Detailed Office Action
The communication dated 12/27/2024 has been entered and fully considered. Claims 1-20 are pending.
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 .
Claim Objections
Claims 1 and 3 are objected to because of the following informalities:
Claim 1, line 5: replace “a recrystallization temperature is applied” with “a recrystallization temperature, and is applied” to indicate that the particulate material is applied. Appropriate correction is required.
Claim 1, next to the last paragraph (two occurrences): replace “coater” with “recoater” to be consistent with earlier limitations.
Claims 1 and 3, last line: replace “+/ 25%” with “+/- 25%”.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1 and 3 recite the limitation that “the dimension of the particulate material roll is maintained within +/- 25%”. The Examiner could not locate written description support for this limitation. Paragraph [093] teaches that the dimension of the particulate material roll is to be kept substantially constant. A variation of few percentage points (at most 3%) is considered to be substantially constant and not +/- 25%. Claims 2-20 are dependent on claim 1 and are rejected as well. For the purpose of examination, the Examiner replaces the limitation of “the dimension of the particulate material roll is maintained within +/- 25%” with “the dimension of the particulate material roll is maintained substantially constant during the application of the particulate material”.
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.
Claim 17 is 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 17 recites the limitation "the oscillating blade recoater" in line 2. There is insufficient antecedent basis for this limitation in the claim. For the purpose of examination, the Examiner replaces the limitation of “wherein the temperature of the oscillating blade recoater” with “wherein the recoater is an oscillating blade recoater and the temperature of the oscillating blade recoater”.
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 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-2, 4-9, 11, 15-17, and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over DE-102013004940-A1 (of-record) in view of EDERER (US-2004/0170765), hereinafter EDERER ’765.
The Examiner notes that for claim mapping and in lieu of DE-102013004940-A, its English family member US-2015/0266238, hereinafter EDERER ’238 is used in this office action. Note that the italicized texts below are the instant claims.
Regarding claims 1 and 17, EDERER ’238 teaches A method for producing one or more three-dimensional parts {[abstract]}, comprising the steps of:
applying a layer of a particulate material onto a construction field {[abstract] note that build space is the construction field, [0011]},
with a recoater, the recoater having a controlled heater for heating the particulate material in the recoater {[0011] note that coater is the claimed recoater and the particulate material is in the recoater, [0017] note the build space temperature range of 60 ºC -120 ºC (thus heated), note that this temperature is maintained in the build space, thus maintained in the coater, [0018] note the thermal sealing of the build space so that there is a uniform temperature everywhere including the coater, note that the heating by IR radiators is controlled, thus recoater is having a controlled heater which is the controlled IR heater that is located in the build space},
wherein the particulate material is characterized by a sintering temperature and a recrystallization temperature {[0052], [0054] note sintering, thus characterized by a sintering temperature, [0016] note the powder is PA12 similar to the powder as described by instant spec [0150], therefore the particulate material is characterized by a recrystallization temperature},
selectively applying an absorber to one or more areas of the layer with a print head, and fusing the areas with the absorber by an energy input component {[0012] note the IR acceptor is the absorber, [claim 1], [abstract] note the binder is also the absorber, and note the sintering is the fusing, [0016] note the solidification or fusing or sintering happens after the particulate material is melted, thus fusing of the particulate matter, [0012] note the print head},
wherein these steps are repeated until the one or more three-dimensional part or parts are obtained {[0002] note that although in the back ground section but it describes general 3D printing that is also applicable to the disclosed invention},
wherein the method includes independently i) heating and controlling the particulate material in the recoater to a temperature of 70 ºC to 155 ºC with the controlled heater (claim 1), wherein the recoater is an oscillating blade recoater and the temperature of the oscillating blade recoater is 130 ºC to 155 ºC; and a fluid in the print head has a temperature of about 40 ºC to about 50 ºC (claim 17) {[0049] note the vibration (or oscillating) coater, [FIG. 2] note the front of coater 101 is a slanted blade, [0017] note the build space temperature range of 60 ºC -120 ºC, note that this temperature is maintained in the build space, thus maintained in the coater, note that control was shown above, [0018] note the thermal sealing of the build space so that there is a uniform temperature everywhere including the coater, see below for the limitation of “independently”, [0062] note the fluid for print head, [0025] note that the desired temperature of the printing system, thus the print head and thus the fluid in the print head is 40 ºC-60 ºC}.
