DIVERGENT TECHNOLOGIES, INC.

UNITED STATES PATENT AND TRADEMARK OFFICE

UNITED STATES DEPARTMENT OF COMMERCE

United States Patent and Trademark Office

Address: COMMISSIONER FOR PATENTS P.O. Box 1450

Alexandria, Virginia 22313-1450 www.uspto.gov

APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.

16/833,447 03/27/2020 Kevin Robert Czinger 038191.00479 2492 163743 7590 01/05/2026 EXAMINER

Arent Fox LLP and Divergent Technologies Inc.

Arent Fox LLP

DESAI, RACHNA SINGH

1717 K Street, NW Washington, DC 20006-5344

ART UNIT PAPER NUMBER

3992

NOTIFICATION DATE DELIVERY MODE

01/05/2026 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):

patentdocket@arentfox.com

PTOL-90A (Rev. 04/07)

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UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

Ex parte KEVIN ROBERT CZINGER,

BROC WILLIAM TENHOUTEN, RICHARD W. HOYLE,

DONALD J. CHRISTIAN, STUART PAUL MACEY, and

ANTONIO BERNERD MARTINEZ

Appeal 2026-000250 Application 16/833,447 Patent 10,303,159 B2 Technology Center 3900 Before ERIC B. CHEN, JENNIFER L. MCKEOWN, and MICHAEL J. ENGLE, Administrative Patent Judges. ENGLE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

Appellant¹appeals under 35 U.S.C. § 134(a) from the Examiner's rejection of claims 1-67, which are all of the claims pending in this application for reissue of U.S. Patent No. 10,303,159 B2 ("'159 patent"). We have jurisdiction under 35 U.S.C. § 6(b).

We affirm.

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Appeal 2026-000250 Application 16/833,447 Patent 10,303,159 B2

TECHNOLOGY

The '159 patent relates to "an additive manufacturing (AM) printer for vehicle manufacture." '159 patent, 1:18-20.

ILLUSTRATIVE CLAIM

Reissue claim 1 is illustrative and reproduced below showing only the remaining text (e.g., omitting deletions made during reissue proceedings):

1. An apparatus comprising:

one or more analysis components, the one or more analysis components being configured to obtain information based on a model of one or more vehicle structures, wherein the information includes a variable that characterizes the model at least in part, and to analyze the information to obtain analysis results including a physics-based result and a cost result, the physics- based result being based on a physics-based analysis of the information, and the cost result being based on a cost analysis of the information; and

an integrator configured to evaluate the analysis results against criteria to determine whether the model satisfies the criteria,

wherein, if the model satisfies the criteria, the integrator stores the model as an optimized model in a computer memory, and if the model does not satisfy the criteria, the integrator continues to update the model, send updated information based on the updated model to the one or more analysis components to obtain updated analysis results based on the updated information, and evaluate the updated analysis results against the criteria until the updated model satisfies the criteria, and stores the updated model as the optimized model in the computer memory.

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Appeal 2026-000250 Application 16/833,447 Patent 10,303,159 B2

REFERENCES

The Examiner relies on the following references as prior art:

REJECTIONS

The Examiner makes the following rejections:

RELATED PROCEEDINGS

We recently addressed the '159 patent in Reissue Application No. 16/833,420. In that case, we reversed the Examiner's rejections for obviousness based on some of the same references at issue here, including Faruque, Lamb, and Fonte, but entered a new ground of rejection under 35

2 Although omitted from the introductory statement of the rejection, claim 35 is included in the substantive analysis. See Final Act. 9, 24.

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Appeal 2026-000250 Application 16/833,447 Patent 10,303,159 B2 U.S.C. § 101. See App. No. 16/833,420, Decision on Appeal (Aug. 29, 2025). We denied Appellant's request for reconsideration of that § 101 rejection. See Request (Oct. 29, 2025); Decision on Request for Rehearing (Nov. 20, 2025). That reissue application is still pending.

ISSUES

1. Did the Examiner err in concluding that claim 1 improperly recaptured surrendered subject matter under 35 U.S.C. § 251?

