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 .
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in Europe on 12/20/2019. It is noted, however, that applicant has not filed a certified copy of the EP19219174.0 application as required by 37 CFR 1.55.
Status of Claims
Applicant’s response filed 09/08/2025 has been entered.
Pending: claims 1-2, 4-6, and 8-15
Cancelled: claims 3 and 7
Amended: claims 1, 8, and 15
Withdrawn: claims 10-15
Under examination: claims 1-2, 4-6, and 8-9
Rejected: claims 1-2, 4-6, and 8-9
Response to Arguments
Applicant's arguments filed 09/08/2025 have been fully considered but they are not persuasive.
The applicant’s argument that Anthony fails to disclose or fairly suggest “a water-soluble thermoset binder” as recited in claim 1 (see page 5 of arguments) is not found persuasive.
As discussed in the rejection, the composition is described in such as way where it is evident that the polymer is water-soluble; see cited paragraphs [0020] and [0025]; para. [0020] states “The agent may further include other suitable binders such as metal salts, sugars, sugar alcohols, polymeric or oligomeric sugars, low or moderate molecular weight polycarboxylic acids, polysulfonic acids, water soluble polymers containing carboxylic or sulfonic moieties, and polyether alkoxy silane. Some specific examples include glucose (C6H1206), sucrose (C12H22O11), fructose (C6H1206), maltodextrines with a chain length ranging from 2 units to 20 units, sorbitol (C6H1406), erythritol (C4H10O4), mannitol (C6H1406)”. The other species, such as sugars and low weight polycarboxylic acids, and polysulfonic acids, are known to be water-soluble, even if not explicitly stated.
With regard to the claimed “wherein compound A and B do not contain nitrogen, phosphorus, silicon, potassium, sodium or fluorine”, as discussed in the rejection, if maltodextrin and polyacrylic acid is used, this meets the limitation as it does not possess the above-listed elements. The other species in [0020] such as glucose, fructose, and sucrose also meet the limitations.
With regard to the claimed “and wherein the total amount of compound A and B is between 30 and 80 wt%”, Anthony teaches that “The polymer binder may be present in the agent in an amount ranging from about 1 % to about 10% by volume, for example from about 2% to about 6%, and as a further example from about 3% to about 5% by volume. In another aspect, the polymer binder may be present in the agent in an amount up to 100% by volume loading, for example, if using a piezo ink jet to jet the polymer precursor materials. The amount of the polymer binder may be chosen to provide shape integrity to the green body.” [0019]. The amount of up to 100% overlaps with the claimed range of 30-80%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05 I.). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05 I.).
Furthermore, it would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to vary the ranges of the polymer binder based on the application [0019], based on the desired bonding strength for shape integrity [0019], [0022], and based on the desired dissolution ability and melting temperature [0018]-[0020].
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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 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.
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 1-2, 4-6, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Anthony et al. (WO 2019027417 A1; cited and attached with 02/03/2025 office action).
Regarding claim 1, with regard to the claimed “A use of a water-soluble thermoset binder for binder jetting of a cemented carbide or cermet green body wherein the water-soluble thermoset binder”, Anthony discloses a water soluble thermoset binder (claim 1 of Anthony) for use in building with a cermet powder [0011] that comprises:
1) a compound A being at least one organic, non-aromatic substance, comprising at least two hydroxyl groups, said compound A being acetylenic dial which is a monomer (see paragraph [0025]) or an oligomer of maltodextrin with a chain length ranging from 2 units to 20 units, or monomers of sorbitol, erythritol, mannitol (see paragraph [0020]), and
2) a compound B being at least one organic, non-aromatic substance, comprising at least two carboxyl groups, said compound B being a short chain polyacrylic acid, thereby being an oligomer (see paragraph [0020]).
