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 .
Response to Amendment
Applicant’s amendment to the claims filed on April 20, 2026, has been entered. Claims 1, 2, 10, 16 – 20 are amended. Claim 14 is cancelled. Claims 1 – 13 and 15 – 20 are pending and under examination. The amendment overcomes the 35 U.S.C. 112(b) rejection to claim 10 previously presented. Therefore, said rejections are hereby withdrawn. Claim 1 is amended to incorporate the subject matter of cancelled claim 14, and further comprising the new limitations “contacting said fabric sheet to a dual cure resin for a time sufficient for said dual cure resin to fully penetrate the fabric sheet,” and “securing the fabric fastening tab of the composite object to a structural component to form the composite product.” The amendment necessitated the new grounds of rejection.
New Grounds of Rejection
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.
Claim(s) 1 – 7, 9 – 10 and 17 – 20 are rejected under 35 U.S.C. 103 as being unpatentable over Jones et al. (US 2015/0246496 A1), in view of Bruening (US 2020/0206977 A1).
Regarding claim 1, Jones et al. teaches a method of making a composite product by additive manufacturing (Abstract, [0049]), comprising the steps of:
providing an additive manufacturing apparatus (e.g., 3D printer device 81; FIGs. 6 – 7, 23) having a build platform (e.g., tray 90), the build platform (90) having a planar face on which the product is formed (FIGs. 14 – 22, 40);
securing a fabric sheet ([0071] “ 3D printer device 81 comprises a tray 90 for receiving upper 20 for printing”, [0075] “Upper 20 is depicted as comprising threads 22, which may be placed in different directions, although threads 22 could be configured in any manner, such as any density or thickness, to form upper 20”) to said planar face to provide a planar fabric surface thereon (FIGs. 14 – 22, 40);
contacting said fabric sheet to a dual cure resin for a time sufficient for said dual cure resin to fully penetrate the fabric sheet ([0075] “printed material 70 may be at least partially absorbed into a surface region 110 of upper 20 after printing and prior to curing.”; [0076] “That is, wetting and adhering/bonding/curing of printed material 70 to upper 20 is desirable and accomplished. After printing, upper 20 may be removed from tray 90 with printed material 70 adhered/bonded/cured to upper 20, and without concern for adhesion of upper 20 or printed material 70 to tray 90”; [0079] “printed material 70 may be allowed to absorb into upper 20 for a predetermined amount of time after deposition and prior to curing with UV light 126. One of ordinary skill in the art will understand that such a predetermined amount of time will vary depending on the material used for printed material 70, as an absorption rate may be affected by the wettability or permeability of upper 20 to the deposited material, the viscosity or temperature of the material during printing, and the pressure or speed at which the material is ejected from printhead 92 onto upper 20.”; see [0110]);
additively manufacturing ([0094]) an intermediate object (e.g., 70, 75 – 78, FIGs. 20 – 21, 34 – 38, 40) on said planar fabric surface (20) in said apparatus by light polymerizing the resin to produce an intermediate object on said build platform (e.g., [0078] “may be cured by UV light 126”; [0109] “One of ordinary skill in the art will understand that UV light 126 may be activated/applied either immediately after deposition of first layer 75, or at any desired time thereafter, depending on the nature of the desired patterns/chemistry/thickness of printed sole material 79.”),
the intermediate object comprising the fabric sheet having a three-dimensional object adhered thereto (e.g., 70, 75 – 78, FIGs. 20 – 21, 34 – 38, 40); and
concurrently with or following said additively manufacturing step, further curing said intermediate object to produce a composite object comprised of said fabric sheet having said three-dimensional object adhered thereto ([0078] “The material may then be solidified, at least partially, or cured, for various reasons, or to achieve desired properties, for example, to enhance durability, adhesion, or bonding of printed material 70 to upper 20.”),
wherein said three-dimensional object has a peripheral edge portion (FIGs. 27, 30) contacting said fabric sheet (upper 20) ([0104] “upper 20 may contain one or more regions of fabric 23, which may or may not contain printed material 70, in order to facilitate forming of upper 20 for printing of sole structure 30.”), trimming said fabric sheet ([0106] “upper 20, including fabric 23, may be formed and shaped after printing onto upper 20”) to form a composite object comprising said three-dimensional object having a fabric fastening tab (fabric 23) connected thereto, and securing the fabric fastening tab of the composite object to a structural component to form the composite product ([0106] “regions of fabric 23 are subsequently folded underneath upper 20 and connected with line stitch 35 to complete formation of upper 20 into a secondary shape.”).
