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/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-7 and 11-14, drawn to a three-dimensional printing system, classified in CPC B28D 5/0094.
II. Claims 8-10 and 15, drawn to a method of printing a three-dimensional object, classified in CPC B29C 64/147.
The inventions are independent or distinct, each from the other because:
Inventions II and I are related as process and apparatus for its practice. The inventions are distinct if it can be shown that either: (1) the process as claimed can be practiced by another and materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another and materially different process. (MPEP § 806.05(e)). In this case, the apparatus can be used by another and materially different process such as a method of dicing semiconductor wafers.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
The inventions have acquired a separate status in the art in view of their different classification
The inventions have acquired a separate status in the art due to their recognized divergent subject matter
The inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
The inventions have acquired an examination burden that includes the effort required to apply the art by making and discussing all appropriate grounds of rejection. Multiple inventions, such as those in the present application, normally require additional reference material and further discussion for each additional invention examined. Concurrent examination of multiple inventions would thus typically involve a significant burden even if all searches were coextensive. However, in the present application, the inventions require a different field of search and consequently the search is not coextensive.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Jeffrey Schnell on March 24, 2026 a provisional election was made without traverse to prosecute the invention of Group I, Claims 1-7 and 11-14. Affirmation of this election must be made by applicant in replying to this Office action. Claims 8-10 and 15 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Rejoinder
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Claim Objections
Claims 2-7 and 11-14 are objected to because of the following informalities:
In Claims 2-7 and 11-14, the recitation in the preamble of “The system of claim…” should read “The three-dimensional printing system of claim…”. Examiner notes several other limitations are referred to as systems (such as the laser cutting system, the vacuum retention system, etc.) and clarity would be improved if each generic recitation of “system” was referred to the appropriate limitation.
Appropriate correction is required.
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 7 and 14 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 7, Line 1 recites “the system is compatible with materials…”. It is unclear which system is being referred to (Examiner notes several limitations are referred to as systems (such as the laser cutting system, the vacuum retention system, etc.). For examination purposes, it will be assumed that “the system” being referred to in Claim 7 is the three-dimensional printing system.
Claim 14, Line 1 recites “the system is scalable…”. It is unclear which system is being referred to (Examiner notes several limitations are referred to as systems (such as the laser cutting system, the vacuum retention system, etc.). For examination purposes, it will be assumed that “the system” being referred to in Claim 14 is the three-dimensional printing system.
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.
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.
Claims 1, 3-7, and 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over Cawley et al (US Pat. 5779833) in view of Robinson et al (PGPub 2019/0061174).
Regarding Claim 1, Cawley teaches a three-dimensional printing system (Abstract), comprising:
a) a laser cutting system (Fig. 2- laser cutter 40);
b) a system for moving the cut layers (Col. 10, Line 43-45);
c) an adhesive application system (Col. 7, Lines 60-65);
d) a material stacking plane (Col. 10, Line 43-45- the pieces are moved to a lamination station);
e) a cutting area (Fig. 2- showing the cutting area);
f) a ZY-axis frame (Fig. 2- not shown but implicit by way of X-Y platform 30 and laser cutter 40); Col. 6, Lines 15-25);
g) a Y-axis crossbar (Fig. 2- not shown but implicit by way of X-Y platform 30 and laser cutter 40; Col. 6, Lines 15-25); and
h) a platform base (Fig. 2- base not shown but implicitly present).
Cawley teaches the cut layers are moved (Col. 10, Line 43-45) but does not specify the system for moving the cut layers is a vacuum retention system.
Robinson teaches an alternative system for manipulating and sorting objects (Abstract) wherein the system for moving the parts is a vacuum retention system (Fig. 1) in order to reliably manipulate and grasp objects of indeterminate size, shape, orientation and surface condition [0005].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Cawley to include the vacuum retention system as taught by Robinson with reasonable expectation of success to reliably manipulate and grasp objects of indeterminate size, shape, orientation and surface condition [0005].
Regarding Claim 3, Robinson further teaches the vacuum retention system comprises a suction head (Fig. 1, 2- suction head 50) and a vacuum pump (Fig. 1, 2- vacuum pump 12, 32), configured to retrieve and retain cut layers during relocation [0005].
