DETAILED ACTION
This office action follows a reply filed on June 30, 2026. Claims 1 and 17 have been amended. Claims 1, 3, 6, 8-10, 12-13, 17, 19-20 and 32-33 are currently pending and under examination.
The texts of those sections of Title 35 U.S. Code are not included in this section and can be found in a prior Office action.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Double Patenting
Claims 1, 3, 9, 10, 12, 13, 17, 19, and 32-33 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of US Patent No. 12,605,885 in view of WO 2022/010622. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following:
US ‘885 claims a composition comprising piezoelectric particles substantially localized in at one of a first and second polymer material of a polymer matrix, where the matrix comprising a first and second polymer which are immiscible (claim 1), where the composition collectively defines an extrudable material that is a composite having a form factor of a composite filament (claim 2), where the polymers are thermoplastic (claim 3), the piezoelectric particles are covalently bonded to at least a portion of the polymer matrix (claim 5), the particles are substantially non-agglomerated (claim 7) and have a particle size of 10 microns or less (claim 8).
While US ‘885 does not claim the amount of piezoelectric particles present in the composition, it would have been obvious to one of ordinary skill in the art to include these particles in a minimum amount such that a piezoelectric effect is obtained and in a maximum amount such that the integrity of the composition is maintained, which could be determined without undue experimentation.
US ‘885 does not claim the diameter of the filament; however, US ‘885 claims the forming a printed part comprising a fused filament fabrication process, which is known in the art as using a continuous spool of filament, with a diameter of 0.1 mm and up to 1 m, preferably 1-3 mm, where the length of the fiber is greater than the diameter, as taught by WO ‘622, suggesting a length of greater than 1 m (about 3.2 ft).
The above limitations are prima facie obvious over instant claims 1, 3, 9, 10, 12, 13, 17, 19 and 32-33.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 3, 8-10, 12, 17, 19 and 32-33 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4-10 and 12-14, 19-21, 23, and 26 of copending Application No. 17/995921 in view of WO 2022/010622. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following:
App. No. ‘921 claims a composition comprising piezoelectric particles dispersed in a polymer material (claim 1), which is extrudable and has a form factor of a composite filament (claim 2), where the piezoelectric particles are uniformly dispersed in at least a portion of the polymer (claim 4), where the composition collectively defines an extrudable material that is a composite in a form factor of a composite filament (claim 5), the polymer material is a thermoplastic polymer (claim 6), further comprising a curable polymer (claims 7 and 8), where the piezoelectric particles are substantially non-agglomerated (claim 9), have an average particle size of 10 micron or less (claim 10), and are covalently bonded with the polymer material (claim 12). App. No. ‘921 claims the polymer comprising a first and second thermoplastic polymer which are immiscible (claim 14).
While App. No. ‘921 does not claim the amount of piezoelectric particles present in the composition, it would have been obvious to one of ordinary skill in the art to include these particles in a minimum amount such that a piezoelectric effect is obtained and in a maximum amount such that the integrity of the composition is maintained, which could be determined without undue experimentation.
App. No. ‘921 does not claim the diameter of the filament; however, App. No. ‘921 claims the forming a printed part comprising a fused filament fabrication process, which is known in the art as using a continuous spool of filament, with a diameter of 0.1 mm and up to 1 m, preferably 1-3 mm, where the length of the fiber is greater than the diameter, as taught by WO ‘622, suggesting a length of greater than 1 m (about 3.2 ft).
The above limitations in view of WO ‘622 read on instant claims 1, 3, 8-10, 12, 17, 19, and 32-33.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 3, 9, 10, 12, 17, 19 and 32-33 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 12, 13 and 15-17 of copending Application No. 18/052069 (reference application) in view of WO 2022/010622. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following:
App. No. ‘069 claims a composition comprising a polymer material comprising at least one thermoplastic polymer, at least one polymer precursor or a combination thereof, a plurality of piezoelectric particles dispersed in at least a portion of the polymer material, where the piezoelectric particles are covalently bonded to at least a portion of the polymer material, where the composition is extrudable (claims 1-2), where the composition collectively defines a composite having a form factor of a composite filament (claims 12 and 15), the particles are uniformly dispersed (claim 13) and non-agglomerated (claim 16) and have an average particle size of 10 micron or less (claim 17). App. No. ‘069 claims the polymer material as a comprising a first and second thermoplastic polymer that are immiscible (claims 19-20).
