DETAILED ACTION
Summary
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Applicant’s arguments and claim amendments submitted on May 9, 2025 have been entered into the file. Currently claim 5 is amended and claims 10-13 are withdrawn, resulting in claims 1-9 pending for examination.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-2, 3, 7, and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Heston (WO 2016/090164)1,2 in view of Sherman (US 2011/0189421)2.
With respect to claims 1-2, Heston teaches a filament comprising an outer jacket (sheath) formed around an inner core for use with additive manufacturing machines such as fused filament fabrication (FFF) machines (paragraph [005]). The core may be a low durometer material such as silicone (paragraph [022]). Such low durometer materials tend to have tacky surfaces (paragraph [022]). The jacket (sheath) may be formed of a variety of thermoplastic polymers including, but not limited to, acrylonitrile butadiene styrene, polylactic acid, polyvinyl alcohol, nylon, polystyrene, and polycarbonate (sheath comprising a non-tacky thermoplastic resin free of silicone) (paragraph [025]). The filament has a diameter of between 1 and 10 mm (paragraph [036]).
Heston is silent as to the silicone core being a pressure sensitive adhesive comprising 45 to 80 weight percent of a silicone-containing block copolymer based on a total weight of the core, the silicone-containing block copolymer comprising a first block comprising a polydiorganosiloxane and a second block that is free of a silicone, and 20 to 55 weight percent of a silicone tackifying resin based on the total weight of the core.
Sherman teaches adhesive compositions and articles that contain a polydiorganosiloxane polyoxamide block copolymer and a tackifier (paragraph [0007]). The adhesive can be formulated as either a pressure sensitive adhesive or a heat activated adhesive (paragraph [0007]). The tackifier may be a silicate resin to enhance the adhesive properties of the copolymer (paragraphs [0080]-[0081]). The adhesive composition typically contains 20-80 wt%, most preferably 45-55 wt%, polydiorganosiloxane polyoxamide and 20-80 wt%, most preferably 45-55 wt%, silicate tackifying resin based on the combined weight of polydiorganosiloxane polyoxamide and silicate tackifying resin (paragraph [0089]). The components can be formed into a strand or rod (paragraph [0068]).
Since both Heston and Sherman teach a tacky silicone in the form of a strand, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the silicone core of Heston to comprise the polydiorganosiloxane polyoxamide copolymer with 45-55 wt% silicate tackifier as described by Sherman in order to provide a fiber with enhanced pressure sensitive adhesive properties.
With respect to claim 3, Heston in view of Sherman teaches all of the limitations of claim 1 above. Sherman further teaches the polydiorganosiloxane polyoxamide copolymer can be represented by at least two of the repeating unit:
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where R3 (R4) is a hydrogen or alkyl; G (Q2) is a divalent group that is the residue unit that is equal to a diamine of the formula R3HN-G-NHR3 minus the two -NHR3 groups; and the claimed R3 group is a hydrogen (paragraph [0036]). Q1 is represented by this portion of the formula:
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where Y (R2) is independently an alkylene, aralkylene, or a combination thereof; R1 (R1) is independently an alkyl, haloalkyl, aralkyl, alkenyl, aryl, or aryl substituted with an alkyl, alkoxy, or halo; and n is independently an integer of 40 to 1500 (paragraph [0036]).
With respect to claim 7, Heston in view of Sherman teaches all the limitations of claim 1 above. Heston further teaches the first material may have a glass transition temperature below 0 degrees C, for example approximately -30 degrees C (claim 12; paragraph [033]).
With respect to claim 9, Heston in view of Sherman teaches all the limitations of claim 1 above. Heston further teaches that the jacket thickness is minimized to reduce the percentage that the jacket forms the overall filament material, while still providing the desired axial rigidity (paragraph [025]).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the amount of sheath used compared to the core to include the claimed range. One would have been motivated to provide enough sheath that the filament has the desired axial rigidity, but not so much that the sheath takes up a large percentage of the filament. It has been held that, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See MPEP 2144.05(II). The ordinary artisan would recognize that optimizing the amount and/or thickness of the sheath used would necessarily optimize the weight percent.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Heston (WO 2016/090164)3,4 in view of Sherman (US 2011/0189421)2 as applied to claim 1 above, and further in view of Greger (US 2015/0125682)2.
