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`PATENTS
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`Remarks
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`Claims 1-22 are pending, with claims 1, 12, and 22 amended. Support for the
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`amended claims is found, for example, in 11[0114] in the application as originally filed.
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`No new matter has been added. Accordingly, claims 1-22 are presented for examination
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`in view of the amendments and the following remarks.
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`Specification
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`The Office objected to the title of the application as not being descriptive of the
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`invention to which the claims are directed. While the applicant does not concede the
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`propriety of this objection, the applicant nevertheless respectfully submits that this
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`ground of objection is no longer at issue in view of the present amendment of the title of
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`the application.
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`The Office objected to the abstract of the disclosure as not being directed to the
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`claimed invention. Without conceding the propriety of this objection, the applicant
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`respectfully submits that this ground of objection is no longer at issue in view of the
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`presentation of a new (substitute) abstract provided herein.
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`Should the examiner wish to maintain either of the aforementioned grounds of
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`objection, the favor of a telephone call to the applicant’s undersigned representative is
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`respectfully requested.
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`Drawings
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`The Office objected to the drawings as failing to comply with 37 CFR 1.84(p)(5)
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`because reference characters 135 and 136 were not mentioned in the specification. The
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`specification is presently amended to include reference characters 135 and 136. No new
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`matter has been added. Accordingly, reconsideration and withdrawal of this ground of
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`objection is respectfully requested.
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`Claim Objections
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`The Office objected to claims 1 and 12 for including certain informalities related
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`to the recitation of “the tool.” The applicant respectfully requests reconsideration and
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`withdrawal of these objections in view of the present amendments to claims 1 and 12.
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`PATENTS
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`MBOT-003 8-P04
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`Claim Rejections — 35 US. C. § 103
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`Claims 1, 12, and 22 are rejected under 35 U.S.C. § 103 as being unpatentable
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`over Bodell (US. 8,412,588) in view of Wilson (US. 2006/0293906). However, Bodell
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`and Wilson, alone or in any proper combination, have not been shown to have described
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`or made obvious a method including “designing a project including .
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`.
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`. at least one tool
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`for mechanically coupling two parts from among [a] first plurality of parts and [a] second
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`plurality of parts, wherein all of the second plurality of parts can be fabricated using a
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`three-dimensional printer and wherein the at least one tool can be fabricated using a
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`three-dimensional printer .
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`. .,” as recited in amended claim 1, from which claims 2-11
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`ultimately depend.1 For analogous reasons, Bodell and Wilson have not been shown to
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`have described or made obvious the computer program product of amended claim 12,
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`from which claims 13-21 ultimately depend, or the kit of amended claim 22.
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`Bodell described that “a user at computing devices 102, 104, 106 may access [an]
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`on-demand product fabrication system 100 to select a product .
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`.
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`. and then receive the
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`product 124, which can be fabricated on-demand for the user.”2 “The products can be
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`fabricated based at least in part on a manufacturable model .
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`.
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`. that includes information
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`that can be used to control a machine (e.g., a 3D printer) that fabricates the product.”3
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`“[A] user may select the manufacturable model from the on-demand fabrication system
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`100 in addition to, or instead of, the fabricated product [124]. For example, the user may
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`receive the fabricated product 124 from a product delivery service 122 and/or the
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`manufacturable model (e. g., via electronic download over the network 108).”4 “[T]he
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`user may access [a] catalog content database 116 to select a product fabricated on
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`demand for another user, and request to have that product, components of that product, or
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`a kit of sub-parts of that product fabricated.”5 As the Office appears to acknowledge,
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`however, Bodell has not been shown to have described or made obvious a kit including a
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`tool or that a printer can make the tool.6
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`1 Emphasis added.
`2 Bodell, 2:32-40.
`3 Bodell, 2:62-65.
`4 Bodell, 3:4-10.
`5 Bodell, 4:41-44.
`6 See Office action, p. 4.
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`Wilson described “a method of developing a plan for repairing a product and,
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`more particularly, to a method of developing a plan for repairing a product using a
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`scanning process to identify a preferred replacement part.”7 “The process 10 includes
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`scanning 12 a part of an aircraft .
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`.
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`. needing replacement using a scanning device .
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`.
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`. to
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`acquire information about at least one of dimensions, a position, and an orientation of the
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`4:
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`part.
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`[T]he scanning device is used to determine the position and/or orientation of the
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`part to be replaced with respect to the aircraft it is mounted on before it is removed from
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`the aircraft.”9
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`Positioning and orienting using the digitized positioning data can be
`performed using relatively simple or “sof ” tools instead of the heavy
`and expensive “hard” tools often needed in conventional part
`replacement processes. One type of hard too] is a robust framework
`that contacts the aircraft and part to be replaced at various points
`to identify the position of the part with respect to the aircraft. The
`framework is designed to allow removal of the part to be removed.
`When mounting the replacement part
`to the aircraft,
`the
`replacement part is positioned by mating it with the contact features
`of the framework corresponding to the position of the part to be
`replaced. Soft positioning tools, on the other hand are needed to
`prop the preferred replacement part adjacent the desired position
`so the part can be slightly maneuvered into proper position. The
`type of soft positioning tool(s) used varies depending on the
`application. Soft tools can be light scaffolding, a crane, or even more
`common manufacturing implements, such as a sawhorse or dolly.