Jones does not disclose, the resin being a dual-cure resin.
Jones et al. [0094], however, discloses that “printing may include printing a resin, acrylic, or ink material onto a fabric, where the material is adhered/bonded to the fabric”… “printed material 70 may be an ink, a resin, an acrylic, a polymer, a thermoplastic material, a thermosetting material, a light-curable material, or combinations thereof. …may also include a filler material to impart a strengthening or aesthetic aspect to printed material 70 in one or more layers printed using slices 310. …the filler material may be a powdered material or dye designed to impart desired color or color patterns or transitions, metallic or plastic particles or shavings, or any other powdered mineral, metal, or plastic. Consistent with an embodiment, printed material 70 printed in step 2510 may thus be a composite material.” [0109] “The material may then be solidified, at least partially, or cured, for various reasons, or to achieve desired properties, for example, to enhance durability, adhesion, or bonding of printed sole material 79 to upper 20”.
Like, Jones et al., Bruening teaches a method for generating a thermoset FRP composite preform, comprising: dispensing, from a print head of a 3D-printer, a dual-cure resin coated fiber comprising a dual-cure resin with an ultra-violet (UV)-curable component and a thermally-curable component; curing, during the dispensing of the dual-cure resin coated fiber, the UV-curable component with a UV light source such that the dual-cure resin coated fiber is partially cured and contacting lengths of the partially-cured dual-cure resin coated fiber bond together; and positioning the print head during the dispensing of the dual-cure resin coated fiber to three-dimensionally print the thermoset FRP composite preform. (See [0002], [0028]).
Therefore, it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modify the resin, a light-curable material in the method of Jones et al. by having selected, as suggested by the prior art, a dual-cure resin coated fiber comprising a dual-cure resin with an ultra-violet (UV)-curable component and a thermally-curable component, since Jones et al. [0094] discloses that the printing material “may also include a filler material to impart a strengthening or aesthetic aspect to printed material in one or more layers printed using slices,” and at [0109] “The material may then be solidified, at least partially, or cured, for various reasons, or to achieve desired properties, for example, to enhance durability, adhesion, or bonding of printed sole material 79 to upper 20”, since it have held to be within the ordinary skill of worker in the art to select a known material on the basis of its suitability for the intended use. One of ordinary skill in the art would have been motivated to pursue the modification for the purpose of, as suggested by Bruening, so that the UV-curable component be cured with a UV light source such that the dual-cure resin coated fiber is partially cured and contacting lengths of the partially-cured dual-cure resin coated fiber bond together a dual-cure resin. See MPEP § 2144.07.
Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination.
Regarding claim 2, Jones/Bruening teaches the method of claim 1, wherein: said dual cure resin comprises a mixture of (i) a light polymerizable liquid first component, and (ii) a second solidifiable component that is different from said first component (Bruening [0002] “a dual-cure resin with an ultra-violet (UV)-curable component and a thermally-curable component”).
Regarding claim 3, Jones/Bruening teaches the method of claim 2, wherein said three-dimensional object comprises an interpenetrating polymer network, semi-interpenetrating polymer network, or sequential interpenetrating polymer network formed from said first component and said second solidifiable component (e.g., see Jones et al. FIGs. 14 – 17, 20 – 21, 35 - 38).
