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 with traverse, Group I Claims 1-11 drawn to a method, in the reply dated 12/31/2025 is acknowledged. The Examiner restates that Inventions II and I are related as Product and a method. The inventions in this relationship are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case, the product can be made by a materially different process, such as glass fusion draw with the addition of a 4-color screen printing process. Further, MPEP 806.05(g) states, "The burden is on the examiner to provide an example, “but the example need not be documented”. The examiner provided an example in the restriction requirement, namely that the product can be made by a materially different process, such as glass fusion draw with the addition of a 4-color screen printing process. Applicant has not provided convincing evidence or argument that the alternative example suggested by the examiner is not workable. One of ordinary skill in the art would understand that glass fusion draw with the addition of a 4-color screen printing process is clearly different than the method of Group I, which is only recited as processing a precursor via laser beam or water beam, and then transforming the precursor to a glass/ceramic material with heat. Additionally, the Examiner maintains that there would be a search and/or examination burden if restriction were not required for the reasons stated in the restriction requirement, particularly that the inventions have acquired a separate status in the art in view of their different classification, and the inventions require a different field of search.
Claim Interpretation
Regarding Claim(s) 4 and 11 – the claimed ranges for respective attributes are inclusive. Example: Claim 4 – polymer matrix from 10 wt.% to 99 wt.% includes 10 wt.%, 99 wt.% values.
Regarding Claim 11 – for the purposes of prosecution and prior art, the Examiner understands the phrase “localized heat processing ” to mean, in regard to an article, directed heat processing to an area or volume less than 100% of the area or volume of the article, or heat processing directed to 100% of an area or volume of the article where the area or volume affected by the heat processing is less than 100% of the area or volume of the article.
Examiner Note: A method is defined as a series of actions (MPEP 2106 (I), i.e., “processes…defines “actions”; inventions that consist of a series of steps or acts to be performed). Thus, since methods are defined by actions, the method is given weight only to the extent that it impacts the method in a manipulative sense. See Ex parte Pfeiffer, 135 USPQ 31, noting “recited structural limitations must affect method in manipulative sense and not amount to mere claiming of a use of a particular structure”. . Below is/are a list of claims/limitations that are structural limitations or mere outcomes of the method, (not a method):
Regarding an aspect of Claim 8 – “improving the machining accuracy of the ceramic material or glass material by linear shrinkage” is a mere outcome of the method, not a method.
Regarding an aspect of Claim 9 – “to obtain printable and colour-tunable ceramic material”
is a mere outcome of the method, not a method.
Claim Objections
Claim(s) 1, 5-10 is/are objected to because of the following informalities. The form below is read/Examiner suggestion:
Regarding Claim 1 – preparing a precursor of a ceramic material or glass material / preparing a precursor of a ceramic material or a glass material; processing the precursor/ processing the precursor of the ceramic material or the glass material; and/or water beam / and/or a water beam; transforming the processed precursor into a ceramic material or a glass material.
Regarding Claims 5, 6 – wherein the precursor / wherein the precursor of the ceramic material or the glass material.
Regarding Claim 7 - prior to the transforming processed precursor into a ceramic material or glass material / prior to the transforming of the processed precursor into the transformed ceramic material or the transformed glass material; localized UV/ozone treatment / localized ultraviolet (UV)/ozone treatment.
Regarding Claim 8 – wherein the transforming the processed precursor into a ceramic material or glass material / wherein the transforming of the processed precursor intothe transformed ceramic material or the transformed glass material.
Regarding Claim 9 - subjecting the processed precursor to heat processing in inert gas or vacuum conditions to undergo primary ceramization; and further subjecting to heat processing in air to undergo secondary ceramization to obtain printable and colour-tunable ceramic material / subjecting the processed precursor to primary heat processing in inert gas or vacuum conditions to undergo primary ceramization; and further subjecting to secondary heat processing in air to undergo secondary ceramization to obtain printable and colour-tunable ceramic material.
Regarding Claim 10 - the processing the processed precursor / the processing of the processed precursor.
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.
Claim(s) 1-11 is/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.