`Soft and hard tools can be specially developed for particular
`applications. Methods of manufacturing such tools
`include
`machining, forging, hydro-forming, selective laser sintering (SLS),
`directed metal
`disposition
`(DMD),
`and
`laminate
`object
`manufacturing (LOM).10
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`“After the preferred replacement part and aircraft are prepared, positioned, and oriented
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`as desired, the part is fastened to the aircraft.”11
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`Accordingly, to the best of our understanding, Wilson described methods of
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`manufacturing tools for positioning and orientation of the preferred replacement part,
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`which occurs prior to fastening the replacement part to the aircraft. Wilson described the
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`tools used for fastening the replacement part to the aircraft as being part of logistics
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`associated with a repair plan:
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`7 Wilson, ‘H[0001].
`8 Wilson, ‘H[0015].
`9 Wilson, ammo].
`10 Wilson, 1i[0022].
`11 Wilson, 1i[0022].
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`The repair plan can . . . include procurement of hardware or a kit of
`hardware needed for the repair, such as necessary tooling and
`fasteners. For example, based on the information acquired by
`scanning 12, 20, 22, the data processor may determine that a small
`drill and drill bit of particular diameter .
`.
`. are required to slightly
`enlarge a hole in the receiving portion of the aircraft. Lead times for
`procuring rare or custom tooling, fasteners, and other hardware can
`have a significant impact on the cycle time of repair.12
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`For at least this reason, a person of ordinary skill in the art would n_ot have understood
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`Wilson to have described manufacturing tools for mechanically coupling parts. Further,
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`the applicant respectfully submits that a person of ordinary skill in the art would not have
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`sought to modify Wilson to include methods of manufacturing tools for mechanically
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`coupling parts at least because such a modification would have changed the fundamental
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`operating principle of Wilson’s method.13 That is, a person of ordinary skill in the art
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`would not have sought to modify Wilson’s method to include manufacturing tools for
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`mechanically coupling parts at least because Wilson’s repair plan would have been
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`understood to be a solution to the logistics associated with tools used to fasten the parts.14
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`Further, the applicant respectfully submits that the Office has not provided a
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`basis with rational underpinning for the proposed modification of Bodell in View of
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`Wilson.15 Rather, the Office states that “[i]t would have been obvious to one of ordinary
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`skill in the art to modify Bodell in View of Wilson to also include in the kit a tool used in
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`assembly of the project and a plan (instructions) on use of the tool during assembly or
`7716
`disassembly (repair). While the applicant acknowledges that any judgement on
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`obviousness is necessarily a reconstruction based on hindsight reasoning, such a
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`reconstruction is improper if it includes knowledge gleaned only from applicant’s
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`disclosure.17 That is the case here. In particular, the Office’s proposed rationale for
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`12 Wilson, 11[0020].
`13 See, e.g., MPEP 2143.01 VI (“If the proposed modification or combination of the prior art would change
`the principle of operation of the prior art invention being modified, then the teachings of the reference are
`not sufficient to render the claims primafacie obvious.” (citing In re Ratti, 270 F.2d 810, 813, 123 USPQ
`349, 352 (CCPA1959))).
`14 See, e.g., Ex parte Rinkevich, 2007 WL 1552288, *4 (BPAI 2007) (nonprecedential) (“[A] person of
`ordinary skill in the art having common sense at the time of the invention would not have reasonably
`looked to [a secondary reference] to solve a problem already solved by [the reference to be modified].”).
`15 See, e.g., MPEP 2142 (“The Federal Circuit has stated that “rejections on obviousness cannot be
`sustained with mere conclusory statements, instead, there must be some articulated reasoning with some
`rational underpimnng to support the legal conclusion of obviousness.” (quoting In re Kahn, 441 F.3d 977,
`988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006))).
`16 Office action, p. 5.
`17 See MPEP 2145 X.
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`modification of Bodell in View of Wilson appears to be based solely on a restatement of
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`the applicant’s own claim language. For at least this reason, the applicant respectfully
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`submits that the Off1ce’s proposed modification of Bodell in View of Wilson appears to be
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`based on impermissible hindsight and is, therefore, improper.
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`In View of the foregoing, the applicant respectfully submits that Bodell and
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`Wilson, alone or in any proper combination, have not been shown to have described or
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`made obVious a method including “designing a project including .
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`.
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`. at least one tool for
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`mechanically coupling two parts from among [a] first plurality of parts and [a] second
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`plurality of parts, wherein all of the second plurality of parts can be fabricated using a
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`three-dimensional printer and wherein the at least one tool can be fabricated using a
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`three-dimensional printer .
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`. .,” as recited in amended claim 1, from which claims 2-11
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`ultimately depend. For analogous reasons, Bodell and Wilson have not been shown to
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`have described or made obVious the computer program product of amended claim 12,
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`from which claims 13-21 ultimately depend, or the kit of amended claim 22.
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`Conclusion
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`In view of the foregoing, the applicant believes that the currently pending claims
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`are in condition for allowance and respectfully requests a corresponding Notice of
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`Allowance. The applicant further believes that all of the pending claims have been
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`addressed. However, the absence of a reply to a specific rejection, issue or comment does
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`not signify agreement with or concession of that rejection, issue or comment. In addition,
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`because the arguments made above may not be exhaustive, there may be reasons for
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`patentability of any or all pending claims (or other claims) that have not been expressed.
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`Nothing in this paper should be construed as intent to concede any issue with
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`regard to any claim, except as specifically stated in this paper. The amendment of any
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`claim does not necessarily signify concession of unpatentability of the claim prior to its
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`amendment.
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`The Director is hereby authorized to charge any fees or to credit any
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`overpayments associated with this filing to Deposit Account No. 50-4262. If the
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`Examiner believes a telephone conference would expedite prosecution of this application,
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`please telephone the undersigned at (617) 631-5457.
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`Respectfully submitted
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`STRATEGIC PATENTS, P.C.
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`/John Paul Mello/
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`John Paul Mello
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`Reg. No. 61,400
`Tel: (617)-631-5457
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`August 12, 2016
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