Regarding claim 4, Jones/Bruening teaches the method of claim 1, wherein said fabric sheet comprises a knit fabric, a woven fabric, a non-woven fabric, or a composite thereof (Jones et al. [0050] “a textile, a natural fabric, a synthetic fabric, a knit, a woven material, a nonwoven material, a mesh, a leather, a synthetic leather, a polymer, a rubber, and a foam, or any combination of them”).
Regarding claim 5, Jones/Bruening teaches the method of claim 1, wherein said fabric sheet is comprised of natural fibers, synthetic fibers, or a combination thereof (Jones et al. [0050] “a textile, a natural fabric, a synthetic fabric, a knit, a woven material, a nonwoven material, a mesh, a leather, a synthetic leather, a polymer, a rubber, and a foam, or any combination of them”).
Regarding claim 6, Jones/Bruening teaches the method of claim 1, wherein: said fabric sheet is comprised of threads and/or fibers that define voids; said dual cure resin penetrates into said voids during said additively manufacturing step; and said additively manufactured object comprises an interpenetrating portion formed in said voids by said light polymerizing and said further curing of said dual cure resin (e.g., see Jones et al. FIGs. 14 – 17, 20 – 21, 35 - 38).
Regarding claim 7, Jones/Bruening teaches the method of claim 6, wherein said additively manufacturing step is initiated by contacting said fabric sheet to said dual cure resin for a time sufficient for said dual cure resin to penetrate into said voids before initiating said light polymerizing (e.g., see Jones et al. FIGs. 14 – 17, 20 – 21, 35 - 38 and [0076] “That is, wetting and adhering/bonding/curing of printed material 70 to upper 20 is desirable and accomplished. After printing, upper 20 may be removed from tray 90 with printed material 70 adhered/bonded/cured to upper 20, and without concern for adhesion of upper 20 or printed material 70 to tray 90”; [0079] “printed material 70 may be allowed to absorb into upper 20 for a predetermined amount of time after deposition and prior to curing with UV light 126. One of ordinary skill in the art will understand that such a predetermined amount of time will vary depending on the material used for printed material 70, as an absorption rate may be affected by the wettability or permeability of upper 20 to the deposited material, the viscosity or temperature of the material during printing, and the pressure or speed at which the material is ejected from printhead 92 onto upper 20.”; see [0110]).
Regarding claim 9, Jones/Bruening teaches the method of claim 1, further comprising cleaning said intermediate object after said additively manufacturing step (e.g., Jones et al. [0086] discloses “ after printing onto upper 20, upper 20 may be further formed or manipulated and then placed on holder 91, where it may then be inserted, placed, or mounted in or on tray 90 prior to 3D printing in system 80.”).
Regarding claim 10, Jones/Bruening teaches the method of claim 9, except for explicitly disclosing, wherein said further curing step is carried out after said additively manufacturing step, and optionally but in some embodiments preferably after said cleaning step. However, it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have rearrange the curing step in the method of Jones/Bruening, since the selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results. In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946). See also Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.).
Regarding claim 17, Jones/Bruening teaches a composite object product produced by the method of claim 1 (e.g., see Jones et al. FIGs. 14 – 17, 20 – 21, 35 – 38).
Regarding claim 18, Jones/Bruening teaches the composite product of claim 17, comprising at least one a structural portion (e.g., Jones et al. upper) and a cushioning portion (e.g., Jones et al. sole), wherein the cushioning portion comprising comprises the composite object of claim 17 connected to said at least one structural portion by said fabric sheet or fastening tab (23) (e.g., see Jones et al. FIGs. 14 – 17, 20 – 21, 35 – 38).
Regarding claim 19, Jones/Bruening teaches the composite product of claim 18, wherein said composite product comprises a wearable, body contact, or protective packaging product (e.g., a shoe).
Regarding claim 20, Jones/Bruening teaches the composite product of claim 19, wherein said composite product comprises a footwear, garment, (e.g., a shoe).