With respect to claim 8, Heston in view of Sherman teaches all the limitations of claim 1 above. Heston further teaches the jacket (sheath) may be formed of a variety of thermoplastic polymers including but not limited to acrylonitrile butadiene styrene (ABS), polylactic acid (PLA), polyvinyl alcohol (PVA), nylon, polystyrene, and polycarbonate (paragraph [025]).
Heston in view of Sherman is silent as to the jacket (sheath) exhibiting a melt flow index of less than or equal to 15 grams per 10 minutes as determined using ASTM D1238-13 at 190oC and with a load of 2.16 kilograms.
Greger teaches that thermoplastic resins suitable for fused deposition modeling include acrylonitrile butadiene styrene (ABS) as well as polycarbonate, polylactic acid, polyphenylsulfone, and mixtures of these, and which has a melt flow rate of 5-30g/10min at extrusion temperature under 1.2 kg load according to ASTM D1238 (paragraphs [0016]-[0017]).
The melt flow rate range of Greger substantially overlaps the claimed range in the instant claim 8. It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05 (I). Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have selected from the overlapping portion of the range taught by Greger, because overlapping ranges have been held to establish prima facie obviousness.
Since both Heston in view of Sherman and Greger teach filament fused deposition modeling using similar thermoplastic materials, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the jacket (sheath) material of Heston in view of Sherman to have a melt flow rate of 5-30g/10min at extrusion temperature under 1.2 kg load according to ASTM D1238 because it is a known melt flow rate suitable for the jacket (sheath) polymers of Heston which provide the predictable results of being able to be used as a filament material for fused deposition modeling.
Heston in view of Sherman and Greger teaches the claimed invention above but does not expressly teach the melt flow index measured at 190oC and a load of 2.16 kg. It is a reasonable to presume that the melt index measured under the claimed conditions is inherent to Heston in view of Sherman and Greger. Support for said presumption is found in that the melt flow rate of the prior art is suitable for fused deposition modeling, which is an aim of the instant invention (see page 1 of the specification as filed), and the prior art uses similar sheath materials to the instant invention (e.g., styrene butadiene copolymers, polylactic acid, nylon; see pages 24-26 of the instant specification). Therefore the sheath material of the prior art is expected to have the same properties as the claimed invention.
Claim(s) 1-2, 4, 7, and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Heston (WO 2016/090164)5,6 in view of Joseph (US 6007914)2.
With respect to claims 1-2, Heston teaches a filament comprising an outer jacket (sheath) formed around an inner core for use with additive manufacturing machines such as fused filament fabrication (FFF) machines (paragraph [005]). The core may be a low durometer material such as silicone (paragraph [022]). Such low durometer materials tend to have tacky surfaces (paragraph [022]). The jacket (sheath) may be formed of a variety of thermoplastic polymers including, but not limited to, acrylonitrile butadiene styrene, polylactic acid, polyvinyl alcohol, nylon, polystyrene, and polycarbonate (sheath comprising a non-tacky thermoplastic resin free of silicone) (paragraph [025]). The filament has a diameter of between 1 and 10 mm (paragraph [036]).
Heston is silent as to the silicone core being a pressure sensitive adhesive comprising 45 to 80 weight percent of a silicone-containing block copolymer based on a total weight of the core, the silicone-containing block copolymer comprising a first block comprising a polydiorganosiloxane and a second block that is free of a silicone, and 20 to 55 weight percent of a silicone tackifying resin based on the total weight of the core.
Joseph teaches adhesive fibers, which can be multilayer fibers, including a diorganosiloxane polyurea block copolymer as a structural component of the fibers (col. 2, lines 23-30). The fibers include a secondary melt processable polymer that may be in a separate layer (col. 2, lines 31-39). Either the copolymer, second polymer, or both can be tackified (col. 2, lines 31-39). The fibers may be in a sheath-core arrangement (col. 6, lines 27-38). Tackifying materials for the polydiorganosiloxane polyurea copolymer, generally silicate resins, can also be added to the polymer to provide or enhance the pressure-sensitive adhesive properties of the polymer (col. 14, lines 41-44). When a tackifying material is included with the polydiorganosiloxane polyurea copolymer, that component preferable contains about 1 part to about 80 parts by weight of tackifying material a more preferably 15 to about 75 parts by weight tackifying material (col. 15, lines 52-63). The total parts of the polydiorganosiloxane polyurea and the silicane resin in the combination equal 100 (col. 15, lines 52-63). Therefore the amount of polydiorganosiloxane polyurea in the combination is about 20 to 99 parts by weight, preferably 25 to 85 parts by weight.
