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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 05/04/2026 has been entered.
Response to Amendment
Claims 1-4, 7-11, and 13-16 are pending. Claims 8-11 remain withdrawn.
In view of the amendment, filed 05/04/2026, claim rejections under 35 U.S.C. 112(b) are withdrawn from the previous Office Action mailed 02/02/2026.
Prior art rejections are updated in response to claim amendments.
Claim Objections
Claim(s) 1 is/are objected to because of the following informalities: amended claim 1 recites “wherein the inorganic filler consists at least one of…” in lines 12-13. The limitation is missing necessary text between “consists” and “at least one of” such as “of,” “essentially of,” etc. Claim 1, in the clause beginning “wherein the additive is selected from…” recites “other than the above-mentioned inorganic fibers (A),” where the “(A)” needs to be deleted. Appropriate correction is required.
Claim Interpretation
Claim 1 recites the terms “a deposition pitch” and “a road width.” In view of the specification, the term “deposition pitch” is interpreted to refer to a per-layer thickness of a printed layer, and the term “road width” is interpreted to refer to the diameter of the material discharged through the nozzle (PGPub, [0082]). It is noted that the description does not specify a time or state of the discharged material when these parameters are measured, and therefore dimensions that satisfy the claimed ranges at any time during/after deposition would be interpreted to meet the claim requirements.
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.
Claim(s) 1-4, 7, and 13-16 is/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 1 recites the limitation "the inorganic filler…" in line 12. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites that “the inorganic filler” is provided “as an inorganic filler.” Claim 1 has been amended such that the resin composition “consists of” inorganic fibers, a thermoplastic resin, and optionally an additive. The claim language is unclear as to how an inorganic filler is additionally included in the method if the resin composition consists only of the other named materials. For further examination, the limitation is interpreted to mean essentially that the inorganic fibers of the previously introduced resin composition consist of at least one of potassium titanate and wollastonite.
Claims 3 recites the limitation “the inorganic fibers” in line 2. Claim 1 recites “inorganic fibers” in the “preparing” step, as well as inorganic fibers as potential additives (e.g., glass fibers, boron fibers, etc.). The noted limitation in the dependent claims is unclear as to whether “the inorganic fibers” encompasses those fibers referenced in the “preparing” step, those referenced with respect to the “additive,” or both. For further examination, any of these would apply.
The indicated dependent claims are rejected for the reasons provided above.
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) 1-2, 7, and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schadel et al., WO 2020044236 A1 (citations to US 20210323222 A1, of record). Evidentiary support is provided from Amirabadi et al., Highly tough and flame retardant polystyrene composites by elastomeric nanofibers and hexagonal boron nitride, Journal of Materials Science & Technology.
Regarding claim 1, Schadel discloses a method for producing a modeled object (making and using a 3D printing filament and producing a modeled object including a composite material using the filament in a fused filament fabrication technique, [0009], [0032], [0080]) the method comprising the steps of:
Preparing a resin composition (making and providing a 3D printable filament comprising a thermoplastically workable material and filler particles, [0013], [0061], [0078]) containing inorganic fibers (the filler particles comprising secondary fillers, [0041], [0078], such as needle shaped mineral fillers such as wollastonite, [0041]) with an average fiber length of 1 to 300 µm (with a diameter of 1-25 µm and an aspect ratio of 5 to 100, [0041], i.e., a length range of 5-2500 µm, such that a resulting potential average length range overlaps the claimed range) and an average aspect ratio of 3 to 200 (aspect ratio of 5 to 100, [0041], such that a resulting potential average aspect ratio range is within the claimed range) a thermoplastic resin (thermoplastically workable material, [0013], [0078], selected from thermoplastic materials, [0044]), and an additive (filler particles comprising hexagonal boron nitride particles/platelets, [0078]); and
Modeling an object using the resin composition (the filament being used for manufacturing a filamentary structure by 3D printing, [0009]-[0010], [0080]) on a fused deposition modeling-based three-dimensional printer to produce a modeled object (using a 3D printer performing material extrusion according to fused filament fabrication, [0009], [0080]-[0081], Fig. 11);
Wherein in modeling the object on the fused deposition modeling-based three-dimensional printer, a deposition pitch is not less than 0.04 mm and not more than 0.15 mm (a deposition height being e.g., at most 50 µm, or 0.05 mm, [0050]) and a road width is not less than 0.07 mm and not more than 0.16 mm (a ratio of the width to the height being more than two, [0050], such that the width is more than 100 µm, or more than 0.10 mm), and the deposition pitch and the road width are not the same value ([0009], [0034], [0050]). The layer height and width values taught by Schadel overlap the claimed ranges.
