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 .
Reissue Applications
For reissue applications filed before September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the law and rules in effect on September 15, 2012. Where specifically designated, these are “pre-AIA ” provisions.
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 11,478,856 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Maintenance Fee
Applicant is reminded during the prosecution of the instant reissue patent application, maintenance fees must be kept up to date for the Patent No. 11,478,856 (“the ‘856 patent”). A review of the maintenance fee status for the ‘856 patent shows the 3.5 year fee window opened on October 25, 2025, the surcharge starts April 28, 2026, and the last day to pay is October 26, 2026.
Reissue Declaration
The reissue oath/declaration filed with this application is defective because none of the errors which are relied upon to support the reissue application are errors upon which a reissue can be based. See 37 CFR 1.175 and MPEP § 1414.
The error of broadening the limitation of multiple “laser beams” to “enter the build chamber via the window” to require a “window” only “at least one of the laser beams” are required “to enter the build chamber via the window” is improper recapture of broadened claimed subject matter in the application for the patent upon which the present reissue is based and does not satisfy the “original patent” requirement as explained in the 35 USC 251 Recapture and Original Patent sections below.
Claim Rejections – 35 USC § 251: Defective Reissue Declaration
Claims 1-15 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
The nature of the defect(s) in the declaration is set forth in the discussion above in this Office action.
Claim Rejections – 35 USC § 251: Recapture
Claims 9-15 are rejected under 35 U.S.C. 251 as being an impermissible recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. In re McDonald, 43 F.4th 1340, 1345, 2022 USPQ2d 745 (Fed. Cir. 2022); Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Youman, 679 F.3d 1335, 102 USPQ2d 1862 (Fed. Cir. 2012); In re Shahram Mostafazadeh and Joseph O. Smith, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984). The reissue application contains claim(s) that are broader than the issued patent claims. The record of the application for the patent family shows that the broadening aspect (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution of the application. Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. 251, and the broader scope of claim subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.
MPEP 1412.02 establishes a three-step test for recapture. The three-step process is as follows:
(1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
(2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and
(3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.
Reissue claims 9-15 are broader than patent claims 1-8. Claims 9-15 do not require multiple laser beams enter the build chamber through the window, but rather requires the apparatus is configured to allow the laser beams to enter the build chamber.
Therefore step 1 of the three-step test is met for claims 9-15.
The step of determining whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution includes two sub-steps. The first sub-step is to determine whether the applicant surrendered any subject matter in the prosecution of the original application. MPEP 1412.02 defines surrendered subject matter as a claim limitation that was originally relied upon by applicant in the original prosecution to make the claims allowable over the art.
MPEP 1412.02(I)(B)(1)(A) states “[w]ith respect to whether applicant surrendered any subject matter, it is to be noted that a patent owner (reissue applicant) is bound by the argument that applicant relied upon to overcome an art rejection in the original application for the patent to be reissued, regardless of whether the Office adopted the argument in allowing the claims. Greenliant Systems, Inc. v. Xicor LLC, 692 F.3d 1261, 1271, 103 USPQ2d 1951, 1958 (Fed. Cir. 2012). As pointed out by the court, ‘[i]t does not matter whether the examiner or the Board adopted a certain argument for allowance; the sole question is whether the argument was made.’ Id.”
During the prosecution of the ‘856 patent, the Examiner rejected claims 1-8 as unpatentable over US Patent No. 6,534,740 to Meiners et al. (“Meiners”) in view of US Patent No. 5,985,204 to Otsuka et al. (“Otsuka”) in a non-final rejection mailed December 9, 2021. The Applicant responded with arguments and amendments. The Applicant filed an amendment on April 8, 2022, cancelling non-elected claims 9-19, amending claims 1-8 to add various limitations to define the invention, and arguing neither Meiners nor Otsuka disclose or suggest, “a window in the build chamber configured to allow the laser beams to ender the build chamber via in the window” as shown below from the paragraph extending from page 6 to page 7 of the remarks.
