENABLE the full scope of the claimed invention at the time of filing. The original disclosure failed to provide a disclosure of the prior art computer system and program listings/software algorithms in sufficient detail to demonstrate to one of ordinary skill in the art that the original disclosure enabled the full scope of the claimed invention at the time of filing. The original Specification Paras. [0007] and [0081] just repeat the claim language without any additional details. Specification Paras. [0023], [0024], and [0050] just disclose “welding condition determination unit” without any additional details. Functional block diagram Fig. 3 illustrates the “data acquisition unit”, “welding path determination unit”, “welding path classification unit”, “upper and lower layer division unit”, and “welding condition determination unit” as five (5) empty rectangular boxes all inside another rectangle labeled “deposition planning unit”, but without details of how said five (5) empty rectangular boxes are connected to each other. MPEP 2164.06(c)(II), third paragraph stated “In programming applications where the software disclosure only includes a flowchart, as the complexity of functions and the generality of the individual components of the flowchart increase, the basis for challenging the sufficiency of such a flowchart becomes more reasonable because the likelihood of more than routine experimentation being required to generate a working program from such a flowchart also increases.” Fig. 10 is a flowchart illustrating the procedure of making the deposition plan, per Para. [0050].
The single flowchart rectangle (St.1) labeled “Read Shape Data” encompassed a plurality of complex functions recited in Claim 13, l. 6. The single flowchart rectangle (St.2) labeled “Slice Shape Model into Layers and Determine Welding Paths” encompassed a plurality of complex functions recited in Claim 13, ll. 7 - 9. The single flowchart rectangle (St.3) labeled “Classify Formed Region into Constant Portions and Intersection Portion” encompassed a plurality of complex functions recited in Claim 13, ll. 10 - 15. The single flowchart rectangle (St.4) labeled “Set Welding Conditions of Constant Portions” encompassed a plurality of complex functions recited in Claim 13, ll. 20 - 27. The single flowchart rectangle (St.5) labeled “Calculate Threshold R of Ratio S1 / (S1 + S2) of intersection portion” encompassed a plurality of complex functions recited in Claim 13, ll. 16 - 19. Consequently, the basis for challenging the sufficiency of the Fig. 10 flowchart is reasonable because the likelihood of more than routine experimentation being required to generate a working program from such a basic flowchart is increased. MPEP 2164.06(a)(I), second paragraph stated “In In re Donohue, 550 F.2d 1269, 193 USPQ 136 (CCPA 1977), the lack of enablement was caused by lack of information in the specification about a single block labeled "LOGIC" in the drawings. See also Union Pac. Res. Co. v. Chesapeake Energy Corp., 236 F.3d 684, 57 USPQ2d 1293 (Fed. Cir. 2001) (Claims directed to a method of determining the location of a horizontal borehole in the earth failed to comply with enablement requirement of 35 U.S.C. 112 because certain computer programming details used to perform claimed method were not disclosed in the specification, and the record showed that a person of skill in art would not understand how to "compare" or "rescale" data as recited in the claims in order to perform the claimed method.” As discussed above, Applicant’s Specification failed to sufficiently describe the algorithms, i.e., program lists, that detailed how Applicant performed the computer-implemented functional limitations packed into the flowchart blocks. Similarly, the computer programming details, i.e., program lists/algorithms, that Applicant used to perform the claimed computer-implemented functional limitations were not disclosed in Applicant’s Specification since the Specification only repeated the claim limitations which recited the results achieved by the invention. Therefore, similar to In re Donohue and Union Pac. Res. Co. v. Chesapeake Energy Corp, Applicant’s disclosure has failed to apprise one of ordinary skill how to make and use the full scope of the claimed invention. MPEP 2164.06(a)(I), fourth paragraph stated “An adequate disclosure of a device may require details of how complex components are constructed and perform the desired function. The claim before the court in In re Scarbrough, 500 F.2d 560, 182 USPQ 298 (CCPA 1974), was directed to a system which comprised several component parts (e.g., computer, timing and control mechanism, A/D converter, etc.) only by generic name and overall ultimate function. The court concluded that there was not an enabling disclosure because the specification did not describe how "complex elements known to perform broadly recited functions in different systems would be adaptable for use in Appellant’s particular system with only a reasonable amount of experimentation" and that "an unreasonable amount of work would be required to arrive at the detailed relationships appellant says that he has solved." 