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
In the claim set filed on 20 June 2025, claims 1, 12, and 15 are missing status identifiers. To expedite prosecution, claims 1, 12, and 15 are being treated as “original”. However, appropriate status identifiers should be included in any subsequent claim sets. See MPEP 714(II)(C) regarding claim amendments and status identifiers.
Information Disclosure Statement
The listing of references in the specification is not a proper information disclosure statement. See at least pg. 7, ll. 17-20; pg. 17, ll. 3-8; and pg. 17, ll. 10-12. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because it uses phrases that can be implied (“Embodiments herein relate to”, “In an embodiment”). A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Objections
Claims 12-13 are objected to because of the following informalities:
In line 5 of claim 12, “multiple layers” should be replaced with “the multiple layers” for consistency with line 3.
In line 2 of claim 13, “a Z-direction” should be replaced with “the Z-direction” for consistency with claim 12.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 15 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 15 depends from “any of the preceding claims” and recites that “the average width of the gap between the part regions and support regions is from 6 to 12 pixels”. Claims 4-6 recite that the average width of the gap between the part regions and support regions is from 2 to 8 pixels, 2 to 7 pixels, or 2 to 6 pixels, respectively. As a result, claims 15-4, 15-5, and 15-6 broaden the scopes of claims 4-6, respectively, such that they fail to include all the limitations of claims 4-6.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-3, 8-14, and 17-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2021/067450 (“Batchelder”) (with citations to US 2022/0326645).
Regarding claims 1 and 12, Batchelder discloses a method for printing an article using a selective toner electrophotographic process ([0007]), the method comprising:
successively depositing multiple layers of part material and support material, the layers deposited substantially parallel to a first plane/an X-Y plane ([0011], Fig. 9);
wherein:
a) the multiple layers of part material and support material extend in a direction/a Z-direction perpendicular to the first plane/the X-Y plane ([0011], Fig. 9); and
b) at least some of the layers of part material and support material are separated from each other in the first plane/the X-Y plane to form a gap between part material and support material within a layer ([0011], Fig. 9);
application of heat and pressure to the part material and support material such that a portion of the part material and support material flows into and at least partially fills the gap between the part material and support material ([0011], Fig. 10).
Regarding claim 2, see the rejection of claim 1.
Regarding claims 3 and 13-14, see [0011]: “Typically during this flow into the gap at least a portion of the part material and support material flows upward in a Z direction normal to the X-Y”.
Regarding claims 8 and 17, see [0021]: “In an embodiment, the method further includes reheating and recooling the build surface so as to cause the gap to diminish and the part region surface to become progressively smoother”. See also claims 10, 23, and 34.
Regarding claims 9-11 and 18-20, see [0022]-[0025], which disclose surface roughness values of less than 8, 4, 2, or 1.5 µm, respectively.
Claim Rejections - 35 USC § 103
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.
Claims 4-7 and 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Batchelder.
Regarding claims 4-7 and 15-16, see [0017], [0019], which disclose ranges of 6-12 pixels and 5-25 pixels, respectively. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 7, 9-14, and 18-19 of U.S. Patent No. 11,934,129 (“the patent”).
Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1 and 12 of the patent disclose all the limitations of claims 1 and 12 of the present application.
Regarding claim 2, see claim 2 of the patent.
Regarding claim 3, see claim 3 of the patent.
Regarding claims 4-7 and 15-16, see claims 7, 9, and 18 of the patent.
Regarding claims 8 and 17, see claims 10 and 19 of the patent.
Regarding claims 9-11 and 18-20, see claim 11 of the patent.
Regarding claim 13, see claim 13 of the patent.
Regarding claim 14, see claim 14 of the patent.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Specifically, see Figs. 6 and 7 and [0087] of WO 2021/003166 and Fig. 12 and [0100] of WO 2018/236859.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to John DeRusso whose telephone number is (571)270-1287. The examiner can normally be reached Monday-Friday, 10:00 AM-6:00 PM ET.
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.
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/John J DeRusso/Primary Examiner, Art Unit 1744
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