Regarding Claim 4, Cawley further teaches the adhesive application system comprises an adhesive tray (Col. 7, Lines 60-65- discussing applying adhesive; a source of adhesive is necessarily present) and an upper roller configured to apply adhesive to cut layers (Col. 7, Line 65-Col 8, Line 5).
Cawley does not teach a lower roller configured to apply adhesive to cut layers. However, the court has held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced, see MPEP 2144.04(VI)(B). Since no new and unexpected result has been demonstrated, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include a lower roller in order to apply/spread adhesive (Col. 7, Line 65-Col 8, Line 5).
Regarding Claim 5, Cawley further teaches a plurality of motors for precise motion control (Fig. 3a- showing motion of cutting plane to stacking plane, Fig. 2- XY motion of cutting plane), comprising X-axis motors (Fig. 3a- showing motion of cutting plane to stacking plane, Fig. 2- XY motion of cutting plane), Y-axis motors (Fig. 3a- showing motion of cutting plane to stacking plane, Fig. 2- XY motion of cutting plane), and Z-axis motors (Fig. 3a- showing motion of cutting plane to stacking plane).
Regarding Claim 6, Cawley does not specify the motors are 2 amp NEMA 17 stepper motors with 200 steps per revolution. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the type of motor to include 2 amp NEMA 17 stepper motors with 200 steps per revolution with reasonable expectation of success because the type of motor is a matter of design choice that a skilled artisan would have found obvious. See MPEP 2144.04(iv)(B).
Regarding Claim 7, “the system is compatible with materials including wood, acrylic, plastics, paper, cardboard, leather, textiles, thin metals, glass, rubber, and foam” is a recitation of the article worked upon. The "inclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." MPEP 2115; In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935) and thus, the recitation of “the system is compatible with materials including wood, acrylic, plastics, paper, cardboard, leather, textiles, thin metals, glass, rubber, and foam” is not given significant patentable weight.
Regarding Claim 11, Cawley does not specify the platform base is approximately 2420 mm long by 1540 mm wide, and 1180 mm tall, with the cutting area being approximately one square meter. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include a workspace with the recited dimensions with reasonable expectation of success because size of the workspace is a matter of design choice that a skilled artisan would have found obvious. See MPEP 2144.04(iv)(B).
Regarding Claim 12, Cawley does not specify the adhesive application system has a usable applicator width of approximately 890 mm. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the size of the adhesive applicator with reasonable expectation of success because size of the adhesive applicator is a matter of design choice that a skilled artisan would have found obvious. See MPEP 2144.04(iv)(B).
Regarding Claim 13, Robinson teaches the vacuum retention system is configured to work with materials of varying surface textures and porosities [0005]. Further, “the vacuum retention system is configured to work with materials of varying surface textures and porosities” is a recitation of the article worked upon. The "inclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." MPEP 2115; In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935) and thus, the recitation of “the vacuum retention system is configured to work with materials of varying surface textures and porosities” is not given significant patentable weight.
Regarding Claim 14, Cawley does not specify the system is scalable to accommodate different sizes of objects and production volumes. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the size of the three-dimensional printing system with reasonable expectation of success because size of the three-dimensional printing system is a matter of design choice that a skilled artisan would have found obvious. See MPEP 2144.04(iv)(B).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Cawley et al (US Pat. 5779833) in view of Robinson et al (PGPub 2019/0061174) and Hull et al (US Pat. 5192559).
Regarding Claim 2, Cawley does not specify the strength of the laser comprising a 450nm wavelength laser capable of cutting and engraving a variety of materials.
Hull teaches an alternative system for generating 3D objects (Abstract) wherein the type of laser is selected based on the material absorbing the wavelength of the laser and controlling the depth of cutting (Col. 9, Lines 45-55). Thus, this is a result-effective variable modifying depth of cutting. Since applicants did not provide any criticality regarding the recited parameter, one skilled in the art would have found obvious to optimize the wavelength of the laser through routine experimentation in order to perfect the result-effective variable of depth of cutting, consult MPEP 2144.05 II.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Adrianna Konves whose telephone number is (571)272-3958. The examiner can normally be reached Monday-Friday 8:00-4:00 MST (Arizona).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abbas Rashid can be reached at (571) 270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.K./Examiner, Art Unit 1748 3/25/26
/Abbas Rashid/Supervisory Patent Examiner, Art Unit 1748