FIRST NON-FINAL REJECTION
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 § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-16 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
With respect to claims 1, 3, 11-13, and 16, the phrases “measuring the deformation amount of the deformation part based on the reference part of the additively manufactured test object separated from the upper surface of the baseplate” and “measurement step measures a height of the deformation part based on a height of the reference part as the deformation amount” lack proper written description. The examiner notes that the specification does not disclose the step of measuring the deformation amount or measuring a height of the deformation part in such a way to reasonably convey to one skill in the relevant art that the inventor had possession of the claimed invention at the time of filing (MPEP 608.01o). The applicant discloses figures of the manufactured test object and a flow chart of the steps of the manufacturing. However, the applicant provides no explanation of a device or specific method as to how the step of measuring any dimensions or geometry of the test object are implemented. The applicant does not explain the measuring steps by way of examples, figures, or any other means of how the step of measuring is implemented. Therefore, the claims lack proper written description.
With respect to claims 2, 4-10, 14, these claims stand rejected for incorporating the above rejected subject matter of their respective parent claims and therefore stand rejected for the same reasons.
Claims 1, 3, 11-13, and 16 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification does not reasonably provide enablement for measuring the deformation amount of the deformation part based on the reference part of the additively manufactured test object separated from the upper surface of the baseplate and where the measurement step measures a height of the deformation part based on a height of the reference part as the deformation amount. Specifically, the examiner cannot not find any explanation as to how the applicant is implementing measuring steps of measuring the deformation amount of the deformation part based on the reference part of the additively manufactured test object separated from the upper surface of the baseplate and where the measurement step measures a height of the deformation part based on a height of the reference part as the deformation amount. This is a scope of enablement rejection because the specification does not enable one of ordinary skill to use the invention commensurate with the scope of the claims without undue experimentation.
There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is “undue.” These factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability or unpredictability in the art;
(F) The amount of direction or guidance presented by invent tor;
(G) The existence or absence of working examples; and
(H) The quantity of experimentation necessary.
See In re Wands, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988); MPEP §2164.01(a)
With respect to factor (A), the examiner notes that claims 1, 3, 11-13, and 16 are unbounded. Applicant has not provided any explanation as to how the applicant is implementing measuring steps of measuring the deformation amount of the deformation part based on the reference part of the additively manufactured test object separated from the upper surface of the baseplate and measurement step measures a height of the deformation part based on a height of the reference part as the deformation amount and as such claims 1, 3, 11-13, and 16 would cover any and every way possible to accomplish the claimed method of measuring.
With respect to factor (G), the examiner notes that applicant has not provided sufficient working examples via the specification commensurate with the scope of the claims. Applicant does not provide any example of how the measuring steps of measuring the deformation amount of the deformation part based on the reference part of the additively manufactured test object separated from the upper surface of the baseplate and where the measurement step measures a height of the deformation part based on a height of the reference part as the deformation amount are performed or implemented. Therefore, the specification fails to disclose any suitable and sufficient working examples that perform the above claimed steps of measuring the deformation amount of the deformation part based on the reference part of the additively manufactured test object separated from the upper surface of the baseplate and measurement step measures a height of the deformation part based on a height of the reference part as the deformation amount.
With respect to factor (H), the examiner notes that the quantity of experimentation needed is high. The applicant provides no examples or explanations as to how the applicant is implementing measuring steps of measuring the deformation amount of the deformation part based on the reference part of the additively manufactured test object separated from the upper surface of the baseplate and measurement step measures a height of the deformation part based on a height of the reference part as the deformation amount. Applicant further does not provide any details of the type of devices of components used for measuring or any detail or structure of any devices or circuitry used to perform the claimed steps of measuring. Thus, one having ordinary skill in the art would have to independently identify and figure out the methods used to implement the measuring steps needed to perform or accomplish the claimed method.
In view of the forgoing, the examiner finds that the unbounded modes of operation are directed to an invention for which no working examples have been provided commensurate with the scope of the claims. Based on the Wands factors (A), (G), and (H), the Examiner concludes that applicant's specification does not enable those skilled in the art to make and use the full scope of the claimed invention without undue experimentation. The examiner notes that the claimed measuring steps encompass any and all structures and/or acts for achieving their results and operation, including those which were not what the applicant had invented and those which could be invented in the future. As such, claims 1, 3, 11-13, and 16 are rejected under 35 U.S.C. 112(a), or 112 (pre-AIA ) first paragraph, for lacking an enabling disclosure commensurate with the scope of the claims.