500 F.2d at 566, 182 USPQ at 302”. As discussed above, Applicant’s deposition plan making apparatus comprised several component parts (e.g., computer/processor/software, i.e., program lists/algorithms, etc.) only by generic name and overall ultimate function. Applicant’s disclosure did not describe how "complex elements known to perform broadly recited functions in different systems would be adaptable for use in Appellant’s particular system with only a reasonable amount of experimentation". Applicant’s disclosure failed to describe Applicant’s software algorithms that performed all the claimed functional limitations in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the original disclosure FAILED TO ENABLE the full scope of the claimed invention at the time of filing. MPEP 2164.06(c)(I), second paragraph stated “…where the specification provides in a block diagram disclosure of a complex system that includes a microprocessor and other system components controlled by the microprocessor, a mere reference to a commercially available microprocessor, without any description of the precise operations to be performed by the microprocessor, fails to disclose how such a microprocessor would be properly programmed to (1) either perform any required calculations or (2) coordinate the other system components in the proper timed sequence to perform the functions disclosed and claimed. If a particular program is disclosed in such a system, the program should be carefully reviewed to ensure that its scope is commensurate with the scope of the functions attributed to such a program in the claims. In re Brown, 477 F.2d at 951, 177 USPQ at 695. If (1) the disclosure fails to disclose any program and (2) more than routine experimentation would be required of one skilled in the art to generate such a program, the examiner clearly would have a reasonable basis for challenging the sufficiency of such a disclosure.”. Since Applicant failed to sufficiently disclose details of the hardware components that made up the complex satellite constellation forming system and failed to sufficiently disclose details of Applicant’s algorithm, i.e., software that performed the calculations and coordinated the timing and control of all the hardware components, Applicant’s disclosure failed to enable the full scope of the claimed invention which encompasses all known and unknown ways of performing the claimed computer-implemented functions.; (G) the existence of working examples - applicant has not stated whether or not a working example exists; and (H) the quantity of experimentation needed to make or use the invention based on the content of the disclosure – it has been held that “an adequate disclosure of a device may require details of how complex components are constructed and perform the desired function", In re Scarbrough, 500 F.2d 560, 182 USPQ 298 (CCPA 1974), MPEP 2164.06(a)(I)]. Even if a potential infringer could, with undue experimentation, design the complex hardware system and write a program to run on said complex hardware system to perform the claimed computer-implemented functions of Claim 13, it would be impossible to tell if the potential infringer’s deposition plan making apparatus would avoid infringing on Applicant’s claimed invention, i.e., the computer hardware, the computer software, or the combination of computer hardware and computer software, because Applicant’s disclosure failed to disclose any details of how the computer-implemented functions of Claim 13 are performed by Applicant.
Note: The lack of written description and enablement for Claim 13 prevented application of prior art, because the structures involved, not being disclosed and therefore not enabled, could not be searched.
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.
Claims 1, 2, 5 – 8, and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by He Zhi et al. (CN111037051A, cited in the 08/07/2024 IDS).
Regarding Claim 1, He Zhi discloses, in Figs. 1 - 5, all the claimed limitations including a deposition planning method for an additively manufactured object (claim 1, Machine Translation Pg. 1, middle third “Additive manufacturing technology is based on the discrete-stacking principle.”), in which the additively manufactured object is formed using shape data representing a three-dimensional shape of the additively manufactured object (Machine Translation Pg. 2, top third "Step 1: Read and analyze the three-dimensional model of the structural part") by an additive manufacturing apparatus that deposits weld beads obtained by melting and solidifying a filler metal (Machine Translation Pg. 1, last sentence "wire feed"), the deposition planning method comprising:
acquiring the shape data (Machine Translation Pg. 2, top third "Step 1: Read and analyze the three-dimensional model of the structural part");
determining a plurality of welding paths along which each of layers sliced from the three-dimensional shape of the additively manufactured object represented by the shape data is formed using the weld beads (Machine Translation Pg. 2, top third "Step 1: … determine the forming process parameters and the actual single-pass weld width according to the final size requirements". Machine Translation Pg. 2, middle third "Further, in odd layer,"… "In the even layer,"…);
