DETAILED CORRESPONDENCE
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 Interpretation
Claim element
Meaning
Specific polymer?
base polymer core
A polymeric material central to the shell
Any
coating polymer shell
A polymeric material outer to the shell
Any
Tm within about 20C
| Tm,core – Tm,shell | < 20 (all in Celsius)
Response to Arguments
Applicant's arguments have been fully considered.
Gupta
Applicant argues that
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Examiner does not find this because the claim does not require the base core is a majority constituent. Also, Gupta explicitly states that the “Polyvinyl alcohol (PVA) was used for external coating of the particles” (Abstract) and a “1% PVA” coating treatment (Abstract). This would result in particle as claimed. The plain meaning of Gupta is a PEI modified core with a PVA coating (see title: “PEI as a Core Modifying Agent” and abstract: “Polyvinyl alcohol (PVA) was used for external coating of the particles”).
Applicant argues that Gupta uses PEI modified core and PVA modified surface but that their particle is formed form a different method and the resulting morphology would be different than the claimed particle, and thus this does not read on the claimed structure.
Examiner agrees that Gupta describes their materials as comprising a PEI modified core and an outer PVA layer – this overlaps the claimed structure. This is part of disclosure that enables the claimed invention. The claim merely requires two undefined polymers. The specification instructs the reader that PEI and PVA have the claimed properties.
Applicant argues
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Examiner does not understand the argument. The prior art overlaps with the claim structure. If the claim and prior art have the same structure, then they are both treated as enabling having the same properties. The PTO does not have laboratories for testing enablement. The present specification is merely cited as further evidence that they have the same properties.
Applicant argues
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Examiner does not find this because the claim does not require a pure PEI core. Claim 1 requires any core and shell polymers, so long as they have the claimed properties. The Gupta core and shell polymers must have the claimed properties since they are the same polymers disclosed by Applicant.
Applicant argues that the prior art describes different materials for different purposes compared to the inventive materials.
Examiner finds that the claims are not commensurate in scope with the arguments. Claim 1 does not require specific structure; it claims a generic combination of a core polymer and shell polymer; and, wherein that structure has properties.
The prior art teaches the same structure as claimed. If the prior art is not enabled to provide the claimed properties, then the present claim is also deficient.
For the purpose of patent examination, a chemical composition and its physical/chemical properties are inseparable; if the prior art discloses the identical structure then the same properties are automatically considered present. The PTO does not have laboratories for testing enablement.
Applicant argues that the prior art materials are prepared by different methods compared to the inventive materials.
Examiner does not find this persuasive because the claim is directed to a structure not a method. Product by process limitations have limited weight.
Rodgers
Applicant argues that claim 1
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Examiner does not find this persuasive because the claim is directed to a structure not a method. The claim does not require selection. The claim requires structure. The prior art teaches the same structure.
Applicant argues that the prior art describes different materials for different purposes compared to the inventive materials.
Examiner finds that the claims are not commensurate in scope with the arguments. Claim 1 does not require specific structure; it claims a generic combination of a core polymer and shell polymer; and, wherein that structure has properties.
The prior art teaches the same structure as claimed. If the prior art is not enabled to provide the claimed properties, then the present claim is also deficient.
For the purpose of patent examination, a chemical composition and its physical/chemical properties are inseparable; if the prior art discloses the identical structure then the same properties are automatically considered present. The PTO does not have laboratories for testing enablement.
Applicant argues that the prior art materials are prepared by different methods compared to the inventive materials.
Examiner does not find this persuasive because the claim is directed to a structure not a method. Product by process limitations have limited weight.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-53 (excluding cancelled claims) are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
“continuously” is an unsupported limitation in claims 1 and 53. Dependent claims are rejected by virtue of their dependence.
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 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.
Claim(s) 1, 5, 47, 53, 4, 22-25, 43-45, 50-52, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gupta (NPL 20111).
Gupta teaches a core/shell powder for another use that meets the claimed structure -- as claimed. Gupta teaches a core with PEI and a shell with PVOH. This is the claimed structure. Claims to a thing (i.e., not a method) must be differenced from the prior art by clear structural differences.
In reference to claim 1, 5, 47, 53, Gupta discloses
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a plurality of powder particles (“lyophilized to obtain free flowing powdered microparticles” [Top of Pg. 4]), each including:
a base polymer layer formed of a base polymer material comprising polyetherimide, the base polymer material having a first solubility parameter; and (“PEI 25 kDa, used as a core-modifying agent,” [Section 2.2., bottom of Pg. 3])
a coating polymer layer surrounding the base polymer layer and formed of a coating polymer material that is distinct from the base polymer material, the coating polymer material comprising polyvinyl alcohol (“Polyvinyl alcohol (PVA) was used for external coating of the particles” [Abstract]
“The primary emulsion was then homogenized with 25 mL of PVA solution (external aqueous phase, EAP)” [Section 2.2., bottom of Pg. 3])
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(“Polyvinyl alcohol (PVA) was used for external coating of the particles” [Abstract]; “The primary emulsion was then homogenized with 25 mL of PVA solution (external aqueous phase, EAP)” [Section 2.2., bottom of Pg. 3]; and “lyophilized to obtain free flowing powdered microparticles” [Top of Pg. 4].
Particle treated by PVA solution to form an external coating on the particles, and then dried (lyophilized) reads on the claimed structure.)
The materials of Gupta meet the claimed property limitations. As evidenced by the present specification the materials have different melting points as required. As evidenced by the present specification the materials have different loss factors as required.
In other words, Gupta forms dry particles that have a PEI modified core and a PVOH outer layer, shell, coating. This is the same as the claimed structure.