Polydiorganosiloxane polyurea copolymers are advantageous because they can possess one or more of the following properties: resistance to ultraviolet light; good thermal and oxidative stability; good permeability to many gases; low surface energy; low index of refraction; good hydrophobicity; good dielectric properties; good biocompatibility; and good adhesive properties (either in at room temperature or in the melt state) (col. 5, lines 35-44).
The weight percent of polydiorganosiloxane polyurea copolymer and tackifier range of Joseph substantially overlaps the claimed range in the instant claim 1. It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05 (I). Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have selected from the overlapping portion of the range taught by Joseph, because overlapping ranges have been held to establish prima facie obviousness.
Since both Heston and Joseph teach core-sheath fibers comprising tacky silicone, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the silicone core of Heston to comprise the polydiorganosiloxane polyurea copolymer with 15-75 wt% silicate tackifier as described by Joseph in order to provide a fiber with at least one of resistance to ultraviolet light; good thermal and oxidative stability; good permeability to many gases; low surface energy; low index of refraction; good hydrophobicity; good dielectric properties; good biocompatibility; and good adhesive properties (either in at room temperature or in the melt state).
With respect to claim 4, Heston in view of Joseph teaches all of the limitations of claim 1 above. Joseph further teaches the polydiorganosiloxane polyurea copolymer can be represented by the repeating unit:
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where Z (Q3) is a polyvalent moiety which is an arylene moiety or an aralkylene moiety; D (R3) is independently selected from the group consisting of hydrogen, alkyl, phenyl, or a moiety that completes a ring structure with Y or B (col. 7, line 53-col. 8, line 54). Q1 is represented by this portion of the formula:
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where Y (R2) is a polyvalent moiety that is independently an alkylene, aralkylene, or arylene; R (R1) is a moiety that independently is an alkyl, substituted alkyl, alkenyl, cycloalkyl, aryl, substituted aryl; and p (n+1) is a number that is 5 or larger, preferably about 15 to 2000, more preferably about 30 to about 1500 (col. 7, line 53-col. 8, line 54).
It is noted that page 17 of the specification as filed states that in many embodiments group Q3 is an alkylene, arylene, or combination of the two. Therefore, group Z of Joseph is interpreted as meeting the limitation wherein “Q3 is the residue of a diisocyanate of formula OCN-Q3-NCO minus two isocyanato groups (-NCO)”.
With respect to claim 7, Heston in view of Joseph teaches all the limitations of claim 1 above. Heston further teaches the first material may have a glass transition temperature below 0 degrees C, for example approximately -30 degrees C (claim 12; paragraph [033]).
With respect to claim 9, Heston in view of Joseph teaches all the limitations of claim 1 above. Heston further teaches that the jacket thickness is minimized to reduce the percentage that the jacket forms the overall filament material, while still providing the desired axial rigidity (paragraph [025]).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the amount of sheath used compared to the core to include the claimed range. One would have been motivated to provide enough sheath that the filament has the desired axial rigidity, but not so much that the sheath takes up a large percentage of the filament. It has been held that, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See MPEP 2144.05(II). The ordinary artisan would recognize that optimizing the amount and/or thickness of the sheath used would necessarily optimize the weight percent.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Heston (WO 2016/090164)7,8 in view of Joseph (US 6007914)2 as applied to claim 1 above, and further in view of Greger (US 2015/0125682)2.
With respect to claim 8, Heston in view of Joseph teaches all the limitations of claim 1 above. Heston further teaches the jacket (sheath) may be formed of a variety of thermoplastic polymers including but not limited to acrylonitrile butadiene styrene (ABS), polylactic acid (PLA), polyvinyl alcohol (PVA), nylon, polystyrene, and polycarbonate (paragraph [025]).