Claim(s) 8, 11 – 13 are rejected under 35 U.S.C. 103 as being unpatentable over Jones et al. (US 2015/0246496 A1), in view of Bruening (US 2020/0206977 A1), as applied to claim 1 above, and further in view of Rolland et al. (US 2019/0031911 A1).
Regarding claim 8, Jones/Bruening teaches the method of claim 1, except for, wherein said additively manufacturing step is carried out by bottom-up stereolithography.
Rolland et al. teaches additive manufacturing methods for three dimensional intermediates formed from resins (e.g., bottom-up additive manufacturing), wherein a polymerizable liquid (i.e., the resin), said polymerizable liquid comprising a mixture of (i) a light (typically ultraviolet light) polymerizable liquid first component, and (ii) a second solidifiable component of the dual cure system [0161 – 0164] (see [0150], [0306], [0404], [0411]).
Rolland et al. discloses that the formed object can be, inter alia, [0336] “the 3D formed object may be a shoe sole or insert that generally follows the contour of a foot,” [0403] “foot-ware soles, heels, innersoles and midsoles; bushings, o-rings and gaskets; shock absorbers, funnel/hose assembly, cushions; electronic device housings; shin guards, athletic cups, knee pads, elbow pads, foam liners, padding or inserts, helmets, helmet straps, head gear, shoe cleats, gloves, other wearable or athletic equipment”.
[0675] – [0676] “We find that vertical reciprocation (driving the carrier and build surface away from and then back towards one another), particularly during pauses in irradiation, can serve to enhance the filling of the build region with the polymerizable liquid, apparently by pulling polymerizable liquid into the build region. This is advantageous when larger areas are irradiated or larger parts are fabricated, and filling the central portion of the build region may be rate-limiting to an otherwise rapid fabrication.”
Therefore, it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have substituted the additive manufacturing process of Jones/Bruening with the bottom-up stereolithography additive manufacturing process and apparatus of Rolland et al. capable of vertical reciprocation, as the manufacturing process to carry out the additively manufacturing step for making the composite product of Jones/Bruening, with a reasonable expectations of success, and the result of the substitution would have been predictable, e.g., forming a composite upper for a shoe by additive manufacturing (See MPEP § 2143 (I) (Rationale B)), since Rolland et al. teaches that vertical reciprocation can serve to enhance the filling of the build region with the polymerizable liquid, which is advantageous when larger areas are irradiated or larger parts are fabricated, and filling the central portion of the build region may be rate-limiting to an otherwise rapid fabrication. See MPEP § 2143 (I) (Rationale G).
Regarding claim 11, Jones/Bruening teaches the method of claim 1, except for, wherein said three-dimensional object comprises a lattice.
Rolland et al. [0333] discloses “ all or a portion of the structure of the 3D formed object may correspond to one or more Bravais lattice or unit cell structures, … argyle or diamond patterns, lattice or other pattern or structure.” [0336] “a 3D formed component for a wearable device may substantially conform to the shape of a body party and have corresponding asymmetries, such as athletic wear such as a right or left contoured shin guard or foam padding or insert for use between a hard shin guard or a helmet or other wearable component and the human body.”.
Therefore, it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have choose from a finite number of identified, predictable solutions (e.g., the 3D object comprising a lattice structure), with a reasonable expectation of success, for the purpose of making the composite product conform to a desired shape, since Rolland et al. [0336] teaches that “a 3D formed component for a wearable device may substantially conform to the shape of a body party and have corresponding asymmetries, such as athletic wear such as a right or left contoured shin guard or foam padding or insert for use between a hard shin guard or a helmet or other wearable component and the human body.” See MPEP § 2143 (I) (Rationale E).
Regarding claim 12, Jones/Bruening/Rolland teaches the method of claim 1, wherein said three-dimensional object comprises a cushion (Rolland et al. [0400]).
Regarding claim 13, Jones/Bruening/Rolland teaches the method of claim 1, wherein said three-dimensional object is flexible or elastic (Rolland et al. [0401]).
