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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on June 11, 2026 has been entered.
The amendment filed June 11, 2026 with the RCE submission has been entered and considered. With the entry of the amendment, claims 13-23 and 25-26 are withdrawn, and claims 1-12 and 24 are pending for examination.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-12 and 24 in the reply filed on June 12, 2025 is acknowledged.
Claims 13-23 and 25-26 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 June 12, 2025.
Claim Interpretation
It is noted that applicant defines the bolus as a discrete, contiguous quantity of at least partially liquid alloy that is distinct from a spray of at least partially liquid alloy (note page 3, lines 3-10 of the specification as filed).
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 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Myerberg et al (US 2017/0252808) in view of Sickbert (US 3352351), Morrison (US 1759269) and WO 2020/002886 (herein ‘886, used as provided with the IDS of May 7, 2024).
Claim 1: Myerberg teaches a method and apparatus for applying liquid metal (which can be a liquid metal alloy) to a surface (build plate) (note abstract, figure 1, 0047). The method includes providing a bolus (a discrete contiguous quantity of material) of liquid metal/alloy in a charge chamber (note 102, 110, 302, 502 in the figures), where the charge chamber has an outlet at the bottom of the chamber (note orifice 112) and a closable pressure inlet (note port 118 with valve 106) (note figures 1, 3, 5, 0037, 0039, 0047). Pressurized fluid (gas) is introduced into the charge chamber via the pressure inlet and accelerates the bolus such that the bolus is ejected from the charge chamber via the outlet (note figures 1, 3, 5, 0037, 0044, 0101). The liquid metal/alloy can be ejected as a constant/continuous stream/mass (single since a stream from the outlet) (note 0101, 0019, 0021). The bolus is directed along a pathway between the charge chamber and the surface such that the bolus contacts the surface to form a build up of the bolus material (note from path metal/alloy would take to build up as shown in figure 1, 0037, 0050, 0101).
(A) As to the outlet also being closeable, this is not specifically provided by Myerberg. Myerberg does indicate additional elements can be in the chamber (note figure 3, 310, 0068).
Sickbert describes a chamber system where liquid metal/alloy is fed into a chamber/ladle 26 and then exits out an outlet 28 at the bottom of the chamber to apply the metal/alloy to a surface (67) to build up metal/alloy (note figure 1, column 1, lines 30-45, column 3, lines 45-60, column 5, lines 35-50, column 6, lines 30-60). Sickbert indicates providing that the outlet is closable (note rod 29) where the outlet is opened when the exit of metal desired (note column 3, lines 50-60, column 6, lines 40-50).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Myerberg to specifically provide that the outlet is closeable as suggested by Sickbert to help prevent metal/alloy from exiting when not desired, since Myerberg shows a chamber containing liquid metal/alloy with an outlet at the bottom through which the metal exits, and Sickbert teaches that in a similar structure, it is known to provide that the outlet is closeable to prevent liquid metal/alloy from exiting when not desired.
(B) Furthermore, as to the bolus comprises the entire quantity of the at least partially liquid alloy in the charge chamber, and is ejected as a single, continuous mass, Myerberg shows the chamber (charge chamber 502, 110, for example) containing a quantity liquid metal/alloy held in the chamber (note0037, 0057, 0080). The liquid metal/alloy can be ejected as a constant stream, that is, as a single, continuous mass (note 0019, 0021, 0101). As to the bolus being the entire quantity of the liquid metal/alloy in the changer chamber and ejecting this as a single continuous mass, Myerberg describes that movement of metal into the chamber (110, etc.) can be separate from actuation of valve 106 (providing gas to discharge the metal) (note 0038, which also describes that replenishment of metal can be provided), and metal can be provided from the metal/media supply 108 into the chamber 110 while valve 106 providing the gas/pressurized fluid is closed (note 0046). Sickbert also shows how molten metal can be provided from a first supply (funnel 13) into a chamber (ladle 26, which can also be considered a charge chamber) out of which molten metal will flow (in a controlled fashion where rod 16 stops flow to ladle 26 (note figure 1, column 3, lines 25-75), where the ladle/chamber 26 is filled to a desired height before the outlet in the chamber is opened to allow a stream of molten metal to flow through(column 6, lines 30-50). The ladle/chamber 26/26’ can be covered after filling where a source of pressure gas if supplied to the chamber/ladle to further control dispensing the molten metal (note column 7, lines 40-65, figure 4).