classifying the plurality of the welding paths in the same layer of each of the layers into intersection region paths [Machine Translation Pg. 2, top third "intersection section", ‘C’ in Fig. 1(a) and Machine Translation Pg. 2, middle third "intersection section" ‘f’ in Fig. 1(b)] corresponding to an intersection portion and constant region paths [Machine Translation Pg. 2, top third "overlapping sections", a and b in Fig. 1(a) and Machine Translation Pg. 2, middle third C and d in Fig. 1(b)] corresponding to constant portions other than the intersection portion, the intersection portion being formed by intersection of a portion where a plurality of the weld beads are formed adjacent to each other with another plurality of the weld beads (Shown in Figs. 1(a) and 1(b), Machine Translation Pg. 5, top third “after completing the first layer”, “after completing the second layer”, and “the third layer stacking”);
dividing each of the intersection region paths into a lower layer path [A in Fig. 1(a) and B' in Fig. 1(b)] along which a lower layer of the intersection portion is formed and an upper layer path [B in Fig. 1(a) and A' in Fig. 1(b)] along which an upper layer of the intersection portion is formed; and
determining welding conditions (Machine Translation Pg. 2, top third "determine the forming process parameters and the actual single-pass weld width according to the final size requirements") of the intersection region paths such that an upper layer deposit amount per unit length of weld beads formed along the upper layer path is more than a lower layer deposit amount per unit length of weld beads formed along the lower layer path (As shown in Fig. 1(a) no deposition in the intersection region of segments A and B and in Fig. 1(b) no deposition in the intersection region of segments A’ and B’), a sum of the upper layer deposit amount and the lower layer deposit amount is equal to a deposit amount per unit length of weld beads formed along the constant region paths (As shown in Figs. 1(a) and 1(b) the deposition amount in segments B and A', respectively, is constant, so that the deposit amount in the intersection region is equal to the deposit amount in the constant regions), and in a cross-section orthogonal to a longitudinal direction of the weld beads formed along the upper layer path, profiles of the weld beads adjacent to each other overlap each other (As shown in Figs. 1(a) and 1(b), cross-section views along D-D and E-E).
Re Claim 2, He Zhi discloses the invention as claimed and as discussed above, including wherein in the determining of the welding conditions (Machine Translation Pg. 2, top third "determine the forming process parameters and the actual single-pass weld width according to the final size requirements") of the intersection region paths, the deposit amount changes by changing a welding rate (Vt) of the upper layer path in the intersection region paths to be slower than (6.3 mm/s – Fig. 5(b)) a welding rate of the lower layer path (7 mm/s – Fig. 5(b)).
Re Claim 5, He Zhi discloses the invention as claimed and as discussed above, including, in Fig. 3(b) and Machine Translation Pg. 4, last paragraph continuing on to Pg. 5, first paragraph, wherein not only the welding rate (Vt) but also a feeding rate (Vw) of the filler metal changes.
Re Claim 6, He Zhi discloses the invention as claimed and as discussed above, including, in Claim 1 of He Zhi, wherein in the determining of the welding conditions of the intersection region paths, in the intersection region paths, the formation of the weld beads along the lower layer path is stopped and the weld beads are formed only along the upper layer path.
Re Claim 7, [Refer to the 112(b) rejection above.] He Zhi discloses the invention as claimed and as discussed above, including, in Fig. 3(b) and Machine Translation Pg. 4, last paragraph continuing on to Pg. 5, first paragraph, wherein at time of restart from the stop of the formation of the weld beads, a feeding rate (Vw) of the filler metal is set to be lower than a feeding rate before the stop of the formation of the weld beads to gradually increase (It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, that it was impossible for the feeding rate to instantaneously increase from the low rate to the feeding rate before the stop of the formation) from the low rate to the feeding rate before the stop of the formation.
Re Claim 8, [Refer to the 112(b) rejection above.] He Zhi discloses the invention as claimed and as discussed above, including, in Fig. 3(b) and Machine Translation Pg. 4, last paragraph continuing on to Pg. 5, first paragraph, wherein until the feeding rate of the filler metal reaches the feeding rate before the stop of the formation of the weld beads from the restart, a welding rate (Vt) gradually decreases (It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, that it was impossible for the welding rate to instantaneously decrease from a welding rate of the intersection region paths to a welding rate of the constant region paths) from a welding rate of the intersection region paths to a welding rate of the constant region paths.
