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 § 101 and 112
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.
Claims 1-20 are 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. Claims 1-9 are directed to a method of 3D printing without extrusion and Claims 10-20 are directed to the product made by a 3D printing method that does not include extrusion.
MPEP 2164.01(a) states “In order to determine compliance with the enablement requirement of 35 U.S.C. 112(a), the Federal Circuit developed a framework of factors in In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988), referred to as the Wands factors to assess whether any necessary experimentation required by the specification is "reasonable" or is "undue." Consistent with Amgen Inc. et al. v. Sanofi et al., 598 U.S. 594, 2023 USPQ2d 602 (2023), the Wands factors continue to provide a framework for assessing enablement in a utility application or patent, regardless of technology area. See Guidelines for Assessing Enablement in Utility Applications and Patents in View of the Supreme Court Decision in Amgen Inc. et al. v. Sanofi et al., 89 FR 1563 (January 10, 2024). These factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.”
Regarding (A), the scope of Claim 1 is any process comprising 3D printing where extrusion is not used. Furthermore the material printed must include natural clay and be absorbent (an intrinsic property of clay) and not be crushed during the method.
Regarding (B), the nature of the invention is an improvement to the process of making cat litter wherein dust and waste material can be avoided by directed printing the shape of litter desired rather than calcining in batch and breaking the clay litter down into appropriately shaped pieces.
Regarding (C), the prior art recognizes multiple methods of 3D printing that would be suitable to 3D printing clay materials, however these methods all similarly include extrusion. By way of background the 3D printing methods explicitly named in Claim 2, and appearing within the Specification, are detailed below:
Regarding the Fused Deposition of Ceramics, NPL “Fused deposition fabrication of high-quality zirconia ceramics using granular feedstock” Shen et al. discloses “Fused Deposition Modeling (FDM) has a high market share for the fabricating of polymers and partial metals, which is realized via extruding the filaments or granulates through a nozzle under the force by screw rotation, and sometimes gas pressure or piston” [Page 34353, Paragraph 2] and “Finally, the melted ceramic-polymer mixture was extruded and then cut into small granulates using a granulating machine” [Page 34353, Experimental Section, Paragraph 3].
Regarding Paste Deposition Modeling, NPL “Paste Deposition Modelling, Deconstructing The Additive Manufacturing Process: Development Of Novel Multi-Material Tools And Techniques For Craft Practitioners” Schunemann discloses “The use of the air solenoid is therefore ideal for this research project with the combination of low risk of mechanical break-down and the palette of materials that could be deposited with a syringe based extrusion head making for an unconstrained environment open to experimentation.” [Page 102, Paragraph 5].
Regarding Extrusion Freeform Fabrication, such a method is named after the process of extrusion and therefore understood to inherently require it.
Regarding Direct Ink Writing, the instant application specification recognizes DIW as an extrusion based process “DIW, the most common type of 3D printing, builds complex geometric shapes by extruding a material slurry at room temperature” [0020].
Regarding Liquid Deposition Modeling, NPL “Liquid Deposition Modeling ‐ a promising approach for 3D printing of wood” Rosenthal et al. discloses “For the manufacturing of the specimens a standard Cartesian 3D printer with a self‐made extruder was used. The paste extruder is similar to which Kariz et al. (2016) used for their investigation.” [Page 2, Section 3].
Neither the Claims nor the Specification mention additional 3D printing methods that may be performed without extrusion. However such methods are known to the art, for example resin printing uses light to cause a polymerization reaction to build the 3D structure without extrusion from a nozzle (See NPL “How do Resin Printers Work: SLA, DLP & More” Boissonneault, Paragraph 1). This does not cure the enablement issues raised above because it is unclear how resin printing could be adapted to print natural clay shapes. Firstly, clay in a liquid solution is opaque which would block/scatter light. Secondly a photocatalyzed polymerization of clay is not known in the art, nor is it disclosed in the instant application.
Regarding (D), one of ordinary skill in the art of 3D printing is expected to be able to vary different process conditions like printing temperature, pressure, flow rate, nozzle speed, and moisture content as necessary to get a clean, even print from the extrusion nozzle (see NPL above). However no direction exists within the art to suggest that one of ordinary skill could adapt an extrusion based method to no longer extrude the material while maintaining the benefits known.
Regarding (E), the 3D printing art is predictable. As long as care is used to ensure that the material to be printed has been prepared in the same way regarding flow properties a computer will print the same shape thousands of times. Furthermore one of ordinary skill in the art would be able to predict the effects of changing various process conditions. As one example selecting a higher nozzle velocity lowers the resolution of the print while lowering the printing time. The predictable result of removing an extrusion nozzle from a conventional 3D printing apparatus is that there would be loss of control to the shape and size of the print.
