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 with traverse of the item species comprising a ceramic filler and a polyamide in the reply filed on December 19, 2026 is acknowledged. The traversal is on the ground(s) that a search of all the claims would not impose a serious burden on the Office. This is not found persuasive because contrary to Applicants’ contention, the search fields for the various combinations of materials are not co-extensive (i.e., the metal/ceramic filler and the polymer per claim 1 are generic and each encompasses a multiplicity of patentably distinct species). It is maintained that the inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies). Moreover, applicants have not submitted evidence or identified such evidence now of record showing the inventions to be obvious variants or clearly admitted on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
The requirement is still deemed proper and is therefore made FINAL.
Claims 6-9 and 12-27 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim.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 1-5, 10, 11, 28 and 29 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 1, it is unclear whether the density recitation “between 2 and 7 g/cm3” includes both end points or just the range in between said end points.
In claim 1, it is unclear whether “reinforcement” refers to a reinforcing agent or to a structural element of the item, e.g., a dial or gear.
In claim 1, line 19, the expression “NHx” is indefinite in that the subscript x is not defined.
In claim 10, line 3, the expression “NHx” is indefinite in that the subscript x is not defined.
In claim 29, it is unclear how the recited process would define the embodiment per claim 1 which includes the optional extender and/or plasticizer. That is, the optional extender and/or plasticizer per claim 1 is not included in the optional material listing per line 4.
In claim 29, line 24, the expression “NHx” is indefinite in that the subscript x is not defined.
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 1-5, 10, 11, 28 and 29 are rejected under 35 U.S.C. 102(a1) and (a2) as being anticipated by US 2011/0236699 (Heikkila) as evidenced by US 2013/0199820 (Dahlen).
Heikkila discloses a work piece item 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 a polyamide (meets Applicants’ polymer containing units –[(C=O)NH]- and overlaps content thereof);
(b) about 47 to 99.4 wt.% of a metal filler having a density of at least 4 g/cm3 [0050] (meets Applicants’ metallic filler, density thereof and overlaps content thereof);
and
(c) about 0.002 to 4.0 wt.% of an interfacial modifier,
wherein the polymer is bonded to the metal filler by van der Waal’s forces inclusive of hydrogen bonding [0018] (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 6-11, claims). Specifically, the polyamides, implicitly bearing NH2 and COOH groups and multiple amide units –[(C=O)NH]-, meet the presently claimed NHx hydrogen bond donor adjacent to a C=O hydrogen bond acceptor and –[(C=O)NH]- molar content of at least 1% molar.
As to claim 1, Heikkila expressly sets forth Examples 6-11 [0171-0188] directed to injection molded articles meeting the presently claimed item in terms of the materials added and their densities. Illustratively, Example 8 [0177-0179] comprises an injection molded 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 containing units –[(C=O)NH]- and content thereof), (b) 66.14 wt.% copper shot/155A having a density of 4.5 to 5.5 g/cm3 [0049] (meets Applicants’ metallic filler, density thereof and content thereof) and (c) 0.40 pph titanate coupling agent/Ken-React KR-9S [0096], wherein the polyamide would necessarily be bonded to the stainless steel [0096]. Notably, per Dahlen [0156], Ken-React KR-9S is isopropyl tri(dodecylbenzenesulfonate)titanate (per Heikkila’ [0096]).
As to claims 2-4, Heikkila’s Example 8 comprises 66.14 wt.% copper shot and 33.86 wt.% polyamide.
As to claim 5, Heikkila’s Example 6 comprises 50.00 wt.% stainless steel and 48.14 wt.% polyamide.
As to claim 10, Heikkila’s polyamide necessarily has NH2 and COOH groups.
As to claim 11, Heikkila uses polyamide in Examples 6-11.
As to claim 28, Heikkila’s injection molded article per Example 6 is a lock part [0173], i.e., a movement component.
As to claim 29, 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 as the Carpenter stainless steel used in the present specification (Table 1).
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.
Claims 1-5, 10, 11, 28 and 29 are rejected under 35 U.S.C. 103 as being unpatentable over US 2020/0201260 (Rodriguez).
Rodriguez discloses a decorative item made from a material having a density of between 2 and 7 g/cm3 [0026] (meets Applicants’ material density of between 2 and 7 g/cm3) comprising:
(a) 60 to 90 wt.% of a metallic or ceramic filler having a density of at least 5 g/cm3 [0050] (meets Applicants’ metallic or ceramic filler, density thereof and overlaps content thereof); and
(b) 10 to 32 wt.% of a polymer inclusive of a polyamide (meets Applicants’ polymer containing units –[(C=O)NH]- and overlaps content thereof) and coupling agent,
wherein the polymer is coupled/adhered to the metallic or ceramic filler [0028] (meets Applicants’ requirement that the polymer be bonded to the metal or ceramic filler) (e.g., abstract, [0019-0024], [0027-0028], examples, claims). Notably, the polyamides [0027], implicitly bearing NH2 and COOH groups and multiple amide units –[(C=O)NH]-, meet the presently claimed NHx hydrogen bond donor adjacent to a C=O hydrogen bond acceptor and –[(C=O)NH]- molar content of at least 1% molar.
In essence, Rodriguez differs from claim 1 in not expressly setting forth a working example wherein the metallic or ceramic filler is combined with a polyamide. Given that it is within the purview of Rodriguez’s inventive disclosure [0027] to employ polyamide as the polymer, it would have been obvious to one having ordinary skill in the art to formulate an item made from a material having a density of between 2 and 7 g/cm3 [0026] (meets Applicants’ material density of between 2 and 7 g/cm3) comprising (a) a metallic or ceramic filler having a density of at least 5 g/cm3 in an amount as presently claimed (meets Applicants’ metallic or ceramic filler, density thereof and content thereof) and (b) a polyamide in an amount as presently claimed (meets Applicants’ polymer and content thereof) for their expected additive effect and with the reasonable expectation that the polyamide is coupled/adhered to the metallic or ceramic filler.
As to claims 2-4, Rodriguez’s items comprise (a) 60 to 90 wt.% of a metallic or ceramic filler and (b) 10 to 32 wt.% of a polymer, e.g., polyamide. Thus, it would have been obvious to one having ordinary skill in the art to formulate items comprising (a) 60 to 85 wt.% metallic or ceramic filler and (b) 15 to 32 wt.% polyamide (encompassing presently claimed contents) with the reasonable expectation of success.
As to claim 5, while the claimed polymer range does not overlap with Rodriguez’s, a prima facie case of obviousness exists because the presently claimed lower limit of 35 wt.% and Rodriguez’s upper limit of 32 wt.% are close enough that one skilled in the art would have expected them to have the same properties, Titanium Metals Corp. v. Banner, 227 USPQ 773 (MPEP 2144.05 l).
As to claim 10, Rodriguez’s polyamide necessarily has NH2 and COOH groups.
As to claim 11, Rodriguez discloses polyamide as a viable polymer.
As to claim 28, Rodriguez’s injection molded items can be used in the field of horological articles [0018].
As to claim 29, Rodriguez’s injection molded articles are manufactured by a similar method step of shaping via injection molding [0024-0025]. At least Rodriguez’s Carpenter stainless steel [0032] would be expected to have a similar BET specific surface area as the Carpenter stainless steel used in the present specification (Table 1).
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 1-5, 10, 11, 28 and 29 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 30-58 of copending Application No. 18/036550 (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 item comprising a metal and/or ceramic filler and a polymer governed by the same features, e.g., density, polymer boned 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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/ANA L. WOODWARD/Primary Examiner, Art Unit 1765