DETAILED ACTION
Examiner’s Note
This office action is in response to applicants’ amendments to the claims and remarks filed August 3, 2026. Claims 1-20 are pending with claims 15-20 remaining withdrawn as directed to non-elected subject matter.
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.
Claims 2-4 depend from claim 0 and therefore are not “contain a reference to a claim previously set forth”. Claims 2-4 will be treated as depending from claim 1. Correction is required.
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.
Claim 1-5 and 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over Berglund et al. (PGPub US 2017/0021423).
Regarding applicants claim 1, Berglund et al. disclose a metallic component which includes a core body #2 covered by a buffer layer #3 where the buffer layer covers the upper and side surfaces, and at least part of the under surface, of the core body (thereby surrounding the core body, paragraph 0032 and figure 4). One or more of the components may be formed by additively manufacturing such as 3D printing (paragraph 0040). The core body is formed from a metal such as alloyed steel (paragraph 0036) and the buffered layer formed of low carbon steel (paragraph 0037) which is a second different metal.
One of ordinary skill in the art before the effective filing date of applicants’ claimed invention would have found it obvious to select from the disclosed manufacturing processes in the manufacturing of the disclosed parts, including the manufacture of the core body and buffer layer by 3D printing.
The requirement of a sectioned surface formed by sectioning from a metallic 3D printed elongated body is a product-by-process requirement. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior art product was made by a different process. The burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product (MPEP 2113).
Applicants’ claims do not require that the sectioned surface have specific physiological characteristics or that the sectioning occurs in a specific manner necessitating specific structural features on the sectioned surface. Given that the component of Berglund et al. is additively manufactured and has a surface (such as the lower surface of the core body), the component possesses a surface that satisfies the requirements imposed by the process of being sectioned from a metallic 3D printed elongated body.
Regarding applicants’ claim 2, the core body and buffer layer may be steel (paragraphs 0036-0037).
Regarding applicants’ claim 3, the core body may be 3D printed (paragraph 0040).
Regarding applicants’ claim 4, Berglund et al. disclose a metallic component which includes core body #2 covered by a buffer layer #3 where the buffer layer covers the upper surface, side surface, and at least part of the under surface of the core body thereby surrounding the core body (paragraph 0032 and figure 4). The core body and the buffer layer may be additively manufactured by a technique such as 3D printing (paragraph 0040).
Regarding applicants claim 5, the core body has an exterior surface that defines a first portion of an exterior surface and also an interface surface where the buffer layer interfaces with the core body. The buffer layer being 3D printed is a printed feature that joins to the core body (substrate) at the interface and defines a second portion of the exterior surface opposite the first surface (the exterior surface of the core body and the surface of the buffer layer are opposite to one another at the interface between them).
Regarding applicants’ claims 8-11, the elongated body is part of the product-by process requirement as discussed above with respect to claim 1 but is not required to be present as part of the claimed article. Therefore the symmetry of the axis of the elongate body or the location or arrangement of the sectionable portions do not necessitate specific geometrical configurations in the claimed article.
Claim 1-5 and 8-11 are rejected under 35 U.S.C. 103 as being unpatentable over Ott et al. (PGPub US 2016/0318104).
Regarding applicants’ claim 1, Ott et al. disclose a cylindrical metal component including an outer rim made from a first alloy and an inner hub made from a second alloy where the component may be formed by methods such as sintering and layer-by-layer additive manufacturing (paragraphs 0034 and 0037). The outer rim surrounds the inner hub section and therefore the component comprise a 3D printed substrate of a first metal (inner hub) surrounded by a different metal (outer rim).
One of ordinary skill in the art before the effective filing date of applicants’ claimed invention would have found it obvious to form the component by selecting from the disclosed processes including layer-by-layer additive manufacturing (3D printing).
The requirement of a sectioned surface formed by sectioning from a metallic 3D printed elongated body is a product-by-process requirement. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior art product was made by a different process. The burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product (MPEP 2113).
Applicants’ claims do not require that the sectioned surface have specific physiological characteristics or that the sectioning occur in a specific manner necessitating specific structural features on the sections surface. Given that the component of Ott et al. is additively manufactured and has a surface (such as the lower or upper surfaces of the cylinder), the component possesses a surface that satisfies the requirements by the process of being sectioned from a metallic 3D printed elongated body.
Regarding applicants’ claim 2, Ott et al. disclose that the component may be formed from metals including iron based metals. The examiner takes official notice that steel is a well known iron based metal alloy. One of ordinary skill in the art before the effective filing date of applicants’ claimed invention would have found it obvious to select an iron based metal alloy as the metal of the component of Ott et al. including steel which is a well known iron based metal which can be implemented with predictable results.
Regarding applicants’ claim 3, the component may be formed by methods such as sintering and layer-by-layer additive manufacturing (paragraphs 0034 and 0037), considered to be 3D printing.
Regarding applicants’ claim 4, The outer rim surrounds the inner hub section and therefore the component comprises a 3D printed substrate of a first metal (inner hub) surrounded by a different metal (outer rim) (paragraph 0034).
Regarding applicants’ claim 5, the inner hub has an exterior surface that defines a first portion of an exterior surface and also an interface surface where the outer rim interfaces with the core body. The outer rim being additively manufactured in a layer-by-layer process is a printed feature that joins to the inner hub (substrate) at the interface, and defines a second portion of the exterior surface opposite the first surface (the exterior surface of the inner hub and the surface of the outer rim are opposite to one another at the interface between them).
Regarding applicants’ claims 8-11, the elongated body is part of the product-by process requirement as discussed above with respect to claim 1 but is not required to be present as part of the claimed article. Therefore the symmetry of the axis of the elongate body or the location or arrangement of the sectionable portions do not necessitate specific geometrical configurations in the claimed article.
Allowable Subject Matter
Regarding applicants’ claims 6, 7, 12-14, neither Ott et al. nor Berglund et al. disclose components with an orifice or are suitable for electronic device housings. Further there is insufficient motivation such that one of ordinary skill in the art before the effective filing date of applicants’ claimed invention would have found it obvious to modify the components of Ott et al. or Berglund et al. to include an orifice or be configured as a device housing as claimed.
Response to Arguments/Amendments
Applicants’ amendments to the claims and supporting arguments filed August 3, 2026 have overcome the rejections under 35 U.S.C. 112(b) and 35 U.S.C. 103, however applicants’ amendments to the claims have necessitated new grounds of rejection under 35 U.S.C. 112(d) and following further search and consideration, have necessitated new grounds of rejection under 35 U.S.C. 103.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure includes Jacobs et al. (PGPub US 2018/0335766) who disclose manufacturing of more than one discrete objects from a body created by additive manufacturing.
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 ADAM C KRUPICKA whose telephone number is (571)270-7086. The examiner can normally be reached Monday-Friday 8-5pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at (571)272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Adam Krupicka/ Primary Examiner, Art Unit 1784
