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
Claims 9-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on March 7, 2025.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
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.
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.
Claim(s) 1-8 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Emamjomeh et al. (US 2018/0022923) in view of WO 2018/022093 and Feng et al. (US 2019/0054690).
Emamjomeh et al. (US 2018/0022923) disclose a three-dimensional printing kit (Claim 15),
comprising:
a polymeric build material including polymer particles having an average particle size ranging from about 10 µm to about 150 µm ([0011], [0019]-[0021], average particle size ranges from 5 µm to about 100 µm); and
a fusing agent including an aqueous liquid vehicle and a radiation absorber, the radiation
absorber including a dye or pigment of any color ([0030]-[0031], the fusing agent includes water based dispersions (aqueous liquid vehicle is water based) including a radiation absorbing binding agent (i.e., active material) which is a dye or pigment of any color).
However, Emamjomeh et al. (US 2018/0022923) does not disclose the polymeric build material including from about 80 wt% to 100 wt% of polymer particles, the fusing agent including an ultraviolet (UV) energy radiation absorber including a charged yellow water-soluble dye, the fusing agent including from about 2 wt% to about 20 wt% of the radiation absorber, OR the dye being from about 1 wt% to about 40 wt% soluble in water.
WO 2018/022093 discloses a fusing agent including an aqueous liquid vehicle (water or other primary solvent) and a radiation absorber that absorbs electromagnetic radiation, the fusing agent including an ultraviolet (UV) energy radiation absorber [0040], [0042].
Feng et al. (US 2019/0054690) discloses a polymeric build material including from about 80 wt% to 100 wt% of polymer particles ([0010], 80 wt% to 99.9 %), a fusing agent including an energy absorber capable of absorbing electromagnetic (which includes ultraviolet) radiation (abstract, [0008], [0030], [0052]-[0053]) including a charged yellow water-soluble dye ([0040], [0042], the fusing agent can include a dye colorant, the dye may be cationic (charged) dyes and/or anionic (charged) dyes, Acid Yellow, anionic, water-soluble dyes including, but not limited to Direct Yellow 132), the fusing agent including from about 2 wt% to about 20 wt% of the radiation absorber ([0036], 0.1 wt% to 20 wt%), and the dye being from about 1 wt% to about 40 wt% soluble in water ([0068], “soluble” refers to a solubility percentage of more than 0.1 wt%.
It would have been obvious to one of ordinary skill in the art, at the time the invention was
made, to modify the kit of Emamjomeh et al. (US 2018/0022923) wherein the polymeric build material
includes from about 80 wt% to 100 wt% of polymer particles, as disclosed by Feng et al. (US 2019/0054690), because such a modification is known in the art and would provide an alternative configuration for the build material known to be operable in the art; to further modify the fusing agent to include an ultraviolet (UV) energy radiation absorber, as disclosed by WO 2018/022093 and Feng et al. (US 2019/0054690), because such a modification is known in the art and would provide an alternative configuration for the fusing agent material known to be operable in the art; to further modify the radiation absorber to include a charged yellow water-soluble dye, the fusing agent including from about 2 wt% to about 20 wt% of the radiation absorber, and the dye being from about 1 wt% to about 40 wt% soluble in water, as disclosed by Feng et al. (US 2019/0054690), because such a modification is known in the art and would provide an alternative configuration for the fusing agent material known to be operable in the art.
As to claim 2, Emamjomeh et al. (US 2018/0022923) further discloses the printing kit wherein
the polymer particles include polyamide, polyethylene, polyethylene terephthalate (PET), polystyrene,
polyacrylate, polyacetal, polypropylene, polycarbonate, polyester, acrylonitrile butadiene styrene,
thermoplastic polyamide, thermoplastic polyurethane, engineering plastic, polyether ketone,
polyetheretherketone (PEEK), polyethylene terephthalate, polybutylene terephthalate, polymer blends
thereof, amorphous polymers thereof, core-shell polymers thereof, or a copolymer thereof [0019].
As to claim 3, Emamjomeh et al. (US 2018/0022923) further discloses that the fusing agent can include a co-solvent [0032]. Feng et al. (US 2019/0054690) further discloses that the liquid vehicle of the fusing agent can include from about 5 wt% to 50 wt% of an organic co-solvent, wherein the organic co-solvent is selected from the group consisting of ethanol, methanol, propanol, acetone, tetrahydrofuran, hexane, 1-butanol, 2-butanol, tert- butanol, isopropanol, propylene glycol, methyl ethyl ketone, dimethylformamide, 1,4- dioxone, acetonitrile, 1,2-butanediol, 1-methyl-2,3-propanediol 2-pyrrolidone, and a combination thereof ([0044]-[0048], one or more co-solvents from 1 wt% to 50 wt%, organic co-solvents include aliphatic alcohols (ethanol, methanol, propanol, 1-butanol, 2-butanol, tert-butanol, isopropanol), diols (propylene glycol), formamides, propanediols, 2-pyrrolidinone). It would have been obvious to one of ordinary skill in the art, at the time the invention was made, to further modify the co-solvent of the fusing agent to include from about 5 wt% to 50 wt% of an organic co-solvent, as disclosed by Feng et al. (US 2019/0054690), because such a modification is known in the art and would provide an alternative configuration for the fusing agent material known to be operable in the art.
