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 .
Claims 1-20 are pending and under examination.
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.
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.
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) 1-5, 9-16, and 19-20 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 Copobianco et al. (US 2017/0028589), Copobianco.
Regarding claims 1, 4, 12-13, 16, and 19-20, Copobianco discloses a method of manufacturing a substance (as in claims 12-13, 16, and 19) having an improved tensile strength for additive manufacturing (not limiting in preamble), comprising:
(a) providing a raw material (polymer) having a first tensile strength (par. 0004, 0058, the tensile strength is an inherent physical property of the material); (b) providing a filler material (par. 0059, 0064 – either the functional material or the filler can read upon this claimed filler material); and (c) cavitating, within a hydrodynamic cavitation chamber (par. 0008, 0071) the raw material and the filler material to produce a substance having a second tensile strength higher than the first tensile strength.* This is conducted by forcing the material into an orifice of the chamber (par. 0034).
*This limitation is inherent when the filler is selected as a clay (see par. 0064), boron nitride (see par. 0064), or contains carbon (par. 0064).
**The newly-added limitations describe what occurs in the hydrodynamic cavitation chamber. However, Copobianco further discloses that the hydrodynamic cavitation chamber allows for:
(i) de-agglomeration of the functional (filler) material (par. 0077) without changing the average size of the particles (or form/morphology as the particulate matter remains particulate in form – par. 0079);
(ii) homogeneously dispersing the functional material throughout the raw material (par. 0077);
(iii) disrupt aggregates of the filler/functional material (par. 0077 – “disrupt aggregates” is viewed similarly to “de-agglomeration” since if the machine will “de-agglomerate” the filler material, it will also necessarily “disrupt aggregates” thereof; par. 0084 also explains that the material can be passed through the machine several times as to fully de-agglomerate the material meaning that the aggregates would be disrupted with each pass through the machine);
and (iv) create physical entanglement between the raw material and the filler/functional material by replacing random particle-particle contact with particle-polymer contact through overcoming activation energies required for intimate mixing of the raw material and the filler material (par. 0084 explains that these same intermolecular forces must be overcome and the material can be passed through machine several times as to achieve this result).
Additionally or alternatively, it may be viewed that the tensile strength limitation is not explicitly disclosed. However, one of ordinary skill in the art would have found that the second tensile strength is higher than the first tensile strength in a case where the raw material is a polymer (as cited above) and the filler is of a higher tensile strength than the polymer in view of the teachings of Copobianco above. Accordingly, in such a case, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to have specified that the material has a second tensile strength higher than a first tensile strength (of the raw material or polymer) as is required in the claims.
Please see the “response to arguments” below for a further discussion of this rejection.
Regarding claim 2, Copobianco discloses the subject matter of claim 1, and further discloses heating the raw material and filler material to a temperature of 0-700C or 50-100C, and would be dependent upon the raw material selected (par. 0037).
It has been held that where the prior art discloses a range that overlaps with the claimed range, a prima facie case of obviousness exists. Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to have modified the above to have specified the temperature of the material is heated as required in the claim.
Regarding claim 3, Copobianco discloses the subject matter of claim 1, and further discloses applying UV light energy to cure the substance (par. 0028, 0048).
Regarding claims 5 and 15, Copobianco discloses the subject matter of claims 1/13, and further discloses that the filler can include kaolinite which is a form of halloysite (par. 0064).
Regarding claims 9 and 14, Copobianco discloses the subject matter of claims 1/13, and further discloses that the raw material is an ethylene-propylene copolymer (par. 0070).
Regarding claims 10-11, Copobianco discloses the subject matter of claim 1, and further discloses providing the raw material with a solvent and applying heat to remove the solvent (par. 0062, 0088).
Claims 6-8 and 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Copobianco (US 2017/0028589) as applied to claims 1/16 above, and further in view of Beyerle et al. (US 2019/0337220), hereinafter Beyerle.
Regarding claims 6-8 and 17-18, Copobianco discloses the subject matter of claims 1/16 as described above but does not appear to explicitly disclose that the carbon material is a single or double wall carbon nanotube with about 0.01/0.25-10% weight.