Regarding (F), no direction is provided by the inventor other than the broad statement that the 3D printing is done “without extrusion”. The inventor does not clarify how, if at all, a conventional 3D printing apparatus is to be modified (e.g. by removing the extrusion nozzle) to achieve this result.
Regarding (G), no examples are provided. The Specification provides a single example of making cat litter through 3D printing, however extrusion is explicitly used. The specification states “DIW, the most common type of 3D printing, builds complex geometric shapes by extruding a material slurry at room temperature, with the ability to print ceramic type slurries that allow them to retain their shape during the extrusion process. Layers of material are printed atop one another in sequence through an extrusion nozzle” [0020], and the sole example presented used DIW printing “In a first preferred embodiment, the first step in DIW is making an AutoCAD drawing of the desired shaped article. … In the fourth step, optimal flow settings are made, and the article is printed at room temperature as a green (wet) article.” [0021].
Regarding (H), there is potentially an unlimited (infinite) number of possible ways one with ordinary skill in the art could attempt in order to realize the goal of 3D printing clay litter without extrusion. The amount of experimentation required before a success is unknown.
Considering all of the above factors it is concluded that the art does not know of a suitable extrusion free method of 3D printing a natural clay litter. The Specification is completely silent towards how to modify known methods in order to achieve this goal, and presents no examples of this goal being obtained.
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
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 10-17 are rejected under 35 U.S.C. 112(b)/2nd par. as 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. Claim 10 recites the limitation "the process". There is insufficient antecedent basis for this limitation in the claim. Claims 11-17 depend upon Claim 10 and inherit this lack of antecedent basis.
Additionally Claim 11 recites “The of claim 10”, which is indefinite because it is unclear if Claim 11 further limits the particle or process of Claim 10.
Claim 18 is rejected under 35 U.S.C. 112(b)/2nd par. as 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. Claim 18 requires “The particle of claim 8, wherein the natural clay is selected from the group consisting of paperclay and epoxy clay”, however Claim 8 is directed to a process and not a particle (“8. The process of claim 4, wherein …”). Therefore it is unclear whether the subject matter sought after by Claim 18 is directed to a process or a composition (particle). It is noted that if Claim 18 is understood to reference the process of Claim 8 then it is indistinguishable from Claim 9 and claim 18 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof would be subject to a double patenting rejection/objection. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim 18 is also rejected for indefiniteness under 35 U.S.C. 112(b)/2nd par. because it constitutes a composition claim that includes method limitations (via indirect reference to claim 4 as detailed above). It is well-settled that method limitations are improper in apparatus claims, since it is the apparatus structure which is covered in an apparatus claim, and not the method of using such apparatus. See MPEP 2173.05(p) II; IPXL Holdings v. Amazon.com, Inc., 430 F.3d 1377, 1384, 77 USPQ2d 1140, 1145 (Fed. Cir. 2005). Said claims are also rejected under 35 U.S.C. 101 because they recite limitations to both a process and a composition: sec. 101 only allows one statutory class per (independent) claim. Id. See also MPEP 2173.05(p) II, citing Ex parte Lyell, 17 USPQ2d 1548, 1551 (BPAI 1990) (stating that an independent claim drafted to embrace or overlap more than one statutory class of 35 U.S.C. 101 violates said statute, which is written to allow for only one statutory class per independent claim, and also violates 35 U.S.C. 112[(b)/]2nd par. for ambiguity since it does not particularly point out and distinctly claim the invention).
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 2-5, 7-9, 11-14, and 17-18 are rejected under 35 U.S.C. 112(d)/4th par. as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 1 requires a method “comprising three dimensional printing to make the particle, … wherein the particle is not extruded”, however Claim 2 requires selecting a 3D printing method from a list that contains methods of 3D printing by extruding (see 112a rejection above). Therefore Claim 2 (and Claims 3-5, 8-9, and 18 which depend upon Claim 2) expand the scope of Claim 1 rather than narrow it. MPEP 608.01(n)III states that “The test as to whether a claim is a proper dependent claim is that it shall include every limitation of the claim from which it depends[, according to 35 U.S.C. 112(d)/4th par.,] or in other words that it shall not conceivably be infringed by anything which would not also infringe the basic claim..." See also Multilayer Stretch Cling Film Holdings, Inc. v. Berry Plastics Corp., 831 F.3d 1350, 1362 (Fed. Cir. 2016) (stating that “A dependent claim that contradicts, rather than narrows, the claim from which it depends is invalid” under 35 U.S.C. 112(d)/4th par.).
