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 .
The amendment filed June 23, 2026 has been entered.
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 1-2, 5, 7-8 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Marchese 2020 (US 2020/0247995) in view of Marchese 2017 (US 2017/0158909), with the particle-characterization teachings evidenced by Kosbach (US 2005/0074473) and Chung (US 2009/0004389).
Claim 1: Marchese 2020 discloses a process of forming an article (abstract). The process includes providing a thermally conductive polymer (¶¶ 36-37, 39, 51), wherein the thermally conductive polymer includes a polymer matrix (¶¶ 13, 24, 36), a thermally conductive filler in the polymer matrix (¶¶ 36-39), and spherical nano-particles in the polymer matrix (¶ 38; Marchese 2017, ¶ 27; Kosbach, ¶¶ 16-17; Chung, Example 1/Table 1; Marchese 2020 identifies alumina, Marchese 2017 identifies fumed alumina, Kosbach describes fumed alumina as substantially spherical primary particles, and Chung identifies commercial fumed-alumina grades as nanoscale), wherein the polymer matrix is in a form of a filament (¶ 51), wherein the thermally conductive polymer has a crystallinity of less than about 5% (¶¶ 24, 36-39, 51), extruding the filament in a fused filament formation process to produce a 3D printed article including the thermally conductive polymer (¶¶ 51, 53), wherein the spherical nano-particles include fumed alumina (Marchese 2017, ¶ 27).
Marchese 2020 discloses alumina, as discussed above, but is silent as to fused alumina. However, in the same field of endeavor, Marchese 2017 identifies fumed alumina in polyamide compositions (¶ 27). It would have been obvious to one of ordinary skill in the art, prior to the effective filing date of the application to have incorporated Marchese 2017’s fumed alumina surface modifier into Marchese 2020’s amorphous polyamide printing composition to improve surface slip and handling characteristics in the printed polyamide article. Both references are directed to additives in melt-processable polyamides.
Regarding the polymer having a viscosity of less than about 1000 Pascal-second at 290C and 1S-1 shear rate, Marchese 2020 uses 70-95 wt.% amorphous-polyamide/filler and Marchese 2017 uses a 1.0 wt.% fumed-alumina concentration. Marchese 2017 reports 7.975 Pascal-second at 210 C for its formulation (Table 1/Example 2). That reported value is about 125 times below 1,000 Pascal-second, which is the claimed ceiling. Although not reported at the measurement temperature and shear rate in the claim, it is the position of the examiner that because the references teach the use of the same materials for the same purpose as required by the instant claims, the viscosity of the combination would be expected to fall within the claimed range. "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on 'inherency' under 35 U.S.C. 102, on 'prima facie obviousness' under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same...[footnote omitted]." The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)).
Moreover, Marchese 2020 expressly identifies lowering viscosity as an objective to improve adhesion (¶ 3). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the application to have selected a low viscosity to improve adhesion, the viscosity being a result effective variable routinely optimized by those of skill in the art, and explicitly recognized as such by Marchese 2020). 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 2: It is the position of the examiner that because the references teach the use of the same materials for the same purpose as required by the instant claims, the cold crystallization temperature of the combination would be expected to fall within the claimed range. "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on 'inherency' under 35 U.S.C. 102, on 'prima facie obviousness' under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same...[footnote omitted]." The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)).
Claim 5: Marchese 2020 discloses the filament being extruded in layers (¶¶ 51, 53).
Claim 7: Marchese 2017 discloses the particles being present at 1.0 wt.% (¶ 39, Table 1/Example 2).
Claim 8: Marchese 2020 discloses the matrix being polyamide (¶¶ 13, 24, 36).
Claim 10: Marchese 2020 discloses boron nitride (¶¶ 37-39).
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Susan Leong can be reached at 571-270-1487. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LARRY W THROWER/Primary Examiner, Art Unit 1754
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