DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 June 25, 2026 has been entered.
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 June 25, 2026 have been entered into the file. Currently claim 1 is amended, claim 8 is cancelled, and claims 10-13 are withdrawn, resulting in claims 1-7 and 9 pending for examination.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) 1-3, 7, and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nyaribo (WO 2019/164678) in view of Sherman (US 2011/0189421)1.
The applied reference Nyaribo has a common assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
With respect to claims 1-2, Nyaribo teaches core-sheath filaments including adhesive cores and non-tacky sheaths, and method of printing adhesives, such as additive manufacturing methods (page 1, lines 4-6). The core comprises a pressure sensitive adhesive (page 9, line 8). The adhesive core may be made of silicone (page 9, lines 22-26; page 19, line 23-page 20, line 32) which includes a tackifier (page 20, lines 27-32). The sheath is non-tacky to allow the filament to be handled and optionally printed, without undesirably adhering to anything prior to deposition onto a substrate (page 21, lines 23-25) and may be thermoplastic polyurethane (free of silicone) (page 22, lines 19-21). The core-sheath filament has an average diameter of 1-10 mm (page 33, lines 34-35). The sheath material exhibits a melt flow index of less than 15 g/10 min (page 21, lines 11-19). Exemplary melt flow indices are 15 g/10 min, 0.89 g/ 10 min, 7.5 g/ 10 min, 6.7 g/ 10 min, 10 g/10 min, and 5.6 g/10 min as measured according to ASTM 1238 at 190oC and 2.16 kg (Table 1).
Nyaribo is silent as to the pressure sensitive silicone core 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 Nyaribo 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 Nyaribo 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, Nyaribo 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, Nyaribo in view of Sherman teaches all the limitations of claim 1 above but does not expressly teach the pressure-sensitive adhesive having a glass transition temperature of no greater than 40oC. It is reasonable to presume that the core glass transition temperature is inherent to Nyaribo in view of Sherman. Support for said presumption is found in that Nyaribo in view of Sherman teaches the same silicone-containing block polymer for the core as claim 3, described above. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2122.01(II). Therefore, Nyaribo in view of Sherman is expected to have the same properties as the claimed invention. See MPEP 2112.
With respect to claim 9, Nyaribo in view of Sherman teaches all the limitations of claim 1 above. Nyaribo further teaches the sheath typically makes up 4-8 wt% of the core-sheath filament (page 23, lines 13-31). This would result in the core making up 92-96 wt% of the core-sheath filament.
Claim(s) 1-2, 4, 7, and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nyaribo (WO 2019/164678) in view of Joseph (US 6007914)2.
With respect to claims 1-2, Nyaribo teaches core-sheath filaments including adhesive cores and non-tacky sheaths, and method of printing adhesives, such as additive manufacturing methods (page 1, lines 4-6). The core comprises a pressure sensitive adhesive (page 9, line 8). The adhesive core may be made of silicone (page 9, lines 22-26; page 19, line 23-page 20, line 32) which includes a tackifier (page 20, lines 27-32). The sheath is non-tacky to allow the filament to be handled and optionally printed, without undesirably adhering to anything prior to deposition onto a substrate (page 21, lines 23-25) and may be thermoplastic polyurethane (free of a silicone) (page 22, lines 19-21). The core-sheath filament has an average diameter of 1-10 mm (page 33, lines 34-35). The sheath material exhibits a melt flow index of less than 15 g/10 min (page 21, lines 11-19). Exemplary melt flow indices are 15 g/10 min, 0.89 g/ 10 min, 7.5 g/ 10 min, 6.7 g/ 10 min, 10 g/10 min, and 5.6 g/10 min as measured according to ASTM 1238 at 190oC and 2.16 kg (Table 1).
Nyaribo is silent as to the pressure sensitive silicone core 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 Nyaribo 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 Nyaribo 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, Nyaribo 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, Nyaribo in view of Joseph teaches all the limitations of claim 1 above but does not expressly teach the pressure-sensitive adhesive having a glass transition temperature of no greater than 40oC. It is reasonable to presume that the core glass transition temperature is inherent to Nyaribo in view of Joseph. Support for said presumption is found in that Nyaribo in view of Joseph teaches the same silicone-containing block polymer for the core as claim 4, described above. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2122.01(II). Therefore, Nyaribo in view of Joseph is expected to have the same properties as the claimed invention. See MPEP 2112.
