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 1-13) in the reply filed on 06/12/2026 is acknowledged.
Claims 14-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group II, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 06/12/2026.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: numerals 250 and 292 in fig. 4. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 11 is objected to because of the following informalities:
Claim 11 should be corrected to “at least a part of the contact surface” (line 2), “in [[the]] a range from” (lines 5-6).
Appropriate correction is required.
Claim Interpretation
Claims 1-13 recite the claimed limitations with numeral symbols presented in Specification. “Though understanding the claim language may be aided by explanations contained in the written description, it is important not to import into claim limitations that are not part of the claim. For example, a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment.” See MPEP 2111.01 II. For the purpose of examination, the numeral symbols would NOT be considered to import into claim limitations that are not part of the claim for further clarification of the recited limitations.
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 5 and 11 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 5, which is dependent not from claim 4 but only from claim 1, recites the limitations “the piston” (line 2) and “the cylinder” (line 2). There are insufficient antecedent bases for these limitations in the claim. For the purpose of examination, claim 5 would be interpreted as being dependent from claim 4, or the limitations would be interpreted as “a piston” and “a cylinder,” respectively.
Claim 11 recites the limitation “a low value mean surface roughness value Ra” in lines 2-3. The underlined term “low value” is a relative term which renders the claim indefinite. The term “low value” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For the purpose of examination, the limitation would be interpreted as “a
Appropriate correction or clarification is required.
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.
Examiner wishes to point out to applicant that claims are directed towards an apparatus and as such will be examined under such conditions.
The limitations which are directed to articles or products worked upon by the claimed apparatus are only given patentable weight to the extent which effects the structure of the claimed invention. Please see MPEP 2115 and In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935) for further details.
The limitations which are directed to intended uses or capabilities of the claimed apparatus are only given patentable weight to the extent which effects the structure of the claimed invention. Please see MPEP 2114, Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) and Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) for further details.
Claims 1-4, 6-10, and 12-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hardt (US 20130337102 A1).
Regarding claim 1, Hardt teaches a device for surface treatment of 3D printed parts for bioprocessing equipment (fig. 1, claim 1, [0002]: an embossing press; the preamble limitation of “for surface treatment of 3D printed parts for bioprocessing equipment” is directed to intended use or a capability of the device and does not effect the structure of the claimed invention; see MPEP 2114), comprising:
a resurfacing tool (platen 18) comprising a contact surface, wherein the contact surface comprises a negative shape of a surface to be treated of a 3D printed part (figs. 1-2; [0018-0019]: at least a lower platen 18, comprising an embossing tool 36 having a corresponding shape (i.e., an example of a negative shape of a surface to be treated); of note, the limitation of “a 3D printed part” is directed to an articles worked upon by the claimed apparatus and does not effect the structure of the claimed invention; see MPEP 2115);
a heating device operable to heat the resurfacing tool to a temperature above the melting temperature of a material of the 3D printed part (figs. 1-2; [0019-0022]: heating block 34; the limitation “to heat … to a temperature above the melting temperature of a material of the 3D printed part” is directed to intended use or a capability of the heating block 34; see MPEP 2114);
an actuator operable to move the resurfacing tool such that the resurfacing tool can be releasably pressed against the surface to be treated to melt said surface to form a molten layer of said material at said surface (fig. 1; [0018, 0023, 0025]: a lower portion of the lower platen 18, comprising a pneumatic actuator 28; the limitation “such that the resurfacing tool can be releasably pressed against the surface to be treated to melt said surface to form a molten layer of said material at said surface” is directed to intended use of a capability of the actuator 28; see MPEP 2114); and
a cooling device operable to cool the resurfacing tool to thereby re-solidify the molten layer of said material at said surface to form a treated surface (figs. 1, 2; [0019-0022]: cooling block 32; the limitation “to cool … to thereby re-solidify the molten layer of said material at said surface to form a treated surface” is directed to intended use or a capability of the cooling block 32; see MPEP 2114).
Regarding claim 2, Hardt teaches the device of claim 1, wherein the heating device comprises: an external heated metal block configured to be releasably pressed against the resurfacing tool; or a heating element integral to the resurfacing tool (figs. 1-2; [0019-0022]: heating block 34).
