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
The election/restriction requirement is withdrawn in light of the arguments.
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 1-20 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.
Claim 1 recites the phrase "such that" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Claims 2-12 are rejected for depending on claim 1.
Regarding claim 13, the phrase "preferentially" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Claims 14-20 are rejected for depending on claim 13 and including all the limitations of claim 13.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-8 and 11-12 is/are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Ide (US 2016/0083300A1).
Regarding claim 1, Ide et al discloses method of manufacturing a ceramic foundry filter for metal filtration [abstract], the method comprising: carbonizing (ST7) and pyrolyzing the 3D printed ceramic porous structure (ST8) as to introduce and form a network of carbon bonds to the 3D printed ceramic porous structure, in the manufacturing of the ceramic foundry filter for metal filtration [0060, 0083-0083],
wherein the carbonizing is effected by having a carbon precursor added to a ceramic printing medium [0007, 0013] used in 3D printing the 3D printed ceramic porous structure (figure 2),
prior to the 3D printed ceramic porous structure being 3D printed, such that the 3D printed ceramic porous structure is already embedded with carbon precursor material, said precursor material comprising at least one of a liquid resin [0072], powdered carbon [0108], a ceramic binder [0022, 0034], a ceramic material [0008, 0022], an antioxidant [0027], a rheological additive [0039], and a carbon slurry [0142]; and wherein the 3D printing process used is lithographic ceramic 3D printing, or 3D printing based on extrusion deposition, powder bed, ceramic jet printing, or fusion deposition modelling (selective laser printing is a subset of powder bed printing).
Regarding claim 2, Ide et al teaches wherein the precursor material is powdered carbon and comprises graphite [0036].
Regarding claim 3, Ide et al teaches wherein the method includes carbonizing and pyrolyzing the 3d printed ceramic porous structure without further impregnating and/or coating the 3d printed ceramic porous structure with a carbon precursor [0042; figure 1].
Regarding claim 4, Ide eat al teaches wherein the liquid resin is a phenolic liquid resin [0072].
Regarding claim 5, Ide et al teaches wherein the method includes carbonizing and pyrolyzing the 3d printed ceramic porous structure without further impregnating and/or coating the 3d printed ceramic porous structure with a carbon precursor [0042; figure 1].
Regarding claim 6, Ide eat al teaches wherein the liquid resin is a phenolic liquid resin [0072].
Regarding claim 7, Ide et al teaches wherein the ceramic printing medium includes a liquid resin0072], a ceramic material [0008, 0022], and a powdered carbon [0036] or carbon slurry [0142].
Regarding claim 8, Ide et al teaches wherein the pyrolyzing follows the 3D printing (see figure 1).
Regarding claim 11, Ide et al disclose wherein the 3D printed ceramic porous structure is printed so as to be porous [0007].
Regarding claim 12, Ide et al discloses wherein the 3D printed ceramic porous structure is printed to include a plurality of pores and/or pathways sized and dimensioned to enable post-pyrolysis filtration of molten metal therethrough [0007].
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.
Claim(s) 9-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ide (US 2016/0083300A1).
Regarding claim 9, Ide et al does not explicitly teach wherein the 3d printed ceramic porous structure is pyrolyzable at 900 C. However, Ide et al teaches “The infiltration of silicon and the reaction sintering of the carbon contained in the fired body with silicon contained in the fired body, are carried out at or above a melting point of silicon” [0096]. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have the 3d printed ceramic porous structure is pyrolyzable at 900 C since it is conventionally known to fire above the melting point. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have determined the optimum values of the relevant process parameters through routine experimentation in the absence of a showing of criticality. MPEP 2144.05.
Regarding claim 10, Ide et al does not explicitly disclose the ceramic porous structure, post pyrolyzing, is able to withstand temperature of 2700 C. However, composite structure is similar to the applicant’s structure and thus, has similar properties. Therefore, the claimed physical properties implicitly would have been achieved by the composite structure as claimed and rendered obvious (MPEP 2112.01(I,II)). If it is the applicant’s position that this would not be the case: (1) evidence would need to be presented to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is
no teaching as to how to obtain the claimed properties with only the claimed ingredients, amounts, process steps, and process conditions.
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.
Claim 13-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12071379B2 in view of Ide (US 2016/0083300A1). Both claim 13 of the instant application and claim 1 of ‘379 teaches a method of manufacturing a ceramic foundry filter for metal filtration, the method comprising: providing a 3D printed ceramic porous structure comprising a carbon precursor; impregnating the 3D printed ceramic porous structure with a first carbon precursor; coating the entirety of the exterior of the impregnated 3D printed ceramic porous structure with a second carbon precursor; and carbonizing and pyrolyzing the impregnated and coated 3D printed ceramic porous structure so as to introduce and form a network of carbon bonds internally and externally of the 3D printed ceramic porous structure in the manufacturing of the ceramic foundry filter for metal filtration, wherein the 3D printed ceramic porous structure is formed to have an interconnected network of a plurality of pores and/or pathways suitably sized and dimensioned for enabling, after the carbonizing and pyrolyzing, filtration of molten metal therethrough, wherein the first carbon precursor has a higher viscosity than the second precursor, wherein the second precursor comprises particles of a differing particle size to that of the first carbon precursor, and a different binder medium, ceramic material, antioxidant, and/or rheological additive, wherein the coating on the exterior of the impregnated 3D printed ceramic porous structure inhibits oxidation of the network of carbon bonds beneath the coating, and wherein the first carbon precursor preferentially impregnates the 3D printed porous structure relative to the second precursor, and so that the second precursor provides an external boundary layer with refractory properties. The instant application further recites the limitation: and wherein the 3D printing process used is one of lithographic ceramic 3D printing, or 3D printing based on extrusion deposition, powder bed, ceramic jet printing, or fusion deposition modelling. Analogous art, Ide et al, discloses selective laser printing used in printing process (see abstract), which is a subset of powder bed printing. Therefore, the instant application, claims 13-20, fall within an obviousness type non-statutory double patenting.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FARAH N TAUFIQ whose telephone number is (571)272-6765. The examiner can normally be reached Monday-Friday: 8:00 am-4:30 pm.
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/FARAH TAUFIQ/ Primary Examiner, Art Unit 1754
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