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 with traverse of claims 1-10 in the reply filed on 02/06/2026 is acknowledged. Claims 11-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected group of the invention, there being no allowable generic or linking claim.
The traversal is on the ground(s) that “the Office Action alleges that independent claim 1 and independent claim 11 are independent or distinct because both are related as apparatus and product made. Applicant does not agree because both independent claim 1 and independent claim 11 are directed to products, for example, a mold”. This is not found persuasive. Despite of the amendment to claim 11, the claimed subject matter in claims 1 and 11 are still independent and distinct from each other as the claimed structural limitations of “part” in claim 1 are directed to a “mold” and “mold surface” while there is no indication in the amended claimed subject matter of claim 11 that the claimed “part” to be necessarily a structure of a “mold”. Therefore, claims 1 and 11 are related at least as two distinct subcombinations. The subcombinations are distinct if it is shown that at least one subcombination is separately usable. In the instant case, subcombination, as claimed in claim 11 can be used as a substrate for deposition of thermoplastic materials layer by layer to form a three-dimensional product.
The requirement is still deemed proper and is therefore made FINAL.
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.
Claim(s) 1-10 are rejected under 35 U.S.C. 102(a)(1) / (a)(2) as being anticipated by Manuel et al. (US 2007/0067977)
As to claim 1, Manuel et al. (US ‘977) discloses a part formed by additive manufacturing, the part comprising:
-a first layer (a tangible sectional member 12, ¶ [0033]) of a plurality of layers (tangible sectional members 12, 14, 15; ¶ [0033]);
[AltContent: textbox (A 3rd layer (15))][AltContent: textbox (A 2nd layer (14))][AltContent: textbox (A 1st layer (12))]
[AltContent: arrow][AltContent: arrow]
[AltContent: arrow][AltContent: textbox ( 1st, 2nd, and 3rd holes (120, 122))][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: textbox (A mold surface (17) )]
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[AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: textbox (Vacuum chamber (100))][AltContent: arrow][AltContent: arrow][AltContent: arrow]
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-a second layer (a tangible sectional member 14, ¶ [0033]) of the plurality of layers (tangible sectional members 12, 14, 15; ¶ [0033]), the first layer (a tangible sectional member 12, ¶ [0033]) in contact with the second layer (a tangible sectional member 14, ¶ [0033]) to form a portion of a mold surface (a tangible item formation surface 17 ¶ [0036] of a tool 10, ¶ [0033]) on an upper surface (the tangible item formation surface 17) of the first layer (a tangible sectional member 12, ¶ [0033]) and on an upper surface (the tangible item formation surface 17) of the second layer (a tangible sectional member 14, ¶ [0033]);
-a first hole (vertical passages 120, ¶ [0040]) formed through the first layer (a tangible sectional member 12, ¶ [0033]);
-a second hole (vertical passages 120, ¶ [0040]) formed through the second layer, the first hole (120, ¶ [0040]) and the second hole (vertical passages 120, ¶ [0040]) being at least partially aligned to form a portion of a vacuum chamber (100, ¶ [0040]);
-a first opening (the top portion of the vertical passages 120 of the tool 10, ¶ [0040]) formed on the mold surface (on a formation surface 17 of the tool 10, ¶ [0036]), the first opening (the top portion of the vertical passages 120 of the tool 10, ¶ [0040]) extending from the mold surface (on a formation surface 17 of the tool 10, ¶ [0036]) to the vacuum chamber (100, ¶ [0040]); and
-a second opening (the top portion of the vertical passages 120 of the tool 10, ¶ [0040]) connected to the vacuum chamber (100, ¶ [0040]), the second opening (the top portion of the vertical passages 120 of the tool 10, ¶ [0040]) being configured to connect the vacuum chamber (100) to a vacuum pump (vacuum source 70, ¶ [0040]).
As to claim 2, Manuel et al. (US ‘977) further disclose the second opening (the top portion of the vertical passages 120 of the tool 10, ¶ [0040], Fig. 5) extends from a bottom surface of the part (a tool 10, ¶ [0033], Fig. 5) to the vacuum chamber (100, ¶ [0040], Fig. 5).
[AltContent: textbox (The 2nd opening (120) extends from a bottom surface (17) to the vacuum chamber (100))][AltContent: arrow][AltContent: arrow]
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[AltContent: textbox (Length of the openings)] As to claim 3, Manuel et al. (US ‘977) teaches the first opening (the top portion of the vertical passages 120 of the tool 10, ¶ [0040]) is formed in a shape of a slot, the slot having a length that is greater than a width of the slot.
[AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: textbox (Width of the openings)][AltContent: arrow][AltContent: arrow][AltContent: textbox (A length of the opening (slot) is greater than a width of the opening (slot))][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: arrow]
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As to claim 4, Manuel et al. (US ‘977) disclose the first layer (a tangible sectional member 12, ¶ [0033]) includes a wall extending from the first opening (the top portion of the vertical passages 120 of the tool 10, ¶ [0040]) to the mold surface (a tangible item formation surface 17 ¶ [0036] of a tool 10, ¶ [0033]).
As to claim 5, Manuel et al. (US ‘977) teach the vacuum chamber (100, ¶ [0040]) is a first vacuum chamber (internal passageway 42, ¶ [0040]) and the part includes a second vacuum chamber (a vacuum chamber 100, ¶ [0040]), the second vacuum chamber (100, ¶ [0040]) extending through the first layer (a tangible sectional member 12, ¶ [0033]) and through the second layer (a tangible sectional member 14, ¶ [0033]).
[AltContent: arrow][AltContent: textbox (A 2nd vacuum chamber (100))][AltContent: arrow][AltContent: textbox (A 1st vacuum chamber (42))]
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As to claim 6, Manuel et al. (US ‘977) disclose a third hole (vertical passages 120, ¶ [0040]) formed in the first layer (a tangible sectional member 12, ¶ [0033]); and a fourth hole (vertical passages 120, ¶ [0040]) formed in the second layer (a tangible sectional member 14, ¶ [0033]), the third hole (vertical passages 120, ¶ [0040]) being at least partially aligned with the fourth hole (vertical passages 120, ¶ [0040]).
As to claim 7, Manuel et al. (US ‘977) teach a third hole (vertical passages 120, ¶ [0040]) formed in the first layer (a tangible sectional member 12, ¶ [0033]); and a fourth hole (vertical passages 120, ¶ [0040]) formed in the second layer (a tangible sectional member 14, ¶ [0033]), the third hole (vertical passages 120, ¶ [0040]) being at least partially aligned with the fourth hole (vertical passages 120, ¶ [0040]), wherein the first hole (vertical passages 120, ¶ [0040]) and the second hole (vertical passages 120, ¶ [0040]) each have a first shape and the third hole (vertical passages 120, ¶ [0040]) and the fourth hole (vertical passages 120, ¶ [0040]) each have a second shape that is different than the first shape. (see annotated figure below)
[AltContent: arrow][AltContent: textbox (A 4th hole (120) formed in the 2nd layer (14))][AltContent: textbox (A 1st hole (120))][AltContent: textbox (A 2nd hole (120))][AltContent: arrow][AltContent: arrow][AltContent: arrow][AltContent: textbox (A 3rd hole (120) formed in the 1st layer (12))]
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As to claim 8, Manuel et al. (US ‘977) disclose a third hole (vertical passages 120, ¶ [0040]) formed in the first layer (a tangible sectional member 12, ¶ [0033]); and a fourth hole (a tangible sectional member 12, ¶ [0033]) formed in the second layer (a tangible sectional member 14, ¶ [0033]), the third hole (a tangible sectional member 14, ¶ [0033]) being at least partially aligned with the fourth hole (a tangible sectional member 14, ¶ [0033]) to form a coolant channel (cooling passageway 44, ¶ [0038]). (See above annotated Fig. 4)
As to claim 9, Manuel et al. (US ‘977) teach the first layer (a tangible sectional member 12, ¶ [0033]) and the second layer (a tangible sectional member 14, ¶ [0033]) are stacked along a stacking direction, the stacking direction being a horizontal direction. (See Figs. 4-6)
As to claim 10, Manuel et al. (US ‘977) disclose the mold surface (on a formation surface 17 of the tool 10, ¶ [0036]) is continuous along the upper surface of the first layer (a tangible sectional member 12, ¶ [0033]) and the upper surface of the second layer (a tangible sectional member 14, ¶ [0033]).
