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 filed July 7, 2025 have been entered into the file. Currently claim 1 is amended and claims 2-4, 6, and 10 are cancelled, resulting in claims 1, 5, 7-9, and 11-14 pending for examination.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
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.
Claim(s) 1, 5, 7-8, and 11-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hickman (US 2016/0082659)1 in view of Mark (US 2016/0368213)1 and Koshi (WO 2019/093277)1,2,3.
With respect to claims 1, 5, 8, and 14, Hickman teaches an additive manufacturing method and apparatus for fabricating polymer parts reinforced with continuous carbon nanotubes (CNTs) (modeled object) (paragraph [0008]). The continuous CNTs may be in the form of CNT yarn (wire rod) that is entrained (coated) into a molten bead of polymer (resin) (paragraph [0008]). The polymer may comprise any suitable amorphous or crystalline thermoplastic polymer or thermoplastic copolymer (paragraph [0031]). The continuous CNT reinforcement may comprise one or more CNT filaments, strands, tows, rovings, or yarns that are suitable for the application (paragraph [0032]). Hickman does not require any materials other than the polymer and the continuous CNT reinforcement, and therefore teaches 0 mass% of an additional component.
Hickman is silent as to the composite comprising 20-70 mass% of the CNT yarn (wire rod) and 30-80 mass% of the polymer.
Mark teaches aspects related to three dimensional printing including a step for additive manufacturing of a part including a fiber reinforced composite filament including one or more axial fiber strands extending within a matrix material of the filament (paragraphs [0002], [0007]). The axial strand materials may be carbon fibers (paragraph [0013]) which may further include carbon nanotubes (paragraph [0199]).
Mark further teaches that fiber reinforced composite filaments with different resin to fiber ratios may provide different properties within different sections of the part (paragraph [0029]). A “low-resin” fiber reinforced composite filament may be used to maximize strength-to-weight ratio (paragraph [0029]) “Low-resin” means a resin percentage in a cross sectional area from 30% to 50% (paragraph [0029]). Similarly a “high-resin” fiber reinforced composite filament may be used to prevent the possible print through of an underlying core (paragraph [0029]).
Since both Hickman and Mark teach filaments for use in three dimensional printing comprising a carbon-based core, 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 CNT yarn (wire rod) and the polymer of Hickman to include the claimed range. One would have been motivated to provide enough CNT yarn (wire rod) to provide the necessary strength with respect to final weight, while also providing enough polymer to cover the CNT yarn (wire rod) such that the is no print through. 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).
Hickman in view of Mark is silent as to the bundle having a diameter of 50-5000 microns and each of the carbon nanotube yarns in the bundle having a diameter of 10-50 microns.
Koshi teaches a fiber-reinforced thermoplastic resin filament and a shaped product thereof (paragraph [0001]). From the viewpoint of high mechanical properties it is preferable that the reinforcing fiber comprises carbon fibers (paragraphs [0011], [0016]). It is preferable that the reinforcing fiber bundle consists of 500 to 50,000 pieces of bundled single yarns of reinforcing fiber having an average diameter of 5 to 10 microns (paragraph [0020]). The fiber-reinforced thermoplastic resin filament has a thickness of 0.01 to 3 mm (10-3000 microns) (paragraph [0027]). The thickness of 0.01 mm (10 microns) or more can improved the strength of a shaped product made of the fiber-reinforced thermoplastic resin filament (paragraph [0027]). It is preferably 0.1 mm or more (100 microns) (paragraph [0027]). The thickness of 3 mm (3000 microns) or less can secure flexibility of the fiber-reinforced thermoplastic resin filament to improve a handling ability at the time of forming shapes (paragraph [0027]). It is preferably 1 mm (1000 microns) or less and is more preferably 0.7 mm (700 microns) or less (paragraph [0027]). The shaped product may be formed from the fiber-reinforced thermoplastic resin filament with a 3D printing method (paragraphs [0045]-[0046]).
The diameter of the yarn range of Koshi 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 Koshi, because overlapping ranges have been held to establish prima facie obviousness. Additionally, it is noted that the ordinary artisan would expect the disclosed yarn diameter to provide the same properties as the claimed invention, namely a combined effect of flexibility and strength (see Koshi, paragraph [0027]; instant specification, paragraphs [0028], [0049]; response filed October 18, 2024, page 5).
Since both Hickman in view of Mark and Koshi teach carbon fibers with a thermoplastic resin suitable for forming molded objects through a 3D printing method, 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 continuous CNTs of Hickman in view of Mark to comprise bundles of 500 to 50,000 yarns having an average diameter of 5 to 10 microns and the overall filament to have a diameter of 0.01-3 mm (10-3000 microns), preferably 0.1-0.7 mm (100-700 microns) in order to provide a filament that provides improved strength to the final molded product but is flexible enough for handling.