Additionally, Morrison describes how molten metal can be provided form a supply (furnace 7) and fed into a charge chamber/ ladle 11 in a controlled amount (based on size of chamber 11), where a single bolus/controlled amount of metal (that is the entire quantity of liquid in the charge chamber) is provided, and thereafter the bolus is ejected as a single continuous mass (the lower chamber gate/outlet is opened, which would allow the entire amount of liquid to continuously dispense, which is further indicated by providing the charge chamber/ladle 11 is approximately equal to the capacity of the molds being filled, where it will travel on release from the ladle as a cohesive body to the mold, to force into all parts of the mold, (note page 3, line 125 to page 4, line 5, page 1, lines 95-100), and therefore it would be at least suggested that the entire metal content of the chamber/ladle 11 would be released as a single continuous mass, as the amount needed for molding provided in the chamber, note also the figure, page 2, line 70-110). In Morrison, the dispensed metal is directed through a pathway to the desired application location (mold) (note the figure, page 2, lines 105-130).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Myerberg in view of Sickbert to provide that the bolus comprises the entire quantity of the liquid alloy held in the charge chamber, and is ejected as a single continuous mass as suggested by Morrison with an expectation of predictably acceptable results, since Myerberg indicates that the charge chamber can be filled separately from the gas/pressurized fluid use and dispensing can be in continuous stream when dispensing, and Sickbert also indicates filling a charge chamber that can also use gas pressure for dispensing and then dispensing, indicating that continuous filling of metal into the charge chamber not required, and Morrison teaches that it would be conventional to provide filling of a charge chamber that allows dispensing of molten metal, and then dispensing all molten metal in the chamber in one single continuous mass (cohesive body) to the desired location, thus suggesting that in Myerberg pressure can be applied to the chamber to continuously dispense all metal (a bolus) in the chamber in a single continuous mass, and then stop the gas pressure, and refill the chamber for the next dispensing with an expectation of predictably acceptable results as a known way to provide molten metal for use in a controlled amount.
(C) Furthermore, as to using the metal/alloy to repair a defect in a surface by directing the ejected bolus along the pathway such that the surface the bolus contacts is the defect in the surface and solidifying the at least partially liquid alloy while it contacts the defect, Myerberg does not teach that the surface to be provided with the applied metal/alloy is a defect containing surface. It is understood that the metal/alloy applied will cool/solidify with an expectation of predictably acceptable results, since the metal/alloy would be applied and no more heating required to keep liquid. Myerberg indicates that pressure can be controlled with pulses to control liquid metal droplet shape and size (note 0088) or pressure controlled to deliver a constant stream of metal to be applied (note 0101) and a range of pressure can be provided (note 0044).
‘886 indicates that it is desirable to provide sealing (repairing) a surface using an acceleration of liquid metal/alloy to a surface by a propellant and applying the liquid metal/alloy to the surface, where the surface can have a defect to be sealed (such as holes, cracks, fissures, etc.) where the metal/alloy is applied to defects (note page 3, lines 10-35, page 5, lines 1-5, page 8, lines 30-35, page 10, lines 1-10), where the propellant can be a gas (page 9, lines 19-25) and can be pressurized (compressed air, for example) (note page 25, lines 20-30). On contact with the surface, the liquid metal/alloy will cool and solidify, forming a coating (note column 3, lines 19-25).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Myerberg in view of Sickbert and Morrison to provide that the application of liquid metal/alloy described by Myberberg is used to repair a defect in a surface by directing the ejected bolus along the pathway such that the surface the bolus contacts is the defect in the surface and solidifying the at least partially liquid alloy when it contacts the defect as suggested by ‘886 to provide a desirable further use for the process of Myerberg, since Myerberg indicates how liquid metal/alloy can be accelerated and directed using a pressurized gas to be directed at/contact and build up on a surface and ‘886 indicates that a liquid metal/alloy can be directed is onto a defect in a surface (so a desirable surface to use) in order to seal/repair the defect, where the metal/alloy can be directed using pressurized gas and where the liquid metal/alloy will cool/solidify in contact with the surface/defect to form a coating/sealing.