2. Did the Examiner err in finding the combination of Faruque and Lamb teaches or suggests all limitations of claim 1?

ANALYSIS

Changes to Claim 1 During Prosecution The '159 patent issued from Application No. 15/604,624 ("'624 application"). The original version of claim 1 as filed with the '624 application is reproduced below:

1. An additive manufacturing apparatus, comprising:

a printer that additively manufactures structures for a vehicle;

a plurality of analysis components, each analysis component being configured to receive information based on a design model of the vehicle and to analyze the information based on an analysis factor, wherein each analysis component analyzes the information based on a different analysis factor than the other analysis components; and

an integrator that receives the analyzed information from the analysis components, updates the design model based on the analyzed information, and determines whether the updated design model satisfies criteria,

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Appeal 2026-000250 Application 16/833,447 Patent 10,303,159 B2 wherein, if the updated design model satisfies the criteria, the integrator determines printing instructions for the printer to print one or more structures of the vehicle based on the updated design model,

and if the updated design model does not satisfy the criteria, the integrator sends information based on the updated design model to the analysis components, and the analysis components analyze the information based on the updated design model.

After a rejection under § 101 (see Non-Final Act. 2-5 (Sept. 10, 2018)), Appellant amended claim 1 as follows, with additions underlined:

1. An additive manufacturing apparatus, comprising:

(i) a printer that additively manufactures structures for a vehicle;

(ii) a plurality of analysis components, each analysis component being configured to receive information based on a design model of the vehicle and to analyze the information based on an analysis factor, wherein each analysis component analyzes the information based on a different analysis factor than the other analysis components; and

(iii) an integrator that receives the analyzed information from the analysis components, updates the design model based on the analyzed information, and determines whether the updated design model satisfies criteria,

(iv) wherein, if the updated design model satisfies the criteria, the integrator determines printing instructions for the printer to print the one or more structures of the vehicle based on the updated design model and wherein the printer receives the printing instructions from the integrator and prints the one or more structures using the received printing instructions,

(v) and if the updated design model does not satisfy the criteria,

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Appeal 2026-000250 Application 16/833,447 Patent 10,303,159 B2

(a) the integrator sends information based on the updated design model to the analysis components, and

(b) the analysis components analyze the information based on the updated design model,

(c) the integrator receives the analyzed information, updates the design model based on the analyzed information, and determines whether the updated design model satisfies criteria,

(d) wherein steps (a)-(c) are performed one or more times until the updated design model satisfies the criteria,

(e) when the updated design model satisfies the criteria, the integrator determines other printing instructions and sends the other printing instructions to the printer and the printer prints the one or more structures using the other printing instructions.

See App. No. 15/604,624, Amendment 2-3 (Dec. 7, 2018). In the amendment, Appellant stated that "Applicant respectfully disagrees with the Examiner's conclusion that the claimed apparatus, method and computer program product constitute abstract idea without significantly more" but

"[n]evertheless, to expedite issuance of the present application into a patent, Applicant has amended independent claims 1, 3 and 13 in accordance with the suggestions of the Examiner." Amendment 12. "As amended, the independent claims address the Examiner's first concern, namely that '[m]erely determining the printer instructions is not sufficient' and that 'merely determining the instructions and then communicating them to the printer is also not sufficient.'" Id. Appellant emphasized that the claims as amended now recite "printing the one or more structures based on the printing instructions if the updated design model satisfies the criteria." Id.

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Appeal 2026-000250 Application 16/833,447 Patent 10,303,159 B2 at 12-13. "Applicant has also addressed the Examiner's second concern, namely that 'the problem occurs when the claim goes the other path and the data does not satisfy the criteria and is sent to the software in the hopes of obtaining more favorable data.'" Id. at 13. "Accordingly, . . . the claims as amended recite an iterative approach of updating the data model until the updated design model satisfies the relevant criteria, at which point the one or more structures are printed." Id.

