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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2 February 2026 and 23 January 2026 has been entered.
The amendment filed 23January 2026 has overcome the 35 USD 112(a) rejection and the rejection over canceled claim 6. Applicant's arguments with respect to the provisional double patenting rejection have been fully considered but they are not persuasive.
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 1, 2, 5, 9, 10, 12, 14, 19, 20, 23, 26, and 27 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7, 9, 10, 12-14, 18-21 and 25 of copending Application No. 18/052123 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the composition of the composite filament suggested by the combination of the teachings of copending claims 12 and 25 suggest the newly claimed composition of claim 1 of this application. The taught polymers of PEO/HDPE, SEBS/PCL and EPDM/PP in copending claim 25 are polymers which fall within those of claim 1 of this application. The suggested composite filament comprises a composition comprising a carbon nanomaterial, which reads upon a plurality of carbon nanomaterials and a plurality of piezoelectric particles in at least a portion of a polymer matrix comprising a first polymer and a second polymer that are immiscible in each other and the polymers are those of claim 25. This is the composition of claims 1, 2, 5 and 14 of this application and therefore must be extrudable. Claim 21 teaches the carbon nanomaterial composition is used in an additive manufacturing process where the composition is provided and formed into a printed part by depositing the composition layer-by-layer. The use of the claimed composition of copending claims 12, 25 and 21 in the process of claim 13 means that it is extrudable. The process of copending claim 21 suggests that of claim 19 of this application.
Copending claims 7, 9, 10 and 18-20 further define the piezoelectric particles taught in copending claim 1. When combined with the teachings in copending claims 1, 12 and 25 and claims 13, 21 and 25, the resulting filament suggest the composition of claims 9, 10 and 12 of this application and the resulting process suggest the process of claims 26 and 27 of this application.
Copending claim 14 teaches the printing process of claim 13 comprises a fused filament fabrication process, which is a process wherein a filament is heated at or above the melting or softening temperature of the polymer in the filament. Combining the teachings of copending claim 14 with the teachings in copending claims 13, 21, 1 and 25; the resulting process suggests that of claims 20 and 26 of this application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicants’ request to hold this rejection in abeyance until allowable subject matter has been indicated is noted. Since rejections cannot be held in abeyance, the rejection is maintained.
It is noted that MPEP 804.I.B.1 teaches that for provisional nonstatutory double patenting rejection between applications having the same effective filing date, as in the above provisional rejection; the provisional nonstatutory double patenting rejection made in each application should be maintained until it is overcome. Provisional nonstatutory double patenting rejections are subject to the requirements of 37 CFR 1.111(b). Thus, applicant can overcome a provisional nonstatutory double patenting rejection by filing a reply that either shows that the claims subject to the rejection are patentably distinct from the claims of the reference application, or includes a compliant terminal disclaimer under 37 CFR 1.321 that obviates the rejection.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 2, 5 and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2008-89923.
This reference teaches a filament comprising piezoelectric particles and electrically conductive material dispersed in a polymer resin material. Example 1 teaches a filament comprising piezoelectric barium titanate or PZT particles and carbon black (a carbon nanomaterial) as the electrically conductive material dispersed in nylon 6 (polyamide) or polyethylene terephthalate as the polymer resin material. These resins are thermoplastic and non-piezoelectric. The filament is produced by melt-spinning, which is an extruding method. Thus the taught composition is extrudable. Since the taught composition is identical to that claimed and extrudable; one of ordinary skill in the art would expect the taught filament, which is one of the claimed form factors compatible with extrusion, of these examples to also be extrudable. The exemplified filaments reads upon the compositions of claims 1, 2, 5 and 18.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1, 4, 9, 10 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. patent application publication 2008/0009572.