Heston in view of Joseph is silent as to the jacket (sheath) exhibiting a melt flow index of less than or equal to 15 grams per 10 minutes as determined using ASTM D1238-13 at 190oC and with a load of 2.16 kilograms.
Greger teaches that thermoplastic resins suitable for fused deposition modeling include acrylonitrile butadiene styrene (ABS) as well as polycarbonate, polylactic acid, polyphenylsulfone, and mixtures of these, and which has a melt flow rate of 5-30g/10min at extrusion temperature under 1.2 kg load according to ASTM D1238 (paragraphs [0016]-[0017]).
The melt flow rate range of Greger substantially overlaps the claimed range in the instant claim 8. It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05 (I). Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have selected from the overlapping portion of the range taught by Greger, because overlapping ranges have been held to establish prima facie obviousness.
Since both Heston in view of Joseph and Greger teach filament fused deposition modeling using similar thermoplastic materials, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the jacket (sheath) material of Heston in view of Joseph to have a melt flow rate of 5-30g/10min at extrusion temperature under 1.2 kg load according to ASTM D1238 because it is a known melt flow rate suitable for the jacket (sheath) polymers of Heston which provide the predictable results of being able to be used as a filament material for fused deposition modeling.
Heston in view of Joseph and Greger teaches the claimed invention above but does not expressly teach the melt flow index measured at 190oC and a load of 2.16 kg. It is a reasonable to presume that the melt index measured under the claimed conditions is inherent to Heston in view of Joseph and Greger. Support for said presumption is found in that the melt flow rate of the prior art is suitable for fused deposition modeling, which is an aim of the instant invention (see page 1 of the specification as filed), and the prior art uses similar sheath materials to the instant invention (e.g., styrene butadiene copolymers, polylactic acid, nylon; see pages 24-26 of the instant specification). Therefore the sheath material of the prior art is expected to have the same properties as the claimed invention.
Claim(s) 1-2, 5, 7, and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Heston (WO 2016/090164)9,10 in view of Sherman (US 2010/0163809)2,11.
With respect to claims 1-2, Heston teaches a filament comprising an outer jacket (sheath) formed around an inner core for use with additive manufacturing machines such as fused filament fabrication (FFF) machines (paragraph [005]). The core may be a low durometer material such as silicone (paragraph [022]). Such low durometer materials tend to have tacky surfaces (paragraph [022]). The jacket (sheath) may be formed of a variety of thermoplastic polymers including, but not limited to, acrylonitrile butadiene styrene, polylactic acid, polyvinyl alcohol, nylon, polystyrene, and polycarbonate (sheath comprising a non-tacky thermoplastic resin free of silicone) (paragraph [025]). The filament has a diameter of between 1 and 10 mm (paragraph [036]).
Heston is silent as to the silicone core being a pressure sensitive adhesive comprising 45 to 80 weight percent of a silicone-containing block copolymer based on a total weight of the core, the silicone-containing block copolymer comprising a first block comprising a polydiorganosiloxane and a second block that is free of a silicone, and 20 to 55 weight percent of a silicone tackifying resin based on the total weight of the core.
Sherman ‘809 teaches branched polydiorganosiloxane polyamide block copolymers which can be used in numerous applications, for example in adhesives and as a material for fibers (paragraphs [0013], [0042]). A silicate tackifying resin may be added to form a pressure sensitive adhesive (paragraphs [0100]-[0103]). The adhesive composition typically contains 20-80 weight percent, preferably 45-55 weight percent, polydiorganosiloxane polyamide and 20-80 wt%, preferably 45-55 weight percent, silicate tackifying resin based on the combined weight of polydiorganosiloxane polyamide and silicate tackifying resin (paragraph [0109]).
The branched copolymers can have many of the desirable features of polysiloxanes such as low glass transition temperature, thermal and oxidative stability, resistance to ultraviolet radiation, low surface energy and hydrophobicity, and high permeability to many gases (paragraph [0044]). Additionally, the branched copolymers can have improved mechanical strength and elastomeric properties compared to polysiloxanes and linear polydiorganosiloxane polyamide block copolymers (paragraph [0044]).