With respect to claim 7, Hickman in view of Mark and Koshi teaches all the limitations of claim 1 above. Hickman further teaches the CNT yarn can be spun into various known twist configurations (paragraph [0046]).
With respect to claim 11, Hickman in view of Mark and Koshi teaches all the limitations of claim 1 above.
Hickman is silent as to the CNT yarn (wire rod) having a tensile strength of 100 MPa or more.
Mark teaches aspects related to three dimensional printing including a step for additive manufacturing of a part including a fiber reinforced composite filament including one or more axial fiber strands extending within a matrix material of the filament (paragraphs [0002], [0007]). The axial strand materials may be carbon fibers (paragraph [0013]) which may further include carbon nanotubes (paragraph [0199]). Mark further teaches that the at least one axial stranded material has an ultimate tensile strength of approximately 200-100000 MPa to provide internal strands of fiber that are sufficiently resistant to stretching or snapping to enable the entire filament to be maintained in neutral to positive tension over significant distances (paragraph [0113]).
Since both Hickman and Mark teach filaments for use in three dimensional printing comprising a carbon-based core, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the CNT yarn (wire rod) of Hickman to have an ultimate tensile strength of 200-100000 MPa to provide internal strands of fiber that are sufficiently resistant to stretching or snapping to enable the entire filament to be maintained in neutral to positive tension over significant distances.
With respect to claim 12, Hickman in view of Mark and Koshi teaches all the limitations of claim 1 above. The limitation "the 3D-printer modeling material being a 3D-printer modeling material of a 3D printer configured to print by fused deposition printing” is a use limitation and does not determine the patentability of the product, unless the use produces a structural feature of the product. The use of the product is not germane to the issue of patentability of the product itself, unless Applicant presents evidence from which the examiner could reasonably conclude that the claimed product differs in kind from those of the prior art. See MPEP § 2113.
Furthermore, there does not appear to be a difference between the prior art structure and the structure resulting from the claimed use because Hickman teaches a thermoplastic polymer coated carbon nanotube yarn as described in the rejection of claim 1 above. Hickman further discloses that the method used is similar to fused deposition modeling (paragraph [0008]). Since Hickman teaches the same materials and structure as disclosed by the Applicant, then it would be capable of performing in the manner claimed.
With regard to functional language or intended use limitations, the Applicant may resolve the ambiguities of a functional limitation in a number of ways, such as using a quantitative metric (e.g., numeric limitation as to a physical property) rather than a qualitative functional feature; demonstrate that the specification provides a formula for calculating a property along with examples that meet the claim limitation and examples that do not; demonstrate that the specification provides a general guideline and examples sufficient to teach a person skilled in the art when the claim limitation was satisfied; or amend the claims to recite the particular structure that accomplishes the function (see MPEP 2173.05(g)).
With respect to claim 13, Hickman in view of Mark and Koshi teaches all the limitations of claim 1 above.
Hickman is silent as to the material used as the polymer.
Mark teaches aspects related to three dimensional printing including a step for additive manufacturing of a part including a fiber reinforced composite filament including one or more axial fiber strands extending within a matrix material of the filament (paragraphs [0002], [0007]). The axial strand materials may be carbon fibers (paragraph [0013]) which may further include carbon nanotubes (paragraph [0199]). Mark further teaches the matrix material may be acrylonitrile butadiene styrene, epoxy, vinyl, nylon, polyetherimide, polyether ether ketone, polylactic acid, or liquid crystal polymer (paragraphs [0013], [0029]).
Since both Hickman and Mark teach filaments for use in three dimensional printing comprising a carbon-based core, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the polymer of Hickman to be one of the polymer matrices listed in Mark because the polymer matrices in Mark are recognized in the art as being suitable for three dimensional printing with a carbon-based core, and provide the predictable result of a composite polymer/carbon filament suitable for three-dimensional printing. See MPEP 2143.
With respect to the specific polymer matric material used, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have tried the matrices of Mark, including acrylonitrile butadiene styrene, vinyl, nylon, and polylactic acid, in order to determine which provides the necessary elastic modulus and ultimate tensile strength for the process without negatively affecting the final product (e.g. through stretching and snapping) (see Mark; paragraph [0113]). See MPEP 2143.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hickman (US 2016/0082659)4 in view of Mark (US 2016/0368213)1 and Koshi (WO 2019/093277)1,5,6 as applied to claim 1 above, and further in view of Crawford (US 2005/0170177)1.