Claims 2, 4: As to also providing a delivery line that defines at least a portion of the pathway, where the delivery line acts to limit heat loss from the bolus and provide heat to the bolus, Morrison also notes that a portion of the pathway in the form of a delivery line (guard 15) can be provided after the outlet through which the metal flows towards where to be deposited can be provided after the chamber to help prevent reduction in temperature (limit heat loss from the bolus) (note the figure, page 2, lines 110-130).
Claim 3: as to the delivery line positioned by a robot, Myerberg provides that the nozzle system positioned by a robot (note figure 1, robotics 128, 0051), and Morrison indicates that the delivery line (guard 15) can be attached to the chamber/outlet (note the figure, and column 3, lines 75-85, note attachment together),and therefore, when providing the chamber/outlet attached to the delivery line as shown by Morrisoin, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the positioning robot would also position the delivery line as well, with an expectation of predictably acceptable results.
Claim 5: Meyerberg would teach that at least that a solid metal/alloy can be melted and then introduced into the chamber (note figure 1, 0053-0054), or solid metal/alloy can be introduced in the chamber and melted in situ (0057).
Claim 6: Myerberg would teach that the pressurized fluid/gas can be at a pressure in the range of “above about 550 kPa” (so above about 5.5 bar) (note 0044). This would overlap the range claimed and therefore it would have been obvious to optimize from this range, giving a value in the claimed range. As well, ‘886 would note the use of heated gas and compressed gas (note page 25, lines 20-30).
Claim 7: Myerberg teaches the use of metal alloys in general (note 0047), and ‘886 suggests the use of alloys of bismuth, indium, antimony, tin, lead and gallium (note page 26, lines 1-10), giving suggested alloys to use.
Claim 8: As to the order of opening the outlet and pressure inlets, Myerberg describes opening the pressure inlet to provide pressure to the bolus so that ejection occurs (note 0037). Sickbert as discussed for claim 1 above, would suggest providing a closable outlet/orifice that is opened to allow exit of liquid metal/alloy from the outlet. As to the specific order of when the pressure inlet opened vs. the outlet opening, as indicated by In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946), selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results, and therefore, any of the options claimed would be obvious, as no new or unexpected result would occur.
Claim 9: ‘886 would suggest that the defect to be repaired can be an active leak (note page 3, lines 25-35).
Claim 10: ‘886 would further suggest a cleaning step where cleaning fluid (the propellant gas) can be delivered to the defect before sealing to remove contaminants, etc. and improve binding of metallic composition to the surface (note column 7, lines 1-10, column 9, lines 5-25), where at the least this would suggest that a gaseous fluid acting as a cleaning fluid can be desirably applied to the surface before performing the repairing process to desirably clean the surface to remove contaminants and improve binding of the metal/alloy to the surface.
Claim 11: ‘886 provides that it is desirable for the metal/alloy to penetrate the defect to prevent cavities between the surface and applied material that act as points of weakness (note page 8, line 30 to page 9, line 5), suggesting to provide the conditions so as to provide penetration of the defect to avoid the described issues.
Claim 12: ‘886 indicates that it is desirable to place a mold around the defect prior to applying the liquid metal/alloy to the surface for the benefit of holding the metal/alloy in contact with the defect (note page 10, lines 1-25), and Myerberg also notes the idea of providing a first surrounding border and then filling in the pneumatically ejected metal/alloy to speed the manufacturing process (note 0101), which can be considered as providing a mold around the desirably coated surface first.
Claims 2-4 are optionally rejected under 35 U.S.C. 103 as being unpatentable over Myerberg in view of Sickbert, Morrison and ‘886 as applied to claims 1 and 5-12 above, and further in view of Mark (US 2017/0087632).
