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 .
DETAILED ACTION
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant’s submission filed on 3/6/26 has been entered.
Response to Amendment
The previous objection to claim 4 has been overcome by amendment.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The amendment is supported by the original disclosure and overcome the previous 112a rejection.
The previous restriction has been maintained and repeated.
The previous rejections have been withdrawn in view of the amendment.
Claim Rejections - 35 USC § 103
Claim(s) 8, 11, 13-16, 18-23, and 15-27 is(are) rejected under 35 U.S.C. 103(a) as being unpatentable over Hochsmann et al. (US 20050017394, listed on IDS), evidenced by Yamamoto et al. (US 20100200141) in view of Ubukata et al. (abs. of JP 55130856).
As to claims 8, 11, 13-16, 18-23, and 15-27, Hochsmann (claims, abs., examples, 8-9, 13-14, 20-28, 35, 50-52) discloses a material systems for producing 3D articles comprising a binder comprising a phenol resin (having viscosities of 14-20 cps (mPa)) and ethyl alcohol or water solvent and particles such as ceramic, metal, or plastic (30-450 microns), wherein the binder is applied selectively on the particulates, and the particulates and binder are separate materials before the binder is applied selectively on the particulates. As evidenced by Yamamoto (25), phenol resin is phenol-formaldehyde resin. The viscosity of the binder can be controlled 14-20 cps (mPa) via solvent addition for dispensing through a print head, as obviously recognized by one of ordinary skill in the art.
Particularly to claim 13, Hochsmann (35) does not teach a mixture of water with alcohol. However, It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). See MPEP ¶ 2144.05. In light of this, one of ordinary skill in the art would obviously recognize to combine the disclosed water with alcohol to meet the claims. It is well settled that it is prima facie obvious to combine two ingredients, each of which is targeted by the prior art to be useful for the same purpose. In re Lindner 457 F,2d 506,509, 173 USPQ 356, 359 (CCPA 1972).
As to the intended use of binders, “for printing with print head”, etc. in instant claims 8, 15, 18, and 25-26, case law holds that a recitation of the intended use of the claimed invention must result in a structural difference 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 of performing the intended use, then it meets the claim. See MPEP 2111.02, In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458,459 (CCPA 1963). In this particular case, no compositional difference between the claimed and disclosed composition, and the disclosed composition would inherently be capable of performed the claimed intended uses.
Hochsmann is silent on the claimed novolak co-condensed with a resol of claim 8.
In the same area of producing a 3D structure comprising phenolic resins, Ubukata (abs.) discloses combining resole (resol) with novolac can enhance hot strength, water resistance, and alkali resistivity owing to the methylol radical of the resole resin serving as hardener against the novolac-type phenol resin. The novolak-resole mixture would inherently contain monomer, oligomer (prepolymer), and polymer due to the polydispersity and reaction mechanism, as obviously recognized by one of ordinary skill in the art.
Therefore, as to claims 8, 11, 13-16, 18-23, and 15-27, it would have been obvious to one of ordinary skill in the art to have modified the phenol-formaldehyde binder disclosed by Hochsmann and Yamamoto and replaced the phenol resin of Hochsmann with a combination of novolc and resole resin in view of Ubukata, because the resultant process would yield a resin having improved hot strength, water resistance, and alkali resistivity owing to the methylol radical of the resole resin serving as hardener against the novolac-type phenol resin.
As to the claimed properties, such as surface tension, etc. of instant claims 20-23 and 25, the examiner recognizes that not all of the claimed effects or physical properties are positively stated by the references. However, the references teach a composition containing the claimed components in the claimed amounts prepared by substantially similar components (in this case, the disclosed polymer structure/viscosity, solvent, and particles). Therefore, one of ordinary skill would have a reasonable expectation that the claimed effects and physical properties, would necessarily flow from a composition containing all of the claimed components in the claimed amounts prepared by a substantially similar process. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. See In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977); In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990); see also MPEP § 2112.01(I)-(II). If it is the applicant’s position that this would not be the case: (1) applicant must provide evidence to support the applicant’s position, and (2) it would be the examiner’s position that the application contains inadequate disclosure on how to obtain the claimed effects or properties with only the claimed components in the claimed amounts by the disclosed or claimed process.
Claim(s) 17-18, 24-25, and 27-28 is(are) rejected under 35 U.S.C. 103(a) as being unpatentable over Hochsmann et al. (US 20050017394, listed on IDS), evidenced by Yamamoto et al. (US 20100200141), and in view of Ubukata et al. (abs. of JP 55130856) and further in view of Baxter et al. (US 20130085211).
Disclosure of Hochsmann, Ubukata, and Yamamoto is adequately set forth in ¶1 and is incorporated herein by reference.
Hochsmann, Ubukata and Yamamoto are silent on the claimed residues.
In the same area of endeavor of producing a particulate binder composition, Baxter (claims, abs., 3, 8, 25, 31, 37, 42-44, 53, 62, examples) discloses a composition comprising phenol-formaldehyde (Mw=1-8k), particulates of 20-50 microns, and suitable alcohol/water solvent for producing the phenol-formaldehyde. Baxter teaches the resin can be modified by post addition of additives to produce a resin with free phenol and formaldehyde monomers (below 1% of 0.1%).
Therefore, as to claims 17-18, 24-25, and 27-28, it would have been obvious to one of ordinary skill in the art to have modified the phenol-formaldehyde binder disclosed by Hochsmann, Yamamoto, and Ubukata and added a post addition process in view of Baxter, because the resultant process would yield a phenol-formaldehyde binder free of phenol and formaldehyde monomer residue.
Response to Arguments
The argument for allowance of amended claims has been fully considered but not persuasive.
Applicant’s argument pertaining to the amendment has been rendered moot.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHANE FANG whose telephone number is (571)270-7378. The examiner can normally be reached on Mon-Thurs. 8am-6pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached on 571.572.1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHANE FANG/Primary Examiner, Art Unit 1766