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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 5-6, and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Taylor (US 2002/0013389 A1).
Regarding claims 1 and 6, Taylor teaches a polymeric blend (Abstract), containing a filler which may be polyethylene, or polypropylene powders in amounts “normally” ranging from about 0.01 to about 80 wt% ([0014]). However, given that the composition only requires baseline polymers (5- 40 wt%, [0008]), at least one resin (5 – 20 wt%, [0009]), and the aforementioned filler (“normally” 0.01 to 80 wt%, [0005]), the composition aside from the filler may comprise between 10 and 60 wt% of the overall composition.
Importantly, Taylor’s use of the terms “normally” and “about” with regard to the range of filler plainly implies that the range of 0.01 to 80 wt% is not capped at the numerical values listed.
It is well established in the art that “[u]se of 'about' is warning that exactitude is not claimed but rather a contemplated variation. When there is no substantial or material difference in the product, and the difference is colorable, merely, there is in fact literal readability if proper weight is given to the qualifying word 'about' to amounts significantly lower or higher than the numerically claimed limitation. Kolene Corp. v. Motor City Metal Treating, Inc. (DC EMich) 163 USPQ 214.
The use of the word “about,” avoids a strict numerical boundary to the specified parameter. Its range must be interpreted in its technologic and stylistic context. Pall Corp. v. Micron Separations, Inc., 66 F.3d 1211, 1217 (Fed. Cir. 1995).
A term such as “about” is not subject to a precise construction, but is dependent on the factual situation presented. W.L. Gore & Assocs., Inc. v. Garlock, Inc., 842 F.2d 1275, 1280 (Fed. Cir. 1988)
Use of the term “about” shows that the Applicants did not intend to limit the claimed ranges to their exact end-points. See Jeneric/Pentron, Inc. v. Dillon Co. 205 F.3d 1377, 1381 (Fed. Cir. 2000); In re Harris, 409 F.3d 1339, 1343 (Fed. Cir. 2005).
The term “about” in patent claims has been interpreted by the Federal Circuit to mean “with some approach to the exactness in quantity, number, or time: Approximately.” Conopco, Inc. v. May Dep't Stores Co., 46 F.3d 1556, 1561 (Fed.Cir.1994). “Approximately” has been interpreted as “reasonably close to.” Quantum Corp. v. Rodime, PLC, 65 F.3d 1577, 1581 (Fed.Cir.1995).
Treatment of the term “about” in relation to conditions of temperature and time is illustrated in, for example, Schreiber Foods, Inc. v. Saputo Cheese USA Inc., 83 F. Supp. 2d 942 (N.D. Ill.), dismissed, 243 F.3d 560 (Fed. Cir. 2000). In Schreiber, the court held that a claimed time range of “about 2 minutes to about 4 minutes” encompassed a range of 30 seconds to 10 minutes, while a temperature range of “about 190°F to about 205°F” was interpreted as encompassing a range of 150°F to 300°F. Schreiber at 950. Note that the range “about 190°F to about 205°F” is equivalent to “about 87.8°C to about 96.1°C” and the range of 150°F to 300°F is equivalent to 65.6°C to 148.9°C.
Given the flexibility used by the courts in interpreting the term “about,” combined with the additional term “normally” which further implies alternative options, it is evident that the composition of Taylor is open to the incorporation of up to 90 wt% of filler. This amount merely constitutes the remainder of the formulation when the resin and baseline polymers are at a minimum (i.e., the composition within Taylor containing only the required components, wherein the resin and non-filler polymers are at their minimum concentrations of 5 wt% each would therefore contain 90 wt% of filler).
The composition of Taylor containing 90 wt% of filler overlaps the claimed range of “90-99.9 wt.%,” establishing a prima facie case of obviousness.
The resin component may be gilsonite ([0009]), and the range thereof of 5 to 20 wt.% overlaps the claimed range of “a non-zero amount up to 6 wt %,” establishing a prima facie case of obviousness. Taylor additionally teaches that the composition may be substantially free of gilsonite (although the amount of Gilsonite is replaced with a different resin component), which is indicated as containing less than about 10 wt% and including about 0% thereof ([0009]). Taylor therefore specifically teaches the incorporation of a range of gilsonite from about 0 to about 10 wt%, which overlaps the claimed range of less than 2 wt. %,” establishing a prima facie case of obviousness.
Regarding claim 5, as described above, Taylor teaches the incorporation of the resin component (including gilsonite) in amounts ranging from about 5 to about 20 wt% ([0009]), which overlaps the claimed range of “0.1 to 6 wt%,” establishing a prima facie case of obviousness.