The Examiner notes that the recoater temperature range disclosed by EDERER ’238 (60 ºC -120 ºC) falls outside claim 17 range of 130 ºC -155 ºC, and partially overlaps with the claim 1 range of 70 ºC -155 ºC. However, the disclosed range is close to the claimed range in claim 17.
Regarding claim 17, a prima facie case of obviousness is established when the claimed range and the prior art range do not overlap but are close enough such that one skilled in the art would have expected them to have the same [or similar] properties. Peterson, 315 F.3d at 1329, citing Titanium Metals Corp. v. Banner, 778 F.2d at 783.
Regarding claim 1, a prima facie case of obviousness is established when a claimed range partially overlaps the prior art range {see MPEP 2144.05 (I)}.
Therefore, both the recited temperature ranges in claims 1 and 17 are obvious in view of the teaching of EDERER ‘238,
The Examiner also notes that the instant specification does not present any unexpected results that can be obtained if the range is narrowed to those claimed in claims 1 and 17. As such, an artisan further expects that similar results can be obtained when operating the recoater in the claimed ranges.
The Examiner notes that the print head fluid temperature range disclosed by EDERER ’238 (40 ºC-60 ºC) {[0025]} partially overlaps with the claim 1 range of 40 ºC -50 ºC. A prima facie case of obviousness is established when a claimed range partially overlaps the prior art range {see MPEP 2144.05 (I)}.
ii) heating and controlling the particulate material on the construction field to a temperature of 155 ºC to 180 ºC by the energy input component during the repeated layer application onto the construction field {[0013] note the IR lamp or energy input component heating the layer, [0016] note the desired temperature of the particulate material of approximately 180 ºC, [0002] note the teaching that 3D printing is a repeated layer operation}.
The Examiner notes that the specification does not explicitly teach that the two parts are independently heated. However, and since the disclosure describes using separate heater and energy input component, an artisan is appraised of these separate heating. The Examiner clearly showed above that EDERER ‘238 also discloses these two separate heaters (see claim 1 for the two separate heaters: heat lamp and IR radiators).
The Examiner also notes that EDERER ‘238 discloses using a heat lamp for sintering or heating the build space {[abstract] note heat lamp is interpreted as the energy input component and use of IR radiators above build space to heat the recoater, [0018] note plural radiators and additional radiators that indicates they are separate from the heat lamp discussed above, also note controlling the heaters}. Therefore, those plural radiators and additional radiators that heat the recoater corresponds is the evidence that EDERER ‘238 teaches a recoater having a heater and that it is controlled.
EDERER ‘238, however, is silent on controlling heating of the particulate matter of the construction field by the IR lamp and only discloses controlling the heating of the IR radiators for the build chamber or the recoater {[0018]}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have duplicated the IR radiator controller of EDERER ‘238 and have used that the duplicated controller for the IR lamp that heats the particulate matter of the construction field, since it has been held that a mere duplication of working parts of a device involves only routine skill in the art {see MPEP 2144.04 (VI)(B)}.
One would have been motivated to have duplicated this controller, since EDERER ‘238 also teaches that the printed area needs to be maintained for while at 180 ºC {[0016]}, and therefore the presence of this additional controller would have ensured proper temperature maintenance of this area.
Regarding the next limitation of claim 1, modified EDERER ‘238 discloses wherein the absorber causes the particulate material printed with the absorber to reach a temperature such that said particulate material begins to sinter and thereby bond while the particulate material without the absorber is maintained above the recrystallization temperature and below the sintering temperature and does not sinter {[0016] note the powder is PA 12 similar to the powder as described by instant disclosure [0150], thus the temperatures as discussed above indicates that they are maintained above the recrystallization temperature, [0054]},
Wherein the layer has a generally constant thickness, preselected in a range of 0.05 to 0.5 mm {[0011] also note that as shown above the layers are formed by repeated operation and since EDERER ‘238 does not specifically teaches that for each layer the operational parameters are changed, a generally constant thickness for each layer is maintained}.
