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
As previously set forth: Claims 3, 7, 46 have the limitation “yield stress behavior at room temperature or below room temperature” or “below room temperature” which is not supported by the provisional application (the provisional application supports a specific range, see claim 1 thereof), thus the claims 3, 7, 46 have an effective date of the filing of the PCT: 3/10/21. The remaining claims have an effective date of the filing of the priority documents 4/17/20
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 3/6/26 has been entered.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12/11/25 has been considered by the examiner.
Response to Arguments/Amendment
Pesek is removed due to amendment. Herein over claim 1 Pesek does not disclose wherein the composition has a yield stress without the addition of solvent nor wherein the microphase separation that forms a plurality of nanostructures has a lattice wherein the unit cell of the lattice as claimed. Therein Pesek discloses very similar polymers, but these are used for surface active additives. Phase separation is known (see Figure 5), however, picking polymer structures so as to achieve the required unit cells is not suggested or disclosed. It is unclear what unit cell structure the one microphase separated embodiment has, and, the bottlebrush copolymer therein is PDMS-PLA whereas the instant application uses PDMS-PEO. There being no suggestion or disclosure to choose a copolymer to obtain the unit cell (and other requirements) of the claims. Further, regarding claims 16, 33, Pesek discloses the use of PLA which does not meet the Tg requirements of these claims.
Ahmed is removed because there is no suggestion or disclosure therein that the exemplified bottlebrush copolymers (see A-D of scheme 1) have the claimed yield stress and unit cell requirements amended into claim 1. Not all polymers will form unit cells nor have the yield stress properties claimed, the polymers of Ahmed are not used for 3d printing so it is unclear if they form a yield stress fluid without the addition of solvent, nor is there suggestion or disclosure to obtain the claimed unit cell lattice. The copolymers therein don’t have the same structure as shown in the instant application.
Xie is continued below since it discloses the unit cells and seems to implicitly have the yield stress properties since it is the same composition used by Applicant. It is applicant’s own work. The reference has 1 extra author (Wang), and, it is unclear this authors contribution. If Applicant clarifies such, the reference has potential to be excluded under 102a2 exceptions.
Applicant’s arguments drawn to Ahmed and Pesek are thusly moot.
Applicant argues Xie was published in Nov 2020 after the priority date of 4/17/20 and is thusly not prior art.
The Examiner disagrees. Not all claims have a priority date of 4/17/20, see the “Priority” section above. Those claims which are not given this date are rejected under Xie. Arguments herein are thusly not persuasive.
.
Claim Objections
Objection over Claim 32 is overcome by amendment
Claims 50, 51, and their dependents, are objected to because of the following informalities: PDMS, PLA and PEO should be spelled out in the claim. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Previous 112 over claims 15, 16, 20, 48 is withdrawn due to amendment
Claims 6, 23, 32, and their dependents, are rejected 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.
Claim 23 (as previously set forth) seems to repeat the third and forth polymers. It is unclear if there are isomeric differences therein. Though there are brackets in the 3rd structure, the brackets do not have any repeat units (e.g. “m”, ect) thus it is still unclear how the structures differ
Claim 32 (as previously set forth) has the limitations “(side-chain)” in parenthesis. The inclusion of a term within parentheses renders the claim indefinite because it is unclear whether the included term is part of the claimed invention.
Claim 6 has the limitation “comprising a plurality of nanostructures…”, claim 1 already has a plurality of nanostructures thusly it is unclear if these are different nanostructures or the same nanostructures. Amendment such as “wherein the nanostructures each include…” may be appropriate
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 8 is rejected 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.
Claim 8 has all the same limitations now amended into claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Rejection over Claim(s) 1-3, 6-13, 15-16, 18, 20, 32, 33, 44-48 is/are rejected under 35 U.S.C. 103 as being unpatentable over Pesek (Synthesis of bottlebrush copolymers based on polydimethysiloxane for surface active additives, Polymer 98, 2016, 495-504, reference already in record) is overcome by amendment.
Rejection over Claim(s) 3, 7, 9, 10, 46 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ahmed (Synthesis and aqueous self assembly of ABCD bottlebrush block copolymers, Macromolecules, 2020, 53, 9018-9025, published Oct 6, 2020, reference already of record) is overcome by amendment.
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. Some claims were removed because the priority date of those claims is before that of Xie. Regarding the new limitation to claim 1 (which claims 3, 7, 46 depend from): See the abstract that talks about microphase separation and Fig 5 discloses the unit cells such as BCC, that is formed in the composition.
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.
Elements above anticipate or render prima facie obvious (because of the property limitations of the claim) claims 3, 7, 8, 10 since Xie discloses the same composition of matter as claim 23. The composition is used for 3D printed parts.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: Claims 1, 2, 6, 8, 11-13, 15-16, 18-20, 23, 32-33, 44-45, 47, 49-52 are free from art however 6, 11, 8, 23, 32 are currently rejected under 112 above and claims 50-51 are objected to above. Thus, claims 1, 2, 12-13, 15-16, 18-20, 33, 44-45, 47, 49-50 are allowed. Pesek, Xie and Ahmed stand as the closest prior art, Pesek and Ahmed are removed for reasons above. Fedynyshyn US 2018/0320008 is also cited as pertinent art to claims 16, 33 having a block copolymer used for 3d printing, however it requires the use of solvent (abstract), there being no suggestion or disclosure to meet the yield stress properties of the claims.
Conclusion
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/ALICIA BLAND/ Primary Examiner, Art Unit 1759
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