Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The Amendment filed March 28, 2025 has been entered. Claims 1-4, 6, 7, 9, 11-15, 17, 19, 20, 22, 23, 26-28, 32-34, 36 and 37 are pending in this application, with claims 22, 23, 26-28, 32-34, 36 and 37 withdrawn from consideration as directed to a non-elected invention. Thus claims 1-4, 6, 7, 9, 11-15, 17, 19 and 20 are examined herein.
Rejections -- 35 U.S.C. 103
3. 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.
4. Claims 1-4, 6, 7, 9, 11-15 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Kawai (US 2021/0009476, with effective filing date prior to the earliest priority date of the present application).
Kawai discloses a baking slurry (considered equivalent to the claimed “sinterable paste formulation”) comprising i) a powder of a sinterable material present at a weight percentage “even more preferably more than or equal to 85” (see Kawai para [0059]), ii) a binder (see Kawai para [0039]), and iii) a solvent which comprises water and “HI-MOL PM” which is polyethylene glycol monomethyl ether (see Kawai para [0055] and [0088]), which has an evaporation rate within the presently claimed range (approximately 0.7). Such a material, being the same as what is presently claimed, is considered “usable” for the same purposes in both the prior art and the claimed invention. Independent claim 1 has been amended to require at least one of i) a pH of at least 8, ii) 6-10 wt% aqueous solution, or iii) 20-80 wt% organic solvent in the aqueous solution. Kawai discloses these features as follows: i) pH, see examples 4, 5, 26-29, ii) solution percentage, see Kawai para [0061] which states the amount of water in the prior art is “preferably more than or equal to 6 wt. %”, iii) see examples 26-29.
With respect to claim 2, Kawai para [0061] states the amount of water in the prior art is “preferably more than or equal to 6 wt. %”. With respect to claim 3, Kawai examples 26-29 discloses embodiments in which the relative amounts of water-miscible organic solvent and water are within the presently claimed range. With respect to claim 4, the binder in Kawai is a polyvinyl alcohol resin, which at a minimum would be “dispersible” in the organic solvents used in Kawai. With respect to claim 6, polyethylene glycol monomethyl ether is considered being considered to be an alkylene glycol; see also the claim interpretation in item no. 4 of the Office Action of November 20, 2024. With respect to claim 7, the percentage of polyvinyl alcohol resin in the prior art (equivalent to the claimed “binder”) overlaps that presently claimed; see Kawai para [0060]. With respect to claim 9, the binder in the prior art is a polyvinyl alcohol resin while the sinterable material is various oxides or combinations of oxides; the sintering temperature of the former will clearly be far below that of the latter.
Claims 11, 12, 14 and 15 define certain properties of the binder (claims 11, 12) or of the overall formulation (claims 14, 15). While the prior art does not specify any values for those properties, because the actual materials used in the prior art and the invention may be the same, it is a reasonable assumption that any properties associated therewith will likewise be the same or substantially so. Note that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established; see In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). With respect to claim 13, Kawai examples 4, 5 and 26-29 denote specific embodiments in which the pH of the prior art material is at least 8. With respect to claim 17, the prior art material includes percentages of components that are the same as or overlap those recited in the instant claim; see Kawai para [0059] (for the powder), para [0061] (for the solution), and para [0060] (for the binder).
While the prior art does not disclose any specific example fully in accord with the limitations of the present claims, the specific discussions in Kawai regarding the various components in the prior art materials (as discussed above) would have rendered a formulation in accord with those claims to be at best an obvious variant of the materials disclosed in the prior art. Note 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 In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Thus the disclosure of Kawai is held to create a prima facie case of obviousness of a formulation as presently claimed.
Nonstatutory Double Patenting
5. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
6. Claims 1, 3, 4, 7, 9, 11, 12 and 19 are provisionally rejected on the ground of
nonstatutory double patenting as being unpatentable over claims 1, 3, 5, 8, 9, 12-15,
17-19, 22, 23, 26, 29 and 30 of copending Application No. 18/036417 (reference
application).
Although the claims at issue are not identical, they are not patentably distinct
from each other because the instant claims and those of the reference application are both directed to sinterable paste formulations comprising at least 85% of a sinterable
powder, a binder, water and an organic vehicle with a certain evaporation rate. With
respect to instant claim 3, a formulation where the organic solvent is 80% of the solution
would fall within the limitations of both the ‘417 claims and the instant claim. With
respect to instant claims 4, 7, 9, 11, 12 and 19, the limitations of these claims are
substantially the same as the limitations of claims 9, 12, 14, 15, 18 and 29, respectively,
of the ‘417 application. Because of the substantial overlap between the formulations
claimed herein and those claimed in the ‘417 application, no patentable distinction is
seen to exist therebetween.
This is a provisional nonstatutory double patenting rejection because the
patentably indistinct claims have not in fact been patented.
Response to Arguments
7. Applicant’s remarks filed March 28, 2025 have been fully considered, with the following effect:
a) The examiner agrees that the amendments to the claims overcome the previous rejections of the claims under 35 USC 112 and 35 USC 102.
b) With respect to the nonstatutory double patenting rejection, Applicant requests deferring addressing this issue until indication of allowable subject matter. The examiner notes that the present action is a Final Rejection. Therefore a complete response thereto should either include a proper Terminal Disclaimer or a convincing argument why one should not be required in the present case.
c) With respect to the rejection based on Kawai, Applicant argues that many of the examples of Kawai referred to in the rejection (with respect to pH and percent organic solvent) are comparative examples and exhibit a substantially inferior performance. Assuming arguendo that Applicant is correct on that point, this would not overcome the rejection because it is well-settled that a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments; see Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). Further, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments; see In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).
Applicant further suggests that the polyethylene glycol monomethyl ether disclosed in Kawai [0088] is distinct from an alkylkene glycol as claimed. The examiner respectfully disagrees; the term “alkylene glycol” in the context of the present claims is being given a broad interpretation such that it includes compounds of such alkylene glycols, as this is the only way to render the disclosure in the present specification consistent with the use of the term alkylene glycol. Note the Claim Interpretation section in the Office Action of November 29, 2024.
Applicant argues that while the relative amount of 1 (ethylene glycol) to 4 (water) as in e.g. comparative examples 6 and 7 is per se 25%, the actual amount would be lower than the claimed minimum 20% because the binders are included in an aqueous solution. However this argument is unsupported by any actual data regarding the amounts of those components in the prior art formulations.
Applicant further argues that the preferred amount of water in Kawai [0061] is more than 10%. However, Kawai [0061] clearly envisions amounts as low as 6%, even if such an amount is not the most preferred in the prior art. See also Susi, supra, and the arguments above with respect to nonpreferred embodiments.
8. Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to GEORGE WYSZOMIERSKI whose telephone number is (571) 272-1252. The examiner can normally be reached on Monday thru Friday from 8:30 am to 5:00 pm Eastern time.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks, can be reached on 571-272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GEORGE WYSZOMIERSKI/Primary Examiner, Art Unit 1733 May 30, 2025