Claims 2, 4: As to also providing a delivery line that defines at least a portion of the pathway, where the delivery line acts to limit heat loss from the bolus and provide heat to the bolus, Morrison also notes that a pathway with a delivery line (guard 15) provide after the chamber can be used to help prevent reduction in temperature (note the figure, page 2, lines 110-130).
Mark provides how application of a molten metal/alloy jet can be provided to apply to a build plate (note figure 1, 6, 0035-0036), where the metal can be forced out to orifice 202 using gas pressure (note figure 4, 0044). As shown in figure 6 (note marked up copy below) there can be a first outlet, then a tube and second outlet at 202 (note figures 6, 7, which tube can be considered a pathway/delivery line from the first outlet), where it is indicated that the tube area can be heated with a heater 204 to help maintain the material molten (note 0044).
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Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Myerberg in view of Sickbert, Morrison and ‘886 to provide that the chamber/applicator system is desirably structured to have a first chamber area and (first) closable outlet that would have the pressure inlet as well, and then have a further path/delivery line with a second outlet to allow for further heating to help keep the material molten (limit heat loss from bolus and provide heat to bolus) as suggested by Mark with an expectation of predictably acceptable results as Myerberg indicates the desire to eject liquid metal/alloy and even notes the chamber can be heated to prevent solidifying (note figure 3, 0073), Morrison also indicates the desire to control temperature in a delivery pathway from the chamber, and Mark, as discussed above, notes a format for such desirable heating can also include further pathway/delivery line flow.
Claim 3: as to the delivery line positioned by a robot, Myerberg provides that the nozzle system positioned by a robot (note figure 1, robotics 128, 0051), and therefore, when providing the chamber/nozzle attached to the delivery line as shown by Mark, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the positioning robot would also position the delivery line as well, with an expectation of predictably acceptable results.
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Myerberg et al (US 2017/0252808) in view of Morrison (US 1759269) and WO 2020/002886 (herein ‘886, used as provided with the IDS of May 7, 2024).
Claim 24: Myerberg teaches a method and apparatus for applying liquid metal (which can be a liquid metal alloy) to a surface (build plate) (note abstract, figure 1, 0047). The method includes providing a bolus (a quantity of material) of liquid metal/alloy in a charge chamber (note 102, 110, 302, 502 in the figures, such that a charge chamber for holding the alloy is provided), where the charge chamber has an outlet at the bottom of the chamber (note orifice 112) and a closable pressure inlet (note port 118 with valve 106) (note figures 1, 3, 5, 0037, 0039, 0047). Pressurized fluid (gas) is introduced into the charge chamber via the pressure inlet and accelerates the bolus such that the bolus is ejected from the charge chamber via the outlet (note figures 1, 3, 5, 0037, 0044, 0101). The pressurized gas is provided into pressure inlet by a pressure line in fluid communication with the pressure inlet and connectable to a pressurized fluid (gas) source (note figure 1, 0027, 0044). The bolus is directed along a pathway between the charge chamber and the surface such that the bolus contacts the surface to form a build up of the bolus material (note from path metal/alloy would take to build up as shown in figure 1, 0037, 0050, 0101).
(A) Furthermore, as to the bolus comprises the entire quantity of the at least partially liquid alloy in the charge chamber, and is ejected as a single, contiguous mass, Myerberg shows the chamber (charge chamber 502, 110, for example) containing a quantity liquid metal/alloy held in the chamber (note0037, 0057, 0080). The liquid metal/alloy can be ejected as a constant stream, that is, as a single, continuous, contiguous mass (note 0019, 0021, 0101). As to the bolus being the entire quantity of the liquid metal/alloy in the changer chamber and ejecting this as a single continuous, contiguous mass, Myerberg describes that movement of metal into the chamber (110, etc.) can be separate from actuation of valve 106 (providing gas to discharge the metal) (note 0038, which also describes that replenishment of metal can be provided), and metal can be provided from the metal/media supply 108 into the chamber 110 while valve 106 providing the gas/pressurized fluid is closed (note 0046).