Regarding claims 13-14, the material requirements are recognized as intended uses of the claimed composition, referring to the suitability for forming a filament material or a pellet material. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. See MPEP 2111.02.II.
The composition of Taylor reads on the compositions of claims 13 and 14 because it reads on the composition of claim 1, as described above.
Claims 2-4 are rejected under 35 U.S.C. 103 as being unpatentable over Taylor (US 2002/0013389 A1) in view of Nciri et al. (Petroleum and Environmental Biotechnology, 2014, 5:5, pp. 1-10).
Regarding claim 2, Taylor teaches all of the limitations of claim 1, as described above. Taylor is silent with regard to the claimed chemical composition, molecular weight, and hardness/softening point characteristics. Nevertheless, Taylor teaches the use of gilsonite ([0009]), as described above.
In the same field of endeavor, Nciri teaches that Gilsonite is naturally available from the Uinta basin in Utah, USA (Abstract), and that said Gilsonite contains 84.36 wt% of carbon, 10.05 wt% of hydrogen, 3.25 wt% of Nitrogen, 0.27 wt% of Sulfur, and 1.36 wt.% of oxygen (p.3, Table 2). The remaining combined compositional amounts of other elements is therefore about 0.71 wt%. In each case, the amounts taught by Nciri overlap the claimed amounts, establishing prima facie cases of obviousness. Furthermore, it is prima facie obvious to select a known material based on its art-recognized suitability for its intended use (see MPEP 2144.07). It therefore would have been obvious to one having ordinary skill in the art at the time of filing to utilize Gilsonite from the Uinta basin within the composition of Taylor, as it is naturally available therefrom. The resulting composition of Taylor as modified by Nciri would meet all of the limitations of claim 2.
Regarding claims 3-4, Taylor as modified by Nciri is silent with regard to the claimed asphaltite characteristics. Nevertheless, Taylor as modified by Nciri teaches the use of a Gilsonite which meets all of the compositional characterstics of claim 2, as described above. Furthermore, The instant Specification states that gilsonite is a suitable asphaltite as claimed (see instant Specification at [0021]), and teaches the generic use of gilsonite within the claimed composition ([0053], wherein the sinterable powders are indicated with trade names, but gilsonite appears to merely indicate the hydrocarbon material of the same name).
Products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. The claimed molecular weight, and hardness/softening point characteristics will therefore necessarily be present in the gilsonite of Taylor as modified by Nciri, as applied above.
Allowable Subject Matter
Claims 7-12 and 21 are objected to as being dependent upon a rejected base claim but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Regarding claim 7, as described above, Taylor teaches the incorporation of polyethylene and polypropylene powders ([0014]), which read on the claimed “sinterable powder” and “semicrystalline polymer” limitations, and which are included in the list of claim 9. Taylor differs from claim 7 because it is silent with regard to the claimed average particle size characteristic. Furthermore, the alternative fillers of Taylor include iron oxide screened to a mesh size of 325 (equivalent to about 45 microns), which falls outside of the claimed range. One having ordinary skill in the art would therefore not be motivated to utilize particles within the claimed range from the disclosure of Taylor.
Regarding claim 21, Taylor is silent regarding the melting point and/or sintering window of the powder filler components.
Response to Arguments
Applicant’s arguments, see Applicant’s Remarks, filed July 2, 2026, with respect to the rejections of the claims under 35 U.S.C. 102(a)(1) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Taylor under 35 U.S.C. 103, as indicated above.
Applicant's arguments regarding intended use of claims 13 and 14 have been fully considered but they are not persuasive.
Applicant argues that the “filament material” and “pellet material” limitations of these claims positively limit the structure thereof. However, claims are given their broadest reasonable interpretation, in light of the specification, as would be interpreted by one having ordinary skill in the art (See MPEP 2111). In this case, the claims’ being indicated as a “pellet material” or a “filament material” may be reasonably construed as meaning “a material which is used to form pellets” and/or “a material which is used to form filament.” This is consistent with the Specification, wherein e.g., it is indicated that a “filament material” may be formed from a blend or combination of the claimed components (see instant Specification at [0039]). Said limitations therefore constitute intended use.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 JOSHUA CALEB BLEDSOE whose telephone number is (703)756-5376. The examiner can normally be reached Monday-Friday 8:00 a.m. - 5:00 p.m. EST.
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/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
