DETAILED ACTION
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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/20/2026 has been entered.
Response to Amendment
Applicant filed a response and amended claims 1, 22-23, 33, and 35; cancelled claim 6, 24, 26, 34 and 36 on 01/07/2026
Response to Arguments
Arguments are primarily drawn to the amended claims and prior Rodgers.
The rejection below addresses the amended claims.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1, 3-4, 14-15, 20-23, 25, 27, 29-33, and 35 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 and 33 recite “from 88 to 99 wt% of a polymeric material” and “at least 2 wt% and less than 10 wt% of at least one nitride”. It is unclear how the polymeric material can be at 99 wt% and the part material satisfy “at least 2 wt% and less than 10 wt% of at least one nitride”.
For examination purposes, recites “from 88 to 99 wt% of a polymeric material” will be interpreted as recites “from 88 to 98 wt% of a polymeric material”.
In claim 27 limitation, “a weight ratio PAEK/PPSU”, it is unclear if the composition includes new material PAEK or in reference to the previously claimed PEEK and if the weight ratio is the ratio of claim 1 of a different weight ratio of different material.
For examination purposes, the limitation will be interpreted as –the weight ratio of PEEK/PPSU--.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 1, 3-4, 14-15, 20-23, 25, 27, and 29-32 are rejected under 35 U.S.C. 103 as being unpatentable over Cohen (US 10,254,499) in view of El-Hibri ‘330 (WO2016/102330), Raman (PG-PUB 2014/0080954), and Bheda (PG-PUB 2016/0266573).
Regarding claim 1, Cohen teaches a process for manufacturing a three-dimensional object with an additive manufacturing system, comprising:
extruding a part material to print layers of the 3D object, wherein the part comprises (Figures 8a and 8b, 9; Col 26, Ln 27-64; Col 18, Ln 60 – Col 19, ln 18):
a polymeric material comprising PEEK disposed around a conductive material or wire (Col 94, Ln 50-67; Col 122, Ln 1-30; and Figure 5a-5d; Figures 108a-108d), and
fine boron nitride powder (Col 80, Ln 26-36 and Col 102, Ln 16-27),
the part material is in the form of a filament having a cylindrical geometry (Figure 3 and Figure 56a-b).
Cohen teaches extruding an extrudable material through a nozzle capable of moving along one or more axis; and a filament, fiber, or wire dispenser that concurrently extrudes one or more filaments, wherein the filament is encapsulated within or on extrudate from the nozzle, and the filament is a metal, a semiconductor, a ceramic, a conductor, a magnetic material, a conductive powder, a fiber, an optical fiber, a tube (e.g., through which fluid can flow, or shape memory wires may be routed), a coaxial
cable, or a conductive thermoplastic polymer (Col 4, ln 5-54). Cohen teaches forming actuators, sensors, thermal management systems, heat sinks, power supplies, fuses, power supplies (Col 4, ln 5-54).
Cohen teaches fillers may be added to the extruded material increase thermal conductivity and/or reduce the volume fraction of molten material, thus promoting rapid solidification (Col 80, ln 27-36). Cohen teaches incorporation of ceramic powder or other additives that alter dielectric constant, thermal conductivity, coefficient of thermal expansion. Cohen teaches incorporation of boron nitride can increase thermal conductivity without rendering the polymer matrix electrically conductivity, enabling better heat dissipation from wires and allowing higher currents to be used (Col 102, ln 18-27).
Cohen teaches the extruded part material can be cylindrical (Col 81, Ln 27-42 and Col 112, Ln 16-21). Cohen teaches embodiments wherein a nozzle with a variable diameter orifice is used to produce a variable width extrudate (Col 114, Ln 6-44). Cohen teaches it can be useful to deposit a narrow extrudate for small features and wide extrudate for large features (Col 61, ln 11-20.)
Cohen does not teach:
(1) the part material comprises from 80 to 98 wt% of a polymeric material comprises of a blend of PEEK and PPSU,
wherein the weight ratio PEEK/PPSU is from 1.3 to 19;
(2) the part material comprises at least 2 wt% and less than 10 wt% of at least one nitride; and
(3) the part material is in the form of a filament having a cylindrical geometry and a diameter comprised between 0.35 mm and 3.65 mm.
As to (1), El-Hibri ‘330 teaches a composition for forming a part material through injection or extrusion molding (Page 7, LN 3-12). El-Hibri’330 teaches the polymer composition is well suited for the manufacture of articles including electronic and electromagnetic wire insulation, piping systems, electronic articles (Page 28, Line 1-35).
El-Hibri ‘330 teaches the polymer composition comprising:
from 1 to 90 wt% of PEEK (Page 7, ln 1- Page 14, ln 14);
from 1 to 25 wt% to PPSU (Page 9, ln 10-13 and Page 15, ln 3- Page 16, ln 31);
from 1 to 90 wt% of PES (Page 9, ln 14- Page 10, ln 3); and
from 0.1 to 50 wt% of at least one reinforcing filler (Page 10, ln 3 and Page 20, ln 14- Page 25, ln 10);
optionally, less than 20% of other ingredients, such as colorant, processing aids, flame-retardants, conductivity additives, and nucleating agents (Page 25, ln 11-30).
