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 .
Response to Amendment
Claims 1-4, 7-11, and 13-16 are pending. Claims 8-11 remain withdrawn. Claims 5-6 are canceled.
In view of the amendment, filed 12/05/2025, claim objections and claim rejections under 35 U.S.C. 112(b) are withdrawn from the previous Office Action mailed 09/05/2025.
Prior art rejections are updated in response to claim amendments.
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) 3 and 15-16 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.
Claims 3, 15, and 16 recite the limitation “the inorganic fibers” in line 2 of each claim. The claims depend from amended claim 1, which recites “inorganic fibers” in the “preparing” step, as well as “inorganic fibers” that make up the “inorganic filler.” The noted limitation in the dependent claims is unclear as to whether “the inorganic fibers” refers to those fibers referenced in the “preparing” step, those referenced with respect to the “inorganic filler,” or both. As recited in claim 1, the “inorganic fibers” in the “preparing” and in the “inorganic filler” could be the same or different. For further examination, any of these would apply.
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, both of record).
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) and a thermoplastic resin (thermoplastically workable material, [0013], [0078], selected from thermoplastic materials, [0044]); 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 prepared resin composition contains an inorganic filler (the filament comprises the secondary fillers, [0078]), and the inorganic filler consists essentially of inorganic fibers which are at least one of potassium titanate and wollastonite as an inorganic filler (the secondary fillers being wollastonite, [0041]).
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]), 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 0.1 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 12/05/2025 have been fully considered but they are not persuasive. Applicant argues (p. 7) that the Office Action alleges “that Schadel teaches a [height] of up to 500 µm and a width to height ratio of 2, which [allegedly] overlaps with the presently claimed invention,” and “in reality Schadel provides much broader teachings.” Applicant argues that Schadel is absent of any teaching that suggests the desirability of the specific ranges claimed.
This argument is not found persuasive. The argument is presumably in regards to the claim 1 limitation “a deposition pitch is not less than 0.04 mm and not more than 0.15 mm and a road width is not less than 0.07 mm and not more than 0.16 mm.” The rejection cited Schadel para. [0050], which provides examples of strand dimensions that overlap the claimed range. In one example, Schadel specifically describes that the height of the strand may “be at most 50 µm,” or 0.05 mm. In the same paragraph, Schadel discloses the ratio of the strand width to the height being more than 2, such that the width is more than 100 µm, or more than 0.10 mm. Each of these dimensions is clearly within the conditions disclosed by Schadel and is squarely within the claimed ranges. It has been established that 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). Simply because the prior art also discloses other or broader ranges does not negate the disclosed coinciding or overlapping values.
Applicant argues (pp. 7-8) that amended claim 1 recites that “the resin composition contains an inorganic filler, and the inorganic filler consists essentially of inorganic fibers which are at least one of potassium titanate and wollastonite,” and the invention “relates to an instant wherein the resin composition essentially contains only inorganic fibers which are at least one of potassium titanate and wollastonite as an inorganic filler.” Applicant argues (p. 8) that this is in contrast to Schadel which also includes hexagonal boron nitride particles.
This argument is not found persuasive. The presently claimed method does not exclude the incorporation of additional particles such as Schadel’s hexagonal boron nitride particles in the resin composition. The claim language only limits “an inorganic filler” of the resin composition to being at least one of potassium titanate and wollastonite. Schadel’s material comprises a primary filler that is the hexagonal boron nitride particles and a secondary filler exemplified as the wollastonite, i.e., the prior art resin composition “contains an inorganic filler, and the inorganic filler consists essentially of inorganic fibers which are at least one of potassium titanate and wollastonite (in this case, wollastonite) as an inorganic filler.”
Applicant argues (p. 9) that disclosed examples show that using the presently claimed conditions “enables provision of a modeled object easily producible and capable of effectively increasing mechanical properties in modeling using a three-dimensional printer.” Applicant argues that this is in comparison to the comparative examples using a deposition pitch and road width of 0.20 mm. Applicant argues that Schadel fails to disclose or render obvious the advantageous effects.
This argument is not found persuasive. Schadel discloses the values overlapping and/or within the claimed ranges, which establishes a prima facie case of obviousness as set forth above. Applicant’s comparison to examples using an equal height and width are not relevant in comparison to the applied disclosure of Schadel which specifically describes a ratio of the width to the height being more than 2 ([0050]).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/J.L.G./Examiner, Art Unit 1754 /SUSAN D LEONG/ Supervisory Patent Examiner, Art Unit 1754