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 .
DETAILED ACTION
This Office action is in response to the communication filed on 11/10/2025. Currently claims 1-15 are pending in the application; with claims 11-15 withdrawn from consideration.
ELECTION / RESTRICTION
Applicant's election of Group I, claims 1-10, with traverse, drawn to a composition in the reply filed on 11/10/2025 is acknowledged. The traversal is on the ground(s) that it would not be burdensome to the examiner to search all inventions. This is not found persuasive because the inventions are in different class/subclasses and are geared towards different types of inventions such as compositions and methods. The requirement is still deemed proper and is therefore made FINAL.
Double Patenting
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-3, and 7-10 are rejected on the ground of non-statutory double patenting as being obvious over claims 1-5 of Glenn (US Patent No. 11,299,642 B2). Although the claims at issue are not identical, they are not patentably distinct from each other because the entirety of the claimed scope is encompassed by claims 1-5 of Glenn (US Patent No. 11,299,642 B2).
Regarding claim 1, Glenn (US Patent No. 11,839,699 B2) teaches in claim 1, a composition for use in 3D printing of electronic devices, comprising: at least Triphenylamine (IPA), wherein the IPA is used as a powder binding agent in the composition, and the composition is to be melted and extruded on a structure.
Regarding claim 2, Glenn (US Patent No. 11,839,699 B2) teaches in claim 1, wherein the composition is insulating, and the TPA forms about 99% of the composition by weight.
Regarding claim 3, Glenn (US Patent No. 11,839,699 B2) teaches in claim 2, wherein the composition is insulating, Polylactide (PLA) forms about 25% of the composition by weight, and the TPA forms about 75% of the composition by weight.
Regarding claim 7, Glenn (US Patent No. 11,839,699 B2) teaches in claim 3, wherein the composition is capacitive, Titanium dioxide (TiO2) forms at least about 35% of the composition by weight, and the TiO2 is in a powder form with particle size ranging from about 100 nm to about 100,000 nm.
Regarding claim 8, Glenn (US Patent No. 11,839,699 B2) teaches in claim 3, wherein the composition is capacitive, PLA forms at least about 30% of the composition by weight and Titanium dioxide (TiO2) forms at least about 35% of the composition by weight, and the TiO2 is in a powder form with particle size ranging from about 100 nm to about 100,000 nm.
Regarding claim 9, Glenn (US Patent No. 11,839,699 B2) teaches in claim 4, wherein the composition is semiconducting, silver (Ag) forms at least about 5% of the composition by weight, and n-type Silicon semiconductor (Si-N) forms at least about 50% of the composition by weight, and the Si-N is in a wafer form with a particle size of about 100 um.
Regarding claim 10, Glenn (US Patent No. 11,839,699 B2) teaches in claim 5, wherein the composition is semiconducting, silver (Ag) fom1s at least about 5% of the composition by weight, and p-type Silicon semiconductor (Si-P) forms at least about 50% of the composition by weight, and the Si-P is in a wafer form with a particle size of about 100 um.
Claims 4-6 are rejected on the ground of non-statutory double patenting as being obvious over claims 1-5 of Glenn (US Patent No. 11,299,642 B2), in view of Gao et al (CN 106903305), hereafter, referred to as “Gao”.
Regarding claims 4-6, Glenn (US Patent No. 11,839,699 B2) teaches in claim 1, a composition for use in 3D printing of electronic devices, comprising: at least Triphenylamine (IPA), wherein the IPA is used as a powder binding agent in the composition, and the composition is to be melted and extruded on a structure. Glenn (US Patent No. 11,839,699 B2) also teaches in claim 2, wherein the composition comprises of Polylactide (PLA) and TPA.
