UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNTIED STATES DEPARTMENT OF COMMERCE
`
`
`
`
`United States Patent and Trademark Office
`
`
`Address: COMMISSIONER FOR PA TENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`15/267,956
`
`09/16/2016
`
`Kenneth Tyler
`
`
`
`13087.0003-02000 1088
`
`7590
`
`148457
`CC3D
`215 E. Lakeside Avenue
`
`
`Coeur d'Alene, IDAHO 83814
`
`03/12/2018
`
`EXAJ\.1INER
`
`YI, STELLA KIM
`
`ART UNIT
`
`PAPERNlJJ\1BER
`
`1742
`
`
`
`NOTIFICATION DATE DELIVERY MODE
`
`03/12/2018 ELECTRONIC
`
`
`
`
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`
`
`
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`
`
`
`
`
`
`following e-mail address( es):
`ryan@continuouscornposites.com
`
`PTOL-90A (Rev. 04/07)
`
`Page 1 of 7
`
`Markforged Ex. 1005
`Markforged v. Continuous Composites, IPR2022-01220
`
`

`

`Office Action Summary
`
`Examiner
`STELLAKYI
`
`Application No.
`15/267,956
`
`Applicant(s)
`Tyler, Kenneth
`
`I
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address -
`Period for Reply
`
`Art Unit
`1742
`
`AIA Status
`No
`
`-
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed
`after SIX (6) MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`Status
`1)~ Responsive to communication(s) filed on 12/20/2017
`0 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on __
`2a)~ This action is FINAL.
`2b) 0 This action is non-final.
`3)0 An election was made by the applicant in response to a restriction requirement set forth during the interview on
`__ ; the restriction requirement and election have been incorporated into this action.
`4 )0 Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Ex parte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims*
`1-20 is/are pending in the application.
`5) ~ Claim(s)
`5a) Of the above claim(s) __ is/are withdrawn from consideration.
`6) ~ Claim(s) 1-14 and 17 is/are allowed.
`7) ~ Claim(s) 15-16 and 18-20 is/are rejected.
`8) O Claim(s) __ is/are objected to.
`9) O Claim(s) __ are subject to restriction and/or election requirement
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http://www.uspto.gov/patents/init events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`Application Papers
`10)0 The specification is objected to by the Examiner.
`11)0 The drawing(s) filed on __ is/are: a)O accepted or b)O objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12)0 Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`c)O None of the:
`b)O Some**
`a)O All
`1.0 Certified copies of the priority documents have been received.
`2.0 Certified copies of the priority documents have been received in Application No. __ .
`3.0 Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`** See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`1) O Notice of References Cited (PT0-892)
`
`2) O Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date __ .
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`3) O Interview Summary (PT0-413)
`Paper No(s)/Mail Date __ .
`4) O Other: __ .
`
`Part of Paper No./Mail Date 20180306
`
`Page 2 of 7
`
`Markforged Ex. 1005
`Markforged v. Continuous Composites, IPR2022-01220
`
`

`

`Application/Control Number:15/267,956
`Art Unit:1742
`
`Page2
`
`Notice of Pre-AJA or AJA Status
`
`1.
`
`The present application is being examined under the pre-AIA first to invent
`
`provisions.
`
`Claim Rejections - 35 USC§ 102
`
`1.
`
`The following is a quotation of the appropriate paragraphs of pre-AlA 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 -
`
`(b) the invention was patented or described in a printed publication in this or a foreign
`country or in public use or on sale in this country, more than one year prior to the date of
`application for patent in the United States.
`
`2.
`
`Claim(s) 15-16 is/are rejected under pre-AIA 35 U.S.C. 102b as being anticipated
`
`by JANG et al. (2003/0236588-of record).
`
`Regarding claims 15-16, JANG et al. discloses a method of manufacturing a three(cid:173)
`
`dimensional object comprising:
`
`directing a curable liquid material, a continuous strand material, and a filler
`
`material to a nozzle;
`
`discharging from the nozzle a path of composite material onto a base member
`
`(40) (anchor) [0074]
`
`moving the nozzle during discharging to create the three-dimensional object
`
`[0072]-[0074]; [0076]; and
`
`curing the curable liquid material in the path of composite material with a
`
`heating provision that is attached to, or contained in, the nozzle to control the
`
`advancement of curing reactions [0074]; Figs-4-5.
`
`Page 3 of 7
`
`Markforged Ex. 1005
`Markforged v. Continuous Composites, IPR2022-01220
`
`

