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 .
DETAILED ACTION
Election/Restrictions
Applicant's election with traverse of Group 1, Species 5 and sub-species1A, claims 1, 3, 5, 8, 10 and 16-17 in the reply filed on 04/20/2026 and 05/19/2026 is acknowledged. The traversal is on the ground that search and examination of all the claims would not be unduly burdensome on the examiner. This is not found persuasive because the species have different chemical structure which have patentable distinction. Further, while there may be some overlap in the searches of these species, there is no reason to believe that the searches would be identical. Therefore, based on the additional work involved in searching and examining these distinct inventions together, restriction of these distinct inventions is clearly proper. Therefore, the restriction requirement is still deemed proper and is therefore made FINAL. Accordingly, claims 4, 6-9, 11, 13 and 18-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Claims 1, 3, 5, 10 and 16-17 are currently under examination on the merits.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 3, 5, 8,10 and 16-17 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 pre-AIA the applicant regards as the invention.
Claim 1 is rejected as being vague and indefinite when these claims recite "an oxygen-deprivation additive in an amount of up to 25 wt%, based on the total weight of the composition” and “wherein the oxygen-deprivation additive is present in the composition in an amount of 1-10 wt%, based on the total weight of the composition”, which render more than one range in the same claim. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) is considered indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). Claims 3, 5, 8, 10 and 16-17 are also rejected for depending from claim 1, thus inclusion of its indefinite features.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 5 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. The base claim of the claim 1 requires that the composition is free of phosphate. However, both Formula Ia and Formula Ib as in the present claim 5 are organic phosphate compound which fails to further limit its base claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim 8 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 8 recites the same oxygen deprivation additive amount as in its base claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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, 3, 5, 8, 10 and 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over DE102018121230(of record, See IDS 11/16/2023, ‘230 hereafter).
Regarding claim 1, 3, 5, 8, 10 and 16-17, ‘230 discloses a composition for additive manufacturing comprising a sinterable powder comprising polyamide being semicrystalline polymer in an most preferred amount of at least 90 wt% ([0001]-[0002], [0007], [0010]-[0012], [0015]-[0018], [0024]); and a flame retardant reading upon oxygen deprivation additive being organophosphorus component such as triphenyl phosphate reading upon Formula Ia as in claim 5 ([0025]) and a heptazine or melamine-derived component such as melon reading upon Formula V as in the present claim 10 ([0027]); wherein the amount of the flame retardant present in the composition is in a range of 1 to 15 wt % based on the total weight of the composition, significantly overlaps instantly claimed range of 1 to 10 wt%. ‘230 also discloses that the organophosphorus component can be an alkyl phosphonate salt or phosphonate ester ([0025]), which renders a composition free or substantially free of phosphate. ‘230 does not specifically exemplify an embodiment comprising both organophosphorus component and heptazine or melamine-derived component; however, ‘230 discloses organophosphorus component and heptazine or melamine-derived component are flame retardants, which have the same purpose to be used to provide flame retardation for polyamide, thus it would have been obvious to one of ordinary skill in the art to be motivated to further use organophosphorus component and heptazine or melamine-derived component together as flame retardants in the polyamide composition of ‘230 to render presently claimed subject matter. It is well settled that it is prima facie obvious to combine two ingredients each of which is taught by the prior art to be useful for the same purpose. [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (See MPEP 2144.06).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUIYUN ZHANG whose telephone number is (571)270-7934. The examiner can normally be reached on 8:00-5:00 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arron Austin can be reached on 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RUIYUN ZHANG/Primary Examiner, Art Unit 1782
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