While App. No. ‘069 does not claim the amount of piezoelectric particles present in the composition, it would have been obvious to one of ordinary skill in the art to include these particles in a minimum amount such that a piezoelectric effect is obtained and in a maximum amount such that the integrity of the composition is maintained, which could be determined without undue experimentation.
App. No. ‘069 does not claim the diameter of the filament; however, App. No. ‘069 claims the forming a printed part comprising a fused filament fabrication process, which is known in the art as using a continuous spool of filament, with a diameter of 0.1 mm and up to 1 m, preferably 1-3 mm, where the length of the fiber is greater than the diameter, as taught by WO ‘622, suggesting a length of greater than 1 m (about 3.2 ft).
The above limitations in view of WO ‘622 read on instant claims 1, 3, 9, 10, 12, 17, 19 and 32-33.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 3, 9, 11, 12, 17, 19 and 32-33 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4, 5, 7, 9 and 10 of copending Application No. 18/052123 (reference application) in view of WO 2022/010622. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following:
App. No. ‘123 claims a composition comprising piezoelectric particles in a polymer matrix comprising a first and second thermoplastic polymer that are immiscible with each other (claims 1 and 5), where the composition collectively defines an extrudable material that is a composite having a form factor of a composite filament (claims 2 and 4), where the piezoelectric particles are covalently bonded to a portion of the polymer matrix (claim 7), are substantially non-agglomerated in the polymer matrix (claim 9) and have a particle size of 10 micron or less (claim 10).
While App. No. ‘123 does not claim the amount of piezoelectric particles present in the composition, it would have been obvious to one of ordinary skill in the art to include these particles in a minimum amount such that a piezoelectric effect is obtained and in a maximum amount such that the integrity of the composition is maintained, which could be determined without undue experimentation.
App. No. ‘123 does not claim the diameter of the filament; however, App. No. ‘123 claims the composite filament as having a length of at least 1 foot. A fused filament fabrication process is known in the art as using a continuous spool of filament, with a diameter of 0.1 mm and up to 1 m, preferably 1-3 mm, where the length of the fiber is greater than the diameter, as taught by WO ‘622, suggesting a length of greater than 1 m (about 3.2 ft).
Therefore, preparing a composite filament with the claimed diameter is prima facie obvious, and the above limitations in view of WO ‘622 read on instant claims 1, 3, 9, 11, 12, 17, 19 and 32-33.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 103
Claims 1, 3, 8-10, 17, 19-20 and 32-33 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2019/227082 in view of WO 2022/010622.
WO ‘082 teaches a piezoelectric composite material comprising a plurality of functionalized piezoelectric particles crosslinked to a polymer matrix, where the functionalized particles are uniformly distributed throughout the polymer matrix (p. 16, ll. 27-37). WO ‘082 teaches that the polymer matrix can be any polymer that can crosslink with a functional moiety on the functionalized piezoelectric particles, and includes thermoplastic polymers (p. 18, ll. 13-21). WO ‘082 teaches that the functionalization moiety can be a moiety capable of forming hydroxyl groups on the nanoparticle surfaces to form covalent linkage with the polymer matrix, and can be selected from trimethoxysilylpropyl methacrylate and trimethyoxysilylpropyl acrylate (p. 18, l. 36 to p. 19, l. 5). WO ‘082 teaches that the functionalized piezoelectric particles contained in the polymer matrix can be about 50 vol% (p. 18, ll. 11-12).
WO ‘082 teaches the composite as suitable for use in FFF (fused filament fabrication), which generally relies on extruding feedstock filaments, heating to facilitate deposition of the material into layers, depositing the melted filaments into layers to form the 3D object and allowing them to cool and harden (p. 21, ll. 17-21). This meets applicants’ limitation “wherein the polymer material and piezoelectric particles collectively define an extrudable material that is a composite filament”.
WO ‘082 suggests the composite as being suitable for use in FFF, suggesting the composite as a filament, but does not teach or suggest the length of the filament, as claimed.
WO '622 teaches preparing 3D objects using additive manufacturing process such as fused filament fabrication (FFF) to make 3D objects. WO '622 teaches the FFF filament as having a diameter of 0.01 mm to 1 m, preferably 1-3 mm, where the filament can be collected on a spool, suggesting the filament as having a length compatible with a continuous printing process, as claimed.
Therefore, using a continuous spool of filament prepared from the composite of WO ‘082, where the filament has a diameter of about 1-3 mm is prima facie obvious, as WO ‘622 teaches that these are properties of the filament used in FFF, which is taught by WO ‘082
WO ‘082 in view of WO ‘622 is prima facie obvious over instant claims 1, 3, 17, 19, 32 and 33.
