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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-14, in the reply filed on January 13, 2026 is acknowledged. Claims 15-20 are withdrawn as directed to non-elected subject matter.
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.
Claim 14 is 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.
Claim 14 requires the second metal to at least partially define “the continuous orifice”, however there is insufficient antecedent in claim 14 itself, or parent claim 1, for “a continuous orifice”. 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 1-3 and 7-13 are rejected under 35 U.S.C. 103 as being unpatentable over Manufacturing Tomorrow (https://www.manufacturingtomorrow.com/article/2018/09/how-real-value-of-metal-additive-manufacturing-can-be-leveraged-for-automotive-production/12149, dated September 13, 2018) in view of Morgan et al. (PGPub US 2020/0324463).
Regarding applicants’ claim 1, Manufacturing Tomorrow discloses additive manufacturing using a laser powder bed fusion process to produce a plurality of metal parts in a single build exemplified with a production build of automotive LED heatsinks. The production build comprises an array of stacked heatsinks each comprising an elongate body having an orifice, the parts being sectionable (page 1 and figures at pages 4 & 5).
Manufacturing Tomorrow depicts the array of heatsinks formed on a build plate (page 5) but does not appear to explicitly disclose the material from which the build plate is formed. However, a range of materials such as aluminum, steel, or brass are known to be suitable for build plates in additive manufacturing processes such as laser sintering (paragraph 0005 and 0208). One of ordinary skill in the art before the effective filing date of applicants’ claimed invention would have found it obvious to form the build plate of materials demonstrated in the art to be suitable for use as base plates in additive manufacturing. The selection of known materials results in material combinations where the base plate (substrate) comprises a metal different from the metal of the array of parts (3D printed feature).
Regarding applicants’ claim 2, where the base plate is selected from known materials such as aluminum and steel (Morgan et al, paragraph 0208) the second metal would comprise at least one of steel, titanium, or aluminum as claimed.
Regarding applicants’ claim 3, the requirement that the substrate is 3D printed is a product-by-process limitation. 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. Further, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product (See MPEP 2113). Therefore, absent evidence of criticality regarding the presently claimed process, and given that the base plate serves as a substrate for the subsequently formed array of parts, the base plate satisfies the compositional and structural requirements imposed by the claimed process.
Regarding applicants’ claim 7, the orifice extents vertically as seen in the figure of page 5, the vertical direction being an axial direction and extending the length of the stacked parts.
Regarding applicants’ claim 8, the body of the heatsink is not symmetrical (figure, page 5).
Regarding applicants claims 9-11, a perforated section is formed between parts to allow separation of the finished parts (figures of pages 4 and 5). Each of the parts are substantially identical, and the perforated section where the parts are separated is a section line. A perforation is a physical variation.
Regarding applicants’ claim 12, the portion of the heatsink configured to accept the LED includes a left and right-side wall of a depression in the sidewall (figure at page 4), each depression side wall may be considered an internal feature and thus each heatsink comprises a plurality of internal features disposed on a sidewall at least partially defining the orifice, the internal features being integral with the sidewall.
Regarding applicants’ claim 13, the orifice has in depression such as to accommodate the LED component (electronic device), the flat portion being a back wall and the sides of the depression being a side wall that extends from the periphery of the back wall (figure of page 4).
Allowable Subject Matter
Claim 4 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Manufacturing Tomorrow discloses additive manufacturing using a laser powder bed fusion process to produce a plurality of metal parts as discussed above with respect to claim 1 but does not disclose the array of parts to at least partially surround the periphery of the build plate. Further there is no motivation such that one of ordinary skill in the art before the effective filing of applicants’ claimed invention would have found it obvious to modify the build disclosed by Manufacturing tomorrow to at least partially surround the periphery of the build plate.
Claim 5 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Manufacturing Tomorrow discloses additive manufacturing using a laser powder bed fusion process to produce a plurality of metal parts as discussed above with respect to claim 1 but does not disclose a substrate that defines a first portion of an exterior surface and an interface surface, and a printed feature that is joined to the substrate at the interface surface and defining a second portion of the exterior surface opposite the first portion. Further there is no motivation such that one of ordinary skill in the art before the effective filing of applicants’ claimed invention would have found it obvious to modify the build disclosed by Manufacturing tomorrow to form a substrate that defines a first portion of an exterior surface and an interface surface, and a printed feature that is joined to the substrate at the interface surface and defining a second portion of the exterior surface opposite the first portion.
Claim 6 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Manufacturing Tomorrow discloses additive manufacturing using a laser powder bed fusion process to produce a plurality of metal parts as discussed above with respect to claim 1 but does not disclose a substrate at least partially defines an internal volume of an electronic device housing where the printed feature at least partially defines an exterior surface of the electronic device housing. Further there is no motivation such that one of ordinary skill in the art before the effective filing of applicants’ claimed invention would have found it obvious to modify the build disclosed by Manufacturing tomorrow to configure the build plate to at least partially define an internal volume of an electronic device housing where the printed feature at least partially defines an exterior surface of the electronic device housing.
Claim 14 is rejected under 35 U.S.C. 112(b) and is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten to overcome the rejections under 35 U.S.C. 112 and in independent form including all of the limitations of the base claim and any intervening claims. Manufacturing Tomorrow discloses additive manufacturing using a laser powder bed fusion process to produce a plurality of metal parts as discussed above with respect to claim 1 but does not disclose the first metal to at least partially define an exterior surface of the elongated body and the second metal to at least partially define the continuous orifice. Further there is no motivation such that one of ordinary skill in the art before the effective filing of applicants’ claimed invention would have found it obvious to modify the build disclosed by Manufacturing tomorrow to configure the first metal to at least partially define an exterior surface of the elongated body and the second metal to at least partially define the continuous orifice.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure includes “Additive takes center stage” (The Engineer, https://www.theengineer.co.uk/ content/opinion/additive-takes-centre-stage/, July 2017) which disclose a dense build technique.
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 on (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
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