`

`Application/Control Number:15/267,956
`Art Unit:1742
`
`Page3
`
`3.
`
`Claim(s) 18-20 is/are rejected under pre-AlA 35 U.S.C. 102b as being anticipated
`
`by CRUMP (5,340,433-of record).
`
`Regarding claim 18, CRUMP discloses a method of manufacturing a three(cid:173)
`
`dimensional object, comprising:
`
`dispensing fluid material or strand (180) from a nozzle (112) wherein the strands
`
`(180) are anchored on to the substrate (108) and the nozzle (112) is moved in a
`
`predetermined pattern along "X", ''Y", and "Z" axes (Fig.12, C20:L61-C21:L5).
`
`CRUMP further discloses that each strand (180) solidifies in space as it is
`
`dispensed from the nozzle (112) while the nozzle is being moved (C22:L67-68; Fig.12).
`
`CRUMP discloses in Figs. 7-8 that have multiple supply passages into which
`
`multiple rods or flexible strands of different compositions may be directed to and
`
`discloses that various materials may be used that include a variety of thermoplastic
`
`resins, metals, and metal alloys (C6:L65-68). Furthermore, CRUMP discloses the fluid
`
`material or strand may also comprise chemical setting materials (curable material).
`
`Therefore, CRUMP discloses directing a curable liquid material and a continuous strand
`
`material to the nozzle to form a composite material that will comprise the continuous
`
`strand material at least partially coated with a chemical setting material (curable
`
`material) as claimed.
`
`Regarding claims 19-20, CRUMP discloses in Fig.6 that multiple dispensing
`
`materials are simultaneously discharged through the nozzle to form three-dimensional
`
`shapes wherein the strands are interlocked as illustrated in Fig. 12.
`
`Allowable Subject Matter
`
`1.
`
`Claims 1-14 and 17 allowed.
`
`Page 4 of 7
`
`Markforged Ex. 1005
`Markforged v. Continuous Composites, IPR2022-01220
`
`

`

`Application/Control Number:15/267,956
`Art Unit:1742
`
`Page4
`
`Response to Arguments
`
`1.
`
`Applicant's arguments, see Remarks, filed 12/20/2017, with respect to claims 1-
`
`14 and 17 have been fully considered and are persuasive. The rejection of claims 1-14
`
`and 17 has been withdrawn. However, applicant's arguments filed 12/20/2017 with
`
`respect to claims 15-16 and 18-20 have been fully considered but they are not
`
`persuasive.
`
`Regarding claim 15, Applicant argues JANG does not teach or suggest
`
`"discharging from a nozzle a path of composite material containing a continuous strand
`
`material and a filler material at least partially coated with a curable liquid material".
`
`Examiner respectfully disagrees. JANG discloses such in paragraph 72.
`
`Regarding claim 16, Applicant argues JANG does not teach or suggest that the
`
`curing device is aimed at a path of composite material. Examiner respectfully disagrees.
`
`JANG does disclose aiming the curing device at a path of composite material as
`
`illustrated in Fig. 4 wherein the heating elements surrounds the path of composite
`
`material.
`
`Regarding claim 18, CRUMP discloses a method of manufacturing a three(cid:173)
`
`dimensional object, comprising:
`
`dispensing fluid material or strand (180) from a nozzle (112) wherein the strands
`
`(180) are anchored on to the substrate (108) and the nozzle (112) is moved in a
`
`predetermined pattern along "X", ''Y", and "Z" axes (Fig.12, C20:L61-C21:L5).
`
`CRUMP further discloses that each strand (180) solidifies in space as it is
`
`dispensed from the nozzle (112) while the nozzle is being moved (C22:L67-68; Fig.12).
`
`CRUMP discloses in Figs. 7-8 that have multiple supply passages into which
`
`multiple rods or flexible strands of different compositions may be directed to and
`
`Page 5 of 7
`
`Markforged Ex. 1005
`Markforged v. Continuous Composites, IPR2022-01220
`
`

`

`Application/Control Number:15/267,956
`Art Unit:1742
`
`Pages
`
`discloses that various materials may be used that include a variety of thermoplastic
`
`resins, metals, and metal alloys (C6:L65-68). Furthermore, CRUMP discloses the fluid
`
`material or strand may also comprise chemical setting materials (curable material).
`
`Therefore, CRUMP discloses directing a curable liquid material and a continuous strand
`
`material to the nozzle to form a composite material that will comprise the continuous
`
`strand material at least partially coated with a chemical setting material (curable
`
`material) as claimed.
`
`Regarding claims 19-20, CRUMP discloses in Fig.6 that multiple dispensing
`
`materials are simultaneously discharged through the nozzle to form three-dimensional
`
`shapes wherein the strands are interlocked as illustrated in Fig. 12.
`
`Conclusion
`
`1.
`
`THIS ACTION IS MADE FINAL. 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
`
`extension fee 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.
`
`Page 6 of 7
`
`Markforged Ex. 1005
`Markforged v. Continuous Composites, IPR2022-01220
`
`

`

`Application/Control Number:15/267,956
`Art Unit:1742
`
`Page6
`
`2.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to STELLA KIM YI whose telephone number is (571)270-
`
`5123. The examiner can normally be reached on Monday-Friday 8: 00-5: oo EST.
`
`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, Christina Johnson can be reached on 571-272-1176. The fax phone number
`
`for the organization where this application or proceeding is assigned is 571-273-8300.
`
`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIR) system. Status information for
`
`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR only.
`
`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
`
`you have questions on access to the Private PAIR system, contact the Electronic
`
`Business Center (EEC) at 866-217-9197 (toll-free). If you would like assistance from a
`
`USPTO Customer Service Representative or access to the automated information
`
`system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
`
`STELLA YI
`Examiner
`Art Unit 1742
`
`/STELLA K YI/
`Primary Examiner, Art Unit 1742
`
`Page 7 of 7
`
`Markforged Ex. 1005
`Markforged v. Continuous Composites, IPR2022-01220
`
`