Regarding claim 3, Hardt teaches the device of claim 1, wherein the actuator is operable to move the resurfacing tool substantially linearly (fig. 1; [0018, 0023-0025]: a lower portion of the lower platen 18, comprising a pneumatic actuator 28, and the lower platen 18 translates vertically beneath the upper platen 14).
Regarding claim 4, Hardt teaches the device of claim 1, wherein the actuator comprises a cylinder (pneumatic cylinder) comprising a piston, wherein the piston is connected to the resurfacing tool (fig. 1; [0024-0025]: a lower portion of the lower platen 18, comprising a pneumatic actuator 28, e.g., a pneumatic cylinder1).
Regarding claim 6, Hardt teaches the device of claim 1, further comprising:
a plurality of sensors configured to measure at least one process parameter of a surface treatment method being implemented in the device (fig. 1; [0023, 0026-0029]: sensor system such as a linear variable differential transformer (LVDT) 22, a load cell 26 measuring a force, a temperature sensor measuring a temperature of each platen); and a control unit configured to control the surface treatment method based on one or more measurements taken by one or more of the plurality of sensors (fig. 4; [0026-0029]; claim 1: a closed loop control system employing feedback and feed forward control loops to control platen temperature and embossing force).
Regarding claim 7, Hardt teaches the device of claim 6, wherein the plurality of sensors comprises one or more of: a position sensor ([0027]: LVDT 22), a temperature sensor ([0026]: thermocouple), a pressure sensor ([0028]: load cell 26), a depth sensor and a solidification sensor.
Regarding claim 8, Hardt teaches the device of claim 1, wherein the cooling device comprises a coolant fluid source (liquid) connected to the resurfacing tool (figs. 1, 2; [0019]: cooling block 32 provided by liquid cooling; [0020]: in yet another embodiment, the cooling and healing blocks could be interchanged or combined without changing the utility of the design; here, the cooling liquid is connected to the platen 18 (i.e., “the resurfacing tool” as recited) via internal conduits as shown in fig. 2).
Regarding claim 9, Hardt teaches the device of claim 1, wherein the resurfacing tool comprises one or more internal fluid channels (figs. 1, 2; [0019]: thermal actuation at each platen is provided by resistive heaters and liquid cooling, with separate control circuits and valves (not shown) for each component; here, via internal conduits as shown in fig. 2).
Regarding claim 10, Hardt teaches the device of claim 1, wherein a material of the resurfacing tool (platen 18) comprises a metal material comprising one or more of: copper, iron, steel and aluminium ([0019]: the conductive blocks 32 and 34 may be aluminum and the embossing tool 36 may be made from an amorphous metal).
Regarding claim 12, Hardt teaches the device of claim 1, further comprising a securing device operable to secure the 3D printed part to the device during the surface treatment process (figs. 1-3; [0018, 0026]: an upper platen 14 engaged by a planar flexural bearing 16).
Regarding claim 13, Hardt teaches the device of claim 1, wherein the resurfacing tool is configured to engage a valve seat portion of the 3D printed part (figs. 1, 2; [0018-0019]; here, the limitation “configured to engage a valve seat portion of the 3D printed part” is directed to intended use or a capability of the platen 18 and does not further effect the structure of the claimed invention as the embossing tool 36 can “engage” any portion of a part, see MPEP 2114; the limitation of “a valve seat portion of the 3D printed part” is directed to an articles worked upon by the claimed apparatus and does not effect the structure of the claimed invention; see MPEP 2115).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Hardt (US 20130337102 A1).
Regarding claim 11, Hardt teaches the device of claim 1, does not specifically teach a mean surface roughness of at least part of the contact surface (embossing tool 36) is as follows: less than about 16 μm; less than about 15, 14, 13, 12, 11, 10, 9, 8, 7, 6, 5, 4, 3, 2.4, 2, 1.6, 1.5 or 1 μm; about 0.5 μm; from about 0.4, 0.5 or 0.6 μm to about 0.7, 0.8 or 0.9 μm; from about 0.7 to about 0.8 or 0.9 μm; and/or in the range from about 0.1, 0.2, 0.3, 0.4, 0.5, 0.6, 0.7, 0.8 or 0.9 μm to about 15, 14, 13, 12, 11, 10, 9, 8, 7, 6, 5, 4, 3, 2.4, 2, 1.6, 1.5 or 1 μm. However, Hardt teaches that an embossing tool 36 has a desired embossing pattern ([0019]). Therefore, it would have been obvious to one of ordinary skill in the art to modify the surface roughness of the embossing tool to have a mean surface roughness, for example, which is about 13 μm or 0.5 μm, to have a desired smoothness of the surface treated article such as “rough and easily felt” or “smooth and silky feeling,” respectively.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Hardt (US 20130337102 A1) in view of Lehigh Fluid Power (A blog of Lehigh Fluid Power, Inc. “Locking Cylinders,” available to the public at least on 01/14/2022, available at https://lehighfluidpower.com/locking/; hereinafter Lehigh).