Additionally, Morrison describes how molten metal can be provided form a supply (furnace 7) and fed into a charge chamber/ ladle 11 in a controlled amount (based on size of chamber 11), where a single bolus/controlled amount of metal (that is the entire quantity of liquid in the charge chamber) is provided, and thereafter the bolus is ejected as a single continuous, contiguous mass (the lower chamber gate/outlet is opened, which would allow the entire amount of liquid to continuously dispense, which is further indicated by providing the charge chamber/ladle 11 is approximately equal to the capacity of the molds being filled, where it will travel on release from the ladle as a cohesive body to the mold, to force into all parts of the mold, (note page 3, line 125 to page 4, line 5, page 1, lines 95-100), and therefore it would be at least suggested that the entire metal content of the chamber/ladle 11 would be released as a single continuous, contiguous mass, as the amount needed for molding provided in the chamber, note also the figure, page 2, line 70-110). In Morrison, the dispensed metal is directed through a pathway to the desired application location (mold) (note the figure, page 2, lines 105-130).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Myerberg to provide that the bolus comprises the entire quantity of the liquid alloy held in the charge chamber, and is ejected as a single continuous mass as suggested by Morrison with an expectation of predictably acceptable results, since Myerberg indicates that the charge chamber can be filled separately from the gas/pressurized fluid use and dispensing can be in continuous stream when dispensing, and Morrison teaches that it would be conventional to provide filling of a charge chamber that allows dispensing of molten metal, and then dispensing all molten metal in the chamber in one single continuous, contiguous mass (cohesive body) to the desired location, thus suggesting that in Myerberg pressure can be applied to the chamber to continuously dispense all metal (a bolus) in the chamber in a single continuous, contiguous mass, and then stop the gas pressure, and refill the chamber for the next dispensing with an expectation of predictably acceptable results as a known way to provide molten metal for use in a controlled amount.
(B) Furthermore, as to using the metal/alloy to repair a defect in a surface by directing the ejected bolus along the pathway such that the surface the bolus contacts is the defect in the surface and solidifying the at least partially liquid alloy while it contacts the defect, Myerberg does not teach that the surface to be provided with the applied metal/alloy is a defect containing surface. It is understood that the metal/alloy applied will cool/solidify with an expectation of predictably acceptable results, since the metal/alloy would be applied and no more heating required to keep liquid. Myerberg indicates that pressure can be controlled with pulses to control liquid metal droplet shape and size (note 0088) or pressure controlled to deliver a constant stream of metal to be applied (note 0101) and a range of pressure can be provided (note 0044).
‘886 indicates that it is desirable to provide sealing (repairing) a surface using an acceleration of liquid metal/alloy to a surface by a propellant and applying the liquid metal/alloy to the surface, where the surface can have a defect to be sealed (such as holes, cracks, fissures, etc.) where the metal/alloy is applied to defects (note page 3, lines 10-35, page 5, lines 1-5, page 8, lines 30-35, page 10, lines 1-10), where the propellant can be a gas (page 9, lines 19-25) and can be pressurized (compressed air, for example) (note page 25, lines 20-30). On contact with the surface, the liquid metal/alloy will cool and solidify, forming a coating (note column 3, lines 19-25).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Myerberg in view of Morrison to provide that the apparatus and application of liquid metal/alloy described by Myberberg in view of Morrison is used to repair a defect in a surface by directing the ejected bolus along the pathway such that the surface the bolus contacts is the defect in the surface and solidifying the at least partially liquid alloy when it contacts the defect as suggested by ‘886 to provide a desirable further use for the process of Myerberg, since Myerberg indicates how liquid metal/alloy can be accelerated and directed using a pressurized gas to be directed at/contact and build up on a surface and ‘886 indicates that a liquid metal/alloy can be directed is onto a defect in a surface (so a desirable surface to use) in order to seal/repair the defect, where the metal/alloy can be directed using pressurized gas and where the liquid metal/alloy will cool/solidify in contact with the surface/defect to form a coating/sealing. This would provide at least all the features of claim 24.
Response to Arguments
Applicant's arguments filed June 11, 2025 have been fully considered.
