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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 October 01, 2025 has been entered.
Response to Amendment
The Amendment submitted on September 04, 2025 has been entered. Claims 1-30, and 34-35 remain pending in the application. Claims 12-27 were withdrawn due to a previous restriction requirement and Claims 31-33 were previously withdrawn. Claims 34-35 are newly added and support can be found in the Specification as originally filed. Claims 1 and 11 were amended and support can be found in the Specification as originally filed. Applicant’s amendments to the Claims have overcome the 35 U.S.C. 112(a) rejection previously set forth in the Final Office Action mailed June 05, 2024.
Claim Rejections - 35 USC § 112
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 35 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The term “long-term” in Claim 35 is a relative term which renders the claim indefinite. The term “long-term” is not defined by the claim. While the instant Specification discloses time frames that may be considered “long-term”, they are inconsistent. For example, the instant Specification discloses that “ACC powders, when stored in an excess of acetone, remain amorphous for long periods of time… for 2 weeks after synthesis” [¶ 0055], but also states that “ACC stabilization when preserved at ambient conditions for several months” [¶0059]. These conflicting definitions do not provide a consistent standard for ascertaining the medium of storage nor the requisite degree to be considered long-term, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Therefore, the scope of the claim is indefinite. It is suggested to clarify the definition of “long-term”. For the purposes of examination, “long-term” will be interpreted to mean two weeks, the shorter of the two time periods defined in the instant Specification.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-6, 8-9, 11, 28-30, and 34-35 are rejected under 35 U.S.C. 103 as being unpatentable over Ramey (US 2004/0063589A1; hereafter as “Ramey”) in view of Devenney et al. (US 2013/0192783; hereafter as “Devenney”).
Regarding Claims 1-6, 11, and 30, Ramey teaches a lubricant composition containing amorphous calcium carbonate (ACC) [¶0019, 0026], corresponding to a paste comprising ACC of Claim 1, said composition comprising:
Magnesium [¶0026], wherein said magnesium is mixed with the ACC [Claim 14], thereby reading on ACC doped with divalent alkaline-earth metal ions of Claim 1, thereby reading on wherein said divalent alkaline-earth metal ions are magnesium ions of Claim 2, and corresponding to wherein said ACC is doped with Mg ions of Claim 3;
Isopropyl alcohol [Example 9; ¶0077-0078], corresponding to a binder of Claim 1, thereby reading on wherein said binder comprises a polar organic solvent of Claim 4; thereby reading on wherein said polar organic solvent is an alcohol of Claim 5;
Dispersants [¶0054], corresponding to a dispersant of Claim 1;
Wherein X-ray powder pattern showed only broad peaks, with no peaks from crystalline calcium carbonate [¶0077-0078], corresponding to wherein said paste is devoid of crystalline calcium carbonate of Claim 1;
Zinc [¶0057-0058], thereby reading on wherein divalent transition metal ions are zinc of Claim 2; and
Vegetable oil [¶0050], thereby reading on wherein said dispersant is an oil of Claim 6; and thereby reading on said oil is vegetable oil of Claim 30.
Ramey does not teach all of the claimed ingredients together in one embodiment.
However, Ramey teaches the ACC, metal ions, binder and dispersant with sufficient specificity that one of ordinary skill in the art would arrive at the claimed combination. Moreover, one of ordinary skill in the art at the time of the claimed invention would have found it “obvious to try” the ACC together with metal ions, binder and a dispersant, as the teaching represents a finite number of identified, predictable combinations. KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398 (2007).
Regarding Claims 1 and 11, Ramey teaches co-additives including viscosity modifiers [¶0052-0053].
However, Ramey does not explicitly teach said composition is 3D printable of Claim 1; has a viscosity in the range of about 2x105 to about 5x105 cP, at a temperature of 25˚C and a constant shear rate of 10 sec-1 of Claim 1; and has about 2.64x105 to about 3.94x105 cP, at a temperature of 25˚C and a constant shear rate of 10 sec-1 of Claim 11.
Nevertheless, the ability of a composition to be 3D printable and the viscosity of said composition is a function of said composition’s chemical and physical properties. Ramey teaches the same composition with the same chemical and physical properties as the instantly claimed paste, as shown above, and therefore the lubricant composition of Ramey would expectedly result in the same 3D-printable ability and viscosity as required by the instant claims. Case law has held that claiming of a new use, new function or unknown property which is expectedly present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). The courts have stated that 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. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "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." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position. In the alternative that the above disclosure is insufficient to anticipate the above listed claims, it would have nonetheless been obvious to the skilled artisan to produce the claimed paste, as the reference teaches each of the claimed ingredients (ACC, binder and dispersant) for the same utility (to make a paste comprising ACC) and for the same purpose (to obtain a dry three-dimensional model made of such a paste).
