DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Analysis
Summary of Claim 1:
A composite composition suitable for 3D printing, said composition comprising:
at least one cyclic Olefin Copolymer (COC)
at least one styrenic block copolymer
a dielectric inorganic filler composition in an amount of more than 30% by weight relative to the total weight of the composite composition.
Specification
2. The abstract of the disclosure is objected to because the abstract is not belonging to this disclosure. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
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.
3. Claim(s) 1-3, 5-8, 11-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over O’Connor (US 2019/0291364) in view of Bloomfield (US 2019/0322884 (A1), as evidenced by Titanium Dioxide flyer, Wikipedia.
4. 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.
5. Regarding claim 1-3, O’Connor discloses a thermoplastic composite comprising: 10-90%vol of a thermoplastic polymer and 90-10%vol of a dielectric filler, specifically rutile titanium oxide (¶27), based on the total volume of the thermoplastic composite, wherein the thermoplastic polymer comprises polyolefin and the polyolefin can comprise a cyclic olefin copolymer (COC), block copolymers, and their combination (¶ 15, 17, 19, 26).
Based on the teachings of O’Connor, it would have been obvious to a one of ordinary skill in the art to choose and use the combination of the cyclic olefin copolymer (COC) and the block copolymer as the thermoplastic polymers, and the rutile titanium oxide as the dielectric filler, since it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
6. O’Connor teaches the thermoplastic composite can be used in three-dimensional (3D) printing processes (¶52).
7. Though O’Connor does not specify the block copolymer being a styrenic block copolymer, and specifically styrene-ethylene-butadiene-styrene block copolymer (SEBS),
Bloomfield teaches the combination of styrenic block copolymers, specifically SEBS (also regarding claim 6), and COC (¶ 31, table 1) specifically of ethylene and norbornene copolymers (¶ 23), at a weight ratio of COC to SEBS of 3:1 (Table 1), used as the copolymers for 3D printing (abstract).
8. Since both O’Connor and Bloomfield are related to polymer blends comprising block copolymers and COC for 3D printing, and thereby belong to the same field of endeavor, wherein Bloomfield specifies the block copolymers being SEBS, and said SEBS are used in combination with COC at a weight ratio of COC to SEBS of 3: 1 for such printing processes, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of O’Connor and Bloomfield, and to use SEBS as the block copolymer in combination with COC for the 3D printing process of O’Connor, because Bloomfield teaches the SEBS can be used as excellent modifiers providing enhanced impact toughness and ductility (¶30), and it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
9. Though O’Connor provides the amounts of the dielectric filler, specifically rutile titanium oxide, and the thermoplastic polymers in volume percent, and not in weight percent as required by instant claims, using the values of densities of the components, the conversion of the volume percent to weight percent is provided below.
10. As evidenced by Titanium Oxide flyer, the density of rutile titanium oxide is 4.23 g/cc. For purposes of calculation, it is assumed the densities of the polymers of COC and SEBS are 1 g/cc.
Assuming the composition comprises 60% vol of polymers and 40% vol of TiO2 (see paragraph 26 of O’Connor), meaning 60 cc of polymers and 40 cc of titania:
For polymers 60 cc x 1 g/cc = about 60 g.
For titania 40 cc x 4.23 g/cc = 169 g.
Totalling about 229 g.
The percentage of polymer is: 60/229 x100% =26%wt.
The percentage of titania is: 169/229 x 100% = 74%wt (regarding instant claims 1, 8-9).
13. Regarding claims 1, 8-9, given the COC and the SEBS as the thermoplastic polymers in the composite of O’Conner in view of Bloomfield are used in weight ratio of 3:1 and the total amount of COC and SEBS is 26 %, then the amount of COC will be 19.5 wt% and the amount of SEBS will 6.5 wt% and the amount of rutile titanium oxide will be 74%wt.
14. All ranges in the composite of O’Conner in view of Bloomfield are overlapping with the corresponding ranges as claimed in instant invention. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
15. Regarding claim 2 -3, O’ Connor teaches the dielectric filler can comprise titanium dioxide for example rutile (¶ 27).
16. Regarding claim 5,7,8, and 9 O’ Connor teaches the thermoplastic polymer can comprise a polyolefin and the polyolefin can comprise a cyclic olefin copolymer for example, a copolymerization product of norbornene and ethylene (¶ 19, 57, 59).
17. Regarding claim 6, O’Conner in view of Bloomfield teach the styrenic block copolymers, specifically SEBS (¶31 of Bloomfield).
18. Regarding claim 11, O’ Connor (US 2019291364) teaches the methods of forming the thermoplastic composition can include extruding and printing, the thermoplastic composite can be used in three-dimensional (3D) printing processes, and the thermoplastic composite can be in the form of a filament or powder, and the filament or powder can be used in 3D printing using the fused deposition modelling (FDM) method ¶ 7, 52).
19. Regarding claim 12, O’ Connor (US 2019291364) teaches the thermoplastic composite can be used in three-dimensional (3D) printing processes can be in the form of a filament (¶ 52, 90).