As to claim 8, WO ‘082 teaches that the polymer matrix can include a polymer selected from poly(ethylene glycol)diacrylate, hexanediol diacrylate, a thermoplastic polymer, and combinations thereof.
Choosing a blend of curable poly(ethylene glycol)diacrylate or hexanediol diacrylate and a thermoplastic polymer as the polymer matrix is prima facie obvious over instant claim 8.
As to claim 9, uniformly distributed particles suggests a lack of agglomeration.
As to claim 10, WO ‘082 exemplifies PZT particles with a size of 221 nm (p. 41, ll. 11-15).
As to claim 20, the trimethoxysilylpropyl methacrylate and trimethyoxysilylpropyl acrylate meet applicants’ bridging agent.
Claims 1, 3, 8-10, 12-13, 17, 19-20 and 32-33 are rejected under 35 U.S.C. 103 as being unpatentable over Siegel (US 2007/0199729) in view of Elser (US 2021/0050716) and WO 2022/010622.
Siegel teaches a field grading material comprising an effective amount of a nanoparticle filler (1-100 nm) distributed in a polymeric matrix, where the filler is heterogeneously distributed in the polymer matrix (Abstract). Siegel teaches that the filler particles are well dispersed, but non-uniformly distributed (p. 2, [0016]). Siegel teaches that a heterogeneous distribution may be achieved by blending immiscible polymers to result in multiple phases as the nanoparticles are heterogeneously distributed within the polymers, where the phases are typically co-continuous with the nanoparticles in at least one of the phases, suggesting the nanoparticles as being localized (p. 3, [0018]). The phases are typically co-continuous with the nanoparticles in the one of the phases or at the interface (p. 3, [0018]). Siegel teaches that the selection of materials should be such that favorable phase morphology (phase separation) develops between the phases, suggesting blends of polyethylene/EPDM or maleic anhydride-EPDM/EPDM (p. 3, [0018]).
Siegel teaches the nanoparticles to include barium strontium titanate and barium titanate (p. 2, [0013]), both of which are known piezoelectric particles. Siegel also teaches that the surface of the nanoparticle filler is modified by treatment with a coupling agent prior to preparing the nanocomposite (p. 3, [0022]), teaching that the coupling agents are capable of reacting with both the reinforcement and the resin matrix of a composite material and may also bond fillers to organic resins to form or promote a stronger bond at the interface (Id.).
Siegel teaches that the amount of nanoparticles is typically less than about 40 vol% (p. 3, [0019]), which overlaps with the claimed range of 40-70 vol%, as about less than 40 vol% includes at least the end point of 40 vol%, and it has been held that overlapping ranges are sufficient to establish prima facie obviousness. See MPEP 2144.05.
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the range taught by the reference because overlapping ranges have been held to establish prima facie obviousness.
Siegel teaches that the nanoparticles are suitable dispersed in the polymeric matrix by ordinary melt-mixing (p. 3, [0016]), and teaches extruding (p. 6, [0040]), but does not teach forming a composite filament of an elongate form, as claimed.
Elser teaches a method of preparing an electrical power device having field grading behavior by way of additive manufacturing by way of material extrusion (p. 1, [0011], [0028], [0031], [0041]), which is known in the art as FFF and is a well-known method of material extrusion in the art of additive manufacturing which uses filaments having a diameter of up to 1 meter (about 3.2 feet), preferably 1-3 mm, as taught by WO ‘622, and a length which is inherently larger than the diameter. Polyethylene is taught as a suitable polymeric material for use in the additive manufacturing (p. 1, [0012]).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have used additive manufacturing to shape the field grading material of Siegel, as Elser teaches a suitable method for such, teaching that by way of additive manufacturing, devices with tailor-made mechanical and electrical properties can be made (p. 4, [0044]).
Siegel in view of Elser is prima facie obvious over instant claims 1, 6, 9-10, 12, 13, 17, 19-20 and 32-33.
Claims 1, 5-8, 10, 12 and 25-26 are rejected under 35 U.S.C. 103 as being unpatentable over Hekal (US 2002/0132869) in view of WO 2022/010622, and further in view of Baran (US 8,618,202).
