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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 February 20, 2026 has been entered.
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.
Claims 1-5, 7-8 and 10 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 recites the limitation "the thermally conductive matrix." There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 103
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.
Claims 1, 5, 7-8 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Bougher (US 2020/0248014) in view of Mapkar (US 2016/0090469).
Claim 1: Bougher discloses a process of forming an article (abstract). The process includes providing a thermally conductive polymer (¶ 8), wherein the thermally conductive polymer includes a polymer matrix (¶ 8), a thermally conductive filler in the polymer matrix (¶ 8), wherein the thermally conductive matrix is in a form of a filament (¶ 201; fig. 1), and extruding the filament in a fused filament formation process to produce a 3D printed article including the thermally conductive polymer (fig. 1).
Bougher is silent as to including spherical nano-alumina. However, Mapkar discloses a process of forming an article including providing a thermally conductive polymer (¶¶ 30-33), wherein the thermally conductive polymer includes a polymer matrix (¶¶ 30-33), a thermally conductive filler in the polymer matrix and spherical nano-alumina (¶ 33; spherical nano additives such as aluminum oxide). As taught by Mapkar, including spherical nano-additives improves the toughness, modulus, strength, and elongation of polymer matrices (¶ 38). It would have been obvious to one having ordinary skill in the art prior to the effective filing date of the application to have included the spherical nano-additive of Mapkar in the polymer of Bougher to increase the toughness, modulus, strength and elongation properties.
Claim 5: Bougher discloses the filament being extruded in layers (¶ 5).
Claim 7: Mapkar discloses the spherical nano-particles being present in the polymer matrix at a concentration of from about 0.2% to about 5% (¶ 4), which overlaps the claimed range. Where ranges overlap, a prima facie case of obviousness is made out). In re Boesch, 617 F.2d 272, 275 (CCPA 1980). See also In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (a prima facie case of obviousness exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art) and In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005) (same).
Claim 8: Bougher discloses the polymer matrix including polyamide (claim 5).
Claim 10: Bougher discloses the thermally conductive filler including boron nitride (¶ 11).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Bougher (US 2020/0248014) in view of Mapkar (US 2016/0090469), as applied to claim 1, as evidenced by Liao (“Effect of Porosity and Crystallinity on 3D Printed PLA Properties” Polymers 2019, 11(9), 1487.)
Claim 2: Bougher discloses the polymer is polylactic acid (claim 5), which has a cold crystallization temperature of approximately 100C (Liao, p. 10).
Claims 3-4 are rejected under 35 U.S.C. 103 as being unpatentable over Bougher (US 2020/0248014) in view of Mapkar (US 2016/0090469, as applied to claim 1 above, further in view of Rodgers et al. (US 2015/0252190).
Claim 3: Bougher is silent as to the claimed crystallinity range. However, Rodgers et al. discloses a process of forming an article including providing a polymer (¶ 49), wherein the polymer is in the form of a filament (¶ 55); and extruding the filament in a fused filament formation process to produce a 3D printed article including the polymer (¶ 55), and having a low level of crystallinity (¶¶ 96-98) in order to reduce shrinkage and warping (¶ 64-65). Absent evidence of unexpected results obtained from crystallinity in the claimed range, it would have been obvious to one of ordinary skill in the art at the time the application was filed to have selected a suitably low crystallinity to effectively reduce shrinkage and warping, the crystallinity being a result effective variable routinely optimized by those of skill in the art, and explicitly recognized as such by Rodgers et al. (¶ 96-98). The optimization of a range or other variable within the claims that flows from the “normal desire of scientists or artisans to improve upon what is already generally known” is prima facie obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) (determining where in a disclosed set of percentage ranges the optimum combination of percentages lies is prima facie obvious). The discovery of an optimum value of a variable in a known process is usually obvious. In re Aller, 220 F.2d 454, 456 (C.C.P.A. 1955). See also In re Boesch, 617 F.2d 272, 276 (C.C.P.A. 1980) (“[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.”). See also In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (“‘[I]t is not inventive to discover the optimum or workable ranges by routine experimentation.’” (quoting Aller, 220 F.2d at 456)); In re Kulling, 897 F.2d 1147, 1149 (Fed. Cir. 1990) (finding no clear error in Board of Patent Appeals and Interferences’ conclusion that the amount of eluent to be used in a washing sequence was a matter of routine optimization known in the pertinent prior art and therefore obvious).
Claim 4: Bougher is silent as to the claimed viscosity and shear rate ranges. However, Rodgers et al. discloses a process of forming an article including providing a polymer (¶ 49), wherein the polymer is in the form of a filament (¶ 55); and extruding the filament in a fused filament formation process to produce a 3D printed article including the polymer (¶ 55), and adjusting viscosities and T/I ratios “to achieve balances between toughness, crystallinity and thermal capabilities” (¶ 139). Absent evidence of unexpected results obtained from viscosities and shear rates in the claimed ranges, it would have been obvious to one of ordinary skill in the art at the time the application was filed to have selected a suitable viscosity and shear rate to effectively achieve balances between toughness, crystallinity and thermal capabilities, the viscosity and shear rate being a result effective variable routinely optimized by those of skill in the art, and explicitly recognized as such by Rodgers et al. (¶ 96-98). The optimization of a range or other variable within the claims that flows from the “normal desire of scientists or artisans to improve upon what is already generally known” is prima facie obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) (determining where in a disclosed set of percentage ranges the optimum combination of percentages lies is prima facie obvious). The discovery of an optimum value of a variable in a known process is usually obvious. In re Aller, 220 F.2d 454, 456 (C.C.P.A. 1955). See also In re Boesch, 617 F.2d 272, 276 (C.C.P.A. 1980) (“[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.”). See also In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (“‘[I]t is not inventive to discover the optimum or workable ranges by routine experimentation.’” (quoting Aller, 220 F.2d at 456)); In re Kulling, 897 F.2d 1147, 1149 (Fed. Cir. 1990) (finding no clear error in Board of Patent Appeals and Interferences’ conclusion that the amount of eluent to be used in a washing sequence was a matter of routine optimization known in the pertinent prior art and therefore obvious).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LARRY THROWER whose telephone number is (571)270-5517. The examiner can normally be reached 9am-5pm MT M-F.
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/LARRY W THROWER/ Primary Examiner, Art Unit 1754