Both Cohen and El-Hibri ‘330 are drawn to the same field of endeavor pertaining to a PEEK-based composition for coating a conductive material or wire, thereby providing insulated wires. It would have been obvious to one of ordinary skill in the art to modify the process of Cohen with polymeric composition of El-Hibri ‘330, a known suitable polymeric composition for extruding an insulating and protective material for electric and electromagnetic elements as desired by Cohen.
Given El-Hibri’s composition ranges of PEEK, PPSU, PES, and the reinforcing filler, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the invention to modify the process of Cohen with the composition of Hibri ‘330 with suitable amounts of each element selected within the prior art range as taught. Accordingly, given the overlapping range of combined PEEK and PPSU as taught by El-Hibri ‘330 and the claimed range, the claimed range would have been obvious to one of ordinary skill in the art. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
Additionally, given the composition of the PEEK and PPSU blend of El-Hibri ’330, the weight ratio of PEEK/PPSU would range from about 3 (i.e., 73.9 wt% of PEEK, 25 wt% PPSU, 1 wt% PES, and 0.1 wt% reinforcing fibers) to 97.9 (i.e., 90 wt% of PEEK, 1 wt% PPSU, 1 wt% PES, and 0.1 wt% reinforcing fibers).
Accordingly, given the overlapping range of PEEK and PPSU composition as taught by El-Hibri ‘330 and the claimed range, the claimed weight ratio range would have been obvious to one of ordinary skill in the art. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
As to (2), Raman teaches a thermally conductive composition comprising a polymer material and a thermally conductive filler for manufacturing electronic element in need of good thermal management [0003]-[0009], [0049]. Raman teaches the polymer matrix in the composition can include PEEK. Raman teaches ceramic materials such as silica, alumina, zinc oxide, magnesium oxide, aluminum nitride, boron nitride (hexagonal or cubic forms), etc. present the opportunity to make thermally conductive yet electrically insulating formulations with plastics since they are good thermal conductors and electrical insulators [0007].
Raman teaches thermally conductive filler has a low electrical conductivity or is electrically insulating [0042]. Raman teaches the thermally conductive filler is chosen from boron nitride, silica, glass fibers, zinc oxide, magnesia, titania, yttrium oxide, hafnium oxide, calcium carbonate, talc, mica, wollastonite, alumina, aluminum
nitride, graphite, metallic powders, e.g., aluminum, copper, bronze, brass, etc., fibers or whiskers of carbon, graphite, silicon carbide, silicon nitride, alumina, aluminum nitride,
zinc oxide, nano-scale fibers such as carbon nanotubes, graphene, boron nitride nanotubes, boron nitride nanosheets, zinc oxide[0040]-[0042].
It would have been obvious to one of ordinary skill int eh art at the time of the effective filing date of the invention to modify the process of Cohen in view of El-Hibri ‘330, in particularly the conductivity additive, with boron nitride as taught by Raman, a known suitable thermally conductive filler, to yield the predictable result of providing an conductivity additive taught by El-Hibri ‘330 and enhancing thermal management in electrical applications as taught by Raman and as desired by both Cohen and El-Hibri ‘330.
As to (3), Bheda teaches a system for additive manufacturing (Figure 4) wherein a filament material is processed and extruded through a nozzle having an opening with a diameter in the range of about 0.25 mm to 1 mm [0073] to provide an extrudate having a circular cross section of like or somewhat smaller diameter (as small as about 0.1 mm) [0073].
Cohen does not disclose the nozzle diameter, prompting one of ordinary skill in the art to look elsewhere in the art. It would have been obvious to one of ordinary skill in the art to modify the process of Cohen with the known suitable nozzle shape and size of Bheda, to yield the predictable result of providing suitable dimensions for performing extrusion.
Given the range of the diameter of the extrudate is between about 0.25 to about 1 mm, the range of Cohen in view of Bheda overlaps with the claimed diameter range. Accordingly, the claimed diameter range would have been obvious to one of ordinary skill in the art.
Regarding claim 3, Cohen in view of El-Hibri ‘330, Raman, and Bheda teaches the process as applied to claim 1, the part material comprises less than 20 wt% of boron nitride (El-Hibri ‘330, Page 25, ln 11-30).
Cohen in view of El-Hibri ‘330, Raman, and Bheda does not explicitly teach the part material comprises 2 wt% and 9 wt. % of at least one nitride, based on the total weight of the part material.
However, the range of less than 20 wt% of boron nitride as taught by Cohen in view of El-Hibri ‘330, Raman, and Bheda overlaps the claimed range of at 2 wt% and 9 wt%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. Accordingly, providing a portion of nitride is from 2 to 9 wt% would have been obvious to one of ordinary skill in the art.
