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 . 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.
Response to Amendment
The Amendment filed 04/23/2026 has been entered. Claims 25-56 remain pending in the application, with the claims 36-56 remaining withdrawn as being drawn to a non-elected invention. Claims 25-35 remain rejected.
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 25-35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 12115583B2. Although the claims at issue are not identical, they are not patentably distinct from each other because while claim 1 of U.S Patent 12115583B2 is a claim that is narrower in scope, with limitations of a fast curing adhesive and a mechanical feature, as well as a “connection by a wall” rather than a surface, instant claim 25 is not patentably distinct from claim 1 of U.S Patent 12115583B2, as claim 1 of U.S Patent 12115583B2 maps onto the all the claimed features of the instant claim 25, such as a “first portion configured to connect to a second part via a first connection, wherein the first connection comprises a second adhesive; and a feature co-printed with the first portion and configured to provide a second connection between the first portion and second part” and the limitations as pertaining to the first portion, first connection, and second part, as well as a first adhesive. Thus, claim 1 of U.S Patent 12115583B2 is narrower in scope than instant claim 25, and meets the broader limitations of instant claim 25.
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.
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) 25-30, 32-35 is/are rejected under 35 U.S.C. 103 as being unpatentable over Twelves (U.S PG Pub 20180290423A1), Woleader (U.S PG Pub 20140241790A1), and in view of Levine (U.S PG Pub 2018022019A1).
Regarding claims 25-27, Twelves, is drawn to the art of bonding polymer components that are additively manufactured [0005] wherein the components have mating features designed to fit into each other and further an adhesive to form a mechanical lock [0005-0006]. Twelves discloses a first component (32) with a first mechanical feature (36) that extends beyond and overlaps a second portion (38) of the second part (34) such that a first side not facing in the first direction contacts a first adhesive prior to the first portion being fixed to the second part via the first connection [0020 & 0022-0027]. Twelves also discloses the first connection being a tongue and groove connection (Figures 1a-1b, 4c, 5c). Twelves also discloses a mechanical feature comprising bars and wherein the bar is arranged within an opening and further wherein the adhesive flows between the bars (see annotated figure 3C below). Twelves has not explicitly disclosed the second connection being separated from the first connection by a surface. Twelves also has not disclosed the first and second adhesive being used wherein the first adhesive constitutes a second connection and the second adhesive constitutes a first connection. The above limitations are known, however, from Woleader and Levine, respectively.
Woleader, drawn also to the art of joining two parts using an adhesive (Abstract), discloses a wall (212) between the first (190) and second part (196) [0051 & 0054] (Figures 2 & 10). Woleader discloses that the wall (212) divides the bondline length (306) [0051] i.e. provides a division between the connection between the first and second part.
It would have been obvious to an ordinarily skilled artisan to have modified the connection of Twelves, with the surface providing a division between connections, as disclosed by Woleader, to arrive at the instant invention, in order to be able to control the flow of adhesive within the bondline during the bonding process [0005].
Regarding the first connection comprising a second adhesive and the second connection comprising a first adhesive, the use of an adhesive in a secondary connection, is known in the art for a secondary connection to comprise an adhesive as disclosed by Levine. Levine is drawn also to the art of connecting a first and second substructure (Abstract), wherein the first (12) and second substructures (40) can be AM manufactured parts (Figure 6; [0017 & 0022]). Levine discloses a primary connection comprising a first adhesive (first adhesive of Levine 42 – interpreted in this instance as the second adhesive of instant application) and a secondary connection comprising a second adhesive (44) (second adhesive of Levine interpreted as the first adhesive of instant application), used to join or connect the two substructures (Figures 4 & 5). Levine further discloses that the two adhesives can be different [0022], and further discloses that the adhesives can be hot-melt (i.e. heat curable) or UV curing adhesives [0022-0023 & 0018]. Thus, Levine has disclosed a secondary connection comprising a first adhesive (second adhesive 44 of Levine) and a primary connection comprising an adhesive (first adhesive 42 of Levine), and has further disclosed that these adhesives can be different, and thus having different rates of curing (i.e. one adhesive being faster curing than the other). Thus, Levine discloses that two different adhesives (two different connections comprising adhesives) can be used to connect a first and second part. Further, Levine has disclosed that such a connection method may decrease overall time and cost to attach substructures (Abstract) and further is one which allows for rapid or convenient assembly of parts [0005].
Levine has disclosed adhesives that are hot-melt materials, as Levine has disclosed the adhesives can be heat curing [0023 & 0018], and has disclosed these adhesives being used in a secondary connection as first adhesive (second adhesive 44 of Levine), and further that the adhesive is applied between the first and second part (figures 4 & 5 of Levine). Levine has already disclosed the secondary connection comprising a first adhesive (second adhesive 44 of Levine) and the adhesive being applied between the first and second part and being a UV curable adhesive [figures 4 & 5; [0023 & 0018]).
It would have been obvious to an ordinarily skilled artisan to have modified the structure of Twelves, with the secondary connection comprising a hot-melt and/or UV curing adhesive (second adhesive 44 of Levine), as disclosed by Levine, to arrive at the instant invention, in order to obtain a more rapid or convenient assembly of parts [0005], and to decrease overall time and cost to attach substructures (Abstract).
Regarding the limitations of the second connection being separated from the first connection by a surface which also separates the first and second adhesives, the combination of Twelves, Woleader, and Levine, discloses such a configuration, as Woleader discloses a separation by a surface/wall between a first and second connection and part, and Levine discloses the use of two adhesives, thus as modified, it would provide a configuration wherein two adhesives are used and are separated by a wall/surface.