Since both Heston and Sherman ‘809 teach tacky silicone capable of being spun into a fiber, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the silicone core of Heston to comprise the polydiorganosiloxane polyamide copolymer with 45-55 wt% silicate tackifier as described by Sherman ‘809 in order to provide a fiber with a low glass transition temperature, thermal and oxidative stability, resistance to ultraviolet radiation, low surface energy and hydrophobicity, and high permeability to many gases as well as improved mechanical strength and elastomeric properties.
With respect to claim 5, Heston in view of Sherman ‘809 teaches all of the limitations of claim 1 above. Joseph further teaches the polydiorganosiloxane polyamide block copolymer can be represented by at least two of the repeating unit:
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where B (Q4) is independently a covalent bond, an alkylene of 4-20 carbons, and aralkylene, an arylene, or a combination thereof, and the claimed R3 (and R4, see 112(b) rejection above) is a hydrogen (paragraph [0045]). Q1 is represented by this portion of the formula:
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where Y (R2) is independently an alkylene, aralkylene, or a combination thereof; R1 (R1) is independently an alkyl, haloalkyl, aralkyl, alkenyl, aryl, or aryl substituted with an alkyl, alkoxy, or halo; and n is an integer of 0 to 1500 (paragraph [0045]).
It is noted that page 18 of the specification as filed states that in many embodiments group Q4 is an alkylene, arylene, or combination thereof. Therefore, group B of Sherman ‘809 is interpreted as meeting the limitation wherein “Q4 is the residue of a diacid chloride of the formula Cl-(CO)-Q4-(CO)-Cl minus the two –(CO)-Cl groups or a diester of formula R7O-(CO)-Q4-(CO)-OR7 minus the two –(CO)-OR7 groups where R7 is an alkyl”.
With respect to claim 7, Heston in view of Sherman ‘809 teaches all the limitations of claim 1 above. Heston further teaches the first material may have a glass transition temperature below 0 degrees C, for example approximately -30 degrees C (claim 12; paragraph [033]).
With respect to claim 9, Heston in view of Sherman ‘809 teaches all the limitations of claim 1 above. Heston further teaches that the jacket thickness is minimized to reduce the percentage that the jacket forms the overall filament material, while still providing the desired axial rigidity (paragraph [025]).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the amount of sheath used compared to the core to include the claimed range. One would have been motivated to provide enough sheath that the filament has the desired axial rigidity, but not so much that the sheath takes up a large percentage of the filament. It has been held that, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See MPEP 2144.05(II). The ordinary artisan would recognize that optimizing the amount and/or thickness of the sheath used would necessarily optimize the weight percent.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Heston (WO 2016/090164)12,13 in view of Sherman (US 2010/0163809)2,14 as applied to claim 1 above, and further in view of Greger (US 2015/0125682)2.
With respect to claim 8, Heston in view of Sherman ‘809 teaches all the limitations of claim 1 above. Heston further teaches the jacket (sheath) may be formed of a variety of thermoplastic polymers including but not limited to acrylonitrile butadiene styrene (ABS), polylactic acid (PLA), polyvinyl alcohol (PVA), nylon, polystyrene, and polycarbonate (paragraph [025]).
Heston in view of Sherman ‘809 is silent as to the jacket (sheath) exhibiting a melt flow index of less than or equal to 15 grams per 10 minutes as determined using ASTM D1238-13 at 190oC and with a load of 2.16 kilograms.
Greger teaches that thermoplastic resins suitable for fused deposition modeling include acrylonitrile butadiene styrene (ABS) as well as polycarbonate, polylactic acid, polyphenylsulfone, and mixtures of these, and which has a melt flow rate of 5-30g/10min at extrusion temperature under 1.2 kg load according to ASTM D1238 (paragraphs [0016]-[0017]).
The melt flow rate range of Greger substantially overlaps the claimed range in the instant claim 8. It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05 (I). Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have selected from the overlapping portion of the range taught by Greger, because overlapping ranges have been held to establish prima facie obviousness.
Since both Heston in view of Sherman ‘809 and Greger teach filament fused deposition modeling using similar thermoplastic materials, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the jacket (sheath) material of Heston in view of Sherman to have a melt flow rate of 5-30g/10min at extrusion temperature under 1.2 kg load according to ASTM D1238 because it is a known melt flow rate suitable for the jacket (sheath) polymers of Heston which provide the predictable results of being able to be used as a filament material for fused deposition modeling.
