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Claims 25-28, 33-36, 38-39 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 9/23/25.
Applicant’s election without traverse of Group I, claims 1-3, 12-13, 15-17 and 19-20, in the reply filed on 9/23/25 is acknowledged.
Priority
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 63/164679, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. The provisional application filed on 3/23/21 does not appear to provide support for any of the features set forth in instant claim 20. Instant Claim 20 is drawn to the use of two thermoplastic materials that are immiscible with one another. This concept is supported by the instant specification and the PCT filing at least in paragraphs 36, 41, and 71. The provisional application does not have paragraphs corresponding to paragraphs 36, 41, and 71 of the PCT specification. The provisional application does not seem to disclose the use of two thermoplastics that are chosen to be immiscible in one another. As this is the case, the effective filing date of claim 20 is considered to be 3/22/22 as the instantly claimed subject matter does not appear to be adequately disclosed previously.
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 16 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.
The term “substantially non-agglomerated” in claim 16 is a relative term which renders the claim indefinite. The term “substantially non-agglomerated” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear what level of non-agglomeration is necessary for the collection of particles to be considered ‘substantially non-agglomerated’ as claimed. The specification does not set forth a degree of agglomeration that is considered to be ‘substantially non-agglomerated’, and thus does not reasonably convey to those of ordinary skill in the arts the scope of the claim. As this is the case, the scope of the claim is indefinite.
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.
Claim(s) 1-3, 12-13, 15-17 and 19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zheng in WO2019227082.
Regarding Claim 1: Zheng teaches a composition comprising a polymer material (polymer matrix) and a plurality of piezoelectric particles that are uniformly distributed (dispersed) throughout the polymer matrix (See Page 16, Lines 27-29). Zheng teaches that the piezoelectric particle is provided with a functionalization moiety (a material that is a polymer precursor as it may be polymerized with said polymer matrix) attached to its surface covalently (meeting limitation 2). Zheng teaches that this functionalization moiety may then polymerize or crosslink the monomers of the polymer matrix (See Page 18, Lines 22-28). The polymerization and crosslinking of a polymer represents the creation of covalent bonds under conditions of polymerization (meeting limitation 2-4).
Zheng teaches that the polymer material may be a thermoplastic polymer (See Page 18, Line 21).
Intended use limitations are noted in the claims and set forth that ‘the composition is extrudable and formable into a self-standing three-dimensional structure upon being extruded’. Intended use limitations are given patentable weight on the basis of the material’s capability of performing the intended use and do not require the prior art to actually perform said intended use. The material of Zheng is of the same composition and structure as that which is claimed, being a thermoplastic polymer having piezoelectric particles entrained therein. As the composition and structure of the two materials are the same, they are inherently capable of the same use. Zheng notes the capability of this material to be used in various additive manufacturing techniques including fused filament fabrication, wherein the described build material is provided as a filament that is extruded (See Page 21, Line 17-20) and a free standing structure is built therefrom (See Figures).
Regarding Claim 2 and 19: As is discussed above, Zheng teaches that the composition may comprise a thermoplastic polymer and the piezoelectric particles are covalently bonded to the polymer through a functionalization moiety (See Page 18, Lines 22-28).
Regarding Claim 3: As is discussed above, Zheng teaches that the polymer material comprises at least one polymer precursor, in terms of the functionalization moieties which are described as polymerizing with or crosslinking the polymeric matrix. The functionalization moieties are reactive with the piezoelectric particles and are covalently attached to their surface (See Page 18, Lines 22-28). The polymerization thereof occur under the conditions set forth by Zheng, wherein the particles with said functionalization moieties are provided with said polymer.
Regarding Claim 12 and 15: Zheng teaches the use of the material as a feedstock for filaments in a fused filament fabrication technique (See Page 21, Lines 8-20). In such an application, the polymer and piezoelectric particles collectively define the form factor of a composite filament.
Regarding Claim 13 and 16: Zheng teaches that the piezoelectric particles may be uniformly distributed throughout the polymer in the form of a composite filament (See Page 16, Line 29 and discussion of claim 12 above). The uniform distribution of the piezoelectric particles in weight percentages as low as 10 wt% (See Page 17, line 5) represents a substantially non-agglomerated distribution as agglomeration would represent a non-uniform distribution.
Regarding Claim 17: Zheng shows by way of example that suitable piezoelectric particles may have a size of 220.9 nm falling squarely within the claimed range of particle size (See Page 41, Lines 11-15).
Claim Rejections - 35 USC § 103
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zheng in WO2019227082 as applied to claim 1 and 19 above, and further in view of Sinha in US20210206050.
Zheng teaches a composite material comprising a thermoplastic polymer matrix and piezoelectric dispersed throughout said polymer. The piezoelectric particles have functionalization moieties covalently bonded to their surface, which in turn polymerize with the thermoplastic or serve as a crosslinker, creating covalent bonds with said thermoplastic. Zheng teaches that the composite material may be used in additive manufacturing processes such as in fused filament fabrication (FFF), wherein the composite material is provided as a feedstock filament (See Above).
Zheng teaches that the composite materials may be in the form of a filament, but is silent as to providing a second thermoplastic polymer that is immiscible with the first thermoplastic polymer.
However, Sinha also teaches filaments for fused filament fabrication and notes that a common issue in this additive manufacturing technique is the creation of voids between adjacent filament beads during the build (See Figure 2). The creation of these voids reduces the strength of the material created (See Paragraph 2). Sinha teaches that these voids can be prevented by forming a coating layer on the surface of the filament (See Figure 3). Sinha teaches that the base polymer and coating polymer may both be thermoplastic materials (See Paragraphs 25-26). Sinha teaches that the base polymer and coating polymer may be immiscible to prevent phase separation and promote fusion of the base polymer layers with one another (See Paragraph 24). Those of ordinary skill in the art would have found it obvious to use the process of Sinha to apply a second thermoplastic polymer that is immiscible with the first thermoplastic polymer as a coating to the filaments of Zheng. Those of ordinary skill in the art would be motivated to provide such a coating to the filaments of Zheng in order to prevent the creation of voids during the additive manufacturing process.