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. Regarding the numerical ranges discussed above, since the claimed ranges overlap or lie inside the ranges disclosed by Schadel, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select at least the overlapping portions of the ranges with a reasonable expectation of success in performing the manufacturing of the filamentary structure by 3D printing according to the printing conditions as taught by Schadel.
Schadel discloses the inorganic filler/fibers (the filament comprises the secondary fillers, [0078]) consists essentially of at least one of potassium titanate and wollastonite (the secondary fillers being wollastonite, [0041]).
Schadel discloses the additive as set forth above (hexagonal boron nitride particles/platelets, [0078]). Hexagonal boron nitride particles/platelets constitute at least a boron compound-based flame retardant, as evidenced by Amirabadi (hexagonal boron nitride (hBN) is a fire/flame retardant additive, Abstract, pp. 216-217, section 3.5, first paragraph of section 3.6). A chemical composition and its properties are inseparable. MPEP 2112.01(II). Note that hBN also functions to affect rheological properties (pp. 212-213, section 3.2, Fig. 2(C) and (D)).
Schadel discloses the resin composition comprises the inorganic fibers, thermoplastic resin, and additive. Schadel does not explicitly discloses the resin composition consists only of these materials. However, Schadel does not require the composition to specifically include other materials. Schadel discloses a strand produced by the mixture ([0047]-[0048]) comprising the inorganic fibers (secondary fillers, which can be only the high aspect ratio fillers exemplified by wollastonite [0041], [0047]), thermoplastic resin (thermoplastically workable material, [0047]-[0048]), and additive (hexagonal boron nitride, [0047]) in amounts adding up to 100 percent by volume. As such, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to specify the resin composition was prepared consisting of only the claimed materials with a reasonable expectation of success since no additional materials were specifically required.
Regarding claim 2, Schadel teaches the method of claim 1. Schadel is silent as to an MFR (melt flow rate) ratio as claimed.
However, melt flow rate is an indication of the viscosity of a material in the molten state (instant PGPub, [0069]), i.e., a material property, and Schadel as set forth above discloses substantially the same materials and processing conditions. Schadel discloses the thermoplastic resin being the same as the thermoplastic resin of the present invention ([0044], in line with the presently disclosed materials in the instant PGPub, [0054]) and the resin composition having the inorganic fibers formed of the same material and having the same structure (wollastonite having the same length and aspect ratio, [0041], in line with the presently disclosed fibers, [0042]). Schadel discloses the resin composition comprises boron nitride ([0058]), a boron compound-based flame retardant (see claim 1), and note that the present specification also discloses the addition of boron nitride (PGPub, [0058]). Schadel discloses the composition is prepared via the same technique of mixing and extrusion ([0061], in line with the presently disclosed preparation, [0065]-[0066]), and the material of the resin composition is ultimately melted and extruded through a nozzle for the deposition and printing ([0032], [0080]). As such, Schadel as set forth above discloses the same thermoplastic resin and the same resin composition as the presently claimed thermoplastic resin and resin composition, and thus these materials must have the same properties. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. Id. MPEP 2112.01 (II).
Accordingly, Schadel as set forth above further teaches an MFR (melt flow rate) ratio represented by MFR2/MFR1 being not less than 0.10 and not more than 0.90 where MFR1 represents an MFR value of the thermoplastic resin and MFR2 represents a value of the resin composition, because when the materials are the same one of ordinary skill in the art would have recognized the same melt flow rate properties as inherent to the thermoplastic resin and the resin composition of Schadel.
Regarding claim 7, Schadel teaches the method of claim 1, wherein the thermoplastic resin is at least one selected from one of the claimed materials ([0044]).
Regarding claim 13, Schadel teaches the method of claim 1, wherein the deposition pitch is not less than 0.04 mm and not more than 0.10 mm (up to 0.05 mm, per claim 1) and the road width is not less than 0.07 mm and not more than 0.15 mm (more than 0.10 mm, per claim 1). 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. As the claimed ranges overlap the ranges disclosed by Schadel, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select at least the overlapping portions of the ranges with a reasonable expectation of success in performing the modeling of the filamentary structure by 3D printing according to the printing conditions taught by Schadel.
