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 .
Priority
Applicant states that the effective filing date of the present invention is August 3, 2020. However, even though the certified copy of the foreign application was provided, the priority of the application was not perfected as the certified copy is not in English. Therefore, absent a certified translation of the foreign priority document, the effective filing date of the present invention is July 27, 2021.
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.
The below claims are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the corresponding claims in the charg of copending Application No. 18/571,874 (reference application).
Current application claim
Copending application claim
15
15 and 18
16
16
17
17
18
19
20
21
22
22
23
23
Although the claims at issue are not identical, they are not patentably distinct from each other because the concentration ranges of the different components are not identical, however, they do overlap significantly. Further, It is clear that all the elements of the application claim 15 are to be found in the copending application claim 15 (as the application claim 15 fully encompasses the copending application claim 15). The difference between the application claim 15 and the copending application claim 15 lies in the fact that the patent claim includes many more elements and is thus much more specific. Thus the invention of claim 15 of the copending application is in effect a “species” of the “generic” invention of the application claim 15. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since application claim 15 is anticipated by claim 15 of the copending application, it is not patentably distinct from claim 15 of the copending application.
Finally claim 15 of the copending application does not include the specific limitations of the organic additive. However, claim 18 of the copending application adds such limitation.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 15-28 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Dohmen et al (US 2024/0279507) .
The applied reference has a common assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
With Regards to claim 15, Dohmen teaches a sinter powder that contains a thermoplastic urethane in an amount from 58.5 to 99.95%, a flow agent in an amount of 0.05 to 1.5%, an additive in an amount of 0 to 5%, a further additive in an amount from 0 to 5%, a reinforcer in an amount from 0 to 30% (abstract) wherein the additive is a polypropylene wax, maleic acid and/or maleic anhydride grafted polypropylene wax (0195).
With Regards to claim 16, Dohmen teaches the flow agent to be selected from silicon dioxide (silica), silicates, silicas, metal oxides, minerals, borates, phosphates, sulfates, and carbonates (0179).
With Regards to claim 17, Dohmen teaches the amount of the thermoplastic polyurethane to be from 73.3 to 99.9%, the amount of the flow agent to be from 0.1 to 1.2%, the amount of additive to be from 0 to 3%, the amount of further additive to be from 0 to 2.5%, and the amount of reinforcer to be from 0 to 20% (0033).
With Regards to claim 18, Dohmen teaches the organic additive to include an N,N’-alkylene fatty acid diamide (0196) and has a dropping point that satisfies the following equation:
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28
205
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(0199) wherein
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30
230
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(0200).
With Regards to claim 19, Dohmen teaches the sinter powder to have a particle size (D50) is 10 to 150 µm (0041), a melting temperature from 90 to 220°C (0050), and a bulk density of 250 to 700 g/L (0053).
With Regards to claim 20, Dohmen teaches the flow agent to have a D90 of < 10 µm (0188).
With Regards to claim 21, Dohmen teaches the further additive to include antinucleating agents, stabilizers, conductive additives, end group functionalizer, dyes, antioxidants, flame retardants, and color pigments (0228).
With Regards to claim 22, Dohmen teaches the reinforcer to be selected from glass beads and aluminum silicates (0243).
With Regards to claim 23, Dohmen teaches the procuess of making the sinter powder to include providing the following components:
Dohmen teaches a sinter powder that contains a thermoplastic urethane in an amount from 58.5 to 99.95%, a flow agent in an amount of 0.05 to 1.5%, an additive in an amount of 0 to 5%, a further additive in an amount from 0 to 5%, a reinforcer in an amount from 0 to 30% (abstract) wherein the additive is a polypropylene wax, maleic acid and/or maleic anhydride grafted polypropylene wax (0195).
Dohmen teaches the powder to be formed from grinding (0057) wherein
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226
222
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(0076).
With Regards to claim 24, Dohmen teaches the process of producing a three-dimensional shaped article that involves providing a sinter powder (0263) followed by exposing the layer of the sinter powder (0275).
With Regards to claim 25, Dohmen teaches the sintering powder to be used to make a three dimensional shaped article (262).
With Regards to claim 26, Dohmen teaches the addition of a flow agent (0176) and an organic additive (0193) that includes maleic acid- and/or maleic anhydride grafted polypropylene wax (0195).
With Regards to claim 27, Dohmen teaches the powder to be used in a sintering method (0250).
With Regards to claim 28, Dohmen teaches the sintering powder to be used to make a three dimensional shaped article (262).
Response to Arguments
Applicant’s arguments, see pages 7-10, filed March 11, 2026, with respect to the specification and the rejection of claim 27 under 35 USC 112 have been fully considered and are persuasive. The objection to the specification and the rejection of claim 27 under 35 USC 112 have been withdrawn.
Applicant's arguments filed March 11, 2026 have been fully considered but they are not persuasive.
Argument - Applicant argues that the art of Dohmen can not be used as prior art because the priority date is after the effective filing date of the present invention.
Response - As stated above, foreign priority of the current application has not been perfected as the certified document is not in English. Therefore, the effective filing date of the present invention is July 27, 2021. The priority date of the Dohmen is June 21, 2021. Therefore, Dohmen still qualifies as prior art under 102(a)(2).
Argument - Applicant argues that because the art of Dohmen cannot be used as prior art it cannot be used for a double patenting rejection.
Response - The MPEP states that conflicting patent or application does not need to meet the date requirements for 35 U.S.C. 102 to be available under ODP. Further, as stated above, the art does qualify as prior art under 102, therefore, this argument is moot.
Argument - Applicant argues that the application used for ODP must be filed before the effective filing date in order to be used for an ODP rejection.
Response - As stated above, the foreign priority date of the present invention has not been perfected. Therefore, the art of Dohmen does qualify as being filed before the effective filing date of the present invention.
However, this ODP rejection is a provisional rejection and, therefore, if this application is considered to be in condition for allowance before the copending application, a Terminal Disclaimer is not needed. However, if the copending application is deemed to be in condition for allowance first, a Terminal Disclaimer will be needed in order to overcome the ODP rejection.
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 JESSICA WHITELEY whose telephone number is (571)272-5203. The examiner can normally be reached 8 - 5:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at 5712721130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JESSICA WHITELEY/Primary Examiner, Art Unit 1763