But even if the Office had met this burden, claim 1 requires "a window in the build chamber configured to allow the laser beams to enter the build chamber via the window," each "laser beam" being generated by a different laser of the "plurality of lasers." Meiners does not disclose a plurality of lasers, and it accordingly cannot describe a "window" configured to allow the laser beams generated by more than one laser to each enter the build chamber. Otsuka does not cure this deficiency at least because that reference fails to disclose a window in a build chamber at all, let alone one configured to allow laser beams generated by different lasers to enter into the build chamber. Furthermore, Meiners discloses an xy plotter for directing its laser beam. A similar plotter is shown in Otsuka's Figs. 11 and 12, but it is not clear to Applicant why combining this teaching with Meiners would result in a "window" such as that required by claim 1. Original claim 1 is accordingly allowable over Meiners and Otsuka.
The Examiner rejected claims 1-8 as unpatentable under 35 USC 112(b)/second paragraph and indicated claims 1-8 as allowable if the 35 USC 112(b)/second paragraph rejection was overcome in a final rejection mailed July 18, 2022. Applicant filed an after final amendment on August 4, 2022 overcoming the 35 USC 112(b)/second paragraph rejection. On August 30, 2022, the Examiner mailed a notice of allowance indicating claims 1-8 as allowable.
Therefore, the Patent Owner argued that the prior art did not include the limitation of a window in the build chamber configured to allow the laser beams to enter the build chamber via the window. Therefore, the newly presented claims must include the argued limitation of a window in the build chamber configured to allow the laser beams to enter the build chamber.
Claims 9-15 fail to disclose all of the limitations argued to make the claims allowable.
Therefore, the limitations of a window in the build chamber configured to allow the laser beams to enter the build chamber via the window is a limitation which is considered surrendered subject matter.
The second sub-step is to determine whether any of the broadening of the reissue claims is in the area of the surrendered subject matter. The examiner must analyze all of the broadening aspects of the reissue claims to determine if any of the omitted/broadened limitation(s) are directed to limitations relied upon by applicant in the original application to make the claims allowable over the art.
Claims 9-15 are being broadened to omit the surrendered subject matter. Claims 9-15 include some of the details of the surrendered subject matter and eliminate some of the details of the surrendered subject matter.
Therefore step 2 of the three-part test is met.
MPEP 1412.02(I)(B)(1)(B) states “[w]ith respect to the “second step” in the recapture analysis, it is to be noted that if the reissue claim(s), are broadened with respect to the previously surrendered subject matter, then recapture will be present regardless of other unrelated narrowing limitations. In the decision of In re Mostafazadeh, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011), the Federal Circuit stated:
[T]he recapture rule is violated when a limitation added during prosecution is eliminated entirely, even if other narrowing limitations are added to the claim. If the added limitation is modified but not eliminated, the claims must be materially narrowed relative to the surrendered subject matter such that the surrendered subject matter is not entirely or substantially recaptured. Id. at 1361.”
The third step in the recapture analysis is, to determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule. The third step include two different types of analysis that must be performed.
First, the reissue claim must be compared to any claims canceled or amended during prosecution of the original application. It is impermissible recapture for a reissue claim to be as broad as, or broader in scope than any claim that was canceled or amended in the original prosecution to define over the art. Claim scope that was canceled or amended is deemed surrendered and therefore barred from reissue. Clement, 131 F.3d at 1470, 45 USPQ2d at 1165.
Claims 9-15 delete the details of a window.
Second, it must be determined whether the reissue claim omits or broadens any limitation that was added or argued during the original prosecution to overcome an art rejection. Such an omission in a reissue claim, even if it is accompanied by other limitations making the reissue claim narrower than the patent claim in other aspects, is impermissible recapture. Pannu, 258 F.3d at 1371-72, 59 USPQ2d at 1600. In any broadening reissue application, the examiner will determine, on a claim-by-claim basis, whether the broadening in the reissue application claim(s) relates to subject matter that was surrendered during the examination of the patent for which reissue is requested) by an amendment narrowing claim scope in order to overcome a rejection and/or argument relying on a claim limitation in order to overcome a rejection.
During the prosecution of the ‘856 patent, the Examiner rejected claims 1-8 as unpatentable over US Patent No. 6,534,740 to Meiners et al. (“Meiners”) in view of US Patent No. 5,985,204 to Otsuka et al. (“Otsuka”) in a non-final rejection mailed December 9, 2021. The Applicant responded with arguments and amendments. The Applicant filed an amendment on April 8, 2022, cancelling non-elected claims 9-19, amending claims 1-8 to add various limitations to define the invention, and arguing neither Meiners nor Otsuka disclose or suggest, “a window in the build chamber configured to allow the laser beams to ender the build chamber via in the window” as shown below from the paragraph extending from page 6 to page 7 of the remarks.
