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 .
Election/Restrictions
Applicant’s election of Group I, claims 1-8, in the reply filed on August 8, 2025 is acknowledged. However, in view of Applicant’s amendments to the claims, the restriction requirement and election of species requirement have been withdrawn. Claims 1-20 are under examination.
In view of the above noted withdrawal of the restriction requirement, applicant is advised that if any claim presented in a continuation or divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or non-statutory double patenting rejections over the claims of the instant application.
Once a restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as
Claims 1-2, 5 and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by He (“Additive-manufactured gyroid scaffolds of magnesium oxide, phosphate glass fiber and polylactic acid composite for bone tissue engineering” Polymers 2021, 13(2), 270).
Claim 1: He discloses a process for forming a composite article (p. 2), including extruding a mixture of a transition metal doped amorphous magnesium phosphate and a polymer to form extruded composite filaments (p. 3), and fabricating the article from the filaments via additive manufacturing (p. 3).
Claim 2: He discloses combining the transition metal doped amorphous magnesium phosphate and the polymer and mixing in a powder mixer prior to the extrusion (p. 3).
Claim 5: He discloses fused filament fabrication (p. 3).
Claim 16: He discloses PLA extrusion (p. 3).
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 3, 9-10 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over He (“Additive-manufactured gyroid scaffolds of magnesium oxide, phosphate glass fiber and polylactic acid composite for bone tissue engineering” Polymers 2021, 13(2), 270), as applied to claim 1 above, in view of Cheng (“Antibacterial amorphous calcium phosphate nanocomposites with a quaternary ammonium dimethacrylate and silver nanoparticles,” Dent Mater 28(5):561-572 (2012)).
He is silent as to the transition metal being silver. However, Cheng teaches a process of forming a composite article, including incorporating silver into amorphous phosphate phases in polymer composites for antibacterial function. It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the application to have incorporated silver (or Cu, Zn, well-known antimicrobial transition metals) into the amorphous phosphate of He to provide an antibacterial function, as taught by Cheng.
Claims 4, 6-8, 14 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over He (“Additive-manufactured gyroid scaffolds of magnesium oxide, phosphate glass fiber and polylactic acid composite for bone tissue engineering” Polymers 2021, 13(2), 270), as applied to claim 1 above, in view of Ligon (“Polymers for 3D printing and customized additive manufacturing,” Chem. Rev. 117:10212-10290 (2017)).
Claims 4 and 6-8: He discloses melt-extrusion of PLA composites into filaments but does not disclose the extrusion temperature. However, Ligon teaches FFF extrusion temperature ranges, including “in the range of 385C” for PEEK (p. 10237), which overlaps or is encompassed by the claimed range. It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the application to have selected about 340C to about 350C as a routine parameter within the known extrusion temperature window when substituting PEEK for PLA or when optimizing process conditions, and to obtain predictable mechanical and thermal benefits. Moreover, a prima facie case of obviousness exists when the ranges of a claimed element overlap the ranges disclosed in the prior art. E.g., In re Geisler, 116 F.3d 1465, 1469, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (CCPA 1976); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
Claim 14: Ligon discloses cooling to reduce stresses and deformations (p. 10234).
Claim 20: He discloses the article being a patient-specific implant, but is silent as to acquiring a patient image and processing the image to design the article. However, Ligon discloses that CAD-based patient imaging, modeling, and AM fabrication of patient-specific implants allow for end-user parts that can be produced directly according to patient-specific data (p. 10216). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the application to have acquired a patient image and process the image to design the implant of He in order to allow for end-user parts that can be produced directly according to patient-specific data, as taught by Ligon.
Claims 11-13 and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over He (“Additive-manufactured gyroid scaffolds of magnesium oxide, phosphate glass fiber and polylactic acid composite for bone tissue engineering” Polymers 2021, 13(2), 270), as applied to claim 1 above.
He is silent as to the claimed range amounts. However, absent evidence of unexpected results obtained from utilizing the claimed ranges, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the application to have selected a suitable amount of magnesium phosphate or transition metals to effectively form a composite article. The optimization of a range or other variable within the claims that flows from the “normal desire of scientists or artisans to improve upon what is already generally known” is prima facie obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) (determining where in a disclosed set of percentage ranges the optimum combination of percentages lies is prima facie obvious). The discovery of an optimum value of a variable in a known process is usually obvious. In re Aller, 220 F.2d 454, 456 (C.C.P.A. 1955). See also In re Boesch, 617 F.2d 272, 276 (C.C.P.A. 1980) (“[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.”). See also In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (“‘[I]t is not inventive to discover the optimum or workable ranges by routine experimentation.’” (quoting Aller, 220 F.2d at 456)); In re Kulling, 897 F.2d 1147, 1149 (Fed. Cir. 1990) (finding no clear error in Board of Patent Appeals and Interferences’ conclusion that the amount of eluent to be used in a washing sequence was a matter of routine optimization known in the pertinent prior art and therefore obvious).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LARRY THROWER whose telephone number is (571)270-5517. The examiner can normally be reached 9am-5pm MT M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Susan Leong can be reached at 571-270-1487. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LARRY W THROWER/Primary Examiner, Art Unit 1754
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