But Glenn (US Patent No. 11,839,699 B2) fails to explicitly teach in claims, that the composition to contain silver, graphene, and/or graphite compounds. However, Gao teaches a metal particle and inorganic nanoparticle combination for 3D printing (title) wherein the metal particle is silver (page 2) and the inorganic nanoparticle is graphene (page 2) both having a particle size of about 50 μm (50,000 nm) (page 3, example 2). Gao also teaches the use of graphite particles (page 3, example 1). Gao further teaches that the adding these compounds results in synergistically modifying the matrix with good dispensability, toughening and strengthening the matrix (page 2) while the metal nanoparticles absorb one-dimensional materials (page 2), the contact area with the matrix is increased so that the transfer effect of the interface stress is improved, the interface bonding strength of the composite material is improved, thereby the mechanical properties of the 3D printed parts are improved (page 2). The references are analogous in the art of 3D curable compositions. Therefore, it would have been obvious to a person of ordinary skill in the art, at the time of filing the claimed invention, to incorporate the teaching of Gao, and combine the metal and other inorganic particles of Gao to the composition of instant claim, thereby obtaining the present invention. It would also have been obvious to any ordinary artisan that the property of the final article will depend on the ingredients, particle size, and ranges thereof. Therefore, the composition %, particle size etc, would be considered a result effective variable. Additionally, the CCPA held that a particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation. Therefore, maintaining the composition, where graphene forms at least about 45% of the composition by weight, and silver (Ag) forms at least about 15% of the composition by weight, and the graphene and Ag are in a powder form with particle size ranging from about 100 nm to about 100,000 nm (as claimed in claim 4); and the composition comprising graphite forms at least about 25% of the composition by weight, and silver (Ag) forms at least about 10% of the composition by weight, and the graphite and Ag are in a powder form with particle size ranging from about 100 nm to about 100,000 nm (as claimed in claim 5); and the composition, wherein PLA forms at least about 25% of the composition, by weight, graphite forms at least about 25% of the composition by weight, and silver (Ag) forms at least about 10% of the composition by weight, and the graphite and Ag are in a powder form with particle size ranging from about 100 nm to about 100,000 nm (as claimed in claim 6); would be a matter of optimization that would be performed under routine experimentation. Please see In In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977).
Claim Rejections - 35 USC § 102
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 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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Okamoto et al. (CN 105965881), hereafter, referred to as “Okamoto”.
Regarding claim 1, Okamoto teaches a composition for making three-dimensional devices (page 1) that contains triphenylamine (TPA) (page 9). Okamoto teaches the powder to be extruded (page 3).
Okamoto is silent on the TPA being used as a powder binding agent. However, when the composition recited in the reference is substantially identical to that of the claims, the claimed properties or function are presumed inherent (MPEP 2112.01). Because the prior art exemplifies Applicant's claimed composition in that the claimed components are used, the claimed physical properties and function relating to the use of the compound as a powder binding agent are inherently present in the prior art. Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
Regards claim 7, Okamoto teaches the addition of titanium oxide (reading on titanium dioxide) having a particle size of 300 nm or less (page 11).
Claim Rejections - 35 USC § 103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 103 that form the basis for the rejections under this section made 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 non-obviousness.
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.
Claims 4-6 are rejected under 35 U.S.C. 103 as being obvious over Okamoto et al. (CN 105965881), in view of Gao et al (CN 106903305), hereafter, referred to as “Gao”.
Regarding claims 4-6, Okamoto teaches a composition for making three-dimensional devices (page 1) that contains triphenylamine (TPA) (page 9). Okamoto teaches the powder to be extruded (page 3). Although, Okamoto is silent on the TPA being used as a powder binding agent. However, when the composition recited in the reference is substantially identical to that of the claims, the claimed properties or function are presumed inherent. MPEP 2112.01. Because the prior art exemplifies Applicant's claimed composition in that the claimed components are used, the claimed physical properties and function relating to the use of the compound as a powder binding agent are inherently present in the prior art. Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
But Okamoto does not teach the composition to contain silver, graphite and/or graphene compounds. However, Gao teaches a metal particle and inorganic nanoparticle combination for 3D printing (title) wherein the metal particle is silver (page 2) and the inorganic nanoparticle is graphene (page 2) both having a particle size of about 50 μm (50,000 nm) (page 3, example 2). Gao also teaches the use of graphite particles (page 3, example 1). Gao further teaches that the adding these compounds results in synergistically modifying the matrix with good dispensability, toughening and strengthening the matrix (page 2) while the metal nanoparticles absorb one-dimensional materials (page 2), the contact area with the matrix is increased so that the transfer effect of the interface stress is improved, the interface bonding strength of the composite material is improved, thereby the mechanical properties of the 3D printed parts are improved (page 2). Okamoto and Gao are analogous in the art of 3D curable compositions. Therefore, it would have been obvious to a person of ordinary skill in the art, at the time of filing the claimed invention, to incorporate the teaching of Gao, and combine the metal and other inorganic particle of Gao to the composition of Okamoto, thereby obtaining the present invention.
Allowable Subject Matter
Claims 2-3 and 8-10 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims; and if the double patenting rejection is overcome by submitting a Terminal Disclaimer, and approval thereupon. Please see the double patenting rejection section for details. The prior arts (of record) do not contain the specially claimed amounts and/or the compounds included in these claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOHAMMAD M AMEEN whose telephone number is (469) 295 9214. The examiner can normally be reached on M-F from 9.00 am to 6.00 pm (Central Time).
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/MOHAMMAD M AMEEN/Primary Examiner, Art Unit 1742