Regarding claim 5, Hardt teaches the device of claim 4, but does not specifically teach that the device further comprising a locking device operable to lock the piston in position within the cylinder.
Lehigh teaches that pneumatic actuators can give the end user the ability to lock out the cylinder mechanically in the fully extended or fully retracted position, and in addition, an air operated rod lock can be added to the cylinder to clamp the piston rod in any place along the stroke (page 1 1st para.).
It would have been obvious to one of ordinary skill in the art at the time of fling invention to modify the pneumatic actuator having a pneumatic cylinder of Hardt to further include a locking device as taught by Lehigh in order to obtain known results or a reasonable expectation of successful results of overcoming natural compressibility of pressurizing media and/or controlling a continuous pressure applied thereto, so as to prevent unintended drift or extreme force from being exerted on the pressing system.
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 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11 and 15 of copending Application No. 19/111,873 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other as follows:
Claim 1 of Instant Application
Claims 11 and 15 of Reference
1. A device for surface treatment of 3D printed parts for bioprocessing equipment, comprising:
a resurfacing tool comprising a contact surface, wherein the contact surface comprises a negative shape of a surface to be treated of a 3D printed part;
a heating device operable to heat the resurfacing tool to a temperature above the melting temperature of a material of the 3D printed part;
an actuator operable to move the resurfacing tool such that the resurfacing tool can be releasably pressed against the surface to be treated to melt said surface to form a molten layer of said material at said surface; and
a cooling device operable to cool the resurfacing tool to thereby re-solidify the molten layer of said material at said surface to form a treated surface.
11. An apparatus for surface treatment of 3D printed parts for bioprocessing equipment, the apparatus comprising:
an elastomeric resurfacing tool comprising a contact surface, wherein the contact surface comprises a negative shape of a surface to be treated of a 3D printed part;
a heat source configured to apply heat to the contact surface; and
a pressure source configured to apply pressure to the surface using the contact surface.
15. The apparatus of claim 11, further comprising a cooling source configured to cool the contact surface.
As presented above, the underlined limitations of Instant Application and Reference are substantially identical as structural features. Although intended uses of the structural features may not be identical, the structural features of Instant Application are capable of performing the corresponding functions of the structural features of Reference, or vice versa. Thus, claim 1 of Instant Application merely broaden the scope of claim 1 or 15 of Reference by eliminating some elements and/or their functions (e.g., an “elastic” resurfacing tool of Reference).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Achten (US 20180111315 A1) teaches a method of treating at least part of the surface of a 3D-printed article (abstract, figs. 1-6).
Oehlenschlaeger (US 4960556 A) teaches a method for crystallizing thermoplastic material by subjecting the material at the elevated temperature to compressive forces (abstract, figs. 1-4).
Fogarty (US 5141677 A) teaches a method of hot stamping intraocular lens bodies (abstract, figs. 4-5, 8-9).
Regen (US 20150306789 A1) teaches a hot stamping method for implementing a channel to a preform having a recess using a channel implementation element (abstract, figs. 1, 2, 5).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to INJA SONG whose telephone number is (571)270-1605. The examiner can normally be reached Mon. - Fri. 8 AM - 5 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Xiao (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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/INJA SONG/Examiner, Art Unit 1744
1 It is evidenced by Wikipedia that the pneumatic cylinder comprises at least a piston, a piston rod, and a cylinder (Wikipedia, “Pneumatic Cylinder,” available to the public at least on 01/05/2022, available at https://en.wikipedia.org/w/index.php?title=Pneumatic_cylinder&oldid=1063912468; see page 1 and figures).
Prosecution Insights