Regarding the last limitation of claim 1 reciting “wherein the particulate material is applied by generating a particulate material roll a coating direction; wherein a dimension of the particulate matter roll is maintained by the discharge of particulate material from the recoater while the recoater is moving and/or particulate material roll has a substantially constant dimension (see 112a above)” EDERER ‘238 qualitatively shows formation of a mound in form of the blade of the recoater {[FIG. 2]}. EDERER ‘238 is, however, silent on describing this mound or roll in more detail.
In the same filed of endeavor that is related to the methods for application of layers of powder, EDERER ‘765 discloses wherein the particulate material is applied by generating a particulate material roll a coating direction; wherein a dimension of the particulate matter roll is maintained by the discharge of particulate material from the recoater while the recoater is moving and/or particulate material roll has a substantially constant dimension (see 112a above) {[abstract], [0019] note excess material is maintained and the second limitation of being constant is optional, [0034], [0058]-[0059] note the teaching on volumetric tolerance of the coating system that provides excess roll particulate material in front of the vibrating blade and variable excess material or fed quantity that indicates that the size of the particulate roll is adjustable since various sizes of excess material can be applied, [0076]}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have incorporated the teachings of EDERER ‘765 into the method of EDERER ‘238 and have included an excess and adjustable mound or particulate material roll in front the of the blade of EDERER ‘238. The advantage of this excess and adjustable particulate material roll as disclosed by EDERER ‘765 is to prevent flaws in the particle layer of the surface to be coated and homogenizing the particulate material {[0076]}, allowing reliable and continuous intake of material {[0034]} and in general, providing a favorable results {[0069]}.
Note the vibration coater used by EDERER ‘238 is described in detail in DE10216013B4 {see EDERER ‘238 [0011]}. English family member of DE10216013B4 is HOCHSMANN (US-2006/0105102) that describes that the vibration coater can be adjusted to provide variable and metered quantities of applied particulate matter and as such it is capable of providing an adjustable particulate material roll in front of the blade based on teaching of EDERER ‘765 {see HOCHSMANN [0033]}.
Regarding claim 2, EDERER ’238 teaches wherein the method is a high speed sintering method {[0009], [0013]}.
Regarding claim 4, EDERER ’238 teaches wherein, before each application of the particulate material, the construction field is lowered by a defined amount or construction units are raised by a defined amount, wherein said defined amount corresponds to the layer thickness of the applied particulate material {[0051] note that when building platform is lowered, a layer is applied, thus the lowering corresponds to one layer}.
Regarding claim 5, EDERER ’238 teaches wherein the energy input component is located above the construction field {[0013], [0054] note heat lamp is over the build space, thus above the build space}.
Regarding claim 6, EDERER ’238 teaches wherein the energy input by the energy input component is affected after application of the particulate material {[0049], [0050] note that solidification by the energy input component occurs after the layer is applied in [0049]}.
Regarding claims 7 and 15, EDERER ’238 teaches wherein the energy input component is an overhead radiator or/and an infrared lamp (claim 7) {[0013], [0018]}.
wherein the construction field is an area of the construction space, and the overhead radiator is adjusted to generate a temperature of 30 to 180 ºC in the construction space and in the applied particulate material (claim 15) {[0017] note build space is the construction area of field}.
Regarding claims 8 and 16, EDERER ’238 teaches wherein the energy input component is movable and controllable (claim 8), wherein the energy input is effected directly after application of the particulate material and/or the absorber, and the energy input component is moved over the construction field after the recoater (claim 16) {see claim 4 for sequence of coating and application of absorber, [0049], [0050], [0013] note the IR lamp is moved over the build space with a positioning unit, [0075] note the teaching of a lamp with segmented control of power which is the input energy and thus controllable, [0054] note the teaching that the heat lamp is moved over the printed areas which indicates that coating and application of absorber has already taken place and the movement is after the recoater, [FIG. 2] lamp 200 follows coater 101}.