Similarly Claim 10 requires “the particle is not extruded”, however Claim 11 requires selecting a 3D printing method from a list that contains methods of 3D printing by extruding (see 112a rejection above). Therefore Claim 11 (and Claims 12-14 and 17 which depend upon Claim 11) expand the scope of Claim 10 rather than narrow it. MPEP 608.01(n)III; Multilayer Stretch v. Berry Plastics.
Additionally Claim 7 requires “the particle does not have a starch film on its surface that hinders absorption”, however Claim 6, upon which Claim 7 depends, already requires “the particle does not contain starch” which would necessarily mean that it could not have a starchy layer/film. Therefore Claim 7 fails to further limit Claim 6.
Similarly Claim 16 requires “the particle does not have a starch film on its surface that hinders absorption”, however Claim 15, upon which Claim 16 depends, already requires “the particle does not contain starch” which would necessarily mean that it could not have a starchy layer/film. Therefore Claim 16 fails to further limit Claim 15.
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 1, 6-7, 10, and 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over US 20220127461 A1 Soon-Shiong. Claim 1 requires “A process of making a shaped cat litter particle comprising three dimensional printing to make the particle”. The phrase “cat litter” is considered intended use. MPEP 2111.02.II states “If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction.”. In this case the limitations of the claimed invention are fully set forth in the body of the claim and the intended use of making a shaped cat litter particle does not suggest structural limitations. However the step “comprising three dimensional printing to make the particle” is a process limitation. Soon-Shiong discloses a process of morphing a calcium carbonate particle and “For example , morphing may be carried out by 3D printing” [0062]. Although making cat litter is considered intended use it is still noted that Soon-Shiong discloses “In certain embodiments , composite materials containing restructured calcium carbonate having an absorption and delayed release characteristics can be further used to generate various household items including pet-related items (e.g., cat litter, etc.)” [0070].
Claim 1 further requires “wherein the particle comprises natural clay”. Soon-Shiong discloses “In other embodiments , restructured calcium carbonate crystals ( obtained from unstructuring and recrystallizing process ) can be further modified by coupling with graphene , carbon nanotubes , nano clay , or graphdiyne to modify the tensile strength” [0061]. Although Soon-Shiong does not disclose any examples of calcium carbonate combined with clay such a combination would have been obvious to one of ordinary skill in the art because it is listed as appropriate and/or effective. MPEP 2143 I.(E) & 2144.07.
Claim 1 further requires “wherein the particle is not extruded”. Soon-Shiong is not completely silent toward extrusion, “In another example , calcium carbonate polymorphs in the slurry can react with polylactic acid ( PLA ) to form a copolymer ( e.g. , nano particle calcium carbonate ( n - NPCC ) copolymer with PLA or PLA / n - NPCC composite ) , for example using co - rotating extruder and 2 " factorial planning” [0059], however only mentions it as an optional method for a composition that does not include clay. It therefore would have been obvious to one of ordinary skill in the art to have either used extrusion or not used extrusion to make the shaped clay containing particle.
Claim 1 further requires “wherein the particle is absorbent”. Soon-Shiong lists cat litter as a potential use ([0070]) and it is understood that absorption is a necessary property of cat litter in order to fulfill its intended use.
Claim 1 further requires “and wherein the three dimensional printed particles are not crushed”. Soon-Shiong is silent towards crushing and therefore it is understood that their particles are not crushed.
Claim 6 requires “the particle does not contain starch.” Soon-Shiong is silent towards starch therefore it is understood that their particles do not contain starch.
Claim 7 requires “the particle does not have a starch film on its surface that hinders absorption.” Soon-Shiong is silent towards starch therefore it is understood that their particles do not contain starch.
Claim 10 requires “A particle for cat litter made by the process comprising three dimensional printing to make the particle, wherein the particle comprises natural clay; wherein the particle is not extruded; wherein the particle is absorbent; wherein the three dimensional printed particle is not crushed”. These process limitation appear in Claim 1 and accordingly prior art coverage for them may be found in the rejection of Claim 1 (above).
Claim 10 further requires “wherein the particle has a three dimensional shape”. Soon-Shiong discloses 3D printing (see Claim 1); this is understood to inherently produce 3D objects.
Claims 15 and 16 are identical to Claims 6 and 7 other than Claims 15 and 16 being directed to a particle rather than a process. Support for the rejection of Claims 15 and 16 can therefore be found within the rejection of Claims 6 and 7 (above).
Conclusion
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/JOSHUA MAXWELL SPEER/
Examiner
Art Unit 1736
/ANTHONY J ZIMMER/Supervisory Patent Examiner, Art Unit 1736
Prosecution Insights