With respect to claim 9, Nyaribo in view of Joseph teaches all the limitations of claim 1 above. Nyaribo further teaches the sheath typically makes up 4-8 wt% of the core-sheath filament (page 23, lines 13-31). This would result in the core making up 92-96 wt% of the core-sheath filament.
Claim(s) 1-2, 5, 7, and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nyaribo (WO 2019/164678) in view of Sherman (US 2010/0163809)3,4.
With respect to claims 1-2, Nyaribo teaches core-sheath filaments including adhesive cores and non-tacky sheaths, and method of printing adhesives, such as additive manufacturing methods (page 1, lines 4-6). The core comprises a pressure sensitive adhesive (page 9, line 8). The adhesive core may be made of silicone (page 9, lines 22-26; page 19, line 23-page 20, line 32) which includes a tackifier (page 20, lines 27-32). The sheath is non-tacky to allow the filament to be handled and optionally printed, without undesirably adhering to anything prior to deposition onto a substrate (page 21, lines 23-25) and may be thermoplastic polyurethane (free of a silicone) (page 22, lines 19-21). The core-sheath filament has an average diameter of 1-10 mm (page 33, lines 34-35). The sheath material exhibits a melt flow index of less than 15 g/10 min (page 21, lines 11-19). Exemplary melt flow indices are 15 g/10 min, 0.89 g/ 10 min, 7.5 g/ 10 min, 6.7 g/ 10 min, 10 g/10 min, and 5.6 g/10 min as measured according to ASTM 1238 at 190oC and 2.16 kg (Table 1).
Nyaribo is silent as to the pressure sensitive silicone core 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 Nyaribo 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 Nyaribo 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, Nyaribo in view of Sherman ‘809 teaches all of the limitations of claim 1 above. Sherman ‘809 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, Nyaribo in view of Sherman ‘809 teaches all the limitations of claim 1 above but does not expressly teach the pressure-sensitive adhesive having a glass transition temperature of no greater than 40oC. It is reasonable to presume that the core glass transition temperature is inherent to Nyaribo in view of Sherman ‘809. Support for said presumption is found in that Nyaribo in view of Sherman ‘809 teaches the same silicone-containing block polymer for the core as claim 5, described above. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2122.01(II). Therefore, Nyaribo in view of Sherman ‘809 is expected to have the same properties as the claimed invention. See MPEP 2112.
With respect to claim 9, Nyaribo in view of Sherman ‘809 teaches all the limitations of claim 1 above. Nyaribo further teaches the sheath typically makes up 4-8 wt% of the core-sheath filament (page 23, lines 13-31). This would result in the core making up 92-96 wt% of the core-sheath filament.
Claim(s) 1-2, 6, 7, and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nyaribo (WO 2019/164678) in view of Yang (US 2015/0252139)5 and Sherman (US 2010/0163809)1,6.
With respect to claims 1-2, Nyaribo teaches core-sheath filaments including adhesive cores and non-tacky sheaths, and method of printing adhesives, such as additive manufacturing methods (page 1, lines 4-6). The core comprises a pressure sensitive adhesive (page 9, line 8). The adhesive core may be made of silicone (page 9, lines 22-26; page 19, line 23-page 20, line 32) which includes a tackifier (page 20, lines 27-32). The sheath is non-tacky to allow the filament to be handled and optionally printed, without undesirably adhering to anything prior to deposition onto a substrate (page 21, lines 23-25) and may be thermoplastic polyurethane (free of a silicone) (page 22, lines 19-21). The sheath material exhibits a melt flow index of less than 15 g/10 min (page 21, lines 11-19). Exemplary melt flow indices are 15 g/10 min, 0.89 g/ 10 min, 7.5 g/ 10 min, 6.7 g/ 10 min, 10 g/10 min, and 5.6 g/10 min as measured according to ASTM 1238 at 190oC and 2.16 kg (Table 1).
Nyaribo is silent as to the pressure sensitive silicone core 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 Nyaribo 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 Nyaribo 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.
