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 .
Claim Rejections - 35 USC § 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.
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.
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Dekam et al. (WO 2020/081066) in view of Rudisill et al. (US 2019/0030800).
Regarding claims 1, 2, and 5, Dekam et al. teaches a multi-fluid kit for 3D printing comprising a fusible fluid (fusing agent) comprising water and a radiation absorber, wherein the radiation absorber is capable of absorbing electromagnetic radiation to produce heat; and a detailing fluid comprising a detailing agent (¶12, 43). The fusible fluids and detailing fluids can be selected to give the respective fluids good fluid jetting performance and thus can include a liquid vehicle (solubilizing agent) (¶53). The liquid vehicle can include from about 1% to about 50% by weight of a co-solvent or co-solvents, from 0.01% to about 5% by weight of a surfactant, about 0.5% to about 3% by weight of a dispersant, and the balance of the liquid vehicle is water (based on these amounts, the minimum amount of water present is 42% by weight, calculated by Examiner; 100-50-5-3 = 42) (¶53). The co-solvents can be an aromatic alcohol and tetraethylene glycol (organic cosolvent; represents polyethylene glycol as tetra is more than one) (¶56).
Dekam et al. does not specifically teach that the aromatic alcohol is benzyl alcohol. However, Rudisill et al. teaches a composition for 3D printing comprising a crystalline or semi-crystalline polymer powder build material that may be a polyamide (¶22) and a melt flow property reduction agent that is a solvent of phenylmethanol (benzyl alcohol) (¶36, 37). Dekam et al. and Rudisill et al. are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of compositions useful in 3D printing. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to use phenylmethanol, as taught by Rudisill et al., as the aromatic alcohol in the solvent, as taught by Dekam et al., and would have been motivated to do so in order to help maintain the temperature of the crystalline or semi-crystalline build material (¶37).
Regarding claims 3 and 4, Dekam et al. teaches that the total amount of co-solvents in the liquid vehicle is from about 1% to about 50% by weight. However, Dekam et al. does not teach that, in the liquid vehicle (solubilizing agent), the aromatic alcohol/benzyl alcohol is present in from about 10% to about 40% by weight, or that the organic cosolvent/tetraethylene glycol is present in from about 20% to about 70% by weight. However, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here 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, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05 II.A. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to optimize the amounts of benzyl alcohol and polyethylene glycol in the solubilizing agent through routine experimentation, and would have been motivated to do so to ensure the proper solubility based on the other components used in the 3D printing composition and process.
Claims 6-12 are rejected under 35 U.S.C. 103 as being unpatentable over Dekam et al. (WO 2020/081066) in view of Rudisill et al. (US 2019/0030800).
Regarding claims 6, 8, 9, and 11, Dekam et al. teaches a three-dimensional printing kit comprising a powder bed material that includes polymer particles, and a fusible fluid including water and a radiation absorber, wherein the radiation absorber is capable of absorbing electromagnetic radiation to produce heat (¶11, 43). The polymer particles can include nylon 6, nylon 9, nylon 11, nylon 12, nylon 66, and nylon 612 (polyamide polymer particles) (¶11). The fusible fluids and detailing fluids can be selected to give the respective fluids good fluid jetting performance and thus can include a liquid vehicle (solubilizing agent) (¶53). The liquid vehicle can include from about 1% to about 50% by weight of a co-solvent or co-solvents, from 0.01% to about 5% by weight of a surfactant, about 0.5% to about 3% by weight of a dispersant, and the balance of the liquid vehicle is water (based on these amounts, the minimum amount of water present is 42% by weight, calculated by Examiner; 100-50-5-3 = 42) (¶53). The co-solvents can be an aromatic alcohol and tetraethylene glycol (organic cosolvent; represents polyethylene glycol as tetra is more than one) (¶56).
Dekam et al. does not specifically teach that the aromatic alcohol is benzyl alcohol. However, Rudisill et al. teaches a composition for 3D printing comprising a crystalline or semi-crystalline polymer powder build material that may be a polyamide (¶22) and a melt flow property reduction agent that is a solvent of phenylmethanol (benzyl alcohol) (¶36, 37). Dekam et al. and Rudisill et al. are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of compositions useful in 3D printing. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to use phenylmethanol, as taught by Rudisill et al., as the aromatic alcohol in the solvent, as taught by Dekam et al., and would have been motivated to do so in order to help maintain the temperature of the crystalline or semi-crystalline build material (¶37).
Dekam et al. teaches that the total amount of co-solvents in the liquid vehicle is from about 1% to about 50% by weight. However, Dekam et al. does not teach that, in the liquid vehicle (solubilizing agent), the aromatic alcohol/benzyl alcohol is present in from about 10% to about 40% by weight, more specifically about 10% to about 20% by weight, or that the organic cosolvent/tetraethylene glycol is present in from about 20% to about 70% by weight. However, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here 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, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05 II.A. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to optimize the amounts of benzyl alcohol and polyethylene glycol in the solubilizing agent through routine experimentation, and would have been motivated to do so to ensure the proper solubility based on the other components used in the 3D printing composition and process.
Regarding claim 7, the fusible fluid and the liquid vehicle (solubilizing agent) are mixed together. Therefore, what one contains, so does the other.
