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 .
Election/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-6 & 13-18, drawn to a process, classified in B29C 64/188.
II. Claims 7-12, drawn to an apparatus, classified in B33Y 30/00.
The inventions are independent or distinct, each from the other because:
Inventions I & II are related as process and apparatus for its practice. The inventions are distinct if it can be shown that either: (1) the process as claimed can be practiced by another and materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another and materially different process. (MPEP § 806.05(e)). In this case, the apparatus can be used in a materially different process such as forming a additively manufactured structure without surface lattices.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
the inventions have acquired a separate status in the art in view of their different classification;
the inventions have acquired a separate status in the art due to their recognized divergent subject matter;
the inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries);
the prior art applicable to one invention would not likely be applicable to another invention;
the inventions are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with James R. McDaniel on 9/4/25 a provisional election was made with traverse to prosecute the invention of Group I, claims 1-6 & 13-18. Affirmation of this election must be made by applicant in replying to this Office action. Claims 7-12 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
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 3 & 9 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 3 & 9: A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claims 3 & 9 recite the broad recitation 0.5-5 mm, and the claims also recite 0.1-0.01 mm which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim Rejections - 35 USC § 102
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 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.
Claims 1-5 & 13-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sweeney (US PG Pub 2023/0391003; hereafter ‘003).
Claims 1 & 13: ‘003 is directed towards a process of using additive manufacturing (AM) devices to print a 3-dimensional lattice surface (title), comprising the steps of:
providing at least one AM unit adapted to produce a product having 3-dimensional surfaces lattice using AM (see title & abstract; Fig. 1);
determining a desired surface lattice to print upon a surface of the product (see Figs. 2-4, #118/118n+1);
printing the desired surface lattice on the surface of the product (Figs 3-4), wherein the desired surface lattice is capable of reducing and controlling a light reflection and a light scattering that interacts with the surface lattice on the product (the surface lattice is a physical material with distinct shapes and thus has the capability to reduce and control light reflection and light scattering of some wavelength of light);
determining a desired surface porosity coating to print upon the desired lattice surface (generating smoothing print path; Figs. 2-4); and
printing the desired surface porosity coating upon the desired surface lattice, wherein the desired surface porosity coating is capable of further reducing a light reflection and a light scattering of light that interacts with the surface lattice (the smoothing print layer is applied which changes the porosity and is inherently capable of reducing the light reflection and scattering of light that interacts with the surface lattice for some given wavelength of light, see Figs. 3-4).
Claims 2: & 14 ‘003 further teaches a step of thermal heat-treating the desired surface porosity coating (the reflow process is a thermal process; ¶ 35), wherein the thermal heat treating creates a phase transformation of at least a portion of the desired surface porosity coating such that the heat-treated portion of the desired surface porosity coating provides a reduction in light reflection and light scattering on the surface lattice (the reflow process causes the smoothing print to melt and flow which changes its shape and thus inherently provides a reduction in light reflection and light scattering on the surface lattice because the shape is changed and thus for some portion of light which is incident on the surface will be at an oblique angle).
Claims 3 & 15: The surface features located on the desired surface lattice have a range of 0.5-2.5 mm (¶ 43)
Claims 4 & 16: The desired surface lattice further comprises an arrangement of points with an accompanying physical, solid geometry connecting the arrangement of points (see Figs. 3-4, the vertices).
Claims 5 & 17: The desired surface lattice comprises a beam-vertex type surface lattice (see Figs. 3-4).
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.
Claims 6 & 18 are rejected under 35 U.S.C. 103 as being unpatentable over ‘003 as applied above, and further in view of Hutchinson et al. (US Patent 12,202,042; hereafter ‘042).
Claims 6 & 18: As discussed above, ‘003 teaches performing a smoothing step of applying a smoothing coating and contacting with a mechanical member to cause a reflow (see title, abstract, & Figs. 2-3). ‘003 teaches repeating the smoothing to obtain the desired degree of smoothing (¶ 43).
‘003 does not teach performing additional smoothing by chemical treating after the physical smoothing process.
However, ‘042, which is directed towards finishing of additively manufactured parts (title) teaches that multiple different smoothing techniques can be performed on a single part to obtain the desired finish on the part (see abstract) wherein the different smoothing techniques include physical and chemical smoothing (col. 1, line 65 – col. 2, line 15).
It would have been obvious to one of ordinary skill in the art at the time of filing to incorporate the teachings of ‘042 into the process of ‘003 and perform additional steps of smoothing by chemical step (i.e. chemical treating) the surface porosity coating of ‘003 because it is recognized in the art to combine different smoothing techniques to obtain the desired degree of smoothing and chemical and mechanical smoothing are art recognized alternative smoothing techniques and therefore the use of the combination of techniques would have predictably resulted in the desired results.
The combination teaches the claimed invention but fails to explicitly teach explicitly teach that the second smoothing provides a reduction in light reflection and light scattering on the surface lattice. Since the same processes are performed; it is reasonable to presume the same results are obtained. Support for said presumption is found in the use of like materials and like processes which would result in the claimed property.
The burden is upon the Applicant to prove otherwise. In re Fitzgerald 205 USPQ 594. In addition, the presently claimed properties would obviously have been present once the product is provided. Note In re Best, 195 USPQ at 433, footnote 4 (CCPA 1977).
Additionally, given that the combination smooths the surface and covers the porosity of the lattice structure it is apparent that the light reflection and light scattering of the surface lattice is reduced because there is a reduction of the roughness of the surface.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES M MELLOTT whose telephone number is (571)270-3593. The examiner can normally be reached 8:30AM-4:30PM CST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached at 571-272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/James M Mellott/ Primary Examiner, Art Unit 1759