The Examiner mailed a notice of allowance on January 14, 2019, and an issue notification on May 8, 2019. The notice of allowance stated that

"the prior art of record fails to teach or adequately suggest the combination of claimed features," highlighting limitations (i), (iii), and (v), including (a)- (e). See App. No. 15/604,624, Notice of Allowance 2-3 (Jan. 14, 2019). Appellant subsequently submitted a letter stating:

The Applicant believes the Examiner's stated reasons for

allowance are unnecessary. The record as a whole makes clear the reasons for allowance and therefore a statement by the Examiner is not necessary or warranted. While the Applicant agrees that the claims are allowable, the Applicant does not acquiesce in the stated reasons for allowance, nor that

patentability requires each stated feature as expressed by the Examiner.

App. No. 15/604,624, Comments Regarding Examiner's Statement of Reasons for Allowance (Apr. 10, 2019).

In the present reissue, Appellant amended claim 1. The differences between reissue claim 1 and issued claim 1 are reproduced below with brackets for deletions and underlining for additions:

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Appeal 2026-000250 Application 16/833,447 Patent 10,303,159 B2

1. An [additive manufacturing] apparatus [,] comprising:

[(i) a printer that additively manufactures structures for a vehicle;]

[(ii)] one or more [a plurality of] analysis components, the one or more [each] analysis components [component] being configured to obtain [receive] information based on a [design] model of [the] one or more vehicle structures, wherein the information includes a variable that characterizes the model at least in part, and to analyze the information to obtain analysis results including a physics-based result and a cost result, the physics-based result being based on [an] a physics-based analysis [factor wherein each analysis component analyzes the information based on a different] of the information, and the cost result being based on a cost analysis [factor than the other analysis components] of the information; and

[(iii)] an integrator configured to evaluate the analysis results against criteria to determine [that receives the analyzed information from the analysis components, updates the design model based on the analyzed information, and determines] whether the [updated design] model satisfies the criteria, [(iv)] wherein, if the [updated design] model satisfies the criteria, the integrator [determines printing instructions for the printer to print the one or more structures of the vehicle based on] stores the [updated design] model [and wherein the printer receives the printing instructions from the integrator and prints the one or more structures using the received printing instructions] as an optimized model in a computer memory, [;] [(v)] and if the [updated design] model does not satisfy the criteria,

[(a)] the integrator continues to update the model, send [sends] updated information based on the updated [design] model to the one or more analysis components to obtain updated analysis results based on the updated information, and evaluate the updated analysis results against the criteria until the updated model satisfies the

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Appeal 2026-000250 Application 16/833,447 Patent 10,303,159 B2 criteria, and stores the updated model as the optimized model in the computer memory.

[(b) the analysis components analyze the information based on the updated design model,

(c) the integrator receives the analyzed information, updates the design model based on the analyzed information, and determines whether the updated design model satisfies criteria,

(d) wherein steps (a)-(c) are performed one or more times until the updated design model satisfies the criteria,

(e) when the updated design model satisfies the criteria, the integrator determines other printing instructions and sends the other printing instructions to the printer and the printer prints the one or more structures using the other printing instructions.]

§ 251: Reissue Recapture

(Claims 1-67)

"The recapture rule bars a patentee from recapturing subject matter, through reissue, that the patentee intentionally surrendered during the original prosecution . . . ." In re Youman, 679 F.3d 1335, 1343 (Fed. Cir. 2012). "Although [the Federal Circuit] previously addressed cases centered on prior art rejections" under § 102 or § 103, recapture applies "also to subject matter surrendered in light of § 101 rejections." In re McDonald, 43 F.4th 1340, 1347 (Fed. Cir. 2022).

"To determine whether the applicants' reissue claims violate the recapture rule, we apply a three-step recapture rule analysis." Youman, 679 F.3d at 1343. As explained by the Federal Circuit,

(1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;

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Appeal 2026-000250 Application 16/833,447 Patent 10,303,159 B2

(2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and

(3) finally, we determine whether the reissue claims were materially narrowed . . . and hence avoid the recapture rule. N. Am. Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 1349 (Fed. Cir. 2005) (spacing added).