As to claim 4, Emamjomeh et al. (US 2018/0022923) further discloses the fusing agent including a surfactant [0032]. Feng et al. (US 2019/0054690) further discloses that the liquid vehicle of the fusing agent can include from about 0.01 wt% to 2 wt% of a surfactant ([0044], surfactant ranging from 1.01 wt% to 20 wt%). It would have been obvious to one of ordinary skill in the art, at the time the invention was made, to further modify the surfactant of the fusing agent to be from about 0.01 wt% to 2 wt% of the surfactant, as disclosed by Feng et al. (US 2019/0054690), because such a modification is known in the art and would provide an alternative configuration for the fusing agent material known to be operable in the art.
As to claim 5, WO 2018/022093 further discloses that the UV radiation absorber can absorb wavelengths from about 10 nm to about 390 nm [0040]. It would have been obvious to one of ordinary skill in the art, at the time the invention was made, to further modify the radiation absorber to exhibit peak absorption of from about 355 to 400 nanometers, because such peak absorptions would have been found in finding operable UV radiation absorbers in view of the teachings of WO 2018/022093 to use UV radiation absorbers that can absorb wavelengths from about 10 nm to about 390 nm. Furthermore, note that UV radiation inherently includes wavelengths from about 10 to about 400 nm. Thus, peak absorption up to about 400 would also be further obvious.
As to claim 6, Feng et al. (US 2019/0054690) further discloses that the dye can further include Acid Yellow 17 (CI Acid Yellow 17) and Acid Yellow 23 (CI Acid Yellow 23), both of which are sulfonated azo yellow dyes.
As to claim 7, Feng et al. (US 2019/0054690) further discloses the radiation absorber can be present in the fusing agent in an amount ranging from about 5 wt% to about 15 wt% ([0041], from 0.1 wt% to 10 wt%, from 0.5 wt% to 5 wt%, from 2 wt% to 10 wt%).
As to claim 8, Emamjomeh et al. (US 2018/0022923) further discloses a detailing agent, wherein
the detailing agent includes a detailing compound to reduce a temperature of the polymeric build
material onto which the detailing agent is applied [0014].
As to claim 16, Feng et al. (US 2019/0054690) further discloses the charged yellow water-soluble dye can be selected from the group consisting of CI acid yellow 23, CI acid yellow 17, CI acid yellow 4, CI acid yellow 5, CI acid yellow 21, CI acid yellow 49, CI acid yellow 42, CI acid yellow 117, and a combination thereof ([0042], Acid Yellow 17 (CI Acid Yellow 17), Acid Yellow 23 (CI Acid Yellow 23) and Acid Yellow 42 (CI Acid Yellow 42).
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 § 2146 et seq. 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 actual 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/apply/applying-online/eterminal-disclaimer.
Claims 1-4 and 8 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 and 8 of U.S. Patent No. 12,447,673. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-4 and 8 are fully encompassed, respectively by claims 1-4 and 8 of U.S. Patent No. 12,447,673. Note that the wavelengths for the radiation absorber recited in claim 1 of U.S. Patent No. 12,447,673 include ultraviolet wavelengths.
Response to Arguments
Applicant's arguments filed November 20, 2025 have been fully considered but they are not persuasive.
Applicant argues that Emamjomeh does not render amended independent claim 1 obvious because the proposed modifications render the cited reference as unsatisfactory for its intended purpose. MPEP § 2143.01.V states that "[i]f a proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, there may be no suggestion or motivation to make the proposed modification." In particular, modifying Emamjomeh by replacing its
fusing agent having absorbance in the infrared or near infrared wavelength range (see, e.g., Emamjomeh at paragraph [0031]), with a charged yellow UV energy radiation absorber, would render Emamjomeh inoperable because Emamjomeh teaches using infrared (IR) or near infrared (near IR) radiation sources, not UV energy sources, (id. At paragraph [0057]).
Applicant argues that it is respectfully submitted that the Office, in quoting that Emamjomeh states that "a radiation absorbing binding agent (i.e., active material) is a dye of any color" (emphasis added) is taking a single sentence in the middle of the paragraph out of context. The paragraph first states that the active material includes a near IR light absorber. Then the paragraph states that examples of the active material may be any near IR dye or pigment. Then the paragraph states that the dye or pigment may be any color. Further, the examples in the paragraph start with carbon black as the active material. Later examples in the paragraph are primarily black and cyan ink formulations.
Applicant argues that it is respectfully submitted that the skilled artisan would glean no teaching or suggestion to replace Emamjomeh's near IR dyes or pigments with a UV radiation absorber including a charged yellow water-soluble dye as recited in Applicant's revised claim 1, with any reasonable expectation of success. The skilled artisan would recognize that Emamjomeh, e.g., at paragraphs [0057]-[0058] teaches using an IR or near IR radiation source, and that Emamjomeh's radiation absorbing binding agent would need to exhibit adequate absorbance within IR or near IR wavelengths.
The Examiner respectfully disagrees. While Emamjomeh discloses infrared or near infrared wavelength range, it is known in the art that other wavelength ranges can be used, including within the electromagnetic spectrum, particularly in the ultraviolet wavelengths, as disclosed by WO 2018/022093 and Feng et al. (US 2019/0054690) as mentioned in the prior art rejection above.
Applicants arguments relative to Heikkila, Thies and WO 2019/108288 are moot because they are no longer used in the prior art rejection above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH S LEYSON whose telephone number is (571)272-5061. The examiner can normally be reached M-F 8am-4:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sam Xiao Zhao can be reached at 5712705343. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J.S.L/Examiner, Art Unit 1744
/XIAO S ZHAO/Supervisory Patent Examiner, Art Unit 1744