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 .
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 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.
Claim(s) 16-17 and 36-39 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rois et al. (WO2019/178405A1) (hereafter Rois) in view of Langer (US 6,155,331).
With respect to claim 16, Rois teaches a method of producing exothermic welding systems (abstract; figures; and paragraph 57), the method comprising: providing a digital model of an exothermic welding container to an additive manufacturing system (the additive manufacturing of an exothermic mold insert of a specific shape inherently requires a 3D digital model) (figures 2-7; and paragraph 57); forming the exothermic welding container using the additive manufacturing system by, for a plurality of layers (the insert structures depicted by Rios inherently require the deposition of a plurality of layers in an additive manufacturing process) (figures 2-7; and paragraph 57): depositing a layer of a base material with a shape based on the digital model (this is an inherent step of additive manufacturing the disclosed exothermic mold inserts); and using a binder (sodium silicate) to fuse the layer of the base material (graphite powder) in the shape provided to form a corresponding part of the exothermic welding container (the additively manufactured material layers of Rois would inherently be fused together in order to form inserts of the disclosed unitary structure) (figures 2-7; and paragraph 57).
With respect to claim 16, Rois does not teach wherein the binder is a phenolic resin.
However, Langer teaches wherein the base material is fused (sintered) using a binder that includes a phenolic binder (column 3, lines 13-50; column 5, line 45-column 6, line; column 8, lines 7-22; column 13, line 64-column 14, line 15; and column 14, line 52-column 15, line 13) in a 3D-CAD additive manufacturing layer construction (column 8, lines 54-column 11, line 38).
At the time of filing the claimed invention it would have been obvious to utilize the mold material of Langer in the exothermic mold forming process of Rois in order to form an exothermic mold of the desired composition. The claim would have been obvious because the substitution of one known element (mold material) for another (mold material) would have yielded predictable results to one of ordinary skill in the art at the time of the invention. See MPEP 2143.
With respect to claim 17, Rois teaches wherein the exothermic welding container includes a sidewall structure defining a welding chamber (60) and a crucible chamber (44), and wherein the exothermic welding container further includes at least one channel (72, 74, 76, 78) that extends through the sidewall structure and into the welding chamber (figures 2-7; and paragraph 33).
With respect to claim 36, Langer teaches wherein the base material is a ceramic material (column 3, lines 14-50).
With respect to claim 37, Langer wherein the base material is a silica sand (column 3, lines 14-50).
With respect to claim 38, Rois teaches a method of producing exothermic welding systems (abstract; figures; and paragraph 57), the method comprising: providing a digital model of an exothermic welding container to an additive manufacturing system (the additive manufacturing of an exothermic mold insert of a specific shape inherently requires a 3D digital model) (figures 2-7; and paragraph 57); forming the exothermic welding container using the additive manufacturing system by, for a plurality of layers (the insert structures depicted by Rios inherently require the deposition of a plurality of layers in an additive manufacturing process) (figures 2-7; and paragraph 57): determining a shape of a layer of a base material based on the digital model (the additive manufacturing of an exothermic mold insert of a specific shape inherently requires determining a shape of a layer of the base material on a 3D digital model) (figures 2-7; and paragraph 57); and fusing the layer of the base material in the determined shape provided to form a corresponding part of the exothermic welding container (the additively manufactured insert structures depicted by Rios inherently require fusing the layers of the base material in the determined shape).
With respect to claim 38, Rio does not teach that the base material includes ceramic material and using a phenolic resin binder to fuse the layer of the base material. However,
Langer teaches that the base material includes ceramic material and using a phenolic resin binder to fuse (sinter) the layer of the base material (column 3, lines 13-50; column 5, line 45-column 6, line; column 8, lines 7-22; column 13, line 64-column 14, line 15; and column 14, line 52-column 15, line 13) in a 3D-CAD additive manufacturing layer construction (column 8, lines 54-column 11, line 38).
At the time of filing the claimed invention it would have been obvious to utilize the mold material of Langer in the exothermic mold forming process of Rois in order to form an exothermic mold of the desired composition. The claim would have been obvious because the substitution of one known element (mold material) for another (mold material) would have yielded predictable results to one of ordinary skill in the art at the time of the invention. See MPEP 2143.
With respect to claim 39, Rios teaches wherein the plurality of layers collectively define a welding chamber (60), a crucible chamber (44), and one or more conductor channels (72, 74, 76, 78) that intersect the welding chamber (figures 2-7; and paragraph 33).
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rois and Langer as applied to claim 16 above, and further in view of Popov et al. “Novel hybrid method to additively manufacture denser graphite structures using Binder Jetting” (hereafter Popov).
With respect to claim 20, Rois and Langer do not teach wherein fusing the portion of the base material includes spraying the binder onto the base material.
However, Popov teaches binder jetting graphite fines and a binder to additively manufacture an article (pages 1-9).
