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 .
Election/Restrictions
Claims 33-35, 43, 46 and 48-56 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on May 04, 2026.
Claim Rejections - 35 USC § 112
Claims 30-32, 36-42, 44, 45, 47, 57 and 58 are 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.
In claim 30, it is unclear whether “reinforcement” component refers to a reinforcing agent. Moreover, it is unclear how said “reinforcement” distinguishes over the antecedently-recited metal and/or ceramic materials.
In claim 58, step a) (lines 3-4) does not provide express antecedent basis for the subsequently-recited optional diluent and/or plasticizer (line 13). That is, the optional diluent and/or plasticizer are not included as optional materials in the recitation of step a).
Claim Rejections - 35 USC § 102/103
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.
(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.
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 30-32, 36 and 38-40 are rejected under 35 U.S.C. 102(a1) and (a2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over US 2015/0057402 (Heikkila).
Heikkila discloses an article made from a composite material having a density of from about 0.9 to 10 gm-cm-3 (claim 1) (embraces Applicants’ article having a density of 2 to 7 g/cm3) comprising:
(a) a ceramic filler (2) having a density ˃ 0.10 g/cc and ˂ 10 g/cc (embraces Applicants’ ceramic filler (2) having a density ≥ 3 g/cm3 ); and
(b) a polymer (meets Applicants’ polymer (4)) (e.g., abstract, examples, claims).
Heikkila discloses that the composite materials exhibit bonding between the ceramic filler and polymer inclusive of ionic bonds and hydrogen bonds [0013-0014]/Table 1.
In Table 2, Heikkila expressly sets forth materials having a density of 3.07 g/cc (or 3.11 g/cc) (meets Applicants’ article having a density of 2 to 7 g/cm3 ) comprising:
(a) 74.2 wt.% (or 74.7 wt.%) of Al2O3 having a density of 3.974 g/cc (meets Applicants’ ceramic filler (2) having surface oxides, a density ≥ and 3 g/cm3 and content thereof); and
(b) 24.3 wt.% (or 25.3 wt.%) of a copolymer of tetra fluoroethylene, hexafluoropropylene and vinylidene fluoride (THV) [0109] (meets Applicants’ polymer (4) and content thereof)
As to claims 30-32, inasmuch as Heikkila’s exemplified materials meet the presently claimed article in terms of the types of materials added and their contents, it is reasonably believed that they would inherently possess the same type of bonds between ceramic filler and polymer because the properties are intrinsically linked to the chemical identity and formulation of a composition. “Products of identical chemical composition cannot have mutually exclusive properties” because a chemical composition and its properties are inseparable, In re Spada 15 USPQ2d 1655, MPEP 2112.01 (II). Where the claimed and prior 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, In re Best 195 USPQ 430. Where applicant claims a composition in terms of function, property or characteristic and the composition of the prior art is the same as that of the claim but the function property or characteristic is not explicitly disclosed, a rejection under both 35 U.S.C. 102 and 103 is appropriate (MPEP 2112).
As to claims 36, 38 and 40, inasmuch as Heikkila’s exemplified Al2O3 has surface oxides, it is reasonably believed that such would be similarly involved in bonding with the polymer.
As to claim 39, Heikkila’s exemplified copolymer of tetra fluoroethylene, hexafluoropropylene and vinylidene fluoride (THV) is fluorinated.
Heikkila anticipates the above-rejected claims in that it is reasonably believed that the exemplified copolymer of tetra fluoroethylene, hexafluoropropylene and vinylidene fluoride (THV) meets the claimed polymer (4). In the alternative, it is within the purview of Heikkila’s inventive disclosure, and obvious to one having ordinary skill in the art, to use an alternative polymer such as a polyamide [0055] with the reasonable expectation of success.
Claim Rejections - 35 USC § 103
Claims 37, 41, 42, 44, 45 and 47 are rejected under 35 U.S.C. 103 as being unpatentable over US 2015/0057402 (Heikkila) described hereinabove.
As to claims 37, 41, 42, 44, 45 and 47, it is within the purview of Heikkila’s inventive disclosure, and obvious to one having ordinary skill in the art, to use an alternative polymer such as a polyamide [0055] with the reasonable expectation of success. Inasmuch as the polymer and ceramic filler meet those presently claimed, it is reasonably believed that they would inherently possess the same type of bonds between ceramic filler and polymer because the properties are intrinsically linked to the chemical identity and formulation of a composition.