But even if the Office had met this burden, claim 1 requires "a window in the build chamber configured to allow the laser beams to enter the build chamber via the window," each "laser beam" being generated by a different laser of the "plurality of lasers." Meiners does not disclose a plurality of lasers, and it accordingly cannot describe a "window" configured to allow the laser beams generated by more than one laser to each enter the build chamber. Otsuka does not cure this deficiency at least because that reference fails to disclose a window in a build chamber at all, let alone one configured to allow laser beams generated by different lasers to enter into the build chamber. Furthermore, Meiners discloses an xy plotter for directing its laser beam. A similar plotter is shown in Otsuka's Figs. 11 and 12, but it is not clear to Applicant why combining this teaching with Meiners would result in a "window" such as that required by claim 1. Original claim 1 is accordingly allowable over Meiners and Otsuka. (Bold emphasis added).
The Examiner rejected claims 1-8 as unpatentable under 35 USC 112(b)/second paragraph and indicated claims 1-8 as allowable if the 35 USC 112(b)/second paragraph rejection was overcome in a final rejection mailed July 18, 2022. Applicant filed an after final amendment on August 4, 2022 overcoming the 35 USC 112(b)/second paragraph rejection. On August 30, 2022, the Examiner mailed a notice of allowance indicating claims 1-8 as allowable.
As shown above, with particular reference to the bolded parts of the arguments, Patent Owner argued Meiners did not disclose a window configured to allow multiple laser beams into the build chamber, Otsuka did not disclose a window at all, and as such the combination did not teach the window configure to allow laser beams into the build chamber. Thus, the entire limitation, “a window in the build chamber configured to allow the laser beams to enter the build chamber via the window” is the surrendered generating limitation and must be included in the reissue claims to avoid recapture. While narrowing amendments were made to the claims with the addition of the processor, these narrowing amendments are not related to the surrendered generating limitation and cannot be relied upon to overcome recapture.
Claims 9-15 are rejected under 35 U.S.C. 251 as being an improper recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based.
Claim Rejections – 35 USC § 251: Original Patent
The following is a quotation of the first paragraph of 35 U.S.C. 251:
(a) IN GENERAL.—Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
MPEP 1412.01 states that the reissue claims must be for the same invention as that disclosed as being the invention of the original patent. MPEP 1412.01 further provides guidelines for determining whether the reissue claims are "for the invention disclosed in the original patent" as:
(A) the claims presented in the reissue application are described in the original patent specification and enabled by the original patent specification such that 35 U.S.C. 112, first paragraph is satisfied; and
(B) nothing in the original patent specification indicates an intent not to claim the subject matter of the claims presented in the reissue application.
The presence of some disclosure (description and enablement) in the original patent should evidence that applicant intended to claim or that applicant considered the material now claimed to be his or her invention.
Further, the Federal Circuit addressed the “original patent” requirement of 35 USC 251 in Antares Pharma, Inc. v. Medac Pharma Inc. and Medac GMBH, 771 F.3d 1354, 112 USPQ2d 1865 (Fed. Cir. 2014). In Antares the reissue claims covered embodiments of injection devices (not restricted to jet-injection devices) which the Applicant admitted was a different invention from what was originally claimed. Id. at 1356. The Federal Circuit adopted the Supreme Court's explanation of the “same invention” requirement as “if the original patent specification fully describes the claimed inventions, but not if the broader claims ‘are [] merely suggested or indicated in the original specification’ ”. Id. at 1359. The Federal Circuit further stated that although wording in 35 USC 251 was changed from “same invention” to “original patent” no change in substance was intended. Id. at 1360.