Regarding claim 4, Cohen in view of El-Hibri ‘330, Raman, and Bheda teaches the process as applied to claim 1, wherein the part material further comprises at least one additive selected from the group consisting of fillers, lubricants, plasticizers, flow enhancers, and stabilizers (El-Hibri ‘330, page 20, ln 14-page 21, ln 15 and page 25, line 11- page 26, line 16).
Regarding claim 14, Cohen in view of El-Hibri ‘330, Raman, and Bheda teaches the process as applied to claim 1, wherein the part material comprises boron nitride (Raman, [0040]-[0042]).
Regarding claim 15 Cohen in view of El-Hibri ‘330, Raman, and Bheda teaches the process as applied to claim 1, wherein the part material is in the form of a filament having a cylindrical geometry with a diameter of 0.25 mm to 1 mm (Bheda, [0073]).
A prima facie case of obviousness exists when where the claimed ranges "overlap or lie inside ranges disclosed by the prior art."
Regarding claim 20, Cohen in view of El-Hibri ‘330, Raman, and Bheda teaches the process as applied to claim 1, wherein the nitride is boron nitride (Raman, [0040]-[0042]).
Regarding claim 21, Cohen in view of El-Hibri ‘330, Raman, and Bheda teaches the process as applied to claim 1, the part material comprises less than 20 wt% of boron nitride (El-Hibri ‘330, Page 25, ln 11-30).
Cohen in view of El-Hibri ‘330, Raman, and Bheda does not teach the portion of nitride is from 3 to 8 wt%.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. Given that the range of less than 20 wt% of boron nitride as taught by Cohen in view of El-Hibri ‘330, Raman, and Bheda overlaps the claimed range of at least 3 wt% and 8 wt%, the claimed range would have been obvious to one of ordinary skill in the art.
Regarding claim 22, Cohen in view of El-Hibri ‘330, Raman, and Bheda teaches the process as applied to claim 1, wherein the PEEK comprises at least 95 mol% recurring units of formula (J”-A) (El-Hibri ‘330, Page 10, line 21- Page 13, line 5 and formula (J’-A)).
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Regarding claim 23, Cohen in view of El-Hibri ‘330, Raman, and Bheda teaches the process as applied to claim 1, wherein the PEEK comprises at least 99 mol% recurring units of formula (J”-A) (El-Hibri ‘330, Page 10, line 21- Page 13, line 5 and formula (J’-A)).
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Regarding claim 25, Cohen in view of El-Hibri ‘330, Raman, and Bheda teaches the process as applied to claim 1, wherein the PPSU is a polymer comprising at least 95 mol% of recurring units of formula (L”) (El-Hibri ‘330, Page 9).
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Regarding claim 27, Cohen in view of El-Hibri ‘330, Raman, and Bheda teaches the process as applied to claim 1, wherein the part material comprises a weight ratio PEEK/PPSU overlapping the claimed range of 2.5 to 10 (see rejection of claim 1) (MPEP 2131.03(I)).
Regarding claim 29, Cohen in view of El-Hibri ‘330, Raman, and Bheda teaches the process as applied to claim 1, wherein extruding the part material forms printed layers of the 3D object (Cohen, Figure 9 and 18; 34a-24d).
Regarding claim 30, Cohen in view of El-Hibri ‘330, Raman, and Bheda teaches the process as applied to claim 1, printing successive layers of the 3D object by extruding (Cohen, Figure 9 and 18; 34a-24d).
Regarding claim 31, Cohen in view of El-Hibri ‘330, Raman, and Bheda teaches the process as applied to claim 4, wherein the fillers are present in an amount of 0.1 to 50 wt% (El-Hibri ‘330, Page 10, ln 1-7 and Page 20, Ln 15-35).
A prima facie case of obviousness exists when where the claimed ranges "overlap or lie inside ranges disclosed by the prior art."
Regarding claim 32, Cohen in view of El-Hibri ‘330, Raman, and Bheda teaches the process as applied to claim 4, wherein the part material comprises two or less additives (El-Hibri ‘330, Page 20, Ln 15-35).
Allowable Subject Matter
Claim 33 and 35 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Cohen does not teach:
(1) the part material consists of from 80 to 98 wt% of a polymeric material consisting of a blend of PEEK and PPSU;
(2) the weight ratio of PEEK/PPSU is 1.3 to 19;
(3) the part material consists of at least 2 wt% and less than 10 wt% of at least one nitride; and
(4) the part material is in the form of a filament having a cylindrical geometry and a diameter comprised between 0.35 mm and 3.65 mm.
The combination of limitations of claim 33 would not have been obvious over the prior art of record. Cohen, El-Hibri ‘330, Rodgers, and Raman, individually or in combination, do not teach the combination of limitations of claim 33, in particularly, the part material consists of from 80 to 98 wt% of a polymeric material consisting of a blend of PEEK and PPSU and the weight ratio of PEEK/PPSU is 1.3 to 19.
Conclusion
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/HANA C PAGE/Examiner, Art Unit 1745