Regarding claim 9, EDERER ’238 teaches wherein the one or more three-dimensional parts are produced in a process chamber having a construction space and a temperature of construction space is 30 ºC to 60 ºC {[0017], [0018] note the build space is the construction space and the process chamber is taught}.
EDERER ‘238 discloses the temperature of the build space to be in the range of 60-120 ºC {[0017]} which touches the claimed range of 30 ºC to 60 ºC. The Examiner notes that a prima facie case of obviousness is established when a claimed narrow range is within a broad prior art range or partially overlaps or touches the broad range {see MPEP 2144.05 (I)}. Therefore, the claimed range is obvious in view of the teaching of EDERER ‘238.
Regarding claim 11 limitation of “wherein a diameter of the particulate material roll is adjustable from 1 to 8 mm” as set forth in the rejection of claim 1 above, at the effective filing date of the instant invention it would have been obvious to have incorporated the teachings of EDERER ‘765 into the method of EDERER ‘238 and have included an excess and adjustable mound or particulate material roll in front of the blade of EDERER ‘238.
EDERER ‘765 further discloses that the excess material or the particulate roll is provided in front of the blade such that depending on the size of the platform or the length of layer, sufficient material exist to form the entire layer {[0058]-[0059]}. As such, EDERER ‘765 recognizes the amount or the diameter of the particulate roll to be a result-effective variable that depends on the size of the layer to be produced. It is well established that determination of optimum values of result-effective variables (in this case particle size) is within the skill of one practicing in the art {see MPEP 2144.05 (II)(B)}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art, to have optimized the particulate roll size or diameter to obtain an appropriate amount to finish one layer. An artisan would have selected the appropriate size range through routine experimentation that result is this optimum layer production. In certain case the optimum diameter range would have been within the claimed range.
Regarding claim 19, EDERER ’238 teaches wherein all of the applied particulate material is kept at a basic temperature of 145 ºC to 186 ºC {see the analysis of claim 17 above and the ranges being outside the teaching of EDERER ‘238, but close},
and the fusing is at a temperature of 175 ºC to 220 ºC {[0016]};
wherein the recoater requires repeated refilling from a stationary powder reservoir while producing the one or more three-dimensional parts {note that by applicant admission, in the parent application 16-062269, now US 12,208,572 (see submission of 6/21/2021, page 8, 2nd paragraph, the reference to refilling, also see argument 5/19/2021, last two lines of page 8) EDERER ’238 and a commercial 3D printer require repeated filling of the recoater; the Examiner submits that this refilling is accommodated from a powder reservoir and since the recoater is the moving/printing part, the reservoir is inherently stationary}.
Note the rest of claim 19 reciting “optionally, wherein the particulate material in the stationary powder reservoir has a temperature of about room temperature or a temperature of about 20 ºC and/or the stationary powder reservoir is without temperature control” is optional.
Regarding claim 20, EDERER ’238 teaches wherein the energy input component heats the particulate material on the construction field having applied absorber to a sintering temperature of 175 ºC to 220 ºC {[0016]}.
Regarding the remainder limitation of claim 20 reciting “and heats the particulate material on the construction field without applied absorber to a basic temperature of 160 ºC to 186 ºC”, the basic or build area temperature range disclosed by EDERER ’238 (60 ºC -120 ºC) falls outside claim 20 range. However, the disclosed range is close to the claimed range.
A prima facie case of obviousness is established when the claimed range and the prior art range do not overlap but are close enough such that one skilled in the art would have expected them to have the same [or similar] properties. Peterson, 315 F.3d at 1329, citing Titanium Metals Corp. v. Banner, 778 F.2d at 783.
The Examiner also notes that the instant specification does not present any unexpected results that can be obtained if the range is narrowed to that recited in claim 20. As such, an artisan further expects that similar results can be obtained when operating the basic temperature in the claimed range.