Claim(s) 15 – 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jones et al. (US 2015/0246496 A1), in view of Bruening (US 2020/0206977 A1), as applied to claim 1 above, and further in view of Brent, Jr. et al. (US 2020/0378067 A1, “Brent”, of record).
Regarding claim 15, Jones/Bruening teaches the method of claim 1, except for, wherein said build platform has a circumferential edge portion surrounding said planar face, and said securing step is carried out by connecting said fabric sheet to said circumferential edge portion.
Brent teaches a method of making a composite product by additive manufacturing ([0011], [0037], [0058]), comprising the steps of providing an additive manufacturing apparatus (100, 200) having a build platform the build platform having a planar face on which the product is formed (see [0115] “a build plate adjacent to or in contact with the second surface of the reinforcing member that stops/reflects the radiation once it travels through the reinforcing member”, and [0116] “Reinforcing member 106 movement can be carried out through utilization of a reinforcing member support assembly such as a build plate (not shown)”); securing a fabric sheet (e.g., “deflection member 2” [0040], and/or “reinforcing member/layer” 106, see [0043]-[0047]) to said planar face to provide a planar fabric surface thereon (e.g., see [0115]-[0118]); additively manufacturing an intermediate object (e.g., “discrete cured resin elements” 10, see FIG. 1) on said planar fabric surface (2, 106) in said apparatus by light polymerizing a dual cure resin (see [0068]-[0069]) to produce an intermediate object on said build platform (see FIG. 1), the intermediate object comprising the fabric sheet having the three-dimensional object adhered thereto (see FIGs. 1 – 3, 3A-3D); and curing said intermediate object to produce a composite object (see [0061], [0068], [0115]-0116], [0126]) comprised of said fabric sheet having said three-dimensional object adhered thereto (e.g., see FIGs. 1 – 3, 3A-3D).
Brent [0297] “Using a Form 1+ SLA from Formlabs in a bottom up configuration (laser also beneath the vat), a reinforcing member was affixed to the build platform via black Gorilla tape. The tape was pressed against a PPS-reinforcing member and wrapped around the edges of the build platform.”
Therefore, it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modify the method of Jones/Bruening by choosing from a finite number of identified, predictable solutions (e.g., affixing by tape), with a reasonable expectation of success, wherein said build platform has a circumferential edge portion surrounding said planar face, and said securing step is carried out by connecting said fabric sheet to said circumferential edge portion, as suggested by the prior art of Brent, for the purpose of e.g., fixing the fabric sheet to the build platform to avoid undesired movement. See MPEP § 2143 (I) (Rationale E).
Regarding claim 16, Jones/Bruening/Brent teaches the method of claim 15, further comprising the step of: further securing said planar fabric surface to said build platform planar face by initiating said additive manufacturing step with a first slice exposure comprising a plurality of tacking exposures surrounding an intermediate object image slice (e.g., Brent’s Abstract discloses that “A further step may be polymerizing the monomer to form a resinous framework comprising protuberance locked-on to the reinforcing member.”, [0067] “A dead zone may extend wholly or partially through a reinforcing member thereby controlling lock-on.”, see Brent [0119]-[0120] “radiation 135 may be repeated to create at least a portion of the lock-on layer or make-up the entire lock-on layer.” – this repeated radiation forming the “at least a portion of the lock-on layer” is given the broadest reasonable interpretation “BRI” as analogous to the claimed “a plurality of tacking exposures”).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 – 13, 15 – 20 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Applicant’s arguments are based on newly amended limitations which have been addressed by the new grounds of rejection above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 EDGAREDMANUEL TROCHE whose telephone number is (571)272-9766. The examiner can normally be reached M-F 7:30-5:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sam Zhao can be reached at 571-270-5343. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/EDGAREDMANUEL TROCHE/Examiner, Art Unit 1744
/JEFFREY M WOLLSCHLAGER/Primary Examiner, Art Unit 1742