As to the 35 USC 103 rejections, it is argued that the references to Myerberg, Sickbert, Morrison and ‘886 are related to three different, distinct technical fields, with additive manufacturing for Myerberg, casting of metals for Sickbert and Morrison, and sealing and repair of surfaces for ‘866, where the scales, materials and persons working in these fields are all substantially different and one would not look to combine these references. As the Myerberg with additive manufacturing, it is argued that these involve very small volumes, etc. and casting releases a large quantity of metal to a mold, etc. and sealing and repair (‘886) uses intermediate quantities of metal, where 3D printing and casting would be concerned with new products not modification/repair, and 3D printing requires deposition of droplets, where casting has much larger quantities of metal, and one of skill in the art would not consider the teachings transferable, and sealing and repair uses intermediate quantities, rather than the small or large amounts of the others. It is argued that it would be impermissible hindsight reasoning to combine the references based on the above. Also as to claim 9, it is argued that one concerned with active leaks would not look to 3D printing documents.
The Examiner has reviewed these arguments, however, the rejections above are maintained. It is the Examiner’s position that the detailed rejection above provides why one would combine the references, providing the claimed features. As to the combination of references, while they are not all directed to the exact same processes, as discussed MPEP 2141.01(a) analogous art is not required to be in the same field of endeavor as the claimed invention, but can needs to be reasonably pertinent to the problem faced by the inventor, where here the inventor would be concerned with application of metal that can provide repair. While Myerberg, Sickbert and Morrison do not specifically refer to application of liquid/molten metal to repair defects, they all describe how there can be a flow of liquid/molten metal out of a chamber on to a surface below which would apply and build up the metal, and ‘886 would indicate how the flow of molten metal onto a surface can be used to provide/build up a coating that acts to seal defects, thus indicting a desirable use for such metal flow, and indicating how providing a flow of metal to surface to build up metal is pertinent and relevant to the present invention. Myerberg as discussed in the rejection above is not limited to using drops, but can use a constant stream flow. As to the additive manufacture of Myerberg using very small volumes that would not be relevant to seal and repair, and casting or Sickbert or Morrison giving large volumes not relevant to this or repair, and the other arguments as to the fields of the different references, etc., these are attorney arguments with no showing as to whether this would be the understanding of one of ordinary skill in the art, and thus cannot act to overcome the rejection. Note MPEP 2145(I), “Arguments presented by applicant cannot take the place of evidence in the record. See In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984); In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) ("An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness.").” and also note MPEP 716.01(c), “Arguments presented by the applicant cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965) and In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984). Examples of statements which are not evidence and which must be supported by an appropriate affidavit or declaration include statements regarding unexpected results, commercial success, solution of a long-felt need, inoperability of the prior art, invention before the date of the reference, and allegations that the author(s) of the prior art derived the disclosed subject matter from the inventor or at least one joint inventor.“ Furthermore, the Examiner notes that Myerberg does not give any limits as to the flow and size, nor does Sickbert, for example, which it indicates that ingots as small as 6 inches in size can be made with slow pouring (note column 2, lines 24-30), and Morrison also does not limit size. This is also the case for ‘886. As well, as to casting providing flow to a mold, Myerberg and ‘886 would also indicate flow to a mold like structure, noting the discussion for claim 12, which wants mold use. Myerberg, Sickbert and Morrison are all concerned, again, with providing molten metal flow out of a chamber, with no size limits. Further countering applicant’s attorney arguments, the Examiner notes, as a courtesy, Marchione (US 2022/0193760), which describes how 3D additive deposition of liquid/molten metal can also be described as providing a casting of the metal, indicating a known relationship between the materials, and how size would not apply, and also the known use for repair (note figures 1, 3, 6, 0014-0015, 0020, claims 1, 5, 20), The same would apply to claim 9, as applicant’s attorney has not shown why the flow of Myerberg would not be able to seal leaks. Therefore, as discussed above, the combination is proper and no impermissible hindsight is used. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE A BAREFORD whose telephone number is (571)272-1413. The examiner can normally be reached M-Th 6:00 am -3:30 pm, 2nd F 6:00 am -2:30 pm.
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.
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/KATHERINE A BAREFORD/Primary Examiner, Art Unit 1718
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