Claim(s) 3-4 and 14-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schadel et al., WO 2020044236 A1 (citations to US 20210323222 A1), as applied to claim 1 above, in view of Inada et al., WO 2019044864 A1 (citations to US 20200270423 A1, both of record).
Regarding claim 3, Schadel teaches the method of claim 1, and Schadel discloses a content of the inorganic fibers being up to 64% by volume based on the total amount of the resin composition ([0047]). Schadel does not provide a content specification based on mass.
In the analogous art, Inada discloses preparing a similar resin composition and performing modeling using the composition (Abstract, [0018]), the resin composition comprising the same types of thermoplastic resin ([0011], [0015], [0054]) and inorganic fibers ([0011]-[0013], [0041]). Inada teaches a content of the inorganic fibers being not less than 1% by mass and not more than 45% by mass in a total amount of 100% by mass of the resin composition (fiber content 1-40% by mass in a total amount, [0014], [0068]) which is associated with improved resistance to layer delamination and warpage ([0071]). The taught range is entirely within the claimed range.
In the case it was not necessarily present, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to specify a content of the inorganic fibers being not less than 1% by mass and not more than 45% by mass in a total amount of 100% by mass of the resin composition in order to ensure a workable amount of the inorganic fiber materials are provided relative to the resin composition and to provide improved resistance to layer delamination and warpage, as taught by Inada.
Regarding claim 4, Schadel teaches the method of claim 1. Schadel is silent as to a rate of modeling.
In the analogous art, Inada discloses producing a shaped article from a fibrous filler-reinforced thermoplastic resin composition (Abstract) by extrusion-based 3D printing via fused deposition modeling ([0035], [0075]). Inada teaches a rate of modeling being not less than 20 mm/sec and not more than 200 mm/sec in order to reduce production time while maintaining shapability ([0080]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to specify in the method of Schadel a rate of modeling being not less than 20 mm/sec and not more than 200 mm/sec in order to perform the modeling at a known rate suitable for deposition of a similar resin composition for 3D printing by material extrusion and to optimize the production time with shapability, as taught by Inada.
Regarding claim 14, Schadel teaches the method of claim 1. Schadel does not disclose in modeling the object on the fused deposition modeling-based three-dimensional printer, the deposition pitch is 20-50% of the diameter of an extrusion head and the road width is 60-80% of the diameter of the extrusion head.
In the analogous art, Inada discloses producing a shaped article from a similar fiber filler-reinforced thermoplastic resin composition (Abstract) by extrusion-based 3D printing via fused deposition modeling ([0035], [0075]). Inada teaches a diameter of the extrusion head being preferably between 0.1 to 0.5 mm from the viewpoint of head feed speed ([0081]), where the conditions can improve orientation of the fibers and associated mechanical properties ([0083]-[0084]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Schadel to adopt the deposition conditions of Inada and to specify a diameter of the extrusion head being 0.1 to 0.5 mm in order to provide a suitable extrusion head diameter for the melt deposition of the inorganic fiber-reinforced thermoplastic composition that can contribute to improved mechanical properties in the product, as taught by Inada. In implementing a diameter between 0.1 to 0.5 mm, with the deposition pitch being 0.05 mm or less and the road width being at least twice the deposition pitch according to Schadel as set forth above for claim 1, then the resulting dimensional ranges for the pitch/width as a percentage of the extrusion head diameter based on the conditions disclosed by the prior art overlap the claimed ranges. As one example, a deposition pitch of 0.05 mm and a road width of 0.14 mm being 25% and 70%, respectively, of the diameter of a 0.2 mm extrusion head. 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. Since the claimed ranges overlap the prior art ranges disclosed by Schadel in view of Inada, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select at least the overlapping portions of the ranges with a reasonable expectation of success in performing the manufacturing of the filamentary structure by 3D printing according to the printing conditions as taught by the prior art.
Regarding claim 15, Schadel teaches the method of claim 1. Schadel discloses the inorganic fibers being needle or fiber shaped inorganic fillers such as wollastonite ([0041]), as set forth above. Schadel does not disclose the inorganic fibers are potassium titanate having the claimed characteristics.