Heston in view of Sherman ‘809 and Greger teaches the claimed invention above but does not expressly teach the melt flow index measured at 190oC and a load of 2.16 kg. It is a reasonable to presume that the melt index measured under the claimed conditions is inherent to Heston in view of Sherman ‘809 and Greger. Support for said presumption is found in that the melt flow rate of the prior art is suitable for fused deposition modeling, which is an aim of the instant invention (see page 1 of the specification as filed), and the prior art uses similar sheath materials to the instant invention (e.g., styrene butadiene copolymers, polylactic acid, nylon; see pages 24-26 of the instant specification). Therefore the sheath material of the prior art is expected to have the same properties as the claimed invention.
Claim(s) 1-2, 6, 7, and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Heston (WO 2016/090164)15,16 in view of Yang (US 2015/0252139)2 and Sherman (US 2010/0163809)2,17.
With respect to claims 1-2, Heston teaches a filament comprising an outer jacket formed around an inner core for use with additive manufacturing machines such as fused filament fabrication (FFF) machines (paragraph [005]). The core may be a low durometer material such as silicone (paragraph [022]). Such low durometer materials tend to have tacky surfaces (paragraph [022]). The jacket may be formed of a variety of thermoplastic polymers including, but not limited to, acrylonitrile butadiene styrene, polylactic acid, polyvinyl alcohol, nylon, polystyrene, and polycarbonate (sheath comprising a non-tacky thermoplastic resin free of silicone) (paragraph [025]). The filament has a diameter of between 1 and 10 mm (paragraph [036]).
Heston is silent as to the silicone core being a pressure sensitive adhesive comprising 45 to 80 weight percent of a silicone-containing block copolymer based on a total weight of the core, the silicone-containing block copolymer comprising a first block comprising a polydiorganosiloxane and a second block that is free of a silicone, and 20 to 55 weight percent of a silicone tackifying resin based on the total weight of the core.
Yang teaches polydiorganosiloxane polyurethane copolymers, articles comprising the copolymers, and methods of making the copolymers (paragraph [0050]). The polydiorganosiloxane polyurethanes can be formulated into adhesive compositions such as pressure sensitive adhesives that contain a tackifier (paragraph [0131]). Tackifying agents may be incorporated into the copolymers into amounts ranging up to 80 weight percent based on total weight (paragraph [0126]).
The copolymers can have many of the desirable features of polydiorganosiloxanes such as low glass transition temperatures, thermal and oxidative stability, resistance to ultraviolet radiation, low surface energy and hydrophobicity, and high permeability to many gases (paragraph [0050]). Additionally, the copolymer can have improved mechanical strength and elastomeric properties compared to polydiorganosiloxane (paragraph [0050]).
The weight percent of polydiorganosiloxane polyurethane copolymer and tackifier range of Yang substantially overlaps the claimed range in the instant claim 1. It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05 (I). Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have selected from the overlapping portion of the range taught by Yang, because overlapping ranges have been held to establish prima facie obviousness.
Since both Heston and Yang teach tacky silicone compositions, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the silicone core of Heston to comprise the polydiorganosiloxane polyurethane copolymer with up to 80 weight percent tackifier as described by Yang in order to provide a fiber with a low glass transition temperature, thermal and oxidative stability, resistance to ultraviolet radiation, low surface energy and hydrophobicity, and high permeability to many gases as well as improved mechanical strength and elastomeric properties.
Heston in view of Yang is silent as to the tackifying resin being a silicone.
Sherman ‘809 teaches branched polydiorganosiloxane polyamide block copolymers which can be used in numerous applications, for example in adhesives and as a material for fibers (paragraphs [0013], [0042]). A silicate tackifying resin may be added to form a pressure sensitive adhesive with increased adhesiveness and improved physical properties (paragraphs [0100]-[0103]). The adhesive composition typically contains 20-80 weight percent, preferably 45-55 weight percent, polydiorganosiloxane polyamide and 20-80 wt%, preferably 45-55 weight percent, silicate tackifying resin based on the combined weight of polydiorganosiloxane polyamide and silicate tackifying resin (paragraph [0109]).