Note with regard to the above rejections: To be clear, this rejection is a scope of enablement rejection and not a general enablement rejection. There are two types of enablement rejections: (1) a scope of enablement rejection, and (2) a general enablement rejection. The difference between the two enablement rejections was described in In re Cortright, 165 F3d 1353, 49 USPQ2d 1464 (Fed. Cir. 1999): The PTO will make a scope of enablement rejection where the written description enables something within the scope of the claims, but the claims are not limited to that scope. See Manual of Patent Examining Procedures (“M.P.E.P.”) Section 706.03(c), form Para. 7.31.03 (Rev. 3, July 1997). This type of rejection is marked by language stating that the specification does not enable one of ordinary skill to use the invention commensurate with the scope of the claims. On the other hand, if the written description does not enable any subject matter within the scope of the claims, the PTO will make a general enablement rejection, stating that the specification does not teach how to make or use the invention. See M.P.E.P. Section 706.03(c), form Para. 7.31.02. (In re Cortright, 49 USPQ2d at 1466).
With respect to claims 2, 4-10, 14, these claims stand rejected for incorporating the above rejected subject matter of their respective parent claims and therefore stand rejected for the same reasons.
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, 7-10, and 12-15 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.
With respect to claims 3, 7-10, and 12-15, the claim phrases “wherein the measurement step measures a height”, “wherein the additive manufacturing step”, “the deformation amount when the deformation amount exceeds the predetermined value after the measurement step” and “wherein after the adjustment step, the setting step, the manufacturing step, the separation step, the measurement step, and the adjustment step are repeated in this order…” are not clearly understood because the cited steps are not previously described in the claims (the steps are deleted from claims 1 and 12 in the claim amendment filed prior to examination). Therefore the metes and bounds of the claim cannot be determined and the claim is indefinite.
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.
Claim(s) 1-11 and 13-16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fergani et al. EP 3587005.
With respect to claim 1, Fergani teaches a method for measuring a deformation amount of a deformation part of an additively manufactured test object manufactured on an upper surface of a baseplate by performing additive manufacturing using metal powder (abstract), the method comprising: performing the additive manufacturing using the metal powder under a predetermined condition to manufacture the additively manufactured test object (additive manufacturing device 100 that manufactures a metal component 10 manufacturing a calibration device CD, paragraph 1, 63, and 85, figures 1 and 4) including a reference part, a deformation part (the calibration device CD having a reference point RP, deformation parts points P1 and P2), and a coupling part integrating the reference part and the deformation part (interpreted as the part of the calibration device CD which connects the reference point RP and the points P1 and P2, figure 4) arranged in a surface direction of the upper surface of the baseplate on the upper surface of the baseplate such that the reference part, the deformation part, and the coupling part are joined to the upper surface of the baseplate (the component 10 and calibration device CD are built on build platform 1, paragraphs 68-71); separating the additively manufactured test object from the upper surface of the baseplate (the component 10 and the calibration device CD are separated from the build platform 1, paragraph 81, figure 4); and measuring the deformation amount of the deformation part based on the reference part of the additively manufactured test object separated from the upper surface of the baseplate (measurement is taken to measure displacement of the calibration device, paragraphs 81-85).
With respect to claim 2, Fergani teaches wherein the additive manufacturing step manufactures the additively manufactured test object including one or a plurality of the reference parts, one or a plurality of the deformation parts, and one or a plurality of the coupling parts (interpreted as the additive manufacturing device 100 that manufactures a metal component 10 or as well as may manufacture a calibration device CD, paragraph 85).
With respect to claims 3 and 13, Fergani teaches wherein the measurement step measures a height of the deformation part based on a height of the reference part as the deformation amount (displacement is measured and may be in x, y, or z directions therefore a “height” is measured, paragraphs 17 and 90, ).
With respect to claims 4-6, Fergani teaches wherein the height of the reference part is a height at one position of an upper surface of the reference part or an average of heights at a plurality of positions of the upper surface of the reference part or deformation part (interpreted as the displacement that is measured which includes a height at one position of an upper surface of the component 10 or calibration device DC that includes the points P1, P2 and RP, paragraphs 17, 90, figure 6), and wherein the height of the deformation part is a maximum height of an upper surface of the deformation part (interpreted as the maximum height of an upper surface of the component 10 or calibration device CD, figures 4 and 6).
With respect to claims 7, 8, and 14, Fergani wherein the additive manufacturing step manufactures the reference part having a rectangular parallelepiped shape having a ratio of a width to a length of 3/4 or more to 5/4 or less (interpreted as the shape of the calibration device CD, figures 2, 4 and 6).