In the analogous art, Inada, introduced above, further discloses the inorganic fibers being wollastonite or potassium titanite ([0041]), with preferred characteristics for potassium titanate including an average fiber length of 10-20 µm, an average fiber diameter of 0.1-0.7 um, and an average aspect ratio of 15-35 ([0042]). Inada teaches that materials having the claimed characteristics were commercially available ([0042]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the potassium titanite inorganic fibers taught by Inada for the wollastonite inorganic fibers taught by Schadel as a substitution of one known needle or fiber-shaped inorganic filler element for another yielding predictable results to one of ordinary skill in the art. One of ordinary skill in the art would have had a reasonable expectation of success in providing the inorganic fibers suitable for 3D printing by extrusion of a resin composition containing thermoplastic resin and inorganic fibers. MPEP 2143(I)(B). In this case, the filler types were both known for being combined with a thermoplastic resin and 3D printed by extrusion, and Inada teaches the potassium titanate material was commercially available.
Regarding claim 16, Schadel teaches discloses the method of claim 1. Schadel discloses the inorganic fibers being inorganic fillers such as wollastonite ([0041]), as set forth above. Schadel does not disclose the inorganic fibers are potassium octatitanate.
In the analogous art, Inada, introduced above, further discloses the inorganic fibers being wollastonite or potassium titanite ([0041]), such as potassium octatitanate ([0042]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the potassium octatitanate inorganic fibers taught by Inada for the wollastonite inorganic fibers taught by Schadel as a substitution of one known needle or fiber-shaped inorganic filler element for another yielding predictable results to one of ordinary skill in the art. One of ordinary skill in the art would have had a reasonable expectation of success in providing the inorganic fibers suitable for 3D printing by extrusion of a resin composition containing thermoplastic resin and inorganic fibers. MPEP 2143(I)(B). In this case, the fiber types were both known for being combined with a thermoplastic resin and 3D printed by extrusion.
Response to Arguments
Applicant's arguments filed 05/04/2026 have been fully considered but they are not persuasive. Applicant argues (p. 7) that claim 1 has been amended to omit anything that would allegedly read on the hexagonal boron nitride particles of Schadel.
The argument is not found persuasive as claim 1 includes a list of acceptable additive types for the resin composition where the additives are defined largely by their properties or functions rather than being a particular material. As set forth above in the updated rejection, hexagonal boron nitride is at least a boron compound based flame retardant.
Applicant argues (p. 8) that in Schadel the wollastonite is merely a secondary filler where the material still contains hexagonal boron nitride particles.
This argument is not persuasive because the wollastonite being a “secondary” filler is not distinct from it being a “filler” as recited or presently disclosed. In each of the present claim and Schadel, the material is composed of a thermoplastic resin, wollastonite, and an additive which can be hexagonal boron nitride particles. Schadel discloses the wollastonite or secondary filler optionally being included in the composition in an amount greater than that of the hBN ([0047]), such that “secondary” is not considered to mean negligible or anything other than “different” from the other additive/filler particles made up of hBN.
Applicant argues (p. 8) that the resin composition of the presently claimed invention essentially contains only inorganic fibers which are at least one of potassium titanate and wollastonite. This argument is not persuasive because the resin composition as claimed can contain an additive of which the types of additives permitted, many of which are recited only in terms of their properties or effect, are extensive and not limited to particular materials.
Applicant argues (p. 8) that Schadel fails to disclose the advantageous effects of the present invention related to easily producing a modeled object and increasing mechanical properties.
This argument is not found persuasive since Schadel teaches a modeling method using the corresponding materials as claimed with substantially similar process conditions including dimensions of the deposition overlapping those claimed, i.e., rendering obvious the claimed process. Note that it is not necessary that the prior art suggest a combination to achieve the same advantage or result discovered by applicant. MPEP 2144 (IV).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 20180065294 A1, Yamashita et al. disclose a modeling process using a resin composition containing thermoplastic resin, inorganic filler such as wollastonite and/or potassium titanate, and other relevant additives ([0052]-[0053]), as well as extruding a strand having a diameter (width/height) overlapping the claimed deposition pitch and road width for good reproducibility ([0068]). US 20170173869 A1, Ishihara et al. disclose similar features.
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/J.L.G./Examiner, Art Unit 1754
/FARAH TAUFIQ/Primary Examiner, Art Unit 1754
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