The Examiner also notes that some of the heat lamp energy is also received by the area without absorber {[0018] note that the additional heaters that are provided for the without-absorber area is in addition to the disclosed heat lam so the heat lamp also provide some energy to this area}.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over EDERER ’238, and EDERER ’765 as applied to claim 1 above and further in view of EDERER ‘945 (US-2008/0260945), hereinafter EDERER ‘945 and VANELLI (US-2016/0215092), hereinafter VANELLI. Note that the italicized text below are the instant claims.
Regarding claim 10, EDERER ’238 discloses wherein the particulate material has ii) a melting temperature of 180-190 ºC {[0016]},
wherein the absorber is a liquid containing carbon particles {[0015] note the use of graphite as the IR acceptor or binder};
wherein a particulate material reservoir {[FIG. 2] 101 is the reservoir};
EDERER ’765 further discloses and wherein the particulate material roll is in a form of about half circle to about a quarter circle {[FIG. 5] note roll 4, note that the motivation statement detailed under claim 1 is applicable here as well}.
Regarding the next limitation of claim 10 reciting “wherein the particulate material has i) an average particle size of 50-60 µm”, the combination of EDERER ’238 and EDERER ’765 is, however, silent on the appropriate particle material size.
In the same field of endeavor that is related to method for 3D printing, EDERER ‘945 discloses that the grain size of the particle material determines the possible layer thickness and therefore the accuracy and resolution of the printed part {[0047] the examiner note that smaller particle size enables thinner layer}. As such, EDERER ‘945 recognizes particle size as a result-effective variable affecting the accuracy and resolution of the final 3D object. It is well established that determination of optimum values of result-effective variables (in this case particle size) is within the skill of one practicing in the art {see MPEP 2144.05 (II)(B)}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art, to have optimized the particle size range of the particulate material to obtain a final 3D object with optimum accuracy and resolution. An artisan would have selected the appropriate size range through routine experimentation that result in this optimum 3D object. In certain cases, the optimum size would have been within the claimed range.
Regarding the remainder limitation of claim 11 reciting “and iii) a recrystallization temperature of 140-150 ºC”, the combination of EDERER ’238, EDERER ’765, and EDERER ‘945 is silent on the appropriate recrystallization temperature of the particulate material.
In the same field of endeavor that is related to 3D printing methods using nylons or polyamides, VANELLI discloses a method that reads on the applicant claims of and iii) a recrystallization temperature of 140-150 ºC {[0066]}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have used the nylon particulate material as disclosed by VANELLI having the claimed recrystallization temperature in the method of the 3D printing of the combination above. The advantage of this particulate material as disclosed by VANELLI, is the relatively large difference between the melting and recrystallization temperature that results in the formed object to be less likely to deform or warp in addition to the easy separation of the unfused powder from the formed object {[0034]}.
Claims 12-13 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over EDERER ’238, and EDERER ’765 as applied to claim 1 above, and further in view of PHILIPPI (US-2009/0068376), hereinafter PHILLIPI, as evidenced by STUART (European Polymer Journal 49 (2013) 2785–2791), hereinafter STUART Note that the italicized text below are instant claims.
Regarding claims 12 and 18 combination of EDERER ’238, and EDERER ’765 discloses all the limitations of claim 1 as discussed above.
EDERER ’238 further teaches wherein the particulate material includes a polyamide (claim 12) {[0015], [0016]};
air space having a temperature of 30 ºC to 60 ºC (claim 12), desired temperature of 30 ºC to 60 ºC in the construction space (claim 18) {[0017] note the temperature of the build space to be in the range of 60-120 ºC that touches the claimed range, the Examiner notes that a prima facie case of obviousness is established when a claimed narrow range is within a broad prior art range or partially overlaps or touches the broad range, see MPEP 2144.05 (I), therefore, the claimed range is obvious in view of the teaching of EDERER ‘238}.
and the particulate material in the recoater is heated to a temperature of 122 ºC to 155 ºC {note the range analysis performed under claims 1 and 20 above}.
