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
Applicant’s election of the article comprising Species A with Sub-Species I (claim 36) and Sub-Species II (claim 42) in the reply filed on May 04, 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 33-35, 43, 46 and 48-56 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim.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 December 19, 2025.
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, lines 1 and 10-12, it is unclear whether the various “between’ ranges include both end points, or just the range in between.
In claim 30, it is unclear whether “reinforcement” refers to a reinforcing agent. Moreover, it is unclear how such distinguishes over the antecedently-recited metal and/or ceramic materials.
In claims 30 and 58, for the embodiment wherein both a diluent and a plasticizer are present, it is unclear whether the “between 0 and 5%” is governing their total combined amount.
In claims 31, 32 and 58, it is unclear whether the “between’ ranges include both end points, or just the range in between.
In claim 36, it is unclear what is meant by “implied in the hydrogen, coordinate and ionic bonds with the polymer (4) and/or the coupling agent (3)”.
In claim 36, there is no express antecedent basis for “the hydrogen, coordinate and ionic bonds with the polymer (4) and/or the coupling agent (3)”.
In claims 37, 41 and 44, line 2, the expression “NHx” is indefinite in that the subscript x is not defined.
In claim 38, there is no express antecedent basis for “one bond is a hydrogen bond” as it relates to the polymer. Notably, claim 30 only qualifies the coupling agent, not the polymer, as “being respectively bonded …by one or more bonds….ionic bond”.
In claim 38, line 4, it is unclear what is meant by the confusing language “establishing with a hydroxide and oxide group at the surface of the filler (2)”. This is particularly so given that there is no express antecedent basis for a filler having hydroxide and oxide groups on its surface.
In claim 40, there is no express antecedent basis for “acceptor”.
In claim 44, there is no express antecedent basis for “one bond is an ionic bond” as it relates to the polymer. Notably, claim 30 only qualifies the coupling agent, not the polymer, as “being respectively bonded …by one or more bonds….ionic bond”.
In claim 44, there is no express antecedent basis for either “an anion” as it relates to the filler or a coupling agent .
In claim 47, there is no express antecedent basis for “one bond is a coordinate bond” as it relates to the polymer. Notably, claim 30 only qualifies the coupling agent, not the polymer, as “being respectively bonded …by one or more bonds….ionic bond”.
In claim 57, it is unclear what is meant by “it concerns”. Moreover, there is no express antecedent basis for “the external part or of the horological component”.
In claim 58, it is unclear how the recited process would define the embodiment per claim 30 which includes the optional diluent and/or plasticizer. That is, the optional diluent and/or plasticizer per claim 30 is not included in the optional material listing per line 3.
In claim 58, there is a question or doubt as to whether the features introduced by the narrower language “preferably 2 m2/g, more preferably 5 m2/g”, are merely exemplary of the remainder of the claim, and therefore not required, or (b) required features of the claims.
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.
(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 30-32, 37-42, 57 and 58 are rejected under 35 U.S.C. 102(a1) and (a2) as being anticipated by US 2011/0236699 (Heikkila) as evidenced by US 2013/0199829 (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 between 2 and 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 particulate 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 particulate [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).
As to claim 30, Heikkila expressly sets forth articles per Tables 1-4 and Examples 1-11 [0156-0188] meeting the presently claimed article in terms of the materials added and their densities. Heikkila’s Example 6 [0171-0173] comprises an article having a density of 4.2 g/cm3 (meets Applicants’ material density of between 2 and 7 g/cm3) made from a composite comprising (a) 48.14 wt.% nylon 6,12 (Zytel 158L) (meets Applicants’ polymer and content thereof), (b) 50.00 wt.% stainless steel particulate (Carpenter 316L) necessarily having a density of least 4 g/cm3 [0050] (meets Applicants’ metal material, density thereof and content thereof) and (c) 1.86 wt.% of a zirconate coupling agent (Ken-React NZ 12 [0159]) (meets Applicants’ coupling agent and content thereof), wherein the polyamide would necessarily be bonded to the stainless steel particulate [0096]. Heikkila’s Example 8 [0176-0179] comprises an article having a density of 6.12 g/cm3 (meets Applicants’ material density of between 2 and 7 g/cm3) made from a composite comprising (a) 33.86 wt.% nylon 6,12 (Zytel 158L) (meets Applicants’ polymer and content thereof), (b) 66.14 wt.% copper shot particulate (155A) having a density of 4/5 to 5.5 g/cm3 [0049] (meets Applicants’ metal material, density thereof and content thereof) and (c) 1.86 wt.% of a titanate coupling agent (Ken-React KR-9S per Dahlen [0156]) (meets Applicants’ coupling agent and content thereof), wherein the polyamide would necessarily be bonded to the copper shot particulate [0096].
As to claims 31 and 32, Heikkila’s Example 8 comprises 66.14 wt.% copper shot particulate and 33.86 wt.% polyamide.
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 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).
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 36 and 47 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 2011/0236699 (Heikkila) as evidenced by US 2013/0199829 (Dahlen) described hereinabove.
As to claim 36, it would be expected that Heikkila’s the surface of the exemplified metal particulates, e.g., stainless steel and copper shot particulate [0059-0060], necessarily comprise at least oxides.
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.
It is reasonably believed that Heikkila’s exemplified materials inherently meet the claimed features. In the alternative, it is within the purview of Heikkila’s’ inventive disclosure [0047-0049]/[0055-0066]/[0017-0019], and obvious to one having ordinary skill in the art, to formulate materials from metal particulates having surface oxides, hydroxides and/or electronic vacancies and bond the polymer and metal particulates via coordinate bonding with the reasonable expectation of success.
Claim Rejections - 35 USC § 103
Claims 44 and 45 rejected under 35 U.S.C. 103 as being unpatentable over US 2011/0236699 (Heikkila) as evidenced by US 2013/0199829 (Dahlen) described hereinabove.
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 rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. 11,042,125. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims are directed to similarly-constituted articles comprising a metal and/or ceramic material, a polymer governed and a coupling agent having the same features, e.g., density, polymer bonded to filler, etc.
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.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANA L. WOODWARD/Primary Examiner, Art Unit 1765
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