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`US SN 14/922,267
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`Remarks
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`PATENTS
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`MBOT-0051-P02
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`Claims 1 is amended. Claim 12 is canceled. Claims 14—18 are added as new.
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`Status of the Claims
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`Claims 1, 3—11 and 13—18 are presented for examination, where claim 1 is independent.
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`The claim amendments find support in at least 1111 [0050], [0063] and [0065] of the
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`as-filed Specification. No new matter is added.
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`Claim Rejections — 35 US. C. § 102
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`Independent claim 1 stands rejected under 35 U.S.C. § 102 as being anticipated by
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`US. Pat. No. 7,939,003 to Bonassar, et a]. (“Bonassar”). This rejection is traversed for at
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`least the following reasons.
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`The applicant has devised a three-dimensional printer where “[a]n extruder .
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`.
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`. is
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`instrumented to detect contact force against the extruder, such as by a build platform or
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`an object being fabricated.
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`”1 With a force sensor included on the extruder itself,
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`“resulting feedback data can be used in a variety of ways to control operation of the
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`three-dimensional printer during fabrication or diagnostics.”2 For example, the
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`applicant’s extruder with a force sensor coupled thereto can be used to detect “warping of
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`the [build] surface, physical damage to the surface, (e.g., dents, scratches, etc.), the
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`surface having become skewed or misaligned with respect to its intended mounting
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`position in the three-dimensional printer,” or for planarizing a build surface to
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`compensate for measured irregularities.3 In this context, the build surface can include
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`either a build platform or a layer of deposited build material upon which further material
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`is deposited.4
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`The applicant maintains its previous position that the inventive concept of an
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`extruder including a force sensor is not taught or suggested by Bonassar, which instead
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`appears to contemplate a calibration device 44 with a force sensor 204, but this
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`calibration device 44 (with force sensor 204) is included on the substrate 16 (1'. e., the
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`1 Applicant’s as-filed Specification (hereinafter “Specification”), Abstract.
`2 Specification, Abstract.
`3 Specification, 1] [0054].
`4 See, e. g, Specification 1] [0057] (“This process 400 may also or instead be used periodically during a
`fabrication process to ensure that a build remains leveled, or continuously, e. g., by monitoring contact force
`and controlling flow rate, to maintain a level top surface of an object during fabrication”).
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`build surface5), not on an extruder (e.g., the syringe 66 in Bonassar). Therefore,
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`Bonassar does not teach or suggest an extruder having one or more sensors for sensing a
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`contact force between the extruder and a separate structure as claimed. This is more than
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`a passing distinction, as the system in Bonassar would not be able to perform many of the
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`advantageous functions of the presently claimed three-dimensional printer, such as
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`detecting a warped build surface (e.g., where the presently claimed extruder, unlike
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`Bonassar, can sense a force in numerous locations on a build surface to see if they match,
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`including at the extremities), planarizing a build surface, detecting leveling of a build
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`surface, checking a printed layer for irregularities, and so on.
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`Nevertheless, to further advance prosecution on the merits, the applicant has
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`amended independent claim 1 to include “a controller configured to receive a signal from
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`the one or more sensors on the extruder and to calculate the contact force between the
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`extruder and the separate structure,” and to further distinguish Bonassar. Again, because
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`Bonassar ’s calibration device 44 (with force sensor 204) is included on the build surface,
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`not on the extruder, Bonassar cannot anticipate a controller that receives a signal from a
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`sensor on the extruder and calculates the contact force between the extruder and a
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`separate structure.
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`For at least the foregoing reasons, independent claim 1 is believed to be
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`patentable over Bonassar. The remaining claims depend from an allowable base claim
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`and are likewise in condition for allowance. The applicant respectfully requests
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`reconsideration and withdrawal of the outstanding claim rejections under 35 U.S.C. §
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`102.
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`Claim Rejections — 35 US. C. § 103
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`Independent claim 1 stands rejected under 35 U.S.C. § 103 as being unpatentable
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`over US. Pat. No. 6,129,872 to Jang (“Jang”) in view of US. Pat. No. 7,625,198 to
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`Lipson, er a]. (“Lipson”). This rejection is traversed at least because, similar to the
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`discussion above with respect to Bonassar, neither Jang nor Lipson teach or suggest an
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`extruder with one or more sensors mechanically coupled thereto for sensing a contact
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`5 In Bonassar, the “[s]ubstrate 16 is a build surface upon which material from material deposition tool 18 is
`deposited.” Bonassar, col. 8, 11. 24—26.
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`force between the extruder and a separate structure. Additionally, neither Jang nor Lipson
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`teach or suggest “a controller configured to receive a signal from the one or more sensors
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`on the extruder and to calculate the contact force between the extruder and the separate
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`structure,” as claimed.
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`Jang is directed to a “[p]rocess and apparatus for creating a colorful three-
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`dimensional obj ect.”6 As correctly noted in the Office Action, “Jang fails to disclose a
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`sensor detecting contact force between the fabrication tool and a separate structure.”7
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`Therefore, while Jang may generally contemplate various components of a three-
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`dimensional printer, conspicuously missing from Jang is any teaching or suggestion of an
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`extruder having one or more sensors for sensing a contact force between the extruder and
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`a separate structure, and a controller that receives a signal from a sensor on the extruder
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`to calculate the contact force between the extruder and the separate structure.