This reference teaches a composition having a electrically conductive filler dispersed in a polymeric matrix. The electrically conductive filler is preferable barium titanate (para 31), which is a piezoelectric material. This filler can be in the form of particles having an average particle size is nanosized, 1-5 microns or 5-10 microns (para 32-33). Paragraph [0035] teaches the filler can be agglomerated which suggests that the filler can also be substantially agglomerated. These barium titanate fillers reads upon the piezoelectric particles of claims 1, 9 and 10. Paragraphs [0049]-[005] teaches the composition can contain a second electrically conductive filler, such as carbon black (a carbon nanomaterial) or carbon nanotubes. These materials read upon those of claims 1 and 18. The polymeric matrix can be a thermoplastic material, such as polystyrene, polyamide, polyethylene terephthalate, polyethylene naphthalate, polycarbonate, polyether sulfone, polyether ether ketone, polyethylene, polypropylene, and combinations thereof (para 57, 61, 62). These are some of the thermoplastic polymers of claim 1. The processes by which the fillers and matrix are mixed are taught in pargraphs [0075] and [0076]. These methods are known to uniformly disperse inorganic particles, such as the taught and suggested barium titanate filler particles and either carbon black or carbon nanotubes, in a polymeric matrix. Thus the taught composition would be expected the taught and suggested barium titanate filler particles and either carbon black or carbon nanotubes to be uniformly dispersed in the taught polymeric matrix, absent any showing to the contrary. Paragraph [0082] teaches extruding the composition into a pellet or the final article, which means that the composition is extrudable and has a form factor comparable with extrusion.
Claims 1, 2, 4, 5, 10 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2008-89923.
This reference teaches a filament comprising piezoelectric particles and electrically conductive material dispersed in a polymer resin material. The electrically conductive material can be the electrically conductive nanomaterials of carbon black or carbon nanotubes. The taught piezoelectric particles have an average size of 10 microns or less, which is the size range of claim 10. The polymer resin material can be polyamide, polyethylene terephthalate, polyethylene naphthalate or polyether ether ketone, which are several of the resins of claim 1. The filament is produced by melt-spinning, which is an extruding method. Thus the taught composition is extrudable and has a form factor comparable with extrusion. The process of melt spinning is known to uniformly disperse inorganic particles, such as the taught piezoelectric particles and either carbon black or carbon nanotubes, in a polymeric matrix. Thus the taught composition would be expected the taught piezoelectric particles and either carbon black or carbon nanotubes to be uniformly dispersed in the taught polymeric matrix, absent any showing to the contrary. The suggested filaments when composition is one where the resin is polyamide, polyethylene terephthalate, polyethylene naphthalate or polyether ether ketone and the electrically conductive material is carbon black or carbon nanotubes are identical to the claimed composition. Since these suggested filaments are identical to that claimed and extrudable; one of ordinary skill in the art would expect the suggested filament, which is one of the claimed form factors compatible with extrusion, of these examples to also be extrudable. The reference suggests the claimed composition.
Allowable Subject Matter
Claims 7, 8, 13, 21 and 28 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
There is no teaching or suggestion in the cited art of record of an extrudable composition, that has a form computable with extrusion, comprising a plurality of piezoelectric particles and a plurality of carbon nanoparticles dispersed in at least a portion of a non-piezoelectric polymer wherein the polymer comprises the thermoplastic polymer set forth in claim 1 and at least one polymer precursor. There is no teaching or suggestion in the cited art of record of an additive manufacturing process comprising providing the above composition and forming a printed part by depositing the composition layer-by-layer and then polymerizing or curing the polymer precursor.
There is no teaching or suggestion in the cited art of record of an extrudable composition, that has a form computable with extrusion, comprising a plurality of piezoelectric particles and a plurality of carbon nanoparticles dispersed in at least a portion of a non-piezoelectric polymer wherein the polymer comprises the thermoplastic polymer set forth in claim 1; wherein the piezoelectric particles are covalently functionalized with a moiety that is covalently crosslinkable or capable of interacting non-covalently with the carbon nanoparticles and/or polymer by π-π bonding, hydrogen bonding, electrostatically, or any combinations thereof. There is no teaching or suggestion in the cited art of record of an additive manufacturing process comprising providing the above composition and forming a printed part by depositing the composition layer-by-layer.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to C. MELISSA KOSLOW whose telephone number is (571)272-1371. The examiner can normally be reached Mon-Tues:7:45-3:45 EST;Thurs-Fri:6:30-2:00EST; and Wed:7:45-2:00EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Johnson can be reached at 571-272-1177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C Melissa Koslow/Primary Examiner, Art Unit 1734
cmk
3/4/26