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 .
This Office Action is in response to the amendment and remarks filed 10/20/2025. Claims 21 – 40 are pending in the application.
The previous 35 USC 112 rejections of claims 37 and 39 are withdrawn in light of Applicant' s amendment and remarks.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 40 is rejected under 35 U.S.C. 101 because the claimed invention is not supported by either a specific and substantial asserted utility or a well-established utility.
Claim 40 is rejected under 35 U.S.C. 101 because the claimed recitation of a use, without setting forth any steps involved in the process, results in an improper definition of a process, i.e., results in a claim which is not a proper process claim under 35 U.S.C. 101.
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 40 is 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.
Regarding claim 40, without method steps reciting how the 3D printable powder is being used, the language “step of using” is considered indefinite as it fails to particularly point out and distinctly claim the subject matter.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 21-26 and 28 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yang, et al. (CN 110437538A cited in the IDS dated 2/10/2023; English Machine Translation incorporated herewith).
Regarding claims 21 and 22, Yang et al. teach a polypropylene composition for 3D printing (claim 1), wherein the polypropylene composition comprises 60-85 parts of polypropylene pellets, 5-25 parts of a thermoplastic elastomer, 5-25 parts of talc;
wherein the composition is granulated (claim 10) thereby reading on the powder as required by the instant claim;
wherein in a preferred embodiment (Example 3, [0071]) the polypropylene is present in an amount of 85 kg which results in 83 wt% (82.5 kg / 101.9 total kg = 83 wt%) thereby reading on the claimed range of from 75 to 98 wt%, wherein all the polymeric matrix is a propylene which reads on at least 90 wt% of the polymeric matrix of at least one polyolefin;
wherein in a preferred embodiment the elastomer is present in an amount of 5 kg which results in 5 wt% (5 kg / 101.9 total kg = 5 wt%) thereby reading on the claimed range of from 2 wt% to 25 wt%;
wherein the elastomer is POE [0077] thereby reading on the ethylene alpha-olefin elastomers as required by the instant claim;
wherein Yang teaches the talc exhibits good fluidity during extrusion processing [0011] thereby reading on the “at least one flow aid”.
Regarding claim 23, Yang et al. teach polypropylene (claim 1).
Regarding claim 24, Yang et al. teach grafted polypropylene [0009] thereby reading on a copolymer of polypropylene.
Regarding claim 25, Yang et al. teach the talc can be mixed with another polymer [0011], [0092] and further teach a pigment masterbatch combined with resin [0097] thereby reading on the at least one additional polymer.
Regarding claim 26, Yang et al. teach the preferred embodiments do not contain another polymer in the polymer matrix (Examples).
Regarding claim 28, Yang et al. teach antioxidants and a color masterbatch (Abstract, claim 1).
Claim Rejections - 35 USC § 102/103
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 29-31 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Yang, et al. (CN 110437538A cited in the IDS dated 2/10/2023; English Machine Translation incorporated herewith).
Regarding claims 29-31, Yang et al. teach the 3D printable composition according to claim 21 as set forth above and incorporated herein by reference. Yang et al. further teach the composition comprising improved properties [0017-0019], [0103].
Yang et al. do not teach the elongation at break, Charpy unnotched impact or the mean particle size d90.
The mechanical properties of elongation at break, Charpy unnotched impact and the mean particle size d90 are functions of the composition. Yang et al. teach the same 3D printable powder composition comprising a polypropylene, thermoplastic elastomer and flow aid in the same amounts as required by the instant claims as set forth in the rejection above. Therefore, the mechanical properties of elongation at break, Charpy unnotched impact and the mean particle size d90 in the 3D printable composition of Yang et al. will be the same mechanical properties as required by the instant claims. Case law has held that claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). The courts have stated that 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. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position. In the alternative that the above disclosure is insufficient to anticipate the above listed claims, it would have nonetheless been obvious to the skilled artisan to produce the claimed composition having the same properties, as the reference teaches each of the claimed ingredients within the claimed proportions for the same utility (3D printing).
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over Yang, et al. (CN 110437538A cited on the IDS dated 2/10/2023; English Machine Translation incorporated herewith) in view of Herschke, et al. (WO 2019/221733 cited on the IDS 2/10/2023).
Regarding claim 27, Yang et al. teach the 3D printable composition according to claim 21 as set forth above and incorporated herein by reference.
Yang et al. do not particularly teach the flow aid is chosen from silica, alumina or waxes.
Herschke et al. teach build materials for 3D printing (Abstract) wherein the build materials comprise polymeric particles comprising polypropylene and at least one elastomer dispersed in the matrix (claims 1 and 5), wherein the particles have a D90 from 75-120 micron (claim 12), wherein the polypropylene is a block copolymer of propylene with a conomoner of olefin (claim 13), wherein the wherein the elastomer is present in an amount of about 3 to about 50 wt% based on the total weight of the composite polymeric particles [0012], and wherein aluminum oxide (i.e. alumina) and silica are functional equivalent fillers to silicates (i.e., talc) [0085]. Case law has held that substituting known equivalents for the same purpose is prima facie obvious. (MPEP 2144.08.I.). Therefore it would have been obvious to one or ordinary skill in the art to use the alumina or silica as disclosed by Herschke et al., in the 3D printing material of Yang et al., thereby arriving at the claimed invention.