Regarding Claims 8-9 and 28-29, Ramey also teaches:
About 35% calcium carbonate [¶0042], corresponding to the ACC of Claim 8;
wherein said magnesium is mixed with the calcium carbonate [Claim 14; ¶0026]; thereby corresponding to the doped ACC of Claim 8;
About 35% hydrocarbon oil [¶0042], corresponding to the dispersant of Claim 8;
About 0.8% triethylene glycol [¶0042], corresponding to the binder of Claim 8, thereby reading on the diol of Claim 28, and thereby reading on the triethylene glycol of Claim 29; and
About 12% Mg(OH)2 [¶0044], thereby reading on the alkaline earth metals of Claim 9.
However, Ramey is silent to the ratio between said doped ACC and the total volume of said dispersant and said binder in said paste is about 1-2 gram to 1 mL or the ratio between said doped ACC and the total volume of said dispersant and said binder in said paste is about 1-2 gram to 1 mL of Claim 8, and wherein the ratio between the calcium ions of said amorphous calcium carbonate and said divalent alkaline-earth- or transition metal ions is from about 4:1 to about 1:1 of Claim 9.
Nevertheless, it would be obvious to one of ordinary skill in the art that the taught amounts of calcium carbonate, hydrocarbon oil and triethylene glycol above is equivalent to approximately 1:1 of doped ACC and the total volume of said dispersant and said binder (35% ACC/(35% hydrocarbon oil + 0.8% triethylene glycol) = about 1:1), which reads on with the claimed range of about 1-2 gram to 1 mL (about 1:1 to 2:1) of Claim 8. It would also be obvious that the taught amounts of calcium carbonate and magnesium above is equivalent to approximately 3:1 of calcium ions to divalent alkaline-earth metal ions (35% Ca2+ : 12% Mg2+ = about 3:1), which reads on the claimed range of about 4:1 to about 1:1 of Claim 9.
Regarding Claim 34, Ramey teaches the powder composition was made by mixing 200 g of calcium carbonate in 1000 g of isopropyl alcohol, then filtered with , and then sucked dry [Example 9; ¶ 0078].
However, Ramey does not explicitly disclose a solid content between about 55% and about 65% by weight.
Nevertheless, it would be obvious to one of ordinary skill that while the initial solution contains 17% solids by weight (200g calcium carbonate/(200g calcium carbonate + 1000g isopropyl alcohol) = 0.17), and the final dry product is 100% solids by weight, that the solution must have been in an intermediate state wherein the solution was about 55-65% solid by weight, corresponding to the claimed range. Despite only transiently falling within the claimed range of solids, this transient state of the composition of Ramey nevertheless renders the claimed composition obvious.
In the alternative that the above disclosure is insufficient to anticipate or suggest the claimed solids content, Devenney teaches a non-cementitious composition comprising amorphous calcium carbonate [¶ 0026-0030], divalent transition metals [Claim 7], binders [¶ 0100], and comprising 30-60% solids by weight [¶ 0235], which overlaps the claimed range of about 55-65% solids by weight. Devenney further teaches that said composition may be pressed in a mold using any convenient means [¶ 0235].
Ramey and Devenney are considered to be analogous art as the claimed invention, as all are in the same field of methods of preparing compositions comprising amorphous calcium carbonate, divalent transition metals and binders.
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the solids content of Devenney with the composition of Ramey, thereby arriving at the claimed invention.
Furthermore, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the range taught by Devenney for solid content (30-70%) overlaps the instantly claimed range (55-65%) and is therefore considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, MPEP 2144.05.
Regarding Claim 35, Ramey teaches the stability of the composition can resist the corrosiveness or acid moieties for long periods of time [¶ 0091], corresponding to wherein said ACC is long-term stabilized.
Claims 7 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Ramey (US20040063589A1; hereafter as “Ramey”) as applied to Claims 1-6, 8-9, 11, 28-30 above, and in view of Rogers (Shortening, Encyclopedia Britannica; hereafter as “Rogers”).
Ramey teaches the doped ACC, binder and dispersant of Claims 1 as set forth above and incorporated herein by reference.
Ramey teaches:
vegetable oil [¶0050], thereby reading on vegetable oil of Claim 7;
About 24 % Ca carbonate [¶ 0042-0044];
About 24% Mg(OH)2 [¶0026, 0042-0044], wherein said magnesium is mixed with the aforementioned ACC [Claim 14], thereby reading on ACC doped with Mg ions of Claim 10; and
triethylene glycol [¶0042], thereby reading on the triethylene glycol as said binder of Claim 10.
However, Ramey is silent to wherein the ratio between the calcium ions of said amorphous calcium carbonate and said Mg ions is about 1:1 of Claim 10, wherein said vegetable oil is corn oil, coconut oil, canola oil, or sunflower oil of Claim 7, and corn oil as said dispersant of Claim 10.