Regarding claims 28-30, Twelves discloses a first component with a first mechanical feature that extends beyond and overlaps a second portion of the second part such that a first side not facing in the first direction contacts a first adhesive prior to the first portion being fixed to the second part via the first connection [0020 & 0022-0027]. Twelves also discloses the first connection being a tongue and groove connection (Figures 1a-1b, 4c, 5c). The tongue and groove connection of Twelves is interpreted as the first feature (36) configured to mate with a second feature (38) of the second part (34).
Regarding claim 32, Twelves suggests implicitly that the first feature is removable, as Twelves discloses that the undercut features (i.e. first and second features) can be grown directly on the polymer components (i.e. first and second part) [0018-0019], while also mentioning that the undercut features can be added to the polymer components [0018], and wherein the components are manufactured by normal additive manufacturing processes and wherein the undercut features are manufactured by 3D printing or additive manufacturing [0022].
Thus, Twelves has disclosed implicitly that the features can be removable, as being able to be grown directly onto the polymer components and also added to the polymer components, would suggest removability, in the instance where the undercut features are added to the polymer components. Regardless, the courts have held that making a part separable i.e. removable, is a matter of obviousness to an ordinarily skilled artisan, in the absence of new or unexpected results (MPEP 2144.04 V(C)).
Regarding claims 33-35, Twelves also discloses a mechanical feature comprising bars and wherein the bar is arranged within an opening and further wherein the adhesive flows between the bars (see annotated figure 3C below).
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Claim(s) 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Twelves (U.S PG Pub 20180290423A1), Woleader (U.S PG Pub 20140241790A1), Levine (U.S PG Pub 2018022019A1), and further in view of Syvret (U.S PG Pub 20140212637A1).
Regarding claim 31, Twelves and Levine have not explicitly disclosed a second adhesive being used, wherein the first adhesive is faster curing than the second adhesive.
Syvret, drawn also to the art of forming a bonded structure (Abstract), discloses bonding two substrates (14 & 16) (Figures 2a-2c), with a fast curing adhesive (18) and a slow curing adhesive (12) in between the substrates [0034]. Syvret further discloses that applying a fast curing adhesive and a slow curing adhesive allows the bonded structure to be moved quickly to a next station in the production line [0007]. In short, the application of a fast curing adhesive and a slow curing adhesive allows the bonded structure to be accurately and quickly bonded, which allows the structure to be moved to a next station in a production line, without the slow-curing adhesive (majority of the applied adhesive) fully curing [0007]. Syvret further discloses (Figure 3), a primary connection, which is the slow acting adhesive (adhesive 30), and a retention element comprising a secondary connection (mechanical fasteners and fast curing adhesive) which is distinct from the primary connection, and comprises a first adhesive (the fast curing adhesive) (Figure 3) [0035-0037].
It would have been obvious to an ordinarily skilled artisan to have modified the structure of Twelves and Levine, with the use of a first and second adhesive, wherein the first adhesive is faster curing than the second adhesive, in order to be able to achieve accurate and fast bonding and to be able to move the bonded structure quickly to a next station in the production, without the majority of the adhesive (i.e. second adhesive) being fully cured [0007].
Response to Arguments
Applicant's arguments filed 04/23/2026 have been fully considered but they are not persuasive.
Applicant argues that the newly amended claims are distinguished so as to overcome the nonstatutory double patenting rejection as set forth in Non-Final Rejection mailed on 11/24/2025.
The examiner disagrees. The newly added limitations do not distinguish the instant claim from claim 1 of U.S Patent 12115583B2, because the addition of the limitation of the first and second adhesive being separated by a surface is merely the same as the first and second connection being separated by a wall, since the first and second connection comprise the first and second adhesives.
Applicant argues that Twelves as modified by Woleader and Levine do not disclose the instant claim 25, especially as pertaining to the newly added limitations of the second connection being separated from the first connection such that the first adhesive is separated from the second adhesive by a surface. Applicant argues that because Twelves and Woleader both do not disclose multiple adhesive and further because Levine does not disclose the adhesives being separated, that the combination of the three cannot disclose the instant limitations as claimed.
The examiner disagrees. The instant claim is reciting a first portion that is connected to a second part via a first connection (second adhesive) and a feature that is co-printed with the first portion that provides a second connection (first adhesive) between a first and second part, and wherein a surface/wall separates the first and second connections. As an initial note, the second part as recited in the instant claim is merely an intended use or an article or material worked upon by the product (i.e. first portion), thus what is actually given patentable weight is the first portion and the features of the first portion, as the claim is drawn to an AM part and not a connection. Further, Twelves discloses a first and second connection, with one of the connections being an adhesive, and then Woleader discloses a separation or wall between the first and second connection and connecting parts, building upon which Levine is relied to disclose the teaching of two adhesives being used to connect workpieces and the related advantages of doing so (see claim 25 rejection above). Thus, when the rejection is looked at as a whole, as a combination of Twelves, Woleader, and Levine, it is obvious to an ordinarily skilled artisan to arrive at the instant invention, using the teachings of the above references by modifying Twelves, since both Woleader and Levine provide explicit advantages to doing so. Thus, as is instantly claimed, Twelves as modified by Woleader discloses a first part connected to a second part with an adhesive, wherein a surface or wall separates the first and second connection, and further in view of Levine, teaches two different adhesives being used a first and second connection.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In response to applicant's argument that Levine does disclose the adhesive being separated, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: U.S PG Pub 20200340290A1 – drawn also to an adhesive connection between two parts.
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 ABHISHEK A PATWARDHAN whose telephone number is (571)272-8431. The examiner can normally be reached Monday to Friday 7:30am-5pm.
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, Michael Orlando can be reached at (571)270-5038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ABHISHEK A PATWARDHAN/Examiner, Art Unit 1746
/MICHAEL N ORLANDO/Supervisory Patent Examiner, Art Unit 1746
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