Claim 1 - the term “high” is a relative term which renders the claim indefinite. The term “high” 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. The
limitation “high energy laser beam and/or water beam” is rendered indefinite.
Claim 7 - recites “ subjecting the processed precursor to localized UV/ozone treatment”. It is unclear if the term “UV/ozone” means UV or ozone, or a combination of UV and ozone, rendering the claim indefinite. For the purposes of prosecution and prior are, the Examiner understands the term “UV/ozone” to mean a treatment of UV or ozone, or a combination of UV and ozone.
All remaining dependent claims not specifically cited are also considered to be indefinite at least because of their dependency on independent claim 1.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter 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 pre-AIA 35 U.S.C. 103(a) 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 under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 1-6, 8-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over NPL “Origami and 4D
Printing of Elastomer-Derived Ceramic Structures” by Liu et. al (herein “Liu”) and in further view of
USPGPUB 20220009124A1 by Xiao et. al (herein “Xaio”).
Regarding Claim 1 – Liu teaches a method for manufacturing ceramic materials or glass materials, comprising,
preparing a precursor of a ceramic material or glass material; Page 1 Para. 2 lines 1-2, “…polymer derived ceramics prepared…of polymeric ceramic precursors…”,
and transforming the processed precursor into a ceramic material or glass material by heat processing, mechanical processing or chemical processing, or any combination thereof; FIG. 1C, Page 1 Para. 3 lines 10-11, 18-19, “..by the…heat treatment method”, “…after the elastic-to-ceramic transformation…”.
wherein the precursor comprises,
a silicone-based and/or cellulose-based polymer;
or,
a polymer composite material, comprising a silicone-based and/or cellulose-based polymer matrix and a ceramic filler in the form of ceramic or glass powders, fibers, whiskers, plates or any combination thereof; Page 1, Para. 3 lines 1-3, “the novel silicone rubber nanoparticles (NC) were ZrO2 nanoparticle reinforced polydimethylsiloxane”.
While Liu discloses printing design patterns on the precursor (Figs. 1E, 1E, Page 1 Para. 3 lines 24-25), Liu does not disclose,
processing the precursor by using a high-energy laser beam and/or water beam for engraving or cutting to obtain a processed precursor;
In an analogous similar endeavor 3D printing a ceramic precursor paste [0174] on a substrate ([0010],[0107], Fig. 43) with a system that had additive manufacturing capability to 3D print ceramics, glass and composites [0247], Xiao teaches the use of a micromachining ps (picosecond) laser for cutting features into the precursor layer ((Fig. 45A; negative engraving of a tiger paw design where the structure precision (interpreted as dimensional precision in any/all 3D orthogonal directions) is 1-10um))[0376]. A PHOSITA would know a picosecond laser is a high-power laser. It would have been obvious to one having ordinary skill in the art at the time of the effective filing date of the claimed invention to use the high-power laser for cutting of Xaio in the process of Lui, as one would be motivated by obtaining high resolution at speed, and machining the materials without thermally degrading the mechanical strength of the parts, as noted by Xaio [0356].
Regarding Claim 2 and Claim 3 - Liu and Xaio in the rejection of claim 1 above teaches all of the
limitations of claim 1.
Liu teaches wherein,
wherein the silicone-based polymer or silicone-based polymer matrix is polydimethylsiloxane (Claim 2);
the ceramic filler is selected from ZrO2, AlON, AlN, Al2O3, SiC or Si3N4, or any combination
thereof (Claim 3);
Page 1, Para. 3 lines 1-3 , “the novel silicone rubber nanoparticles (NC) were ZrO2 nanoparticle reinforced polydimethylsiloxane”.
Regarding Claim 4 - Liu and Xaio in the rejection of claim 1 above teaches all of the limitations of
claim 1.