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 1-10 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,427,698. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons:
As to claim 1 of the instant application, the claimed subject matter in U.S. Patent No. 12,427,698 disclose: a part formed by additive manufacturing (see US ‘698: claim 1, line 3 and claim 15, line 2), the part comprising:
-a first layer (see US ‘698: claim 1, line 3 and claim 15, line 2) of a plurality of layers;
-a second layer (see US ‘698: claim 1, line 4 and claim 15, line 2) of the plurality of layers, the first layer in contact with the second layer to form a portion of a mold surface on an upper surface of the first layer and on an upper surface of the second layer (see US ‘698: claim 1, lines 9-13 and claim 15, lines 7-10);
-a first hole formed through the first layer (see US ‘698: claim 1, line 14);
-a second hole formed through the second layer, the first hole and the second hole being at least partially aligned to form a portion of a vacuum chamber (see US ‘698: claim 1, lines 9-13);
-a first opening formed on the work surface, the first opening extending from the work surface to the vacuum chamber (see US ‘698: claim 4, lines 6-8 and claim 5, lines 6-10; claim 15, lines 19-22); and
-a second opening connected to the vacuum chamber, the second opening being configured to connect the vacuum chamber to a vacuum pump (see US ‘698: claim 4, lines 6-8 and claim 5, lines 6-10; claim 15, lines 19-22).
US ‘698 discloses all the structural limitations of a part formed by additive manufacturing. Even though US ‘698 is silent on explicitly disclosing that the disclosed work surface is actually a mold surface, as claimed in claims 1, 4, and 10 of the instant application.
It would have been obvious for one of ordinary skill in the art, prior to the time of applicant’s invention, to consider the work surface, claimed by US ‘698, as a mold surface as this is considered to be more intended use of the work surface while intended use has been continuously held not to be germane to determine the patentability of the apparatus and the manner or method in which a machine is to be utilized is not germane to the issue of patentability of the machine itself and further a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations.
As to claim 2 of the instant application, the claimed subject matter in U.S. Patent No. 12,427,698 disclose: the second opening extends from a bottom surface of the part to the vacuum chamber. (see US ‘698: claim 4, lines 6-8 and claim 5, lines 6-10; claim 15, lines 19-22)
As to claim 3 of the instant application, the claimed subject matter in U.S. Patent No. 12,427,698 disclose: the first opening is formed in a shape of a slot, the slot having a length that is greater than a width of the slot. (see US ‘698: claim 4, lines 6-8 and claim 5, lines 6-10; claim 15, lines 19-22)
As to claim 4 of the instant application, the claimed subject matter in U.S. Patent No. 12,427,698 disclose: the first layer includes a wall extending from the first opening to the work surface. (see US ‘698: claim 1, lines 20 and claim 15, line 17; claim 4, lines 6-8 and claim 5, lines 6-10; claim 15, lines 19-22)
As to claim 5 of the instant application, the claimed subject matter in U.S. Patent No. 12,427,698 disclose: the vacuum chamber is a first vacuum chamber and the part includes a second vacuum chamber, the second vacuum chamber extending through the first layer and through the second layer. (see US ‘698: claim 13, lines 12-19 and claim 15, lines 19-22)
As to claim 6 of the instant application, the claimed subject matter in U.S. Patent No. 12,427,698 disclose: a third hole formed in the first layer; and a fourth hole formed in the second layer, the third hole being at least partially aligned with the fourth hole. (See US ‘698: claims 2-5)
As to claim 7 of the instant application, the claimed subject matter in U.S. Patent No. 12,427,698 disclose: a third hole formed in the first layer; and a fourth hole formed in the second layer, the third hole being at least partially aligned with the fourth hole, wherein the first hole and the second hole each have a first shape and the third hole and the fourth hole each have a second shape that is different than the first shape. (See US ‘698: claims 2-5)
As to claim 8 of the instant application, the claimed subject matter in U.S. Patent No. 12,427,698 disclose: a third hole formed in the first layer; and a fourth hole formed in the second layer, the third hole being at least partially aligned with the fourth hole to form a coolant channel. (See US ‘698: claims 2-5)
As to claim 9 of the instant application, the claimed subject matter in U.S. Patent No. 12,427,698 disclose: the first layer and the second layer are stacked along a stacking direction, the stacking direction being a horizontal direction. (see US ‘698: claim 1, lines 4-5 and claim 15, lines 3-4; claims 16-17, lines 2-3)
As to claim 10 of the instant application, the claimed subject matter in U.S. Patent No. 12,427,698 disclose: the work surface is continuous along the upper surface of the first layer and the upper surface of the second layer. (See US ‘698: claims 1 and 15)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEYED MASOUD MALEKZADEH whose telephone number is (571)272-6215. The examiner can normally be reached M-F 8:30AM-5:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, SUSAN D. LEONG can be reached at (571)270-1487. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SEYED MASOUD MALEKZADEH/Primary Examiner
Art Unit 1754 03/19/2026