Based on Antares a review of the specification is necessary to determine whether the original specification adequately discloses the invention of the reissue claims. Like in Antares, the original specification including all of the written description describes and all of the drawing show a plurality of laser beams (such as those exiting from laser modules 1 and 4 and passing through respective optical modules 106a and 106b) all pass through window 107 and into build chamber 101. One interpretation of the current claim limitation, “the apparatus is configured to allow the laser beams to enter the build chamber”, is a device with multiple lasers that enter through multiple opening or windows in the build chamber, such as shown in Figure 3 of Ljungblad et al. (US-20140348691). Nowhere in the disclosure or drawings is there a teaching or showing of the laser beams each entering through multiple openings or windows. Therefore, changing the limitation, “a window in the build chamber configured to allow the laser beams to enter the build chamber via the window” to “the apparatus is configured to allow the laser beams to enter the build chamber” introduces a new embodiment of the invention that is not disclosed within the four corners of the patent, such as an embodiment with multiple lasers modules with multiple optical modules in which each laser enters the build chamber through multiple, respective openings or windows. Such an embodiment would read on the new reissue claims but is not described or shown in the description or drawings of the original patent. As such, the amendment does not satisfy the “original patent” requirement.
Therefore, claims 9-15, which are directed to a selective laser melting additive manufacturing apparatus with a window in the build chamber configured to allow at least one of the laser beams to enter the build chamber via the window do not satisfy the “original patent” requirement.
Claims 9-15 are rejected under 35 USC 251 for not claiming subject matter directed to the invention disclosed in the original patent.
Response to Arguments
With respect to Applicant’s arguments starting on page 8, line 1 to page 8, line 6, Applicant argues the amendment overcomes the original patenting rejection as tentatively agreed to in the interview of March 19, 2026. While it was stated in the March 19, 2026, the proposed amendments appear to overcome the original patenting rejection, it was also stated further consideration was needed. After further consideration, the amendment does not overcome the original patenting rejection as it introduces the interpretation that the device includes multiple lasers that can enter a build chamber through multiple openings or windows as shown in Ljungblad et al.’s (US-20140348691) Figure 3, nowhere in the four corners of the ‘856 patent disclosure or drawings is there support for such an embodiment. In fact, the only showing is multiple laser beams through one window or opening. Therefore, the claims reads on an embodiment not disclosed in the original patent and the 35 USC 251 original patent rejection is maintained.
With respect to Applicant’s arguments starting on page 8, line 7 to page 10, line 3, Applicant argues the distinction made in the April 8, 2022 was that Meiners did not disclose multiple laser beams make the window not part of the SGL and argues even if the window is part of the SGL the amendment inherently requires some means by with the multiple laser beams enter the build chamber which narrows the claim in relation to the SGL. Regarding the multiple laser beams being the only SGL, Applicant’s argument is not persuasive. As discussed above in the Recapture rejection, particularly the bolded part so April 8, 2022 response, Applicant argues the combination of the window configured to allow multiple laser beams was not present in either Meiners or Otsuka, alone or in combination. Applicant argued, “Meiners does not disclose a plurality of lasers, and it accordingly cannot describe a "window" configured to allow the laser beams generated by more than one laser to each enter the build chamber. Otsuka does not cure this deficiency at least because that reference fails to disclose a window in a build chamber at all, let alone one configured to allow laser beams generated by different lasers to enter into the build chamber” and “it is not clear to Applicant why combining this teaching with Meiners would result in a "window" such as that required by claim 1” (emphasis added). These arguments clearly show Applicant argued Meiners and Otsuka, alone or in combination, did not teach the combination of the window and multiple lasers. Therefore, the entire limitation is the SGL and the Recapture rejection is maintained.
Starting on page 10, line 4 to page 11, line 15, Applicant presented a proposed error statement. The first paragraph would still not be a proper error statement as removal of the limitation, “window” is still recapture and does not satisfy the original patent requirement. If the window was introduced back into claim 9, the second paragraph would be a good error statement for what would then be a narrowing reissue. As such the improper reissue objection and claim rejections are maintained.
Conclusion
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 WILLIAM E DONDERO whose telephone number is (571)272-5590. The examiner can normally be reached Monday-Friday 6 am - 4 pm ET, Alternate Fridays.
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, EILEEN D LILLIS can be reached at 571-272-6928. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM E DONDERO/Reexamination Specialist, Art Unit 3993
CONFEREES: /WILLIAM C DOERRLER/ Reexamination Specialist, Art Unit 3993
/EILEEN D LILLIS/SPRS, Art Unit 3993
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