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 § 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 21-29 and 32-36 are rejected under 35 U.S.C. 102(a)(1) & (a)(2) as being anticipated by Swartz et al., U.S. Pre Grant Publication 2016/0082657.
Regarding claims 21 and 36, Swartz discloses a 3D object comprising a layered composite material wherein the composite material may comprise carbon fiber substrate layer joined by a hardened thermoplastic or thermoset [0004]. Paragraph 0005 discloses a 3D object formed layer by layer wherein a thermoplastic powder of a thermoplastic plastic powder is selectively deposited on one layer of the substrate; then on a second layer of the substrate, then on a third, as so on. Paragraph 0006 discloses that the powder may comprise polyethylene with a carbon fiber substrate being preferred. Paragraph 0010 discloses that the substrate layers are aligned with each other and placed one on top of one another. Paragraph 0011 discloses that heat is applied to powder and the substrate causing the powder to melt wherein the resulting molten material coats the substrate with the molten material cooling and solidifying. See also paragraph 0018. Paragraph 0093 discloses that the substrate layers include a non-woven [sheet] that includes thread, short fibers or long fibers which are joined together by glue or other binding material. Paragraph 0165 discloses that the article of manufacture comprising a plurality of layers that are infiltrated by and bound together by a hardened material exhibits a set of one or more characteristic, which set is sufficient for distinguishing the hardened material as having formed as a result of the powder positioned on the layers, respectively, at least partially softening and then hardening. Paragraphs 0202-0203 discloses a carbon fiber layer and a nylon powder [hardened material having a different composition from the material composition of the substrate layer.
In regards to the limitation “engineered powder” in claim 21, the limitation is not clearly defined. Applicant’s specification discloses in paragraph 0009 the use of engineered powders such as, but not limited to, emulsion aggregation and chemical-produced toner powders. Applicant’s specification does not limit the “engineered powders”. Examiner is interpreting the claim to refer to any synthetic powder as the limitation “engineered powder” is not limited to emulsion aggregation and chemically -produced toner powders. Swartz discloses nylon powder having a grain size of 50 to 100 microns [0202]. The nylon powders of Swartz have the same structural limitations as required by the “engineered powder” as claimed. The burden is upon Applicant to provide evidence to the contrary that the claimed “engineered powder’ is structurally different from the thermoplastic or thermoset powder of the Swartz reference.
Regarding claims 22 and 33, the manner in which the engineered powder is manufactured does not make the engineered powder structurally different from the thermoplastic or thermoset powder of the Swartz reference as the engineered powder as claimed is not clearly defined. Claim 22 is a product-by-process claim. “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from the product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 277, USPQ 964, 966 (Fed. Cr. 1985}. The burden is upon Applicant to provide evidence to the contrary that the claimed “engineered powder” is structurally different from the thermoplastic or thermoset powder of the Swartz reference. Paragraph 0062 that the powder may comprise a colloidal suspension. Applicant’s claim 22 is directed to an article of manufacture [a product]. Applicant’s claim 22 does not require a thermoplastic or thermoset powder as claim 22 is dependent upon claim 21. Applicant’s claim 21 is not limited to any specific “engineered powder”.
Regarding claims 23 and 34, paragraph 0006 discloses that the powder can include polyethylene powder. Additionally, paragraph 0202 discloses that the powder can include nylon powder.
Regarding claims 24 and 35, Swartz discloses in paragraph 020 that the nylon powder can have a grain size ranging from 50 microns to 100 microns.
Regarding claim 25, paragraph 0152 of Swartz discloses that the powder includes material comprising entirely solid grains [pre-controlled shape].
Regarding claim 26, paragraph 0152 discloses non-homogeneous grains that include a solid outer layer that encapsulates a liquid epoxy resin.
Regarding claim 27, paragraph 0062 discloses that the powder can include a dual component toner that can include magnetite. Applicant’s claim 27 is dependent upon claim 21 which does not specifically disclose a thermoplastic or thermoset plastic powder. Applicant’s claim 21 is not directed to any specific powder as Applicant’s claim 21 is not directed to any specific powder as Applicant’s claimed “engineered powder” is not clearly defined.
Regarding claim 28, paragraph 0165 discloses that the article of manufacture comprising a plurality of layers that are infiltrated by and bound together by a hardened material exhibits a set of one or more characteristic, which set is sufficient for distinguishing the hardened material as having formed as a result of the powder positioned on the layers, respectively, at least partially softening and then hardening.
Regarding claim 29, paragraphs 0093-0094 disclose that the substrate layers include a nonwoven [sheet] that includes thread, short fibers or long fibers which are joined together by glue or other binding material wherein the fibers can include carbon fibers [0095].
Regarding claim 32, paragraph 0007 discloses that all substrate layers include carbon fiber substrate layers. Swartz discloses a 3D object comprising a layered composite material wherein the composite material may comprise carbon fiber substrate layer joined by a hardened thermoplastic or thermoset [0004]. Paragraph 0005 discloses a 3D object formed layer by layer wherein a thermoplastic powder of a thermoplastic plastic powder is selectively deposited on one layer of the substrate; then on a second layer of the substrate, then on a third, as so on. Paragraph 0006 discloses that the powder may comprise polyethylene with a carbon fiber substrate being preferred. Paragraph 0010 discloses that the substrate layers are aligned with each other and placed one on top of one another. Paragraph 001 1 discloses that heat is applied to powder and the substrate causing the powder to melt wherein the resulting molten material coats the substrate with the molten material cooling and solidifying. See also paragraph 0018. Paragraph 0093 discloses that the substrate layers include a non-woven [sheet] that includes thread, short fibers or long fibers which are joined together by glue or other binding material. Paragraph 0165 discloses that the article of manufacture comprising a plurality of layers that are infiltrated by and bound together by a hardened material exhibits a set of one or more characteristic, which set is sufficient for distinguishing the hardened material as having formed as a result of the powder positioned on the layers, respectively, at least partially softening and then hardening. Paragraphs 0202-0203 discloses a carbon fiber layer and a nylon powder [hardened material having a different composition from the material composition of the substrate layer].