Regarding Claim 14, He Zhi discloses, in Figs. 1 - 5, all the claimed limitations including a computer program product comprising a non-transitory computer readable storage medium having instructions encoded thereon that, when executed by a processor, cause the processor to execute an additive manufacturing procedure for an additively manufactured object (claim 1, Machine Translation Pg. 1, middle third “Additive manufacturing technology is based on the discrete-stacking principle.”), in which the additively manufactured object is formed using shape data representing a three-dimensional shape of the additively manufactured object (Machine Translation Pg. 2, top third "Step 1: Read and analyze the three-dimensional model of the structural part") by an additive manufacturing apparatus that deposits weld beads obtained by melting and solidifying a filler metal (Machine Translation Pg. 1, last sentence "wire feed"), the additive manufacturing procedure comprising:
acquiring the shape data (Machine Translation Pg. 2, top third "Step 1: Read and analyze the three-dimensional model of the structural part");
determining a plurality of welding paths along which each of layers sliced from the three-dimensional shape of the additively manufactured object represented by the shape data is formed using the weld beads (Machine Translation Pg. 2, top third "Step 1: … determine the forming process parameters and the actual single-pass weld width according to the final size requirements". Machine Translation Pg. 2, middle third "Further, in odd layer,"… "In the even layer,"…);
classifying the plurality of the welding paths in the same layer of each of the layers into intersection region paths [Machine Translation Pg. 2, top third "intersection section", ‘C’ in Fig. 1(a) and Machine Translation Pg. 2, middle third "intersection section" ‘f’ in Fig. 1(b)] corresponding to an intersection portion and constant region paths [Machine Translation Pg. 2, top third "overlapping sections", a and b in Fig. 1(a) and Machine Translation Pg. 2, middle third C and d in Fig. 1(b)] corresponding to constant portions other than the intersection portion, the intersection portion being formed by intersection of a portion where a plurality of the weld beads are formed adjacent to each other with another plurality of the weld beads (Shown in Figs. 1(a) and 1(b), Machine Translation Pg. 5, top third “after completing the first layer”, “after completing the second layer”, and “the third layer stacking”);
dividing each of the intersection region paths into a lower layer path [A in Fig. 1(a) and B' in Fig. 1(b)] along which a lower layer of the intersection portion is formed and an upper layer path [B in Fig. 1(a) and A' in Fig. 1(b)] along which an upper layer of the intersection portion is formed; and
determining welding conditions (Machine Translation Pg. 2, top third "determine the forming process parameters and the actual single-pass weld width according to the final size requirements") of the intersection region paths such that an upper layer deposit amount per unit length of weld beads formed along the upper layer path is more than a lower layer deposit amount per unit length of weld beads formed along the lower layer path (As shown in Fig. 1(a) no deposition in the intersection region of segments A and B and in Fig. 1(b) no deposition in the intersection region of segments A’ and B’), a sum of the upper layer deposit amount and the lower layer deposit amount is equal to a deposit amount per unit length of weld beads formed along the constant region paths (As shown in Figs. 1(a) and 1(b) the deposition amount in segments B and A', respectively, is constant, so that the deposit amount in the intersection region is equal to the deposit amount in the constant regions), and in a cross-section orthogonal to a longitudinal direction of the weld beads formed along the upper layer path, profiles of the weld beads adjacent to each other overlap each other (As shown in Figs. 1(a) and 1(b), cross-section views along D-D and E-E).
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.
Claims 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over He Zhi et al. (CN111037051A, cited in the 08/07/2024 IDS).
Re Claim 3, He Zhi teaches the invention as claimed and as discussed above; except, wherein in the process of forming the weld beads from the constant portion to the intersection portion, the change of the welding rate starts from a position moved back from a center position of the intersection portion by a length that is half of a bead width of the constant portion orthogonal to a bead longitudinal direction.
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However, He Zhi further teaches, on Machine Translation Pg. 3, last paragraph and Figs. 1(a) and 1(b), changing the welding rate starts from a position moved back from a center position of the intersection portion by a length that was ¼ to 1/3 of a bead width (W1 or W2) of the constant portion (B in Fig. 1(a) and A’ in Fig. 1(b)) orthogonal to a bead longitudinal direction (vertical axis in Fig. 1(a) and horizontal axis in Fig. 1(b)) to facilitate a uniform layer height as shown in Figs. 1(a) and 1(b).