For step one of the recapture analysis, as can be seen in the claim reproduced above, the reissue claim seeks to wholly eliminate the requirements for printing instructions and the printer printing, such as by deleting "(i) a printer that additively manufactures structures for a vehicle";

"determines printing instructions for the printer to print the one or more structures of the vehicle based on" the updated design model; "the printer receives the printing instructions from the integrator and prints the one or more structures using the received printing instructions"; and the entirety of steps (v)(b)-(e), including "when the updated design model satisfies the criteria, the integrator determines other printing instructions and sends the other printing instructions to the printer and the printer prints the one or more structures using the other printing instructions." As conceded by Appellant, "independent claims 1, 13, and 25 do not . . . recite any features involving determining printing instructions or 3-D printers." Appeal Br. 9. Thus, the reissue claims are broader in scope with respect to printing instructions and printing.

For step two of the recapture analysis, Appellant concedes that during original prosecution, "the independent claims were amended to include printing one or more structures using the received printing instructions and to include language relating to repeating certain steps in the methods (i.e.,

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Appeal 2026-000250 Application 16/833,447 Patent 10,303,159 B2 the language identified by the Examiner in the Office Action as being allegedly subject to recapture)." Appeal Br. 8. "In other words, Appellant's December 7, 2018 amendments and remarks addressed the Examiner's concerns under Section 101 that the independent claims of the Original Patent determined printing instructions for a printer to additively manufacture structures of a vehicle (i.e., the alleged abstract idea), but did not actually take any action with said printing instructions (i.e., the claims lacked 'significantly more')." Id. at 8-9. Thus, the broader aspects of the reissue claims (i.e., printing instructions and printing) do relate to subject matter surrendered in the original prosecution.

For step three of the recapture analysis, we must determine whether the reissue claims were materially narrowed and hence avoid the recapture rule. With respect to the Examiner determining that the reissue claims deleted language regarding iterating (e.g., "(d) wherein steps (a)-(c) are performed one or more times until the updated design model satisfies the criteria"), see Ans. 7-8, we agree with Appellant that the claims have been materially narrowed and do elsewhere require substantially the same iteration. See Reply Br. 6. For example, reissue claim 1, as currently amended, recites "the integrator continues to update the model, send updated information based on the updated model to the one or more analysis components to obtain updated analysis results based on the updated information, and evaluate the updated analysis results against the criteria until the updated model satisfies the criteria." Thus, the requirement for iteration has merely been rewritten, not eliminated. This material narrowing avoids the recapture rule with respect to iterating.

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Appeal 2026-000250 Application 16/833,447 Patent 10,303,159 B2 However, there is no such material narrowing with respect to the printing instructions or printer printing in the independent claims. As noted above, Appellant concedes that "independent claims 1, 13, and 25 do not . . . recite any features involving determining printing instructions or 3-D printers." Appeal Br. 9.

Instead, Appellant argues:

The pending independent claims in the present re-issue are directed to an embodiment (performing physics-based and cost- based analysis to determine if a model meets criteria and storing that model when criteria is met) that is wholly unrelated to what was prosecuted in the Original Patent (determining printing instructions and printing one or more structures using the instructions).

Appeal Br. 8. According to Appellant, the features in issued claim 1 "stem from the embodiment illustrated in the Original Patent by Figure 2 and associated text," whereas the features in reissue claim 1 "stem from at least the embodiment illustrated in Figure 6," which "does not include a printer, printing instructions, or printing of a structure based on such printing instructions." Id. at 10. Thus, Appellant argues that the reissue claims are directed to "overlooked aspects not subject to recapture." Reply Br. 3. We are not persuaded by Appellant's argument. According to the Federal Circuit, "'overlooked aspects' is a separate inquiry under reissue that is independent of whether or not the recapture rule applies." Youman, 679 F.3d at 1347. "Whereas the recapture rule applies when surrendered subject matter is being reclaimed, overlooked aspects by definition were never claimed and thus never surrendered." Id.

