DETAILED ACTION
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 .
Response to Amendment
The Amendment submitted on May 07, 2026 has been entered. Claims 1-3, 5-11, 29-30, 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 Claims 12-27 were withdrawn due to a previous restriction requirement and Claims 31-33 were previously canceled. Claims 4 and 28 are newly canceled. Claims 1, 5, 29, and 35 were amended and support can be found in the claims and Specification as originally filed. Applicant’s amendments to the Claims have overcome the 35 U.S.C. 112(b) rejection previously set forth in the Non-Final Office Action mailed January 08, 2025.
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 1-3, 5-6, 8-9, 11, 29-30, 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 1-3, 5, 11, 29, and 34, 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;
Triethylene glycol [Claim 13;Example 1; ¶ 0024, 42], corresponding to the polar organic solvent of Claim 1, and thereby reading on wherein said polar organic solvent is triethylene glycol of Claims 5 and 29;
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; and
wherein the 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].
Claim 1 recites the dispersant is an optional component, and for the purposes of examination will be interpreted to not be required. Nevertheless, Ramey teaches dispersants [¶0054], corresponding to a dispersant of Claim 1.
However, Ramey does not 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; a solids loading of between about 55% and about 65% by weight of Claims 1 and 34; a viscosity in the range of 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; and all of the claimed ingredients of Claim 1 together in one embodiment.
Regarding Claims 1 and 11, Ramey teaches co-additives including viscosity modifiers [¶0052-0053] which would allow the composition of Ramey to be modified and optimized for its intended purpose. Furthermore, 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 the solids loading of Claims 1 and 34, Ramey teaches the powder composition was made by mixing 200 g of calcium carbonate in 1000 g of isopropyl alcohol, filtered, and then sucked dry [Example 9; ¶ 0078]. Thus, 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 teaching all the claimed elements of Claim 1 in one embodiment, nevertheless, 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 6, and 30, Ramey also teaches:
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.
Regarding Claims 8-9, 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; 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 35, Ramey teaches the stability of the composition can resist the corrosiveness or acid moieties for long periods of time [¶ 0091], and more specifically, Ramey assesses the oxidative stability of the lubricant composition over time with ASTM D943 testing, which demonstrates the composition of Ramey maintains its oxidative stability for over 3,500 hours [Table 3; ¶ 0091], which is equivalent to 146 days or approximately 5 months, which will be interpreted to correspond to wherein said ACC is stable at ambient conditions for a plurality of months.
Claims 7 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Ramey (US20040063589A1; hereafter as “Ramey”) 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's arguments filed May 07, 2026 have been fully considered but they are not persuasive.
Applicant argues (1) Ramey does not teach a binder comprising a polar organic solvent, or a solids loading of between about 55% and about 65% by weight. However, attention is directed to the disclosure above wherein Ramey teaches a polar organic solvent, specifically triethylene glycol [Example 1; ¶ 0024, 0042], which corresponds to the claimed polar organic solvent. Furthermore, the composition of Ramey has an initial solution that contains 17% solids by weight which becomes a final dry product that is 100% solids by weight. 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 addition, Devenney teaches a non-cementitious composition comprising amorphous calcium carbonate [¶ 0026-0030] comprising 30-60% solids by weight [¶ 0235], which overlaps the claimed range of about 55-65% solids by weight and the composition suggested by Ramey and Devenney rendering the claimed range obvious. Thus, applicant’s argument is not persuasive.
Applicant argues (2) that a Declaration explains the importance of using a polar organic solvent binder to adequately produce the claimed invention. However, as of July 23, 2026, no Declaration has been uploaded to Applicant’s file, and thus, has not been considered.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Querol et al. (WO 2019/182579 A1) teaches a 3D printable composition [Abstract] comprising calcium carbonate [Claim 7], alkali-doped tungsten oxide [¶ 0183], magnesium [¶ 0064], solvents such as triethylene glycol [¶ 0191], and dispersants [¶ 00185].
Wei et al. (US 2018/0296343 A1) teaches 3-D printing of porous implants [Abstract], comprising amorphous calcium carbonate [¶ 0217], magnesium ions [¶ 0217], polyethylene glycol [¶ 0189], and vegetable oil [¶ 0207].
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/D. L./Examiner, Art Unit 1764
/ARRIE L REUTHER/Supervisory Primary Examiner, Art Unit 1764
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