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`Lipson does not fill the void left by Jang. Lipson appears to share inventorship
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`and priority claim with Bonassar (discussed above), and Lipson also appears to include
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`an identical specification/disclosure to Bonassar. Thus, similar to Bonassar, Lipson
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`appears to contemplate a calibration device 44 that may include a force sensor 204, but
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`the calibration device 44 (with force sensor 204) is included on the substrate 16 (i.e., the
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`build surface), not on an extruder (e.g., the syringe 66).
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`Further, the entirety of the discussion of Lipson in the Office Action is as follows:
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`Lipson et al. discloses an for [sic] fabricating a 3-D article,
`comprising a force sensor (204) to detect very small change
`in applied force with very little displacement, so that the
`actual position of the injecting tip (68) can be identified for
`better maneuver and control of the tip onto the subject (col.
`22, lines 31—51).8
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`M.P.E.P. § 2143 states that “[t]he key to supporting any rejection under 35 U.S.C. 103 is
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`the clear articulation of the reason(s) why the claimed invention would have been
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`obvious” and that “the analysis supporting a rejection under 35 U.S.C. 103 should be
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`made explicit.”9 By merely offering the above sentence, the applicant believes that the
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`Office has not satisfied its basic requirements of a primafacie case of obviousness and
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`6 Jang, Title.
`7 Final Office Action mailed April 5, 2019 (hereinafter “Office Action”), p. 5.
`8 Office Action, p. 5.
`9 M.P.E.P. § 2143 (emphasis added).
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`invites the Office to provide an analysis (as required by the M.P.E.P.) that demonstrates
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`how a reference (Lipson) that does not include a sensor “mechanically coupled to the
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`extruder” renders such a structural configuration obvious.
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`For the foregoing reasons, independent claim 1 is believed to be patentable over
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`the cited art. The remaining claims depend from an allowable base claim and are likewise
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`in condition for allowance. The applicant respectfully requests reconsideration and
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`withdrawal of the outstanding claim rejections under 35 U.S.C. § 103.
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`Note Regarding the Ofi‘ice’s “Response to Arguments”
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`In the “Response to Arguments,” the Office Action states:
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`Applicant’s arguments filed 12/10/2018 have been fully
`considered but
`they are not persuasive.
`In response to
`applicant’s argument that the prior art force sensors are not
`located at a claimed position to perform the functions of the
`presently claimed three-dimensional printer, a recitation of
`the intended use of the claimed invention must result in a
`structural diflerence between the claimed invention and the
`prior art in order to patentably distinguish the claimed
`invention from the prior art. If the prior art structure is
`capable ofperforming the intended use,
`then it meets the
`claim. In this case, one of ordinary skill in the art would have
`been motivated to relocate the position of the sensors to
`detect the contacting force between different structures in
`order to control
`the movements of different structures
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`relative to one another so that there will not be an abrupt
`contact that could harms [sic] the nozzle and/or deform the
`material being injected.10
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`The applicant disagrees with the Office’s reasoning for at least the following reasons.
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`As an initial matter, independent claim 1 actively recites an actual state of
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`configuration that has not been shown to be taught by the cited art—“one or more sensors
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`mechanically coupled to the extruder.” This is not a “recitation of the intended use,” as
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`stated in the Office Action, but rather a structural difference between the claimed
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`invention (that includes sensors on an extruder) and the cited art (that lacks sensors on an
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`extruder). Therefore, the statement by the Office that “[i]f the prior art structure is
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`10 Office Action, pp. 5—6 (emphasis added).
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`capable of performing the intended use, then it meets the claim” is moot.11 Lastly, the
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`Office recites that there is a motivation in the prior art to relocate sensors but provides no
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`reasoning from the prior art for such a motivation. If this rejection is maintained, more is
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`needed from the Office to meet its burden—specifically, the Office should demonstrate a
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`motivation to move the sensors based onfacts gleanedfrom the prior art.12
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`11 To the applicant’s knowledge, this reasoning is meant for recitations in a preamble of a claim, or when a
`difference between a claimed invention and the prior art is based on function, not a structural difference,
`where neither of these reasonings would apply in the present context. The applicant invites the Office to
`elaborate on this reasoning if the present rejections are maintained.
`12 “[I]mpermissible hindsight must be avoided and the legal conclusion must be reached on the basis ofthe
`facts gleanedfrom the prior art.” M.P.E.P. § 2142 (emphasis added).
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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.
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`The applicant believes that all of the pending claims have been addressed.
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`However, the absence of a reply to a specific rejection, issue or comment does not signify
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`agreement with or concession of that rejection, issue or comment. In addition, because
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`the arguments made above may not be exhaustive, there may be reasons for patentability
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`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.
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`Respectfully submitted
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`STRATEGIC PATENTS, P.C.
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`/Thomas J. Bassolino/
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`Thomas J. Bassolino
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`Reg. No. 65,946
`Tel: (646) 238-1234
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`September 5, 2019
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