The recapture rule does not apply to reissue claims directed to

"overlooked aspects" such as "additional inventions/

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Appeal 2026-000250 Application 16/833,447 Patent 10,303,159 B2 embodiments/species not originally claimed." Mostafazadeh,

643 F.3d at 1360. Overlooked aspects, however, are not merely incidental features of the originally claimed invention. See id. Rather, they are distinct elements which "were never claimed and thus never surrendered." Youman, 679 F.3d at 1347. In re Gen. Elec. Co., 789 F. App'x 857, 860 (Fed. Cir. 2019) (non- precedential); see also MPEP § 1412.01(III) ("Claims to separate inventions/embodiments/species that were disclosed but never covered by the claims in the original application prosecution are claims to overlooked aspects.").

Here, Appellant has wholly eliminated the limitations for a printer, printing instructions, and printing. Appellant has also added further details for the claimed "analysis components" and "integrator," including a

"physics-based" analysis "of the information" and a "cost" analysis "of the information." However, adding such further details to the pre-existing

"analysis components" and "integrator" that were already in issued claim 1 merely makes the claim "intermediate in scope relative to the patented and original claims"; it does not constitute an overlooked aspect. See Youman

679 F.3d at 1347-48. To the contrary, Appellant notes that "Appellant also amended dependent claim 44 (which depends indirectly from claim 1) to explicitly include the alleged recaptured features of 'a 3-D printer that receives the printing instructions from the integrator and 3-D prints the one or more vehicle structures based on the printed instructions.'" Appeal Br. 11. Thus, reissue claim 1 is not a separate

invention/embodiment/species from issued claim 1, but rather just recites different features of the same invention or embodiment. Appellant therefore cannot recapture the scope of the disclaimed invention via reissue.

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Appeal 2026-000250 Application 16/833,447 Patent 10,303,159 B2 We do agree with Appellant that dependent claim 44 (along with dependent claims 53 and 62, which recite commensurate features) "are sufficient to avoid recapture of any surrendered subject matter" because they contain materially narrowing limitations regarding printing instructions and the printer printing. For example, claim 43 (from which claim 44 depends) depends from claim 1 and further recites "the integrator is further configured to determine printing instructions for the one or more vehicle structures to be 3-D printed based on the optimized model," and its dependent claim 44 recites "a 3-D printer that receives the printing instructions from the integrator and 3-D prints the one or more vehicle structures based on the printing instructions." However, we agree with the Examiner regarding recapture for the remaining claims, which do not recite any such printing instructions or printer printing.

Accordingly, we sustain the § 251 rejection of claim 1, and claims 2- 43, 45-52, 54-61, and 63-67, which Appellant argues are patentable for similar reasons. See Appeal Br. 11; 37 C.F.R. § 41.37(c)(1)(iv). However, we reverse the § 251 rejection of claims 44, 53, and 62. § 103: Obviousness

Faruque & Lamb

(Claims 1-3, 5, 6, 8-11, 13-15, 17, 18, 20-23, 25-27, 29, 30, 32-35, 37, 40-42, 45, 46, 49-51, 54, 55, 58-60, & 63-67)

Appellant argues that the claimed "analysis is forward looking in that the cost analysis in claim 1 produces a model of one or more vehicle components that are not yet designed, whereas Lamb's cost analysis takes into account costs of maintaining, repairing, or replacing existing parts, but does not use this information to design a new part." Appeal Br. 14.

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Appeal 2026-000250 Application 16/833,447 Patent 10,303,159 B2 According to Appellant, "a backward looking design variable based on part history data would never be used as an input design variable for the physics- based analysis of a new part." Id. at 16.

However, we agree with the Examiner that "the claims do not recite designing a brand-new part or vehicle component as argued by Appellant."

Ans. 9 (emphasis omitted). "There is no recitation that states that the analysis produces a model of one or more vehicle components not yet designed or creates a new design part." Id. As the Examiner points out (id. at 9-10), the '159 patent itself discusses analysis using "existing parts bin/system cost." '159 patent, 7:49-53, 9:60-63.