Claims 30-32, 36-42, 44, 45, 47, 57 and 58 are rejected under 35 U.S.C. 103 as being unpatentable over US 2011/0236699 (Heikkila) as evidenced by US 2013/0199820 (Dahlen).
Heikkila discloses an article made from a composite having a density of 1.7 to 16 g/cm3 [0026] (overlaps Applicants’ material density of 2 to 7 g/cm3) comprising:
(a) about 0.6 to 53 wt.% of a polymer inclusive of polyamide (meets Applicants’ polymer and overlaps content thereof);
(b) about 47 to 99.4 wt.% of a metal (hydro)oxide particulate filler having a density of at least 4 g/cm3 [0050] (meets Applicants’ metal material, density thereof and overlaps content thereof); and
(c) an optional interfacial modifier/coupling agent,
wherein the polymer is bonded to the metal (hydro)oxide particulate filler [0017-0022]/[0044] (meets Applicants’ requirement that the polymer be bonded to the metal filler) (e.g., abstract, [0011-0014], [0017-0018], [0026], [0031], [0049-0050], [0060], [0096], examples, claims). Heikkila discloses that the composite materials exhibit bonding between the metal (hydro)oxide filler and polymer inclusive of ionic bonds and hydrogen bonds [0017-0018]/Table 1. Tables 1-4 and Examples 1-11 [0156-0188] disclose articles meeting the presently claimed densities and materials (e.g., nylon and stainless-steel particulate or copper shot particulate) but not contents thereof.
As to claims 30-32, it would have been within the purview of Heikkila’s inventive disclosure, and obvious to one having ordinary skill in the art, to formulate materials meeting the presently claimed materials and their contents for their expected additive effect and with the reasonable expectation of success. Notably, Heikkila discloses a polymer content of about 0.6 to 53 wt.% (substantially overlaps Applicants’ polymer content) and about a metal (hydro)oxide content of about 47 to 99.4 wt.% (substantially overlaps Applicants’ metal material content). Case law holds that differences in concentrations do not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating criticality for the claimed ranges. “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation”, In re Aller, 105 USPQ 233. It would be expected that the surface of Heikkila’s exemplified metal particulates, e.g., stainless steel and copper shot particulate [0059-0060], necessarily comprise oxides.
As to claim 36, it would be expected that the surface of Heikkila’s exemplified metal particulates, e.g., stainless steel and copper shot particulate [0059-0060], necessarily comprise oxides.
As to claim 37, Heikkila’s polyamide necessarily has NH2 and COOH groups.
As to claims 38-42, Heikkila’s polyamide necessarily has hydrogen bond donor NH2 groups and hydrogen bond acceptor COOH groups.
As to claims 44 and 45, it is within the purview of Heikkila’s inventive disclosure [0017-0019], and obvious to one having ordinary skill in the art, to prepare articles wherein the polymer and metal particulate and/or coupling agent bond via ionic bonding.
As to claim 47, Heikkila’s polyamide necessarily has hydrogen bond donor NH2 groups and hydrogen bond acceptor COOH groups and, as such, would be expected to bond with the filler via coordinate bonding.
As to claim 57, Heikkila’s injection molded article per Example 6 is a lock part [0173], i.e., a movement component.
As to claim 58, Heikkila’s injection molded articles are manufactured by a similar method step of shaping via injection molding. Heikkila’s Carpenter stainless steel would be expected to have a similar BET specific surface area, e.g., 0.024 m2/g, as the Carpenter metal powder used in the present specification (Table 1).
As to claims 44 and 45, it is within the purview of Heikkila’s inventive disclosure [0017-0019], and obvious to one having ordinary skill in the art, to prepare articles wherein the polymer and metal particulate and/or coupling agent bond via ionic bonding.
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 30-32, 36-42, 44, 45, 47, 57 and 58 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of copending Application No. 18/302065 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims are directed to similarly-constituted items comprising a metal and/or ceramic material, a polymer and coupling agent governed by the same features, e.g., density, polymer bonded to filler, etc.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed August 14, 2026 have been fully considered and are persuasive in overcoming the 35 USC 102 rejection over2011/0236699 (Heikkila) and the nonstatutory double patenting rejection over US 11042125. However, upon further consideration, a new ground(s) of rejection under 35 USC is made in view of 2011/0236699 (Heikkila).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ana L Woodward whose telephone number is (571)272-1082. The examiner can normally be reached M-F 8am-5pm.
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/ANA L. WOODWARD/Primary Examiner, Art Unit 1765