As such, the above teachings meet the claimed “comprises a compound A being at least one organic, non-aromatic substance, comprising at least two hydroxyl groups and a compound B being at least one organic, non-aromatic substance, comprising at least two carboxyl groups, wherein the compound A and compound B are monomers or oligomers with a molecular weight less than 2000 g/mol.” Regarding the molecular weight, one maltodextrin unit weighs about 342.30 g/mol; therefore, 2 units of maltodextrin would be about 684.60 g/mol. Therefore, the maltodextrin oligomer overlaps with the claimed molecular weight. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05 I.). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05 I.).
With regard to the claimed “wherein compound A and B do not contain nitrogen, phosphorus, silicon, potassium, sodium or fluorine”, as discussed above, if maltodextrin and polyacrylic acid is used, this meets the limitation as it does not possess the above listed elements. The other species in [0020] such as glucose, fructose, and sucrose also meet the limitations.
With regard to the claimed “and wherein the total amount of compound A and B is between 30 and 80 wt%”, Anthony teaches that “The polymer binder may be present in the agent in an amount ranging from about 1 % to about 10% by volume, for example from about 2% to about 6%, and as a further example from about 3% to about 5% by volume. In another aspect, the polymer binder may be present in the agent in an amount up to 100% by volume loading, for example, if using a piezo ink jet to jet the polymer precursor materials. The amount of the polymer binder may be chosen to provide shape integrity to the green body.” [0019]. The amount of up to 100% overlaps with the claimed range of 30-80%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05 I.). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05 I.).
Furthermore, it would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to vary the ranges of the polymer binder based on the application [0019], based on the desired bonding strength for shape integrity [0019], [0022], and based on the desired dissolution ability and melting temperature [0018]-[0020].
Regarding claims 2 and 5, the composition of Anthony as discussed in the rejection of claim 1 above meets the claimed limitations of claim 2 and 5.
Regarding claim 4, Anthony teaches that the ‘compound B’ can be polyacrylic acid [0020], which has one hydroxyl group per unit. If, for example, erythritol is considered as compound A, and polyacrylic acid with two monomers is used as compound B, then the hydroxyl group ratio would be about 2 or more, which lies within the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05 I.). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05 I.).
Regarding claim 6, Anthony teaches that compound B may be a polyacrylic acid oligomer [0020].
Regarding claim 8, Anthony teaches that maltodextrin may be used [0020]. Although Anthony does not explicitly teach using citric acid as a ‘compound B’, Anthony does render obvious the use of polycarboxylic acids [0020], such as low molecular weight polycarboxylic acids (having a weight of less than 5,000 Da). In view of citric acid being one of the most simple and common polycarboxylic acids, and the second most simple tricarboxylic acid, a POSITA would reasonably have envisaged citric acid as a species based on the genus of low weight polycarboxylic acids disclosed by Anthony in [0020] (MPEP 2144.08).
Claims 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Anthony et al. (WO 2019027417 A1; cited and attached with 02/03/2025 office action), as applied to claim 1 above, in view of Ucar et al. (US 20180229442 A1).
Regarding claims 8-9, Anthony teaches the use of the water-soluble thermoset binder of claim 1 above, but is silent regarding the use of citric acid or glycerol.
Ucar teaches a method of making bonded permanent magnets via additive manufacturing (Abstract), and further teaches using polycarboxylic acids such as citric acid in combination with polyols such as glyercol as a plasticizer for promoting plasticity/fluidity and inhibiting melt fracture during extrusion and deposition [0033].
Therefore, it would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Anthony by simply substituting the generic polycarboxylic acid of Anthony with the specific carboxylic acid of Ucar, as well as modifying Anthony to include glyercol (a polyol), as doing so would be expected to promote plasticity/fluidity and inhibiting melt fracture during Anthony’s deposition of a binder (Ucar, [0033]; Anthony, [0012]).
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Adil Siddiqui whose telephone number is (571)272-8047. The examiner can normally be reached M-F 10AM-6PM CST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Walker can be reached at 571-272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ADIL A. SIDDIQUI/Primary Examiner, Art Unit 1735
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