Regarding claim 10, tetraethylene glycol has a molecular weight of 194 g/mol, which is “about 200” as claimed.
Regarding claim 12, Dekam et al. teaches a 3D printed article comprising fused layers of the powder bed material with the components of the fusing fluid (the radiation absorber and benzyl alcohol by nature of being part of the liquid vehicle) being present within the fused layers (¶13).
Claims 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Dekam et al. (WO 2020/081066) in view of Rudisill et al. (US 2019/0030800).
Regarding claims 13-15, Dekam et al. teaches a system for three-dimensional printing comprising a build platform supporting a powder bed of build material powder (¶23); a fusible fluid including water and a radiation absorber, wherein the radiation absorber is capable of absorbing electromagnetic radiation to produce heat (¶11, 43); a liquid vehicle (solubilizing agent) comprising about 1% to about 50% by weight of a co-solvent or co-solvents, such as an aromatic alcohol and tetraethylene glycol (organic cosolvent; represents polyethylene glycol as tetra is more than one) (¶56), and the balance of the liquid vehicle is water (¶53); and an electromagnetic energy source positioned on the powder bed (¶22, 23). The fusible fluid, containing the liquid vehicle, can be selectively applied to the powder bed material and layers of the powder bed material can be fused to form a 3D printed article (¶38). The powder bed of build material powder comprises polymer particles that can include nylon 6, nylon 9, nylon 11, nylon 12, nylon 66, and nylon 612 (polyamide polymer particles) (¶11).
Dekam et al. does not specifically teach that the aromatic alcohol is benzyl alcohol. However, Rudisill et al. teaches a composition for 3D printing comprising a crystalline or semi-crystalline polymer powder build material that may be a polyamide (¶22) and a melt flow property reduction agent that is a solvent of phenylmethanol (benzyl alcohol) (¶36, 37). Dekam et al. and Rudisill et al. are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of compositions useful in 3D printing. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to use phenylmethanol, as taught by Rudisill et al., as the aromatic alcohol in the solvent, as taught by Dekam et al., and would have been motivated to do so in order to help maintain the temperature of the crystalline or semi-crystalline build material (¶37).
Dekam et al. teaches that the total amount of co-solvents in the liquid vehicle is from about 1% to about 50% by weight. However, Dekam et al. does not teach that, in the liquid vehicle (solubilizing agent), the aromatic alcohol/benzyl alcohol is present in from about 10% to about 40% by weight. However, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here 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, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05 II.A. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to optimize the amount of benzyl alcohol in the solubilizing agent through routine experimentation, and would have been motivated to do so to ensure the proper solubility based on the other components used in the 3D printing composition and 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 1-4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of U.S. Patent No. 12,466,127 (“the ‘127 patent”) in view of Dekam et al. (WO 2020/081066).
Regarding claims 1 and 2, claim 1 the ‘127 patent teaches a multi-fluid kit for three-dimensional (3D) printing comprising a fusing agent including an electromagnetic radiation absorber (the function of which is to absorb radiation energy and convert it to heat) and a first aqueous vehicle; and a surface treating agent (solubilizing agent) including a second aqueous vehicle, a surfactant, and benzyl alcohol dissolved in the second aqueous vehicle. Claims 3 and 4 of the ‘127 patent teach that the second aqueous vehicle is water and polyethylene glycol (organic cosolvent). The ‘127 patent defines “a first aqueous vehicle” as including water alone, water and a non-aqueous solvent with no other components, or that other components such as co-solvents or humectants may be included (Col. 17, lines 30-45). However, in any case, water is included as part of the first aqueous vehicle.
The ’127 patent does not teach that the multi-fluid kit contains a detailing agent comprising a detailing compound. However, Dekam et al. teaches a multi-fluid kit for 3D printing comprising a fusible fluid (fusing agent) comprising water and a radiation absorber, wherein the radiation absorber is capable of absorbing electromagnetic radiation to produce heat; and a detailing fluid comprising a detailing agent (¶12, 43). Dekam et al. and the ‘127 patent are analogous art because they are from the same field of endeavor as that of the instant invention, namely compositions used in 3D printing. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to add a detailing fluid comprising a detailing agent, as taught by Dekam et al., to the multi-fluid kit, as taught by the ‘127 patent, and would have been motivated to do so in order to increase the selectivity between the fused and unfused portions of the powder bed (contains the polymer that is used for the printing) by reducing the temperature of the powder around the edges of the portion to be fused (¶51).
Regarding claim 3, claim 5 of the ‘127 patent teaches that the solvent for benzyl alcohol (the polyethylene glycol/organic cosolvent) is present in an amount ranging from about 20 wt % to about 60 wt % based on the total weight of the surface treating agent.
Regarding claim 4, claim 2 of the ‘127 patent teaches that the benzyl alcohol is present in an amount ranging from about 2 wt % to about 20 wt % based on a total weight of the surface treating agent.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANGELA C SCOTT whose telephone number is (571)270-3303. The examiner can normally be reached Monday-Friday, 8:30-5:00, EST.
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/ANGELA C SCOTT/Primary Examiner, Art Unit 1767