Nyaribo 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 Nyaribo 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 Nyaribo 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, Nyaribo 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, Nyaribo in view of Yang and Sherman ‘809 teaches all the limitations of claim 1 above but does not expressly teach the pressure-sensitive adhesive having a glass transition temperature of no greater than 40oC. It is reasonable to presume that the core glass transition temperature is inherent to Nyaribo in view of Yang and Sherman ‘809. Support for said presumption is found in that Nyaribo in view of Yang and Sherman ‘809 teaches the same silicone-containing block polymer for the core as claim 6, described above. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2122.01(II). Therefore, Nyaribo in view of Yang and Sherman ‘809 is expected to have the same properties as the claimed invention. See MPEP 2112.
With respect to claim 9, Nyaribo in view of Yang Sherman ‘809 teaches all the limitations of claim 1 above. Nyaribo further teaches the sheath typically makes up 4-8 wt% of the core-sheath filament (page 23, lines 13-31). This would result in the core making up 92-96 wt% of the core-sheath filament.
Claim(s) 1-3, 7, and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Heston (WO 2016/090164)7,8 in view of Sherman (US 2011/0189421)2 and Greger (US 2015/0125682)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.
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.
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) 1-2, 4, 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 Joseph (US 6007914)2 and Greger (US 2015/0125682)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).
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.
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) 1-2, 5, 7, and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Heston (WO 2016/090164)11,12 in view of Sherman (US 2010/0163809)2,13 and Greger (US 2015/0125682)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 ‘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.
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.
With respect to claim 5, Heston in view of Sherman ‘809 teaches all of the limitations of claim 1 above. Sherman ‘809 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) 1-2, 6-7, and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Heston (WO 2016/090164)14,15 in view of Yang (US 2015/0252139)2, Sherman (US 2010/0163809)2,16, and Greger (US 2015/0125682)2.
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.
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.
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.
Response to Arguments
Response – Claim Rejections 35 USC §103
Applicant’s arguments submitted on June 25, 2026 have been fully considered and are not persuasive.
On page 8 of the response Applicant submits that the Examiner’s assertion that the melt index measured under the claimed conditions is inherent to the prior art is improper because inherency cannot be established through speculation or conjecture.
These arguments are not persuasive. According to MPEP 2112(IV), in relying upon the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art. The inherency rejection above and previous found that in addition to the prior art filament being suitable for fused deposition modeling, it also uses similar sheath materials as the instant invention (e.g., styrene butadiene copolymers, polylactic acid, nylon; see pages 24-26 of the instant specification). A chemical composition and its properties are inseparable. See MPEP 2112.01(II). It is additionally noted that the benefits of the melt flow index alleged by Applicant on page 8 of the response are with respect to the ability of the filament to be used in an additive manufacturing apparatus. Therefore it is respectfully submitted that the ability of the prior art filament to be used in a similar manner is relevant to the inherency analysis. It is thus reasonable to expect that a filament using the same materials in the same process of use would have similar properties as claimed.
Once a reference teaching a product appearing to be substantially identical is made the basis of a rejection, and the Examiner presents evidence or reasoning to show inherency, the burden of production shifts to the Applicant. The burden of proof is similar to that required with respect to product-by-process claims. See MPEP 2112(V). With respect to product-by-process claims, once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, the burden shifts to Applicant to come forward with evidence establishing a nonobvious difference between the claimed product and the prior art product. See MPEP 2113(II). Applicant has not provided evidence establishing a nonobvious difference between the claimed product and the prior art product.
On page 8 of the response Applicant submits that the claimed melt flow index is not merely an arbitrary selection but rather provides a specific technical benefit that is not taught or suggested by the prior art.
In response to applicant's argument that the melt flow index provides benefits not taught or suggested by the prior art, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Larissa Rowe Emrich whose telephone number is (571)272-2506. The examiner can normally be reached Monday - Friday, 7:30am - 4:00pm EST.
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LARISSA ROWE EMRICH
Examiner
Art Unit 1789
/LARISSA ROWE EMRICH/Examiner, Art Unit 1789
1 Previously presented
2 Previously presented
3 Previously presented
4 Hereinafter referred to as Sherman ‘809
5 Previously presented
6 Hereinafter referred to as Sherman ‘809
7 Cited in IDS
8 Previously presented
9 Cited in IDS
10 Previously presented
11 Cited in IDS
12 Previously presented
13 Hereinafter referred to as Sherman ‘809
14 Cited in IDS
15 Previously presented
16 Hereinafter referred to as Sherman ‘809
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