Since the composite is extruded into filaments, it would have been obvious to a one of ordinary skill in the art to collect those filaments in the form of coil as well, since the produced filaments are regularly stored in the form of coils.
20. Regarding claim 13, O’Connor teaches a method of printing the composite comprising said thermoplastic polymers and said dielectric filler by using 3D printing techniques.
21. Regarding claim 14, O’ Connor discloses shaped article comprising the composite comprising said thermoplastic polymers and said dielectric filler (¶51, 52, 7, 8).
22. Regarding claim 15, O’ Connor teaches the dielectric properties of the thermoplastic composite can have a relative permittivity of greater 10 (¶ 14) which overlaps the claimed range.
23. Claim(s) 4, 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over O’Connor (US 2019/0291364) in view of Bloomfield (US 2019/0322884) and Yamakawa (US 5,275,878), as evidenced by Titania flyer, Wikipedia.
24. The discussion with respect to O’Connor (US 20190291364) in view of Bloomfield (US 20190322884) set forth in paragraphs 3-22 above, is incorporated here by reference.
25. O’Connor in view of Bloomfield do not explicitly recite the claimed amount of diameter of the dielectric particles.
26. However, Yamakawa teaches the composite dielectric material comprising a resin matrix and a dielectric filler, including titania (col. 3, lines 12-20), wherein the dielectric filler is cited as having an average particle diameter of 5 to 100 microns (col. 2, lines 12-20), specifically exemplified 20 micrometers (Example 1), which range overlaps with the claimed range of 20 to 50 µm.
27. Since the titania dielectric filler having the particle size of 5-100 micrometers, or 20 micrometers, is taught in the art as being used in dielectric composites comprising the polymeric matrix and the dielectric titania filler, as shown by Yamakawa, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Yamakawa and O’Connor in view of Bloomfield, and to use titania dielectric filler having the particle size of 5-100 micrometers, or 20 micrometers of Yamakawa as the dielectric filler in the composite of O’Connor in view of Bloomfield, since it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
28. Claim(s) 1-2, 5-7, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Condon (US 4,177,184).
29. Regarding claim 1, Condon discloses a composition comprising:
100 pbw (which is about 80 wt %) of a monoalkenyl arene-conjugated diene multiblock copolymer (specifically SEBS) (col.1, lines 29-30);
5-200 pbw (which is about 4.7 wt % to about 66.6 wt%) of polymeric alpha-olefin (col.1, lines 29-30);
5-200 pbw (which is about 4.7 wt% to 66 wt%) of filler (col.1, lines 29-30);
5-200 pbw (which is about 4.7 wt % to about 66.6 wt%) of a synthetic rubberizing polymer (col.1, lines 25-35).
It is noted that the limitation “suitable for 3D printing” is an intended use limitation. Case law holds that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458, 459 (CCPA 1963).
30. The ranges cited in the composition of Condon are overlapping with the ranges of components claimed in the present invention. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
31. Regarding claim 2, Condon teaches the filler comprising titanium dioxide (col.3, line 19).
32. Regarding claim 5 teaches the component d) being a terpolymer comprising ethylene and dicyclopentadiene or norbornene (col.4, lane 1-35). It would have been obvious to choose the terpolymer comprising ethylene and dicyclopentadiene or norbornene-based as the component d) in the composition of Condon as well, since it would have been obvious to choose material based on its suitability.
33. Regarding claim 6, Condon teaches the selectively hydrogenated monoalkenyl arene-conjugated diene multiblock copolymer which is SEBS, SEPS, polystyrene-polybutadiene-polystyrene (SBS), polystyrene-polyisoprene-polystyrene (SIS) (col.1, lines 29-30, col.2, lines 15-16).
34. Regarding claim 7, Condon teaches the multi-ring alicyclic fused and bridged ring dienes such as tetrahydroindene, methyl tetrahydroindene, dicyclopentadiene, bicyclo(2.2.1) hepta 2,5-diene, alkenyl, alkylidene,, cycloalkenyl and cycloalkylidene norbornenes ( col.4, lines 24-29).
35. Regarding claim 10, Condon teaches the component d) is used in amount of 200 pbw and the component a) is used in amount of 100 pbw, therefore, the weight ratio of component d) to component a) will be 2:1.
36. Based on the teachings of Condon, it would have been obvious to a one of ordinary skill in the art to choose and use the terpolymer comprising ethylene and dicyclopentadiene or norbornene-based comonomer as the component d), SEBS as the component a) and the titania as the filler component c) in the composition of Condon as well, since it would have been obvious to choose material based on its suitability. . Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAMADAS SR SATHUNURU whose telephone number is (571)272-1687. The examiner can normally be reached 7:30AM to 3:30PM.
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/RAMADAS SATHUNURU/Examiner, Art Unit 1764
/ARRIE L REUTHER/Supervisory Primary Examiner, Art Unit 1764