DETAILED ACTION
Notice of Pre-AIA or AIA Status
As previously set forth: The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
As previously set forth: Claims 3, 7, 46 have the limitation
The Examiner has strikethrough the above limitation so to remove any confusion. It is the “below room temperature” portion that is not supported by the provisional. “at room temperature” is supported throughout the provisional application
Response to Arguments/Amendment
Applicant argues Xie describes the properties of PDMS and PEO bottlebrush polymers and Applicant’s priority application page 5 describes the same polymers. Applicant argues since the priority predates the Xie reference and describes the same polymer as the Xie reference, the properties, including yield stress fluid having a yield stress behavior at room temperature and Tg would also be inherent in the PDMS-PEO polymer in Applicant’s priority application. Applicant argues Xie is thusly not prior art for claims 3, 7, 10, 46.
The Examiner disagrees. Properties such as Tg are not at issue here (it is noted that the same Tg language as found in the claims is also found in the provisional application). The Examiner has given claim 1 (with wording of glass transition temperature) an effective date of the provisional application. The wording at issue here, specifically, is “below room temperature” which is not supported by the provisional application which is found in claims 3, 7 and 46. This language is not explicitly supported by the provisional application, nor, does the provisional application give support for each and every polymer/composition that would have a yield stress behavior below room temperature. The provisional application supports a specific range, see claim 1 thereof. The provisional also supports a yield stress at room temperature. However the range embraced by “below room temperature” is not supported. This particular language is why claims 3, 7 and 46 are not given an effective date of the provisional applicant. Because these claims have a different effective date, Xie properly qualifies against these claims as prior art. Applicant can remove this language from the claims or show where support exists for this language. Without such Applicant’s arguments are not found persuasive and the rejection over Xie stands as previously set forth.
Claim Objections
Objection over Claims 50, 51, and their dependents, is overcome by amendment
Claim Rejections - 35 USC § 112
Rejection over Claims 6, 23, 32, and their dependents, under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention is overcome by amendment.
Rejection over Claim 8 under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends is withdrawn, the claim has been cancelled.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 3, 7, 46 is/are rejected under 35 U.S.C. 103 as being unpatentable over Xie (Room temperature 3D printing of super soft and solvent free elastomers, Sci Adv 2020, 6, 10 pages, published Nov 13 2020, reference is already in the record. This publication has one different/additional author but otherwise the same inventors as the instant application).
Elements of this rejection are as previously set forth, reiterated below in italics.
Xie discloses 3D printing compositions (title) containing the bottlebrush copolymer of Fig 1. The bottlebrush copolymer thereof meets the PEO and PDMS polymer sidechains of claim 23 as well as the backbone thereof. The Tg of PDMS is -125C, the Tg of PEO is -60C (page 2 first paragraph under Results).
This polymer, which the material thereof is a composition of matter, itself meets the “fluid including self-assembled copolymers…” of claim 1. Further, since the glass transition temperature (Tg) of the claims is met, the ‘yield stress behavior’ would be inherently met. If there is any difference between the product of the reference and the product of the instant claims the difference would have been minor and obvious. "Products of identical chemical composition can not have mutually exclusive properties." 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. See MPEP 2112.01(I) , In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985), In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Warren Corp v D F Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY 1934).
Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 USC 102 and 103. "There is nothing inconsistent in concurrent rejections for obviousness under 35 USC 103 and for anticipation under 35 USC 102." See MPEP 2112(III) and In re Best, 562 F2d at 1255, 195 USPQ at 433.
See the abstract that talks about microphase separation and Fig 5 discloses the unit cells such as BCC, that is formed in the composition.
Elements above anticipate or render prima facie obvious (because of the property limitations of the claim) claims 3, 7, 46 since Xie discloses the same composition of matter as claim 23. The composition is used for 3D printed parts.
Allowable Subject Matter
Claims 1-2, 6, 11-13, 15-16, 18-20, 23, 32-33, 44-45, 47, 49-52 are allowed for reasons previously set forth.
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 ALICIA BLAND whose telephone number is (571)272-2451. The examiner can normally be reached Mon - Fri 9:00 am -3:00 pm EST.
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/ALICIA BLAND/ Primary Examiner, Art Unit 1759
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