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.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114 was filed in this application after appeal to the Patent Trial and Appeal Board, but prior to a decision on the appeal. Since this application is eligible for continued examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on 11/12/2025 has been entered.
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.
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 11/12/2025 have been fully considered but they are not persuasive. Applicant’s arguments will be addressed below.
First, 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.” As such, since the process claim claims a composition in terms of its properties/characteristics, this section applies also to the method claims. Examiner has followed this guidance as provided in the MPEP. The “tensile strength” is a physical property/characteristic of the material referred to in the claims. The prior art discloses the materials required to produce the claimed properties.
Second, Applicant cites two references from the IDS in support of the argument. These research papers describe different processes from the claimed (and reference) process of mixing which occurs by hydrodynamic cavitation. Furthermore, both of these research papers relate to specific compounds, meaning that compounds may or may not be readable upon a given claim, since some claims are broader than others, such as the claim 1 which does not require a specific material and is the only pending method/process claim set.
Applicant first refers to Fig. 10 of Doshisha (Japanese Patent Publication previously cited in an IDS) which relates to EPDM/clay composites. In response, Examiner points out that in any case, all of samples 1-3 (including both the raw material EPDM and the clay filler as mapped to the claimed invention) have a higher tensile strength than the EPDM rubber alone, which would tend to support the Examiner’s position that the increase in tensile strength is inherent in mixing, or alternatively, would have been obvious to one of ordinary skill in the art, in routine experimentation as to find that the tensile strength when these components were mixed.
Applicant then refers to Ulus. Ulus refers specifically to an epoxy/CNT composite material. Furthermore, Ulus explains: “[t]his situation (of reduced tensile strength at higher loading of filler) can be associated to the fact that dispersion of nanoparticle gets worse, and more gas bubbles, defects, and excessive stress concentration points are easy to form into the composites” and “[t]his situation is possible due to poor dispersion of nanoparticles which result in formation of agglomerates . . . “ (see p. 40-41 of the reference, describing the Figures cited by Applicant).
Ulus also uses an ultrasonic mixing technique, distinct from the claimed (and in the cited prior art) hydrodynamic cavitation. However, Copobianco (par. 0077) explains “[c]onventional technologies, such as milling, can break aqueous emulsions, entrap bubbles, and breakdown long chain polymers, thereby producing inferior product material.” The “inferior product material” would presumably have a lower tensile strength than what is desired. Therefore, Ulus’s results cannot be directly relied upon to support the idea that the tensile strength is or is not improved, since it uses a distinct mixing technique from Copobianco, which recognizes these issues present in Ulus, and proposes a solution for them by using a different mixing technique (hydrodynamic cavitation) that both deagglomerates and disperses the filler as to achieve better mixing of the polymer/filler. Copobianco (par. 0084) also suggests using more passes through the machine for smaller filler particles, such as carbon nanotubes which would have a dimension in terms of “nanometers” and would seem to support the idea that multiple passes through the machine would cause the physical properties to become more as designed.
Applicant also argues that there is no evidence that “all composites of polymer and boron nitride, or of polymer and carbon material, are of higher tensile strength than the individual components.” However, this is not even required to meet the claim as there is no requirement that “all individual components” have a higher tensile strength than the composite. The carbon material and boron nitride would have a higher tensile strength than the polymer does, but the polymer would have a lower tensile strength than both the carbon material/boron nitride and the resulting composite.
Additionally, Copobianco does indeed “provide a raw material having a first tensile strength” – the polymer. Copobianco also explicitly uses a hydrodynamic cavitation chamber, which is identical to the claimed invention. There would not be any apparent difference between the manipulative steps required in the method claims and those described in the prior art.
Additionally, claim 13 is a product claim, which does not depend upon the process upon which it is produced and specifically requires a clay filler. See MPEP 2113. Claims 16 and 19 are distinct product claims, and require specific fillers of a carbon material and boron nitride. In these product claims, the product is only limited by the structure implied by the recited steps, but since the recited steps are also present in method claim 1, this would also mean that these claims are met. Accordingly, the rejections are maintained.
Conclusion
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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/ANDREW D GRAHAM/Primary Examiner, Art Unit 1742