Liu teaches wherein,
the amount of ceramic filler is 1 wt% to 90 wt% of the polymer composite material;
the amount of silicone-based and/or cellulose-based polymer matrix is 10 wt% to 99 wt% of the
polymer composite material; Page 1 Para.3 lines 7-9, Page 7 Para.3 lines 1-5 “ We
developed…ink systems…with PDMS…and the amount of ZrO2 nanoparticles (NPs) was 40
weight %...in ink system 1”, “For ink system 1, liquid PMS was formulated…ZrO2 NPs were
added (40 wt %). Here, for calculation, a 40 wt% add of ZrO2 NPs equates to 100g of PDMS in
the 140g ink mixture, providing the polymer at 71 wt%.
Regarding Claim 5 - Liu and Xaio in the rejection of claim 1 above teaches all of the limitations of
claim 1.
Liu teaches wherein,
the precursor is obtained by additive manufacturing through 2D printing, 3D printing or 4D
printing;
the additive manufacturing is selected from one or more of material extrusion, film scraping,
material jetting, photopolymerization or powder bed fusion;
Page 1 Para. 3 lines 11-12, “..and started with a cost-effective 3D printing method called direct
ink writing (DIW)…”. Direct ink writing is a form of an extrusion process known by a PHOSITA.
Regarding Claim 6 - Liu and Xaio in the rejection of claim 5 above teaches all of the limitations of
claim 5.
Liu teaches wherein,
the precursor is obtained by 3D printing or a combination of 3D printing and film scraping; Page
1 Para. 3 lines 11-12, “..and started with a cost-effective 3D printing method called direct
ink writing (DIW)…”.
Regarding Claim 8 - Liu and Xaio in the rejection of claim 1 above teaches all of the limitations of
claim 1.
Liu teaches wherein,
the transforming the processed precursor into a ceramic material or glass material further
comprises improving the machining accuracy of the ceramic material or glass material by linear
shrinkage; While “improving the machining accuracy of the ceramic material or glass material by
linear shrinkage” is directed to a mere outcome of the method, and not a method, Liu teaches
linear shrinkage of the PDMS nanocomposites (NCs) of 20% and linear shrinkage of the first
elastomer derived ceramic (EDC) of 2.5% linear shrinkage (Page 2, Para. 1 lines 6-9).
Regarding Claim 9 - Liu and Xaio in the rejection of claim 1 above teaches all of the limitations of
claim 1.
Liu teaches wherein further comprising,
subjecting the processed precursor to heat processing in inert gas or vacuum conditions;
to undergo primary ceramization;
and further subjecting to heat processing in air;
to undergo secondary ceramization;
to obtain printable and colour-tunable ceramic material;
Page 2 Para. 1 lines 6-8, 24-26; Page 4 Para.1 lines 1-4 “…heat treatment The PDMS NCs in argon under
vacuum…” which provides the first EDC, “…heat treatment of first EDCs in air…”, “…of the above
mentioned EDCs…the resultant ceramics were amorphous-crystalline dual phase…”, “…an average
composition for first and second EDCs…while the average composition of the amorphous matrix in the
first and second EDCs…”, where amorphous-crystalline dual phase supports ceramization, and the first
and second EDC each have an amorphous and non-amorphous composition of the respective EDC. While
Liu does not explicitly disclose that the heat processing in inert gas or vacuum conditions to undergo
a primary ceramization and a further subjecting to heat processing in air to undergo secondary
ceramization, the processes of Liu and the resulting ceramic article structure of Liu are substantially
identical. Where the claimed and prior art products are identical or substantially identical in
structure or composition, or are produced by identical or substantially identical processes, a prima
facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255,
195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of
the applicant and the prior art are the same, the applicant has the burden of showing that they are
not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
While “to obtain printable and colour-tunable ceramic material” is directed to a mere outcome of the
method, and not a method, Liu teaches that in developing EDCs that the heating in air in the second step
was performed to obtain ceramics of different colors (Page 1 Para. 3 lines 30-36).
Regarding Claim 10 - Liu and Xaio in the rejection of claim 1 above teaches all of the limitations of
claim 1.
Liu teaches wherein,
the processing the processed precursor is by laser engraving;
and wherein the laser engraving comprises positive engraving and/or negative engraving;
for forming three-dimensional decorative structural profile with different depths.
