DETAILED ACTION
Claims 1-21 are pending, and claims 9-21 are currently under review.
Claims 1-8 are withdrawn.
Claim 22 is cancelled.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election without traverse of group II, claims 9-21, in the reply filed on 7/01/2026 is acknowledged.
Claims 1-8 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 7/01/2026.
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 17 and 21 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. Claims 17 and 21 recite the term “dying”, which is indefinite because this appears to be a typo and it is unclear whether this is intended to be “dyeing” or “drying”. The examiner interprets the aforementioned claims to be met by either interpretation.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 9-14 and 16-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Okada (US 2015/0108695) in view of Herzog (US 2019/0054686) and Gradl et al. (2021, Advancing GRCop-based bimetallic additive manufacturing to optimize component design and applicatons for liquid rocket engines).
Regarding claim 9, Okada discloses a method of stack forming a three-dimensional shape (ie. additive manufacturing of an integral piece) made of different first and second metallic materials [abstract, 0003, 0016, 0021]; wherein said method includes steps of printing a first material in a first layer on a build stage (12), followed by printing a second material in a successive layer therein (ie. on top of the first material), which meets the steps of printing a first and second material respectively [0052-0053].
Okada does not expressly teach steps of removing the build plate from a first print system and aligning with a second print system to print the second material as claimed. Herzog discloses an additive manufacturing system wherein a moveable unit (12) which supports an object (ie. build plate) moves between different sections of the system for material filling (13), construction (3), etc. such that desirable automation and control of additive manufacturing between stations can be achieved between different construction stations (3) [0009-0013, 0023-0025, fig.1-3]. Therefore, it would have been obvious to one of ordinary skill to modify the method of Okada by utilizing the aforementioned system of Herzog to achieve desirable automation and control of additive manufacturing as taught by Herzog above. The examiner notes that the suggested operation of the system of Herzog would require movement (ie. removing) of the moveable unit (12) from a first construction station (ie. first print system) and alignment into another construction station (ie. second print system) by means of the tunnels of Herzog [fig.1-3].
The aforementioned prior art does not expressly teach that the first and second metallic materials are melted and fused together at an interface as claimed. Gradl et al. discloses bimetallic additive manufacturing of components to optimize properties such as weight, reliability, etc. [abstract]; wherein laser melting of different alloys naturally results melting and fusion of the different alloys at a joint interface to form said bimetallic component [abstract, p.5-7, fig.4-5]. Therefore, it would have been obvious to one of ordinary skill to modify the method of the aforementioned prior art by forming an interface by melting and fusion of the two different metal materials of the aforementioned prior art such that bimetallic components having desired properties can be obtained as taught by Gradl et al.
Regarding claims 10-11, the aforementioned prior art discloses the method of claim 9 (see previous). Herzog further teaches that the construction stations (3) can be selective laser melting or sintering devices [0002]. Gradl et al. also teaches laser powder bed fusion [p.7-8].
Regarding claims 12-13, the aforementioned prior art discloses the method of claim 9 (see previous). Herzog further teaches that the different materials can be steel and aluminum, which overlaps with the claimed alloy types [0020]. Alternatively, Gradl et al. also teaches that the different alloys are Inconel-625 and GRCop-42, among others [fig.4].
Regarding claim 14, the aforementioned prior art discloses the method of claim 9 (see previous). Gradl et al. further teaches that the metallic powders can have a powder size of 20 to 45 microns, which one of ordinary skill would understand to apply to all the metallic powders (ie. both first and second) [p.7].
Regarding claims 16-17 and 20-21, the aforementioned prior art discloses the method of claim 9 (see previous). Gradl et al. further teaches that a step of cleaning between the first and second material and also machining and hot isostatic pressing after deposition of the second material [p.8].
Regarding claims 18-19, the aforementioned prior art discloses the method of claim 9 (see previous). Okada further teaches controlling laser power density, which one of ordinary skill would readily recognize to directly obtain an arbitrary surface roughness value [0029]. Gradl et al. further teaches selecting a desired powder layer thickness, which one of ordinary skill would readily recognize to directly obtain an arbitrary surface roughness value [p.7].
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Okada (US 2015/0108695) and others as applied to claim 9 above, and further in view of Hunter et al. (US 2007/0075461).
Regarding claim 15, the aforementioned prior art discloses the method of claim 9 (see previous). The aforementioned prior art does not teach that the alignment step utilizes alignment pins as claimed. Hunter et al. discloses an additive manufacturing apparatus [abstract]; wherein it is known to provide an aligning, centering pin (88) for engaging and enjoining alignment of a build plate with the additive manufacturing apparatus [0057, fig.10]. Therefore, it would have been obvious to one of ordinary skill to modify the method of the aforementioned prior art by utilizing alignment pins such that alignment through engagement can be achieved as taught by Hunter et al. The aforementioned prior art does not expressly teach open loop system. However, the prior art is silent regarding any control of alignment based on measurements, such that one of ordinary skill would readily understand that the alignment control would naturally be performed in an open loop manner rather than close-looped.
Claim(s) 18-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Okada (US 2015/0108695) and others as applied to claim 9 above, and further in view of Geisen (US 2020/0164585).
Regarding claims 18-19, the aforementioned prior art discloses the method of claim 9 (see previous). The aforementioned prior art does not expressly teach controlling printing parameters to control surface roughness as claimed. Geisen discloses that it is known in additive manufacturing to control surface roughness of components by setting (ie. tuning) controlled parameters such as laser power [claim13]. Therefore, it would have been obvious to one of ordinary skill to modify the method of the aforementioned prior art by controlling surface roughness by controlling laser power to achieve a desired roughness as taught by Geisen.
Claim(s) 20-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Okada (US 2015/0108695) and others as applied to claim 9 above, and further in view of Zhu et al. (CN114086173, machine translation referred to herein).
Regarding claims 20-21, the aforementioned prior art discloses the method of claim 9 (see previous). The aforementioned prior art does not expressly teach a post processing step after the second layer section as claimed. Zhu et al. discloses that it is known to perform interlayer laser cleaning during additive manufacturing such that oxides and other adhesive particles can be removed [0024]. Therefore, it would have been obvious to modify the method of the aforementioned prior art by performing interlayer laser cleaning for the aforementioned benefit disclosed by Zhu et al. One of ordinary skill would understand that interlayer cleaning is performed between each layer (ie. including after a second layer) and that laser cleaning would naturally involve some mechanism of blasting, polishing, machining, and/or heating of said layer.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 9-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6-15 and 19 of copending Application No. 18/789,574 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the broader claimed scope of the instant application is obvious over the more specific, narrower claims of the copending application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS A WANG whose telephone number is (408)918-7576. The examiner can normally be reached usually M-Th: 7-5.
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/NICHOLAS A WANG/Primary Examiner, Art Unit 1734
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