Claims 32-40 are rejected under 35 U.S.C. 103 as being unpatentable over Yang, et al. (CN 110437538A cited in the IDS dated 2/10/2023; English Machine Translation incorporated herewith).
Regarding claim 32, Yang et al. teach a process for preparing the 3D printable powder, wherein the composition is provided as set forth above for claim 21 thereby reading on step a);
wherein the elastomer reads on ethylene alpha-olefin elastomers as set forth for claim 21 thereby reading on step b);
wherein Yang et al. teach high-speed mixing to mix the polymeric matrix with the elastomer and further teach heating between 215-220 °C (Example 4, [0085]) thereby reading on step c);
wherein Yang et al. teach the mixture is extruded and pelletized (Examples) thereby reading on step d);
wherein Yang et al. teach the flow aid (talc) is mixed together with the other ingredients at the time of the high-speed mixing;
wherein Yang et al. teach the pellets are cut into cylindrical granules with a length of 3 mm.
Yang et al. do not teach the talc is mixed in a subsequent mixing step after the polymeric matrix and elastomer are pelletized.
However, case law has held that selection of any order of mixing ingredients is prima facie obvious, in the absence of new or unexpected results (MPEP 2144.04.IV.C.) Therefore, it would have been obvious to one or ordinary skill in the art to mix the resulting granulated pellet with talc in a subsequent mixing step thereby arriving at step e).
Yang et al. do not particularly teach the resulting mixture is sieved to obtain a powder.
However, Yang et al. teach the pellets are cut into granules. Case law has held that substituting one method (cutting) for the other (sieving) in a process requires no express suggestion (MPEP 2144.06.II). As such, it would have been obvious to one of ordinary skill in the art to recognize an equivalency between cutting and sieving based on the process of making a 3D printable composition by Yang et al., thereby arriving at the claimed step f).
Regarding claim 33, Yang et al. teach high-speed mixing to mix the polymeric matrix with the elastomer and further teach heating between 215-220 °C (Example 4, [0085]) thereby reading on c1.1).
Yang et al. do not particularly teach adding the elastomer to the polymeric matrix in a subsequent mixing step after heating the polymeric matrix.
However, case law has held that selection of any order of mixing ingredients is prima facie obvious, in the absence of new or unexpected results (MPEP 2144.04.IV.C.) Therefore, it would have been obvious to one or ordinary skill in the art to mix the heated polymeric matrix with the elastomer in a subsequent mixing step in the process of Yang et al. thereby arriving at steps c1.2) and c1.3).
Regarding claim 34, Yang et al. teach high-speed mixing to mix the polymeric matrix with the elastomer and further teach heating between 215-220 °C (Example 4, [0085]) thereby reading on steps c2.1) and c2.2).
Regarding claim 35, Yang et al. teach antioxidants and a color masterbatch (Abstract, claim 1).
Regarding claim 36, Yang et al. teach oxidation ([0013], [0023-0024]) and cylindrical shape [0087] thereby reading on step g) oxidation and rounding.
Regarding claim 37, Yang et al. teach step c) is carried out in a twin-screw extruder [0087].
Regarding claims 38 and 40, Yang et al. teach a 3D printed article such as a wire [0102].
Regarding claim 39, Yang et al. teach a fused deposition molding [0104] thereby reading on the method for preparing a 3D printed article using the multi-jet fusion technique.
Response to Arguments
Applicant's arguments filed 10/20/2025 have been fully considered but they are not persuasive. In regards to the 102 rejection over Yang, Applicant states “Yang does not disclose or reasonably suggest a 3D printable powder”. Applicant further states “Rather, Yang discloses a raw material comprising, inter alia, polypropylene granules.” and “a powder and a granule/granular composition are not equivalent.”
In response, attention is drawn to the instant specification, wherein the instant specification states “In the context of the invention, a ‘3D printable powder’ is a powder or pulverulent solid that is usable in a 3D printing process” (see p. 5 line 12). Absent a definition of “powder”, the broadest reasonable interpretation of the term “powder” is given. That is, powder is considered to be: “any loose, dry substance consisting of small pieces, usually made by breaking or crushing” (definition obtained by Cambridge Dictionary). As such, the “cylindrical granular materials” of Yang (claim 10) that are “consumable for 3D printing” (Abstract and Title) are considered to read on “powder”. It is for these reasons Applicant’s arguments are not found persuasive.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LANEE REUTHER whose telephone number is (571)270-7026. The examiner can normally be reached M-F 7:30-3:30.
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/ARRIE L REUTHER/Supervisory Primary Examiner, Art Unit 1764