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
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
New grounds of rejection are presented over claim 5. Accordingly, the following action is non-final.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3, 4, 6-8, 10, and 11 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 has been amended to pertain to a method “consisting of” dissolving, separating, and evaporating. The transitional phrase "consisting of" excludes any element, step, or ingredient not specified in the claim. MPEP 2111.03(II). Looking to the specification, written support is not found for a method limited solely to the elements, steps, and ingredients listed within the claim. Rather, the specification indicates the method comprises/includes the various steps and speaks of other elements, inclusive of grinding, heating, recovering, weighing, molding, etc. Various routine steps occurring between dissolving/separating/evaporating (e.g. transferring solutions/mixtures, pouring, waiting, recovering, etc) are indicated. As the disclosure does not convey possession of the subject matter claimed at the time of filing, claim 1 fails to comply with the written description requirement.
As claims 3, 4, 6-8, 10, and 11 depend from claim 1, they are rejected for the same issue discussed above.
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.
Claims 6-8, 10, and 11 are 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 6 requires a further process step of “separating the particulate fusing compound and the particulate fillers from the polyamide-dissolving solvent”, which extends beyond the scope of claim 1 since claim 1 consists of dissolving polyamide polymer in solvent, separating particulate fusing compound from solvent/dissolved polymer, and evaporating solvent. Therefore, claim 6 fails to include all of the limitations of the claim upon which it depends.
Claim 7 requires a further process step of heating the polyamide-dissolving solvent and the dissolved polyamide polymer to a 70-100 degrees C temperature range for 15-30 hr per 10mL, which extends beyond the scope of claim 1 since claim 1 consists of dissolving polyamide polymer is solvent, separating particulate fusing compound from solvent/dissolved polymer, and evaporating solvent. Therefore, claim 7 fails to include all of the limitations of the claim upon which it depends.
Claim 8 requires a further process step of filtering, which extends beyond the scope of claim 1 since claim 1 consists of dissolving polyamide polymer is solvent, separating particulate fusing compound from solvent/dissolved polymer, and evaporating solvent. Therefore, claim 8 fails to include all of the limitations of the claim upon which it depends.
Claim 10 requires a further process step of heating the polyamide-dissolving solvent and the dissolved polyamide polymer to a 80-100 degrees C temperature range for 1-1.5 hr, which extends beyond the scope of claim 1 since claim 1 consists of dissolving polyamide polymer is solvent, separating particulate fusing compound from solvent/dissolved polymer, and evaporating solvent. Therefore, claim 7 fails to include all of the limitations of the claim upon which it depends.
Claim 11 requires a further process step of collecting polyamide-dissolving solvent evaporated off, which extends beyond the scope of claim 1 since claim 1 consists of dissolving polyamide polymer is solvent, separating particulate fusing compound from solvent/dissolved polymer, and evaporating solvent. Therefore, claim 11 fails to include all of the limitations of the claim upon which it depends.
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.
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 2, 5, and 9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 22, 25, and 28 of copending Application No. 19/701,696 in view of Emamjomeh (US 2019/0002714 A1).
Although ‘696 is a divisional application of the present application, the new claims of ‘696 fail to maintain consonance with the restriction requirement made. See MPEP 804.01, situation B. Therefore, the following double patenting rejection is presented.
Specifically, claims 22, 25, and 28 pertain to a process comprising the same process steps instantly claimed with the exception that it is not indicated the three-dimensional printed object includes 90-99.9 wt% of polyamide polymer. In this regard, Emamjomeh describes 3D printed objects obtained from a build comprising polymeric particles bonded together with an ink comprising particulate fusing agents are known in the art (Abstract; ¶ 6; Examples). The builds comprise 92-99.5 wt% of polymeric particles (¶ 31), suggesting resulting printed objects exhibiting polymeric contents consistent with the range claimed. The polymers can be various polyamides, such as polyamide 6 (¶ 13). It would have been obvious to one of ordinary skill in the art to apply the protocols of the ‘696 claims toward waste 3D printed objects of Emamjomeh, thereby affording purified recycled polyamide polymers for re-use.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant's arguments filed 4/30/2026 have been fully considered but they are not persuasive.
Applicant’s arguments with respect to Emamjomeh/Teti have been considered but are moot because the arguments do not apply to any of the references being used in the current rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHEN E RIETH whose telephone number is (571)272-6274. The examiner can normally be reached Monday - Friday, 8AM-4PM Mountain Standard Time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached at (571)272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEPHEN E RIETH/Primary Examiner, Art Unit 1759
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