At the time of filing the claimed invention it would have been obvious to utilize the binder jetting process of Popov in the mold forming process of Rois and Langer in order to form a mold have a complex shape and the desired density.
Claim(s) 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rois and Langer as applied to claim 16 above, and further in view of Hurkas et al. (DE102017112681A1) (hereafter Hurkas).
With respect to claim 21, Rois and Langer do not teach wherein for each planar layer of the digital model, the additive manufacturing system applies the binder to a plurality of regions of the base material to fuse layers for a plurality of exothermic welding containers.
However, Hurkas teaches wherein for each planar layer of the digital model, the additive manufacturing system applies the binder to a plurality of regions of the base material to fuse layers for a plurality of objects (machine translation; and claim 1).
At the time of filing the claimed invention it would have been obvious to utilize the layer-by-layer binder application as taught by Hurkas in the process of Rois and Langer in order to adhere the sequentially applied layers.
Claim(s) 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rois and Langer as applied to claim 16 above, and further in view of Newness Stainless Steel Measuring Cup (hereafter Newness).
With respect to claim 22, Rois and Langer do not teach wherein the exothermic welding container is formed to include one or more level markers in a riser portion corresponding to one or more fill-levels for weld material.
However, Newness teaches placing one or more level markers on the inside of a container (figures).
At the time of filing the claimed invention it would have been obvious to utilize the interior fill line markers of Newness on the inside of the riser portion of Rois and Langer in order to ensure that the user deposits the proper amount of material for forming the weld into the exothermic container.
Claim(s) 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rois and Langer as applied to claim 16 above, and further in view of McLeod et al. (WO2011/044903A2) (hereafter McLeod).
With respect to claim 23, Rois and Langer do not teach wherein the exothermic welding container is formed as a plurality of interlocking pieces.
However, McLeod teaches a mold that is formed with a plurality of interlocking pieces (92, 93, 94) (machine translation) (figure 9; and the machine translation).
At the time of filing the claimed invention it would have been obvious to interlocking pieces as taught by McLeod on the exothermic mold of Rois and Langer in order to hold the pieces of the mold in the proper orientation.
Response to Arguments
The applicant’s response and Nicholas Turner 1.132 Declaration (hereafter Declaration) filed 9/30/25 have been fully considered by the examiner but they are not persuasive. The applicant’s arguments drawn to long-felt need, unexpected results, and industry adoption and commercial success are unpersuasive for the reasons set forth above.
The applicant alleges that the claimed subject matter solved a problem that was long standing in the art. However, there is no showing that others of ordinary skill in the art were working on the problem and if so, for how long. In addition, there is no evidence that if persons skilled in the art who were presumably working on the problem knew of the teachings of the above cited references, they would still be unable to solve the problem. See MPEP § 716.04. Establishing long-felt need requires objective evidence that an art recognized problem existed in the art for a long period of time without solution. The applicant has failed to provide objective evidence in support of long-felt need. Second, the long-felt need must not have been satisfied by another before the invention by the inventor. Third, the invention must in fact satisfy the long-felt need. In re Cavanagh, 436 F.2d 491, 168 USPQ 466 (CCPA 1971).
Regarding unexpected results the applicant alleges that the claimed method unexpectedly (1) provides an exothermic welding mold with highly improved thermal performance, and (2) provides an exothermic welding mold of highly improved structural strength. However, the applicant has failed to provide a persuasive argument and/or data establishing unexpected results that is commensurate in scope with the claims.
In addition, the applicant references Cadweld One Shot 3D winning the 2024 NECA Showstopper Award as evidence of industry adoption and commercial success. Winning an award does not constitute commercial success. Commercial success is quantified by sales and market share. Furthermore, the award was for:
“nVent ERICO The nVent ERICO Cadweld One Shot 3D cable to rebar is a custom, single-use mold using advanced 3D printing technology to create a high-quality permanent exothermic connections. This mold has been designed specifically for cable-to-rebar connections, and its compact size allows connections to be made in narrow or hard-to-reach places. The mold is can be quickly installed, making it ideal for ufer ground connections.”
This award description is not commensurate in scope with the claims that require using a phenolic resin binder with a base material. Objective evidence of nonobviousness including commercial success must be commensurate in scope with the claims. In re Tiffin, 448 F.2d 791, 171 USPQ 294 (CCPA 1971).
MPEP 716.01(c) establishes that objective evidence which must be factually supported by an appropriate affidavit or declaration to be of probative value includes evidence of unexpected results, commercial success, solution of a long-felt need, inoperability of the prior art, invention before the date of the reference, and allegations that the author(s) of the prior art derived the disclosed subject matter from the inventor or at least one joint inventor. See, for example, In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984)
In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence of nonobviousness fails to outweigh the evidence of obviousness.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KILEY SHAWN STONER whose telephone number is (571)272-1183. The examiner can normally be reached on Monday-Thursday.
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/KILEY S STONER/Primary Examiner, Art Unit 1735