Since both Heston in view of Yang and Sherman ‘809 teach pressure sensitive adhesive silicone capable of being spun into a fiber, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the takifying resin of Heston in view of Yang to be a silicate tackifying agent, in order to provide a polydiorganosiloxane copolymer with increased adhesiveness and improved physical properties.
With respect to claim 6, Heston in view of Yang and Sherman ‘809 teaches all of the limitations of claim 1 above. Yang further teaches the polydiorganosiloxane polyurethane copolymer can be represented by the repeating unit:
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where R2 (R8) is independently an alkylene, alkylene substituted with an aryl, or a combination thereof; R3 (Q3) is independently an alkylene, arylene, or substituted arylene; X (X) is independently an oxy or -CH2-; and the claimed R3 is a hydrogen (paragraphs [0075]-[0076]). Q1 is represented by this portion of the formula:
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where Y (R2) is independently an alkylene, arylene, or a combination thereof; R1 (R1) is independently an alkyl haloalkyl, aralkyl, alkenyl, aryl, or aryl substituted with an alkyl, alkoxy, or halo; and n is an integer in a range of 0 to 1500 (paragraph [0076]).
It is noted that page 17 of the specification as filed states that in many embodiments group Q3 is an alkylene, arylene, or combination of the two. Therefore, group R3 of Yang is interpreted as meeting the limitation wherein “Q3 is the residue of a diisocyanate of formula OCN-Q3-NCO minus two isocyanato groups (-NCO)”.
With respect to claim 7, Heston in view of Yang and Sherman ‘809 teaches all the limitations of claim 1 above. Heston further teaches the first material may have a glass transition temperature below 0 degrees C, for example approximately -30 degrees C (claim 12; paragraph [033]).
With respect to claim 9, Heston in view of Yang and Sherman ‘809 teaches all the limitations of claim 1 above. Heston further teaches that the jacket thickness is minimized to reduce the percentage that the jacket forms the overall filament material, while still providing the desired axial rigidity (paragraph [025]).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the amount of sheath used compared to the core to include the claimed range. One would have been motivated to provide enough sheath that the filament has the desired axial rigidity, but not so much that the sheath takes up a large percentage of the filament. It has been held that, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. See MPEP 2144.05(II). The ordinary artisan would recognize that optimizing the amount and/or thickness of the sheath used would necessarily optimize the weight percent.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Heston (WO 2016/090164)18,19 in view of Yang (US 2015/0252139)2 and Sherman (US 2010/0163809)2,20 as applied to claim 1 above, and further in view of Greger (US 2015/0125682)2.
With respect to claim 8, Heston in view of Yang and Sherman ‘809 teaches all the limitations of claim 1 above. Heston further teaches the jacket (sheath) may be formed of a variety of thermoplastic polymers including but not limited to acrylonitrile butadiene styrene (ABS), polylactic acid (PLA), polyvinyl alcohol (PVA), nylon, polystyrene, and polycarbonate (paragraph [025]).
Heston in view of Yang and Sherman ‘809 is silent as to the jacket (sheath) exhibiting a melt flow index of less than or equal to 15 grams per 10 minutes as determined using ASTM D1238-13 at 190oC and with a load of 2.16 kilograms.
Greger teaches that thermoplastic resins suitable for fused deposition modeling include acrylonitrile butadiene styrene (ABS) as well as polycarbonate, polylactic acid, polyphenylsulfone, and mixtures of these, and which has a melt flow rate of 5-30g/10min at extrusion temperature under 1.2 kg load according to ASTM D1238 (paragraphs [0016]-[0017]).
The melt flow rate range of Greger substantially overlaps the claimed range in the instant claim 8. It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05 (I). Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have selected from the overlapping portion of the range taught by Greger, because overlapping ranges have been held to establish prima facie obviousness.
Since both Heston in view of Yang and Sherman ‘809 and Greger teach filament fused deposition modeling using similar thermoplastic materials, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the jacket (sheath) material of Heston in view of Yang and Sherman ‘809 to have a melt flow rate of 5-30g/10min at extrusion temperature under 1.2 kg load according to ASTM D1238 because it is a known melt flow rate suitable for the jacket (sheath) polymers of Heston which provide the predictable results of being able to be used as a filament material for fused deposition modeling.