Hekal teaches a composition having co-continuous interconnecting channel morphology, where the co-continuous interconnecting channels are occupied with a polymer and particles that control the percolation through the composition (Abstract). Hekal teaches the composition as being formed from a combination of (a) component A selected from an amorphous/semicrystalline polymers, (b) a component B which is a polymer; and (c) components A and B are immiscible within each other; (d) C is a particle; (f) the preferential affinity between components B and C is greater than between components A and C; (g) at least two phases are formed, one phase is composed of a majority of component A and the second phase is composed of a majority of components B and C; and (h) two phases form the co-continuous interconnecting channel morphology (p. 2, [0026]). (f) described above suggests that the particles are localized in component B. Hekal also teaches that B and C are blended and uniformly mixed throughout component A (p. 2, [0029]).
Hekal teaches component B as a hydrophilic agent, which includes polyethylene glycol of polyvinyl alcohol (p. 3, [0038]); teaches component C to include barium titanate (p. 4, [0041]), a known piezoelectric material; and component A as a thermoplastic material such as polyethylene (p. 4, [0046]). Hekal exemplifies the particles in an amount of 20 wt% (col. 11, Example 2).
Hekal teaches mixing the components and extruding; however, does not teach or suggest the formation of a composite filament in an elongate form, as claimed.
WO ‘622 teaches preparing 3D objects from blends of polyethylene and a polar polymer, teaching that using additive manufacturing process such as fused filament fabrication (FFF) to make 3D objects from blends of polyethylene and a polar polymer can have reduced shrinkage, reduced warpage and are capable of forming a uniform diameter printing filament (p. 6, [0032]). WO ‘622 teaches the polar polymer is that which possesses a dipole moment of greater than 0 D (p. 6, [0031]). Polyethylene glycol is known in the art as a highly polar material. WO ‘622 teaches the polyethylene to include low and high density polyethylenes (p. 12, [0051]). WO ‘622 also teaches the possible inclusion of up to 50 wt% fillers (p. 16, [0060]). WO ‘622 teaches the filament as having a diameter of up to 1 meter, and a filament has a length which is much greater than its diameter.
Choosing a combination of polyethylene glycol, HDPE and barium titanate is prima facie obvious.
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have prepared a composite filament for FFF using the composition of Hekal, as WO ‘622 teaches that molding of similar compositions by way of FFF/3D printing into filament form reduces dimensional changes in the final article.
Note Hekal similarly desires dimensional stability (col. 7, ll. 16-21).
Hekal teaches that the particle C has a preferential affinity for B over A, but does not teach particle C as being substantially non-agglomerated or covalently bonded to the polymer.
Baran teaches a continuous phase of at least one polymer and surface-modified nanoparticles, and a dispersed phase comprising at least one polymer, where the continuous polymer phase and the dispersed polymer phase are immiscible (col. 1, ll. 45-60). Baran teaches the surface modified particles are not aggregated or agglomerated (col. 2, ll. 32-36). Baran teaches that when individual particles which are surface treated, the surface treatment is distributed over the entire surface of the particle, and prevents the particles from being aggregated (col. 3, ll. 45-50). Baran teaches reacting a surface modifier with the nanoparticles (col. 6, ll. 16-20), and the surface groups can be selected to associate or react with at least one component of the continuous phase to become part of the polymeric network (col. 4, ll. 1-13), suggesting covalent bonding of the particles to the polymer of the continuous phase. Baran teaches that the surface-modified particles are selected to be compatible with the continuous phase of polymer the polymer blend (col. 3, ll. 56-67), suggesting that the surface modification increases the affinity of the particles for one of the polymers of the blend.
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have surface treated the particles of Hekal to prevent agglomeration and increase the affinity of the particles for polymer B, as Hekal clearly desires the particles as having preferential affinity for B over A.
Hekal in view of WO ‘622 is prima facie obvious over instant claims 1, 3, 9, 12-13, 17 and 19-20.
As to claim 10, Hekal teaches that the particle used in the example, molecular sieves, have an outline of 1-10 micron, suggesting that the particles are less than 10 micron, as claimed.
As to claims 32-33, FFF filaments are known as being very long. WO ‘622 teaches the filament as having a diameter of up to 1 meter, and a filament has a length which is much greater than its diameter. 1 meter is about 3.2 feet; therefore, WO ‘622 teaches a filament which has a length that can exceed 1 foot, as claimed.
Response to Arguments
Applicants arguments filed June 30, 2026 have been fully considered but they are not persuasive.
Applicants argue that Zheng (WO ‘082) teaches nanoparticles dispersed in ultraviolet-sensitive monomers/photocurable resins, which are not thermoplastic, as claimed.
Zheng teaches that the polymer matrix can be thermoplastic in an alternative embodiment from the photocurable monomers.
The remaining arguments have been addressed in the rejections above.
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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/Brieann R Johnston/Primary Examiner, Art Unit 1766
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