The limitations in the instant claim were taught previously in Claim 1; Xiao teaches the use of a micromachining ps (picosecond) laser for cutting features into the precursor layer ((Fig. 45A; negative engraving of a tiger paw design where the structure precision (interpreted as dimensional precision in any/all 3D orthogonal directions) is 1-10um))[0376].
Regarding Claim 11 - Liu and Xaio in the rejection of claim 10 above teaches all of the limitations of
claim 10.
Liu teaches wherein further comprising,
subjecting the ceramic material to localized receramization;
to obtain a heterogeneous ceramic material;
wherein,
the localized receramization comprises localized heat processing with a temperature of at least
800℃;
Page 2 Para. 1 lines 6-8, 24-26; Page 4 Para.1 lines 1-4 “…heat treatment of first EDCs in air at 1000°C…”,
“… heat treatment of PDMS NCs….at 1000°C…” of the above-mentioned EDCs…the resultant ceramics
were amorphous-crystalline dual phase…”, “…an average composition for first and second EDCs…while
the average composition of the amorphous matrix in the first and second EDCs…”, where amorphous-
crystalline dual phase supports receramization, and the first and second EDC each have an amorphous
and non-amorphous composition of the respective EDC.
While Liu does not explicitly disclose receramization the processes of Liu and the resulting ceramic
article structure of Liu are substantially identical. Where the claimed and prior art products are identical
or substantially identical in structure or composition, or are produced by identical or substantially
identical processes, a prima facie case of either anticipation or obviousness has been established. In re
Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for
believing that the products of the applicant and the prior art are the same, the applicant has the burden
of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Claims 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Liu et. al (herein “Liu”) and in
further view of U.S. Patent 11,104,030 by Lu et. al. (herein “Lu”).
Regarding Claim 7 - Liu and Xaio in the rejection of claim 1 above teaches all of the limitations of
claim 1.
While Liu discloses the use of a metal wire to solidify the shape of the precursor before transforming, Liu
does not disclose,
performing heterogeneous engineering of the processed precursor prior to the transforming
processed precursor into a ceramic material or glass material;
wherein,
the heterogeneous engineering comprises subjecting the processed precursor to localized
UV/ozone treatment;
In a similar endeavor of 3D extrusion additive printing of inks including particles and polymers that is
converted to a ceramic object (Col 3 lines 21-23) via heat treatment (Col 1 lines 65-66), where he
polymer includes silicone rubber and zirconium oxide particles (Col 2 lines 11-14) and the weight
percentage of the particles in the inks is in the range of from about 1% to about 90% and the weight
percentage of the polymers in the inks is in the range of from about 10% to about 99% (Col 2 lines 6-10),
Lu teaches post cure of the 3D-printed object may be performed prior to deforming or bending (Col 4
lines 66-67). Further, the post cure occurs at 150°C for 30 minutes to guarantee a sufficient degree of
cross-linking (Col 5 lines1-2). Here, the crosslinking is in reference to polymers as a PHOSITA would
know, and not the ceramic materials, rendering the curing as heterogeneous and localized only to
polymers. Lu discloses the claimed invention except for the use of UV/ozone (typically used for
crosslinking polymers). It would have been obvious to one of ordinary skill in the art at the time of the
effective filing date of the claimed invention to crosslink polymers before transformation as in Lu for the
purposes of limiting excessive shape change during heat processing, as noted by Lu (Col 5 lines 1-2). The
use of UV/ozone for crosslinking polymers is common in the art of processing polymer materials. A
person of ordinary skill has good reason to pursue the known option within his or her technical grasp. If
this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and
common sense." KSR int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,82 USPQ2d 1385 (2007).
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 2-4, and 9 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9, 12-13 of U.S. Patent No. 11,104,030 and claims 2-3, 11 of U.S. Patent No. 10,377,076. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following:
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Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER PAUL DAIGLER whose telephone number is (571)272-1066. The examiner can normally be reached Monday-Friday 7:30-4:30 CT.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alison Hindenlang can be reached on 571-270-7001. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER PAUL DAIGLER/ Examiner, Art Unit 1741
/ALISON L HINDENLANG/Supervisory Patent Examiner, Art Unit 1741
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