Appellant further argues that "the claimed analysis components perform both physics-based and cost-based analyses using a shared set of information," "[y]et, the Examiner failed to explain how Faruque and Lamb's respective disclosures disclose or suggest that their respective mesh modeling and analysis of part history data can function if the same set of information is used as input for both, and further, failed to explain how either reference disclose or suggests use of a shared variable that characterizes the model." Reply Br. 8.

We again are not persuaded by Appellant's argument. Reissue claim 1 recites (1) "the one or more analysis components being configured to obtain information based on a model of one or more vehicle structures";

(2) "the information includes a variable that characterizes the model at least in part"; (3) "to analyze the information to obtain analysis results including a physics-based result and a cost result"; (4) "the physics-based result being based on a physics-based analysis of the information"; and (5) "the cost

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Appeal 2026-000250 Application 16/833,447 Patent 10,303,159 B2 result being based on a cost analysis of the information." Thus, although

(1) both the physics-based analysis and the cost analysis are "of the information" and (2) "the information includes a variable," nothing in the claim requires that either analysis be performed on "a variable," let alone the same variable. Instead, the two analyses could be performed using different parts of "the information." Moreover, "information" is a very broad term. This is very different than the previous reissue in which the claim expressly recited "the physics-based analysis factor is based on a value of the design variable" and "the cost analysis factor is based on the value of the design variable," thereby requiring both analyses to be based on the same design variable. See Appeal No. 2025-003290 (Reissue App. No. 16/833,420), Decision on Appeal 5 (Aug. 29, 2025) ("Although the term 'design variable' is very broad and there may be many valid reasons to use the same design variable for both Faruque's physics-based analysis and Lamb's cost analysis, the Examiner has not on this record sufficiently identified that same design variable or the reasons for using the same design variable, and we decline to do so in the first instance without further insight from the Examiner."). Here, the Examiner's rejection has sufficiently shown that both analyses are based on "the information," and the Examiner need not show both analysis are based on the same "variable." See Final Act. 10-12. Accordingly, we sustain the § 103 rejection of claim 1, and claims 2, 3, 5, 6, 8-11, 13-15, 17, 18, 20-23, 25-27, 29, 30, 32-35, 37, 40-42, 45, 46, 49-51, 54, 55, 58-60, and 63-67, which Appellant argues are patentable for similar reasons. See Appeal Br. 16-17; 37 C.F.R. § 41.37(c)(1)(iv).

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Appeal 2026-000250 Application 16/833,447 Patent 10,303,159 B2 Faruque, Lamb, & Fonte (Claims 4, 12, 16, 24, 28, 36, 43, 44, 52, 53, 61, & 62) Appellant argues this rejection "for all of the reasons discussed above in the analyses of claims 1, 13, and 25" and does not make separate substantive arguments. Appeal Br. 17. We are not persuaded of error for the reasons discussed above.

Accordingly, we sustain the § 103 rejection of claims 4, 12, 16, 24, 28, 36, 43, 44, 52, 53, 61, and 62.

Faruque, Lamb, & Sobieski

(Claims 7, 19, & 31)

Appellant argues this rejection "for all of the reasons discussed above in the analyses of claims 1, 13, and 25" and does not make separate substantive arguments. Appeal Br. 17. We are not persuaded of error for the reasons discussed above.

Accordingly, we sustain the § 103 rejection of claims 7, 19, and 31. Faruque, Lamb, & Lauer

(Claims 38, 39, 47, 48, 56, & 57)

Appellant argues this rejection "for all of the reasons discussed above in the analyses of claims 1, 13, and 25" and does not make separate substantive arguments. Appeal Br. 17. We are not persuaded of error for the reasons discussed above.

Accordingly, we sustain the § 103 rejection of claims 38, 39, 47, 48, 56, and 57.

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Appeal 2026-000250 Application 16/833,447 Patent 10,303,159 B2

DECISION SUMMARY

The following table summarizes the outcome of each rejection:

TIME TO RESPOND

No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37 C.F.R. § 41.50(f).

AFFIRMED

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