This combination, however, is silent on maintaining the temperature of the build space using a circulation of gas flow
In the same filed of endeavor that is related to 3D printing of an object using a heated recoater, PHILLIPI discloses wherein the one or more three-dimensional parts are produced in a process chamber having an air space, and the method includes flowing a gas through the air space (claim 12), wherein the one or more three-dimensional parts are produced in a process chamber having an air space, the construction field is an area of a construction space, wherein a gas flow is conducted through the air space over the construction filed in order to adjust a desired temperature (claim 18) {[0042] note flow across layer that is a lateral movement, also note guiding and circulation of air that requires ducts or conducting components}.
At the effective filing date of the instant invention, it would have been obvious to one having ordinary skill in the art to have substituted the known IR radiator of EDERER ‘238 with the known heated air circulation method of PHILLIPI in order to maintain a constant temperature in the build space. Note that it has been held that a simple substitution of one known element for another is likely to be obvious when predictable results are achieved {see MPEP 2143 (I)(B)}.
The air circulation of PHILLIPI has the same heating effect of IR radiator of EDERER “238 and an artisan would have a reasonable expectation of success that predictable results are achieved with this substitution.
Regarding claim 13, EDERER ’238 discloses wherein the absorber comprises one or more radiation-absorbing components; and a plasticizers for the particulate material {[0015] graphite is the IR absorber or radiation-absorbing component, note the use of di-ethyl succinate which as evidenced by STUART (see abstract) is a plasticizer}.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8, 10-15, 17, 19, and 21 of U.S. Patent No. 12,208,572 hereinafter US ‘572. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 1 is claimed by claim 1 of US ‘572, noting that the claimed particulate matter temperature in the recoater of US ‘572 is narrower that the instant claim 1 and that under 35 USC 112(a) section above, the last limitation of instant claim 1 is replaced and the replaced limitation is claimed by the similar limitation in claim 1 of US ‘572.
Claim 2 is claimed by claim 1 of US ‘572.
Claim 3 is claimed by claim 1 of US ‘572, noting that under 35 USC 112(a) section above, the last limitation of instant claim 3 is replaced and the replaced limitation is claimed by the similar limitation in claim 1 of US ‘572.
Claim 4 is claimed by claim 2 of US ‘572.
Claim 5 is claimed by claim 3 of US ‘572.
Claim 6 is claimed by claim 4 of US ‘572.
Claim 7 is claimed by claim 5 of US ‘572.
Claim 8 is claimed by claim 7 of US ‘572.
Claim 9 is claimed by claim 10 of US ‘572.
Claim 10 is claimed by claim 12 of US ‘572.
Claim 11 is claimed by claims 14 and 21 of US ‘572. Note the instant claim range is broader than that in claim 14 of US ‘572. Note adjustability is claimed in claim 21 of US ‘572.
Claim 12 is claimed by claim 15 of US ‘572.
Claims 13-14 are claimed by claims 13-14 of US ‘572, respectively.
Claim 15 is claimed by claim 6 of US ‘572.
Claim 16 is claimed by claim 8 of US ‘572.
Claim 17 is claimed by claim 16 of US ‘572.
Claim 18 is claimed by claims 11, 15, 19, and 21 of US ‘572.
Claim 19 is claimed by claim 19 of US ‘572.
Claim 20 is claimed by claim 17 of US ‘572.
Allowable Subject Matter
Claims 3 and 14 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(a) (for claim 3, see the replacement limitation), set forth in this Office action and to include all of the limitations of the base claim and any intervening claims. They also need to overcome the double patenting rejections.
No other prior arts were found to teach “wherein the diameter of the particulate material roll is kept essentially constant during application of the particulate material”.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to S. BEHROOZ GHORISHI whose telephone number is (571)272-1373. The examiner can normally be reached Mon-(alt Fri) 7:30-5:00.
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, 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/S. BEHROOZ GHORISHI/ Primary Examiner, Art Unit 1748
Prosecution Insights