With respect to claims 9 and 15, Fergani teaches wherein the additive manufacturing step manufactures the deformation part that includes a cantilever part (upper portion of the calibration device CD, figure 4 and 6) extending in the surface direction of the upper surface of the baseplate (build platform 1) and a comb teeth part extending from a bottom surface of the cantilever part to the upper surface of the baseplate (comb portion extending from the upper portion of the calibration device CD, figure 4), and the deformation part has one end joined to the coupling part (deformation parts points P1 and P2, the figure 4 and 6).
With respect to claim 10, Fergani teaches wherein the additive manufacturing step manufactures the cantilever part having a ratio of a length in an extending direction to a width larger than 5/4 (interpreted as the shape of the calibration device CD, figures 2, 4, and 6).
With respect to claims 11 and 16, Fergani teaches measuring the deformation amount of the deformation part of the additively manufactured test object according to claim 1 to measure the deformation amount of the deformation part (measurement is taken to measure displacement of the calibration device, paragraphs 81-85); and determining the optimum condition for the additive manufacturing from the predetermined condition and the deformation amount (interpreted as calculating the stress and distortion of the calibration device from the measured displacement, paragraphs 92-93).
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.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fergani et al. EP 3587005 in view of Jones et al. U.S. Patent Application Publication 2021/0146447.
With respect to claim 12, Fergani teaches a method for measuring a deformation amount of a deformation part of an additively manufactured test object manufactured on an upper surface of a baseplate by performing additive manufacturing using metal powder (abstract), the method comprising; setting a setting condition of the additive manufacturing to a predetermined condition (the geometry of the calibration device CD is set as a base and optimally adapted to resemble a final component, paragraphs 84 and 86); performing the additive manufacturing using the metal powder under a predetermined condition to manufacture the additively manufactured test object (additive manufacturing device 100 that manufactures a metal component 10 manufacturing a calibration device CD, paragraph 1, 63, and 85, figures 1 and 4) including a reference part, a deformation part (the calibration device CD having a reference point RP, deformation parts points P1 and P2), and a coupling part integrating the reference part and the deformation part (interpreted as the part of the calibration device CD which connects the reference point RP and the points P1 and P2, figure 4) arranged in a surface direction of the upper surface of the baseplate on the upper surface of the baseplate such that the reference part, the deformation part, and the coupling part are joined to the upper surface of the baseplate (the component 10 and calibration device CD are built on build platform 1, paragraphs 68-71); separating the additively manufactured test object from the upper surface of the baseplate (the component 10 and the calibration device CD are separated from the build platform 1, paragraph 81, figure 4); and measuring the deformation amount of the deformation part based on the reference part of the additively manufactured test object separated from the upper surface of the baseplate (measurement is taken to measure displacement of the calibration device, paragraphs 81-85).
Fergani fails to teach using at least one kind of design of experiments and regression analysis to obtain a correction condition of the additive manufacturing under which the deformation amount is inferred to be a predetermined value or less from the setting condition and the deformation amount when the deformation amount exceeds the predetermined value after the measurement step; and determining the setting condition as the optimum condition for the additive manufacturing when the deformation amount is the predetermined value or less after the measurement step, wherein after the (the adjustment step, the setting step, the manufacturing step, the separation step, the measurement step, and the adjustment step are repeated in this order until the optimum condition are determined, and at the setting step after the adjustment step, the predetermined condition is set to the correction condition.
Jones teaches a method of monitoring an additive manufacturing apparatus (abstract) where first workpiece of the series of workpieces is built (step 401) and sensor data comprising sensor signals generated during the build are retrieved (step 402), the workpiece is then inspected and evaluated (step 403) to determine if the workpiece meets specified requirements, from the sensor data and identification of the sensor data as golden and non-golden, an acceptable process variation is determined (steps 404-405) for each state of progression of the build for which sensor signals are generated and the acceptable process variation may be determined by any suitable statistical analysis, and the method then comprises building the next workpiece in the series and updating the acceptable process variations based upon the sensor data generated during the build of that workpiece (paragraphs 182-185).
Accordingly, it would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the additive manufacturing method of Fergani with the additional method steps data analysis and correction as taught by Jones in order to provide improved in-process control of an additive manufacturing process (paragraph 7, Jones).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FREDDIE KIRKLAND III whose telephone number is (571)272-2232. The examiner can normally be reached 9am-5pm.
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FREDDIE KIRKLAND III
Primary Examiner
Art Unit 2855
/Freddie Kirkland III/Primary Examiner, Art Unit 2855 3/28/2026