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 .
Application Type
Applicant states that this application is a continuation or divisional application of the prior-filed application. A continuation or divisional application cannot include new matter. Applicant is required to delete the benefit claim or change the relationship (continuation or divisional application) to continuation-in-part because this application contains the following matter not disclosed in the prior-filed application:
The limitation “particle size of the at least one filler is about 15-20% of the average particle size of the nylon 5 powder” of claim 6 is not found within the parent application. The parent application only provides support for particles not varying more than about 15-20 percent of the average particle size of the nylon 5 powder particles. Therefore, the limitation constitutes new matter.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed applications fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. The limitation “particle size of the at least one filler is about 15-20% of the average particle size of the nylon 5 powder” of claim 6 is not found within the parent application. Therefore, the limitation constitutes new matter. Accordingly, claim 6 is construed as having a filing date of the present application: 9/12/2023.
Claim Objections
Claims 2, 4-6, 9, and 10 are objected to because of the following informalities: “the nylon 5 powder” should be “the nylon 5 blend powder” for consistency. Appropriate correction is required.
Applicant is advised that should claim 9 be found allowable, claim 10 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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 1-11 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.
Claim 1 recites “wherein the resulting nylon 5 blend powder has at least one characteristic selected from the group consisting of a wider range between the melting and recrystallization temperatures, a larger enthalpy upon melting and a low volumetric change during recrystallization.” It is unclear what the recited properties are in relation to (e.g. a wider range compared to what? Larger enthalpy upon melting compared to what?). Accordingly, the intended scope of the claim is unclear.
Claim 1 recites “low volumetric change”. The term “low” is a relative term which renders the claim indefinite. The term “low” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
As claims 2-11 depend from claim 1, they are rejected for the same issues discussed above.
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 11 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 11 recites “wherein the nylon 5 blend comprises at least two nylon 5 polymers, wherein the at least two nylon 5 polymers are mixed in a ratio”. Claim 1 already requires a plurality of different nylon 5 polymers to form a nylon 5 blend. Using a plurality of nylon 5 polymers intrinsically results in at least two nylon 5 polymers being mixed in a ratio. Accordingly, claim 11 fails to further limit the subject matter of the claim upon which it depends.
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 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.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rodgers (US 2019/0382604 A1).
Regarding Claim 6, Rodgers teaches methods of making pulverulent nylon 5 polymers for additive manufacturing (Abstract) and describes embodiments where polyamides such as nylon 5,6, nylon 5,10, nylon 5,11, nylon 5,12, nylon 5,13, and nylon 5,14 are dissolved in ethanol and then precipitated/dried to form powder (¶ 13, 24). The powders have a wider range between the melting and recrystallization temperatures, a larger enthalpy upon melting, and low volumetric change during recrystallization (¶ 28). Rodgers teaches a plurality of nylon polymers can be used (¶ 21, 32). The polymers can be mixed with different particle sizes (¶ 39). Fillers can be included (¶ 14).
Rogers differs from the subject matter claimed in that fillers that are 15-20% of the average size of the resulting nylon 5 powders are not described. In this regard, Rogers teaches the filler particle size is preferably equal to or less than the particle size of the nylon polymers (¶ 14), which is suggestive of overlapping ranges. It would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Rogers suggests the claimed range. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Rogers. See MPEP 2123.
Discussion of Prior Art
Claim 1 explicitly requires the creation of nylon 5 blend powders via dissolving two or more different polymers selected from the group consisting of nylon 5,6; nylon 5,10; nylon 5,11; nylon 5,12; nylon 5,13; and nylon 5,14; whereby the different polymers exhibit different particle sizes.
The closest prior art is Mizoshita (JP2009-179760A), who describes creating nylon particles of nylon 5,10 via dissolution/precipitation/drying. Mizoshita neither describes, nor provides sufficient motivation, to create blend powders via dissolving a combination of nylon 5,10 with another of nylon 5,6; nylon 5,11; nylon 5,12; nylon 5,13; and nylon 5,14 and subsequently precipitating.
Diekmann (US 2013/0274435 A1) teaches polyamide powders based on polyamides of the AABB type (Abstract) such as those prepared using pentamethylenediamine (¶ 29). Combinations of polyamides can be used (see for instance claim 9). However, Diekmann does not fairly suggest or provide sufficient motivation to utilize two or more different polymers selected from the group consisting of nylon 5,6; nylon 5,10; nylon 5,11; nylon 5,12; nylon 5,13; and nylon 5,14; whereby the different polymers exhibit different particle sizes.
Monsheimer (US 2006/0071359 A1) and Kobayashi (US 2015/0031834 A1) are cited as descriptive of composite polyamides formed from blends of different polyamides. Neither reference fairly suggests or provides sufficient motivation to utilize two or more different polymers selected from the group consisting of nylon 5,6; nylon 5,10; nylon 5,11; nylon 5,12; nylon 5,13; and nylon 5,14; whereby the different polymers exhibit different particle sizes.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHEN E RIETH whose telephone number is (571)272-6274. The examiner can normally be reached Monday - Friday, 8AM-4PM Mountain Standard Time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached at (571)272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEPHEN E RIETH/Primary Examiner, Art Unit 1759
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