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 without traverse of Invention I, Claims 1-14 in the reply filed on December 31, 2025 is acknowledged.
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.
Claims 1 and 6-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by 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 ranging from about 0.01 to about 80 wt% ([0014]) and a resin which may be gilsonite ([0009]). The range of said fillers overlaps and therefore anticipates the claimed range of “10-99.9 wt. %.” Taylor additionally teaches that the composition may be substantially free of gilsonite, 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 including 0 wt% of gilsonite, which falls within and therefore anticipates the claimed ranges of “up to 6 wt. %” and less than 2 wt. %.”
Regarding claims 7-9, 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.
Regarding claims 10-11, Taylor additionally teaches the incorporation of a nylon additive ([0011]), which reads on the claimed “thermoplastic polymer,” and which is included in the list of claim 11.
Regarding claim 12, Taylor additionally teaches the use of other fillers besides the polymeric materials referenced above, ([0014]), which reads on the claimed “filler.” Taylor specifically teaches that one or more fillers may be used ([0014]).
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.
Claim Rejections - 35 USC § 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 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 and 6-14 are alternatively rejected, and claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Taylor (US 2002/0013389 A1).
Regarding claim 1, Taylor teaches a polymeric blend (Abstract), containing a filler which may be polyethylene, or polypropylene powders in amounts ranging from about 0.01 to about 80 wt% ([0014]) and a resin which may be Gilsonite in an amount ranging from about 5 to about 20 wt% ([0009]). In each case, the ranges taught by Taylor overlap the claimed ranges, establishing prima facie cases of obviousness.
Regarding the limitation within the preamble of the claim which indicates “for additive manufacturing,” 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 polymeric blend of Taylor therefore reads on the claimed composition regardless of whether or not Taylor mentions or contemplates the use thereof for additive manufacturing.
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 claim 6, as described above, Taylor teaches the incorporation of the resin component in amounts ranging from about 5 to about 20 wt% ([0009]). This range falls outside of the claimed range; however, Taylor additionally teaches that the composition may be substantially free of gilsonite, 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 including from about 0 to about 10 wt%, which overlaps the claimed range, establishing a prima facie case of obviousness.
Regarding claims 7-9, 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.
Regarding claims 10-11, Taylor additionally teaches the incorporation of a nylon additive ([0011]), which reads on the claimed “thermoplastic polymer,” and which is included in the list of claim 11.
Regarding claim 12, Taylor additionally teaches the use of other fillers besides the polymeric materials referenced above, ([0014]), which reads on the claimed “filler.” Taylor specifically teaches that one or more fillers may be used ([0014]).
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.
Conclusion
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