Nevertheless, it would be obvious to one of ordinary skill in the art that the taught amounts of calcium carbonate and Mg(OH)2 above is equivalent to approximately 1:1 of calcium ions and Mg ions (24% Ca2+/ 24% Mg2+ = 1:1), which reads on with the claimed range of about 1:1 of Claim 10.
Furthermore, Roger teaches that corn and coconut oils are vegetable oils [Page 3; ¶3]. Roger also teaches that vegetable oils are able to remain liquid at low temperatures and can be processed to achieved neutral colors and odors [Page 3; ¶3].
Ramey and Rogers are considered to be analogous to the claimed invention because all are in the same field of paste composition components. Therefore, it would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to modify the composition of Ramey by substituting vegetable oil for corn oil as taught by Rogers. The selection of a known material based on its suitability for its intended use can support a prima facie obviousness determination. See MPEP 2144.07.
Response to Arguments
Applicant argues (1) Ramey neither discloses nor suggests the “doping” of ACC with divalent alkaline-earth metal ions or transition metal ions in the manner described in the present application, i.e. for the purpose of creating a printable paste or achieving long-term stabilization of ACC for structural applications. However, it would be obvious to one of ordinary skill, as evidenced by Glinchuk et al., that doping is a broad term that generally means to introduce impurities to a composition [Glinchuk et al., Influence of impurities on the properties of rare-earth-doped barium titanate ceramics, Abstract] which Ramey teaches, i.e. the addition of alkaline earth metals, an impurity, to amorphous calcium carbonate [¶ 0026]. Furthermore, while the composition Ramey is not explicitly taught to be 3D-printable or long-term stabilized, Ramey teaches the same composition comprising ACC and alkaline-earth metals [¶ 0026], binder [¶ 0077-0078], and dispersant [¶ 0054], which would be expected to have the same properties as the claimed composition. As disclosed above, the ability of a composition to be 3D printable and the viscosity of said composition is a function of said composition’s chemical and physical properties. Ramey teaches the same composition with the same chemical and physical properties as the instantly claimed paste, as shown above, and therefore the lubricant composition of Ramey would expectedly result in the same 3D-printable ability and viscosity as required by the instant claims. Thus, applicant’s argument is not persuasive.
Applicant argues (2) the objective of the instant application is to stabilize ACC for long-term use and enable the formation of intricate geometries via 3D printing. However, while the objective of the composition of Ramey does not align with the objective of the claimed paste, since the instant claims are directed toward a composition, the prior art is not required to teach the same objective if it contains all the elements of the claimed structure. In this case, Ramey teaches the same structure as the instantly claimed paste. Thus, applicant’s argument is not persuasive.
Applicant argues (3) Ramey describes no specific rheological properties like viscosity, shear rate or yield stress. However, while the rheological properties of the composition of Ramey is not explicitly taught, Ramey teaches the same composition comprising ACC and alkaline-earth metals [¶ 0026], binder [¶ 0077-0078], and dispersant [¶ 0054], which would be expected to have the same properties as the claimed composition. As disclosed above, the rheological properties of said composition is a function of said composition’s chemical and physical properties. Ramey teaches the same composition with the same chemical and physical properties as the instantly claimed paste, as shown above, and therefore the lubricant composition of Ramey would expectedly result in the same rheological properties as required by the instant claims. Thus, applicant’s argument is not persuasive.
Applicant argues (4) Ramey is silent about forming a high-solids content paste. However, attention is directed to the disclosure above, wherein Ramey teaches a composition that must transiently have a solids content of about 55-65%, which overlaps the claimed range of 55-65%. Thus, applicant’s argument is not persuasive.
Applicant argues (5) the high solids loading (55-65%) of the presently claimed paste is thus a key distinguishing feature. However, the applicants do not refer to any factual evidence to support this statement. It has been established that neither applicants’ mere conclusory statement in the Specification nor arguments of counsel can take place of objective evidence. While Paragraph [0055] of the instant Specification states high solids-loading pastes (>65%) were difficult to measure and lower solids-loading pastes (<55%) could not be extruded, there was no further data to support applicant’s argument that the claimed range confers unexpected results beyond what would be expected in the prior art. A showing of unexpected results must be based on evidence, not argument or speculation. Furthermore, allegedly unexpectedly superior results were ultimately insufficient to overcome an obviousness rejection. See MPEP section 2145. Thus, applicant’s argument is not persuasive. It is suggested that Applicants provide experimental data with multiple data points below (<55%), within (55-65%), and above (>65%) the claimed range confers the unexpected results.
Conclusion
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/D. L./Examiner, Art Unit 1764
/ARRIE L REUTHER/Supervisory Primary Examiner, Art Unit 1764