Therefore, the starting position of the change of the welding rate was recognized as a result-effective variable, i.e. a variable which achieves a recognized result. In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977); MPEP 2144.05(II)(B). In this case, the recognized result is that changing of the welding rate in the intersection portion starting from a fraction of the weld bead width of the constant portion facilitate a uniform layer height since the constant portion already had weld bead material in the intersection portion. Therefore, since the general conditions of the claim, i.e. that the change of the welding rate starts from a position moved back from a center position of the intersection portion by a length that is a fraction of a bead width of the constant portion orthogonal to a bead longitudinal direction, were disclosed in the prior art by He Zhi, it is not inventive to discover the optimum workable range by routine experimentation, and it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the start position of the change of the welding rate disclosed by He Zhi to be a position moved back from a center position of the intersection portion by a length that is half of a bead width of the constant portion orthogonal to a bead longitudinal direction. It has been held that “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); MPEP 2144.05(II)(A). It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980); MPEP 2144.05(II)(B). In Smith v. Nichols, 88 U.S. 112, 118-19 (1874) the Supreme Court held that “a change in form, proportions, or degree "will not sustain a patent". It was held that "It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.", In re Williams, 36 F.2d 436, 438 (CCPA 1929); MPEP 2144.05(II)(A).
Re Claim 4, He Zhi teaches the invention as claimed and as discussed above, including wherein in the process of forming the weld beads from the constant portion to the intersection portion, the welding rate changes such that a position moved back from a center position of the intersection portion by a length that is half of a bead width of the constant portion orthogonal to a bead longitudinal direction is a center position in a range from a change start point to a change end point of the welding rate.
However, He Zhi further teaches, on Machine Translation Pg. 3, last paragraph and Figs. 1(a) and 1(b), changing the welding rate starts from a position moved back from a center position of the intersection portion by a length that was ¼ to 1/3 of a bead width (W1 or W2) of the constant portion (B in Fig. 1(a) and A’ in Fig. 1(b)) orthogonal to a bead longitudinal direction (vertical axis in Fig. 1(a) and horizontal axis in Fig. 1(b)) to facilitate a uniform layer height as shown in Figs. 1(a) and 1(b).
Therefore, the starting position of the change of the welding rate was recognized as a result-effective variable, i.e. a variable which achieves a recognized result. In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977); MPEP 2144.05(II)(B). In this case, the recognized result is that changing of the welding rate in the intersection portion starting from a fraction of the weld bead width of the constant portion facilitate a uniform layer height since the constant portion already had weld bead material in the intersection portion. Therefore, since the general conditions of the claim, i.e. that the change of the welding rate starts from a position moved back from a center position of the intersection portion by a length that is a fraction of a bead width of the constant portion orthogonal to a bead longitudinal direction, were disclosed in the prior art by He Zhi, it is not inventive to discover the optimum workable range by routine experimentation, and it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the start position of the change of the welding rate disclosed by He Zhi to be a position moved back from a center position of the intersection portion by a length that is half of a bead width of the constant portion orthogonal to a bead longitudinal direction is a center position in a range from a change start point to a change end point of the welding rate. It has been held that “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955); MPEP 2144.05(II)(A). It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980); MPEP 2144.05(II)(B). In Smith v. Nichols, 88 U.S. 112, 118-19 (1874) the Supreme Court held that “a change in form, proportions, or degree "will not sustain a patent". It was held that "It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.", In re Williams, 36 F.2d 436, 438 (CCPA 1929); MPEP 2144.05(II)(A).
Allowable Subject Matter
Claims 9 – 11 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.
Claim 12 would be allowable if rewritten 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 and to include 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:
Regarding dependent apparatus Claims 9 – 12, prior art fails to teach in combination with the other limitations of the claim, “...wherein in the determining of the welding conditions of the intersection region paths, when the lower layer deposit amount is represented by S1 and the upper layer deposit amount is represented by S2, a ratio S1 / (S1 + S2) of the lower layer deposit amount S1 to a total deposit amount (S1 + S2) is set depending on a gap between a plurality of the weld beads in the intersection portion.” Since Claims 9 – 12 all ultimately depend from independent Claim 1, Applicant should avoid potential 112(d) rejections by cancelling three of the dependent claims when one of the four dependent claims is incorporated into Claim 1. For example, if Claim 9 is incorporated into Claim 1, then Claims 10 – 12 should be cancelled since they would fail to further limit the subject matter.
Correspondence
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/LORNE E MEADE/Primary Examiner, Art Unit 3741