With respect to claim 9, Hickman in view of Mark and Koshi teaches all the limitations of claim 1 above. Hickman further teaches the continuous CNTs may be in the form of CNT yarn (wire rod) that is entrained (coated) into a molten bead of polymer (paragraph [0008]).
Hickman in view of Mark and Koshi is silent as to the polymer being a yarn-shaped polymer wound around an outer circumference of the CNT yarn (wire rod).
Crawford teaches multi-component conductive yarn comprising a primary component consisting of an elongated filament formed from polymeric material and a second component consisting of a fiber of polymeric material and carbon nanotubes bonded with the primary component along its length (paragraph [0016]). The secondary component may comprise a sheath surrounding the filament of the primary component or the secondary component may comprise an additional elongated filament which extends along the length and is wrapped around the axis of the core filament along its length (paragraphs [0018], [0048]).
Since both Hickman in view of Mark and Koshi and Crawford teach filaments comprising carbon-based materials and a core/sheath 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 composite filament of Hickman to include the polymer as a filament wrapped around the axis of the core filament because it is known in the art that core/sheath and polymer wrapped core fibers provide the predictable result of a conductive filament. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See MPEP 2143(I)(B).
Response to Arguments
Response – Claim Rejections 35 USC §103
Applicant’s arguments filed on July 7, 2025 have been fully considered and are not persuasive.
On page 5 of the response Applicant submits that none of the cite references teach the amended claim 1.
The Examiner respectfully disagrees. As explained in the rejection of claim 1 above, Hickman does not require any materials other than the polymer and the continuous CNT reinforcement, and therefore teaches 0 mass% of an additional component. Mark is relied on to teach the proportions of the polymer and CNT yarn used and thus does not add any additional materials to the reinforced polymer of Hickman. Koshi was relied on to teach diameters of the carbon nanotubes and the bundle and thus does not add any additional materials to the reinforced polymer of Hickman. Therefore, Hickman in view of Mark and Koshi teach amended claim 1.
On page 6 of the response Applicant submits that Koshi discloses carbon fibers, not CNT yarns.
These arguments are not persuasive. Koshi was not relied on to teach CNT yarns, Hickman was, as described in the rejection of claim 1 above. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
On page 6 of the response Applicant appears to submit that the combination with Koshi would require the use of carbon fibers.
These arguments are not persuasive. As discussed in the rejection of claim 1 above, Koshi teaches a fiber-reinforced thermoplastic resin filament and a shaped product thereof (Koshi; paragraph [0001]). It is preferable that the reinforcing fiber bundle consists of 500 to 50,000 pieces of bundled single yarns of reinforcing fiber having an average diameter of 5 to 10 microns (Koshi; paragraph [0020]). The fiber-reinforced thermoplastic resin filament has a thickness of 0.01 to 3 mm (10-3000 microns) (Koshi; paragraph [0027]). The thickness of 0.01 mm (10 microns) or more can improved the strength of a shaped product made of the fiber-reinforced thermoplastic resin filament (Koshi; paragraph [0027]). It is preferably 0.1 mm or more (100 microns) (Koshi; paragraph [0027]). The thickness of 3 mm (3000 microns) or less can secure flexibility of the fiber-reinforced thermoplastic resin filament to improve a handling ability at the time of forming shapes (Koshi; paragraph [0027]). It is preferably 1 mm (1000 microns) or less and is more preferably 0.7 mm (700 microns) or less (Koshi; paragraph [0027]). The shaped product may be formed from the fiber-reinforced thermoplastic resin filament with a 3D printing method (Koshi; paragraphs [0045]-[0046]).
The reinforced fibers may be carbon fibers, or they may be glass fibers or aramid fibers (paragraph [0007]). Due to the ability to use multiple types of reinforcing fibers, it is clear from the teachings of Koshi that the benefits of the size of the reinforcing fibers is not limited to carbon, but all reinforcing fibers. Similar to Koshi, Hickman teaches that the CNT yarns are used as reinforcement for a polymer used in 3D printing (Hickman; paragraph [0008]). The ordinary artisan would therefore be motivated to modify the dimensions of the CNT yarns of Hickman to have the dimensions described by Koshi for the reasons presented above, and further would have a reasonable expectation of success of producing a CNT reinforced polymer for additive manufacturing.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to 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 Cited in IDS
3 The national stage PGPub US 2020/0369838 used as reference
4 Previously presented
5 Cited in IDS
6 The national stage PGPub US 2020/0369838 used as reference