Gupta does not form the particles for the same purpose as the claimed invention. Gupta is a pharmaceutical related article and the claim is for a 3D printing feedstock material. Nevertheless, claims to a structure must be distinguished from the prior art structure. Thus, the claim must be rejected because Gupta teaches the same structure as claimed.
The cited prior art does not specifically disclose that the structure has the property or is produced by a process wherein:
the base polymer material is selected to have a first dielectric loss factor with
a first tan value in a predefined microwave frequency range, a first melting point, and a first
solubility parameter;
the coating polymer material is selected to have a second dielectric loss factor
with a second tan value in the predefined microwave frequency range, a second melting point, and second solubility parameter;
the second dielectric loss factor of the coating polymer material is greater than the first dielectric loss factor of the base polymer material;
the second tan value of the coating polymer material is at least about 50 times greater than the first tan value of the base polymer material and thereby more susceptible to heating in response to electromagnetic energy than the base polymer material;
the second solubility parameter is within about 10 (Joules/cubic centimeter)0·5 ((J/cc)0·5 ) of the first solubility parameter.
However, the cited prior art teaches an identical or substantially identical structure as claimed (the core shell particle structure of the claim). Therefore, the property is presumed to be inherent to the cited prior art. Apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function; and, the structure must be clearly and positively specified.
In reference to claim 4, 22-25, 43-45, 50-52, the cited prior art does not specifically disclose that the structure has the property or is produced by a process as claimed, however, the cited prior art teaches an identical or substantially identical structure as claimed (the core shell particle structure of the claim). Therefore, the property is presumed to be inherent to the cited prior art. Apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function; and, the structure must be clearly and positively specified.
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.
Claim 1, 4, 22-25, 43-45, 50-52, 6, 26, 48, 46 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rodgers (US 20210277229 A1).
Rodgers teaches a core/shell powder for 3D printing that meets the claimed structure. Rodgers teaches a core with PEI and a shell. This is the claimed structure. Claims to a thing (i.e., not a method) must be differenced from the prior art by clear structural differences.
In reference to claim 1, Rodgers discloses “A core/shell polymer material suitable for FDM-type three-dimensional printing, comprising:
at least one amorphous polymer as a core particle;
at least one semicrystalline polymer as a shell material surrounding the core particle;” (Claim 1, reading on “coated powder for use in an additive manufacturing process,
the coated powder comprising:
a plurality of powder particles, each including:
a base polymer layer formed of a base polymer material; and
a coating polymer layer surrounding the base polymer layer and formed of a
coating polymer material that is distinct from the base polymer material,” as claimed)
Rodgers further discloses that the core particles is the same composition as the claimed “base polymer layer”; and,
the shell material surrounding the core is the same composition as the claimed “a coating polymer layer surrounding the base polymer layer”.
The cited prior art does not specifically disclose that the structure has the property or is produced by a process wherein:
the base polymer material is selected to have a first dielectric loss factor with
a first tan value in a predefined microwave frequency range, a first melting point, and a first
solubility parameter;
the coating polymer material is selected to have a second dielectric loss factor
with a second tan value in the predefined microwave frequency range, a second melting point, and second solubility parameter;
the second dielectric loss factor of the coating polymer material is greater than the first dielectric loss factor of the base polymer material;
the second tan value of the coating polymer material is at least about 50 times greater than the first tan value of the base polymer material and thereby more susceptible to heating in response to electromagnetic energy than the base polymer material;
the first melting point is within about 20 degrees Celsius of the second melting point;
the second solubility parameter is within about 10 (Joules/cubic centimeter)0·5 ((J/cc)0·5 ) of the first solubility parameter;
the coating polymer material is applied as a liquid to an exterior of the base polymer material as the base polymer material is advanced through a coating chamber to form the coating polymer layer; and
the coating polymer material is dried on the exterior of the base polymer material within the chamber to form a … powder particle.
However, the cited prior art teaches an identical or substantially identical structure as claimed (the core shell particle structure of the claim). Therefore, the property is presumed to be inherent to the cited prior art. Apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function; and, the structure must be clearly and positively specified.
Rodgers does not use the word “dry” however, Rodgers indicates that “the core/shell polymer is used in SLS, HSS, MJF, and electrophotography powder-based 3D-printing applications” (Claim 21). Thus, it is obvious that the particles would be dry. Also, “powder” in this context would be understood to refer to a dry powder by a person of skill in the art.
In reference to claim 4, 22-25, 43-45, 50-52, the cited prior art does not specifically disclose that the structure has the property or is produced by a process as claimed, however, the cited prior art teaches an identical or substantially identical structure as claimed (the core shell particle structure of the claim). Therefore, the property is presumed to be inherent to the cited prior art. Apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function; and, the structure must be clearly and positively specified.
In reference to claim 6, 48, Rodgers discloses “that a component of developing the core/shell particle is optimizing the thickness of the shell versus the diameter of the core. On the one hand, the core needs to be sizable enough to supply the structure of the particle. Conversely, the shell needs to have some degree of thickness so the printing system can handle the polymer powder when it is near the operating window temperature” (P0054). Therefore it would have been obvious to optimize the thickness and diameter and thereby arrive at the claimed invention.
In reference to claim 26, see P0013 (e.g., amides and ketones).
In reference to claim 46, see P0013 (“Polyetherimide”).
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 NICHOLAS KRASNOW whose telephone number is (571)270-1154. The examiner can normally be reached M-R: 8am-5pm.
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, Xiao Zhao can be reached at 571-270-5343. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS KRASNOW/Examiner, Art Unit 1744
1 Gupta, V. and Ahsan, F., 2011. Influence of PEI as a core modifying agent on PLGA microspheres of PGE1, a pulmonary selective vasodilator. International journal of pharmaceutics, 413(1-2), pp.51-62.
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