Heston in view of Yang and Sherman ‘809 and Greger teaches the claimed invention above but does not expressly teach the melt flow index measured at 190oC and a load of 2.16 kg. It is a reasonable to presume that the melt index measured under the claimed conditions is inherent to Heston in view of Yang and Sherman ‘809 and Greger. Support for said presumption is found in that the melt flow rate of the prior art is suitable for fused deposition modeling, which is an aim of the instant invention (see page 1 of the specification as filed), and the prior art uses similar sheath materials to the instant invention (e.g., styrene butadiene copolymers, polylactic acid, nylon; see pages 24-26 of the instant specification). Therefore the sheath material of the prior art is expected to have the same properties as the claimed invention.
Response to Arguments
Response – Claim Rejections 35 USC §112
The rejections of claim 5 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 pre-AIA the applicant regards as the invention, are overcome by Applicants amendments to the claims in the response filed May 9, 2025.
Response – Claim Rejections 35 USC §103
Applicant’s arguments submitted on May 9, 2025 have been fully considered and are not persuasive.
On pages 8-9, 10, 12, and 13 of the response Applicant submits that there is a significant difference between not disclosing silicone as an option of an open set of thermoplastic polymers, which Heston does, and teaching that a specific thermoplastic polymer is excluded as an option, i.e., that the jacket material is free of a silicone, which Heston does not.
These arguments are not persuasive. As discussed in the rejection above and acknowledged by Applicant Heston teaches a list of materials suitable for the jacket (sheath) that does not include silicone. It is unclear how a jacket (sheath) that comprises a material that is not silicone is different from a sheath that is free from silicone. In both instances, silicone is not present in the sheath, therefore the disclosure of Heston reads on the limitation “free from silicone”. Additionally, as later argued by Applicant, the silicone and block-silicone in the combination used in the core is a low-durometer material (Heston; paragraph [022]). However, the jacket (sheath) must be formed harder than the core material (Heston; paragraph [006]). Therefore the ordinary artisan would not be motivated to utilize silicone in the jacket (sheath) as it would not provide a jacket (sheath) that is harder than the core.
On pages 9, 10, 12, and 13-14 of the response, Applicant submits that one of ordinary skill in the art would know that PSAs typically have durometers that are far lower than the 60 Shore A and composites of the claimed invention which typically exhibit 25-30 Shore A.
These arguments are not persuasive. Arguments presented by the applicant cannot take the place of evidence in the record. See MPEP 716.01(c)(II). There is no evidence in either the specification or the prior art which would indicate the PSAs have a durometer value so low, such as a value of 25-30 Shore A, that would render the material unsuitable for use in the fiber of Heston.
On pages 9, 11, 12, and 14 of the response Applicant submits that Heston teaches both the material and the thickness of the jacket provide necessary axial rigidity and that one of ordinary skill in the art would recognize that axial rigidity is not a characteristic of the claimed invention, and if modification to reduce axial rigidity were applied to Heston the function of Heston’s filament would be destroyed.
These arguments are not persuasive. It is respectfully submitted the proposed combination of claim 1 does not modify the jacket (sheath) of Heston. It is therefore unclear how Heston is being modified in such a way that axial rigidity is reduced. It is further noted that a specific axial rigidity is not claimed in claim 1. As such the axial rigidity of Heston is within the scope of claim 1, and there is no need to modify Heston’s jacket (sheath) such that axial rigidity is reduced as alleged.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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LARISSA ROWE EMRICH
Examiner
Art Unit 1789
/LARISSA ROWE EMRICH/Examiner, Art Unit 1789
1 Cited in IDS
2 Previously presented
3 Cited in IDS
4 Previously presented
5 Cited in IDS
6 Previously presented
7 Cited in IDS
8 Previously presented
9 Cited in IDS
10 Previously presented
11 Hereinafter referred to as Sherman ‘809
12 Cited in IDS
13 Previously presented
14 Hereinafter referred to as Sherman ‘809
15 Cited in IDS
16 Previously presented
17 Hereinafter referred to as Sherman ‘809
18 Cited in IDS
19 Previously presented
20 Hereinafter referred to as Sherman ‘809