However, Beyerle discloses a filament containing a matrix material and one or more additives suitable for additive manufacturing (Beyerle, par. 0037). Beyerle further explains that the additives may include SWCNTs or MWCNTs (Beyerle, par. 0039) at a percentage of around 0.1 and 80% (with many narrower ranges also described, some of which also overlap with or fall inside of the claimed ranges).
It has been held that where the prior art discloses a range that overlaps with the claimed range, a prima facie case of obviousness exists. Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to have modified the above to have specified the concentration/weight of the material is as claimed.
Regarding the combination of Copobianco and Beyerle, both of these references involve the production of a material that used in additive manufacturing, that is comprised of similar components (a polymer and a filler).
Thus, one of ordinary skill in the art would have found the teachings of Beyerle suitable for the materials of Copobianco and would have had a reasonable expectation of success from having applied these teachings with respect to the selected materials and the concentration or weight of the selected materials. Beyerle explains that the CNTs can be added to alter structural properties of the article (Beyerle, par. 0038), similar as in Copobianco above (with respect to the filler/functional material).
Accordingly, in order to likewise alter structural properties of the formed material in Copobianco above, one of ordinary skill in the art would have found it obvious to have modified the filler above to have specified the above CNT fillers are included in an amount as is required in the claims.
Response to Arguments
Applicant's arguments filed 4/2/2026 have been fully considered but they are not persuasive.
The Declaration under 37 CFR 1.132 filed 4/2/2026 is insufficient to overcome the rejection of claims 1-20 based upon Copobianco (US 2017/0028589) as set forth in the last Office action because of the reasons as further explained below.
First, in response to the argument presented on p. 9 (see also paragraphs 6-16 of the Declaration), with respect to “the substance having a second tensile strength greater than the first tensile strength of the raw material” it is noted that the rejection is presented in the alternative. See MPEP 2112(III) where it explains that “[w]here applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103. . . . This same rationale should also apply to product, apparatus, and process claims claimed in terms of function, property or characteristic.” Thus, for any claimed function, property, or characteristic of the claimed material, this reasoning would apply. Furthermore, mere recognition of latent properties that are present in the prior art would not render the subject matter to be nonobvious [see MPEP 2145(II)].
As such, since the process claim (claim 1) claims a composition in terms of its properties/characteristics, this section applies also to the method claims as well as the product claims. Examiner has followed this guidance as provided in the MPEP. The “tensile strength” is viewed as a physical property/characteristic of the material referred to in the claims. It is not significant that the term “tensile strength” is only mentioned once in the reference, when it is indeed mentioned, and thus is clearly suggested/contemplated by the prior art. The prior art (Copobianco) discloses the materials required to produce the claimed properties as well as the specific process used to combine them (“hydrodynamic cavitation”) as is recited in the claims.
Second, with respect to “de-agglomerate the filler material without changing the morphology of the particles of the filler” – there is no evidence that the applied reference would not meet this limitation. Even if the instant application’s specification states that this condition “can” occur, there is no evidence in the prior art stating that this condition will occur from hydrodynamic cavitation. The claim recites “cavitating, within a hydrodynamic cavitation chamber, the raw material and the filler to: . . . “ (emphasis added) immediately prior to the above limitation, thus further supporting the idea that this limitation (and the others relating to the properties of the material) results from the applied prior art hydrodynamic cavitation and is not inventive over the prior art. Furthermore, Copobianco, par. 0077 states explicitly: “disrupt aggregates” which is viewed as nominally the same as “de-agglomerate” in the claim, and there is no evidence that the fillers have any change in morphology in the prior art.
Additionally, all of par. 0085, 0091, and 0122 of the Instant Specification describe morphology in terms of what it “can” mean. Thus, no special definition applies – the claim terms are given their plain and ordinary meaning unless the specification clearly sets forth a definition that would override the plain and ordinary meaning. Further, there is no requirement of any “core-shell” material in the claims. The plain and ordinary meaning of the term “morphology” in this context broadly relates to the structure or form. It is not as narrow as argued in the Declaration or remarks.