In regards to the limitation “engineered powder” in claim 32, the limitation is not clearly defined. Applicant’s specification discloses in paragraph 0009 the use of engineered powders such as, but not limited to, emulsion aggregation and chemical-produced toner powders. Applicant’s specification does not limit the “engineered powders”. Examiner is interpreting the claim to refer to any synthetic powder as the limitation “engineered powder” is not limited to emulsion aggregation and chemically -produced toner powders. Swartz discloses nylon powder having a grain size of 50 to 100 microns [0202]. The nylon powders of Swartz have the same structural limitations as required by the “engineered powder” as claimed. The burden is upon Applicant to provide evidence to the contrary that the claimed “engineered powder’ is structurally different from the thermoplastic or thermoset powder of the Swartz reference.
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 21-36 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 11,969,938. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in both the present application and the patented reference recite
a three-dimensional article of manufacture comprising a plurality of substrate layers that are infiltrated or coated by, and bound together by, a hardened material formed by heating at least one engineered powder, such that the hardened material has a material composition that is different from the material composition of any of the plurality of substrate layers, wherein the engineered powder comprises a plurality of powder particles produced by at least one process permitting sufficient control of the shape, size, and composition of each powder particle to produce a powder having particles of predesigned, relatively uniform shape, size, and composition, the process further not requiring mechanical abrasion, the process further comprising chemical reaction, wherein all of the plurality of substrate layers have a substantially identical material composition and each substrate layer is a sheet that has a material composition comprising fibers held together by binder. In regards to the limitation “engineered powder” in claim 21, the limitation is not clearly defined. Applicant’s specification discloses in paragraph 0009 the use of engineered powders such as, but not limited to, emulsion aggregation and chemical-produced toner powders. Applicant’s specification does not limit the “engineered powders”. Examiner is interpreting the claim to refer to any synthetic powder as the limitation “engineered powder” is not limited to emulsion aggregation and chemically -produced toner powders.
The claims in both the present application and the patented reference recite wherein the engineered powder comprises at least one powder produced using the process of emulsion aggregation.
The claims in both the present application and the patented reference recite wherein the engineered powder includes at least one of nylon, elastomers, polyolefins, polyethylene, polyether ether ketone, polyimide, polyetherimide, polyphenylene sulfide, polystyrene, polypropylene, polymethyl methacrylate, and polvarvletherketone.
The claims in both the present application and the patented reference recite wherein the engineered powder has particles ranging in the size from 30 to 150 microns.
The claims in both the present application and the patented reference recite wherein the individual particles of the engineered powder have a pre-specified controlled shape.
The claims in both the present application and the patented reference recite wherein the engineered powder has particles having a non-homogeneous composition.
The claims in both the present application and the patented reference recite wherein the engineered powder further comprises at least one surface treatment or additive for controlling powder flow and charge distribution, selected from the group including silica, titania, alumina, metal steatites, micronized PMMA, tungsten oxide, particulate fluoropolymers, magnetite, cerium oxide, carbon black, and inorganic salts of fatty acids.
The claims in both the present application and the patented reference recite wherein the hardened material exhibits a set of one or more characteristics, which set is sufficient for distinguishing the hardened material as having formed as a result of the engineered powder having been positioned on the substrate layers and then being at least partially softened followed by hardening.
The claims in both the present application and the patented reference recite wherein the substrate layer material composition includes fibers selected from the group consisting of carbon fibers, ceramic fibers, polymer fibers, glass fibers, and metal fibers.
The claims in both the present application and the patented reference recite wherein the binder comprises at least sodium silicate.
The claims in both the present application and the patented reference recite wherein the substrate layer is a nonwoven material with a sodium silicate binder.
The claims in both the present application and the patented reference recite a three-dimensional article of manufacture comprising a plurality of substrate layers that are infiltrated or coated by, and bound together by, a hardened material formed by heating at least one engineered powder, wherein the hardened material exhibits a set of one or more characteristics, which set is sufficient for distinguishing the hardened material as having formed as a result of the engineered powder having been positioned on the substrate layers and then being at least partially softened followed by hardening, such that the hardened material has a material composition that is different from the material composition of any of the plurality of substrate layers, wherein the engineered powder comprises a plurality of powder particles produced by at least one process permitting sufficient control of the shape, size, and composition of each powder particle to produce a powder having particles of predesigned, relatively uniform shape, size, and composition, the process further not requiring mechanical abrasion, the process further comprising chemical reaction, and wherein all of the plurality of substrate layers have a substantially identical material composition.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAMIE S THOMPSON whose telephone number is (571)272-1530. The examiner can normally be reached 8:30 am - 5:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer Boyd, can be reached at 571-272-7783. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CAMIE S THOMPSON/Primary Examiner, Art Unit 1786