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 1-3, 12-13, 15-17, and 19-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 and 7-8 of U.S. Patent No. 12605885. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims are generally drawn to an overlapping range of compositions, comprising piezoelectric particles, disposed in thermoplastic materials and having one or more covalent bonds between the piezoelectric particle and the thermoplastic polymer. The correspondence between the patented claims and the instant claims is shown in the chart below. The claims of this patent correspond to column labeled P885 (eg-patented claims 1 and 5 teach the features of instant claim 1).
Claims 1-2, 12-13, 15-17, and 19-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5-6 and 11 of U.S. Patent No. 12358209. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims are generally drawn to an overlapping range of compositions, comprising piezoelectric particles, disposed in thermoplastic materials and having one or more bonds between the piezoelectric particle and the thermoplastic polymer. The correspondence between the patented claims and the instant claims is shown in the chart below. The claims of this patent correspond to column labeled P209 (eg- patented claims 1 teaches all the features of instant claim 1).
Claim 1-2, 12-13, 15-17, and 19-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 6 and 12 of copending Application No. 19237725 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims are generally drawn to an overlapping range of compositions, comprising piezoelectric particles, disposed in thermoplastic materials and having one or more covalent bonds between the piezoelectric particle and the thermoplastic polymer. The correspondence between the copending claims and the instant claims is shown in the chart below. The claims of this application correspond to column labeled A725 (eg- copending claim 1 teaches all the features of instant claim 1). It is noted that analysis of copending claims was performed on the claims as set forth in the pg-pub.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 1-3, 12-13, 15-16 and 19-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 4, 6-7, and 9-11 of copending Application No. 18899826 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims are generally drawn to an overlapping range of compositions, comprising piezoelectric particles, disposed in thermoplastic materials and having one or more covalent bonds between the piezoelectric particle and the thermoplastic polymer. The correspondence between the copending claims and the instant claims is shown in the chart below. The claims of this application correspond to column labeled A826 (eg- copending claim 1 and 10 teach all the features of instant claim 1). It is noted that analysis of copending claims was performed on the claims as set forth in the pg-pub.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-3, 12-13, 15-17 and 19-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 5-7, and 9-10 of copending Application No. 18052123 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims are generally drawn to an overlapping range of compositions, comprising piezoelectric particles, disposed in thermoplastic materials and having one or more covalent bonds between the piezoelectric particle and the thermoplastic polymer. The correspondence between the copending claims and the instant claims is shown in the chart below. The claims of this application correspond to column labeled A123 (eg- copending claim 1 and 7 teach all the features of instant claim 1). It is noted that analysis of copending claims was performed on the claims as set forth in the pg-pub.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-3, 12-13, 15-17, and 19-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7-8, 11-12, 14 and 16 of copending Application No. 17995921 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims are generally drawn to an overlapping range of compositions, comprising piezoelectric particles, disposed in thermoplastic materials and having one or more covalent bonds between the piezoelectric particle and the thermoplastic polymer. The correspondence between the copending claims and the instant claims is shown in the chart below. The claims of this application correspond to column labeled A921 (eg- copending claim 1 and 14 teach all the features of instant claim 1). It is noted that analysis of copending claims was performed on the claims as set forth in the pg-pub.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-3, 12-13, 15-17 and 19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 5, 9, and 11-12 of copending Application No. 17995917 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims are generally drawn to an overlapping range of compositions, comprising piezoelectric particles, disposed in thermoplastic materials and having one or more covalent bonds between the piezoelectric particle and the thermoplastic polymer. The correspondence between the copending claims and the instant claims is shown in the chart below. The claims of this application correspond to column labeled A917 (eg- copending claim 1 and 9 teach all the features of instant claim 1). It is noted that analysis of copending claims was performed on the claims as set forth in the pg-pub.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-3, 12-13, 15-17 and 19-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 6, 9-10 and 12 of copending Application No. 17995557 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims are generally drawn to an overlapping range of compositions, comprising piezoelectric particles, disposed in thermoplastic materials and having one or more covalent bonds between the piezoelectric particle and the thermoplastic polymer. The correspondence between the copending claims and the instant claims is shown in the chart below. The claims of this application correspond to column labeled A557 (eg- copending claim 1 teaches all the features of instant claim 1). It is noted that analysis of copending claims was performed on the claims as set forth in the pg-pub..
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Instant Claim
Features
P885
A725
P209
A826
A123
A921
A917
A557
1
Poly+PZ+bond type
1,5
1
1
1,10
1,7
1,14
1,9
1
2
thermop + bond type
4,5
1
1,6
7,10
5,7
8,14
5,9
1
3
polym or precur +reactive
4,5
-
-
7,10
5,7
14
5,9
1,6
12
form- fila,pellet etc
2
2
2
3
2
7
2
2
13
"uniformly dispersed'
7
4
3
11
9
11
11
9
15
form-filament
3
3
2
4
2
7
2
2
16
"subst non agglom"
7
4
3
11
9
11
11
9
17
size 10 micron or less
8
6
5
-
10
12
12
10
19
thermop
4
1
6
6
6
8
5
1
20
immisc + thermop
1,4
12
11
1,6
1,6
16
-
12
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW E HOBAN whose telephone number is (571)270-3585. The examiner can normally be reached M-F 9:30am-6:00pm.
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, 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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/Matthew E. Hoban/Primary Examiner, Art Unit 1734
Prosecution Insights