In response to the argument on p. 10 (referencing the Davey Declaration at paragraph 9), it is significant that the applied prior art does not teach “merely combining the materials.” Instead, the applied prior art reference teaches combining the materials in the same specific manner as in the claimed invention (by use of the same “hydrodynamic cavitation”). The applied materials in the later claims can be applied to this independent claim which is more of a generic independent claim as compared to the later product “species” claims. There are no claim limitations regarding the amount of loading of the filler material in any instance, meaning that this Declaration is not fully commensurate in scope with the claimed invention with respect to this point.
Regarding the arguments presented on p. 11, Ulus is technically not even relevant to the claimed invention: it uses a different mixing process that is distinct from the claimed mixing process and inferior therefrom as described in Copobianco, par. 0077. Additionally, the samples in Doshisha that map to the ones applied to the species claim with EPDM rubber does show the expected change in properties. Even if the Declaration opines that the cavitation of a raw material and a filler material would not be expected to result in a composite having a tensile strength higher than that of a raw material alone, this feature still is something that would be discovered upon performing the steps in Copobianco, in routine experimentation, without a modification of what is disclosed in Copobianco. As is noted in MPEP 2145(II), “mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention.”
Regarding the arguments presented on p. 12-13, the same reasoning applies as above. Mere recognition of latent properties present in the prior art is not considered to render the subject matter nonobvious. Since recognizing the “morphology” is also a recognition of the latent physical properties resulting after hydrodynamic cavitation (present in the prior art), it would be considered to be a mere recognition of the latent property already present in the applied reference. The Davey Declaration is not given evidentiary weight specifically when it comes to patent claim interpretation under the BRI standard, and with respect to how the term “morphology” should be interpreted since it is not limited in this way – it is only limited by its plain and ordinary meaning.
In both the reference and the claims, the particles do decrease in size when subjected to hydrodynamic cavitation, meaning that such a transformation would be within the scope of “without changing its morphology.” The shape wouldn’t change – the particles would just be smaller in size as they were previously. Examiner disagrees that this term is narrower in its BRI, as is argued by Applicant. Instead, as drafted, this claim is very broad (and thus can be met by the broad teachings of the prior art).
Regarding the arguments presented on p. 14-15 with respect to “physical entanglement between the raw material and the filler material,” it is clear that what occurs in the prior art reference is “physical entanglement” as the hydrodynamic cavitation device mixes the materials together.
Clearly, the filler becomes more dispersed in the raw material, from the use of the hydrodynamic cavitation device, thus resulting in more contact between the filler particles and the polymer. Furthermore, without overcoming activation energy (heat of mixing), there would not be mixing that occurs – but mixing is taught in the prior art, and thus, the proper energies of mixing must have been also met. The degree of mixing can be improved by increasing the number of passes through the machine as previously outlined.
Regarding the arguments presented on p. 16, the pertinent portion of claim 16 recites “the substance having a uniform dispersion of the carbon material that prevents light scattering . . . “; this limitation would be interpreted under BRI to mean that any substance having a uniform dispersion of the carbon material indeed would also “prevent light scattering” as a result of the “uniform dispersion of carbon material.”
Since the hydrodynamic cavitation is claimed to result in a homogenous dispersion of the material (“homogeneously disperse the filler material in the raw material”), the result of said homogenous dispersion would be considered met by the applied reference as the mere recognition of any latent property in the prior art would not support patentability.
Regarding the arguments presented on p. 17, it is not material to patentability if the secondary reference, Beyerle, teaches “cavitation” at all either explicitly or implicitly, when the primary reference, Copobianco, does teach this limitation, and teaches it extensively. Accordingly, the rejections are maintained as outlined above.
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 ANDREW D GRAHAM whose telephone number is (469)295-9232. The examiner can normally be reached Monday - Friday 7:30AM-4:00PM (CST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christina Johnson can be reached at (571) 272-1176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW D GRAHAM/Primary Examiner, Art Unit 1742
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