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 .
The amendment filed March 16, 2026 has been entered.
Claim Objections
Claim 6 is objected to because the recitation “a particle size in a range of 0.1 to 200 µm.” ends with a period, improperly breaking the claim into two sentences.
Claim 10 is objected to because “dried” is misspelled as “drived.”
Claim Interpretation
The preamble recitation “in a production of a molded article” and the concluding clause of claim 10, “wherein the production of a molded article is made via a layer-by-layer manufacturing or an additive manufacturing by means of selective sintering or fusing,” state an intended use of the claimed powdery composition. The body of claim 10 fully and intrinsically sets forth the composition, and these recitations are not claim limitations. 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. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020) (The court found that the preamble in one patent’s claim is limiting but is not in a related patent); Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). In any event, these recitations are expressly taught by the applied art, as discussed below.
The clause in claim 10, “wherein the melt flow index is determined according to ISO-1133-1 and ISO 1133-2, with the PA powder to be tested being oven dr[ie]d for at least 24 hours,” specifies the manner in which the recited melt flow property is to be determined. It does not impart any additional structure to the composition. Likewise, the clause “wherein the water content in the dry, unconditioned state is at most 0.2 weight percent, based on the total weight of the powdery composition after sintering, and the elongation at break is determined according to ISO 527-1” defines the specimen state and the standard under which the elongation at break of the sintered composition is measured. A prior art composition meets these limitations if it inherently possesses the recited property when tested in the recited manner. “[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977) (footnote and citation omitted). The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (citing Best, 562 F.2d at 1255).
The clauses “wherein, after sintering, the powdery composition in a dried, unconditioned state has an elongation at break of at least 2.0%” (claim 10), “an elongation at break in a range of 2.0 to 20%” (claim 5), and “a strength in the range of 50 to 85 MPa” (claim 17) recite properties exhibited by the claimed powder upon sintering. Because these are characteristics of the composition itself when the composition is processed, a prior art composition that is identical or substantially identical to the claimed composition is presumed to possess the same characteristics. “Products of identical chemical composition cannot have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
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 12-17 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Each of claims 12-17 recites “The method of using the powdery composition according to claim [2/2/2/6/7/10] . . .” However, claims 2, 6, 7 and 10 are directed to a powdery composition, not to a method. The is no antecedent basis for “the method of using,” and it is unclear whether claims 12-17 are directed to a product or to a process. A single claim that is unclear as to its statutory class, or that attempts to claim both a product and a method of using the product, is indefinite because it is unclear what acts or structures infringe. See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318, 97 USPQ2d 1737, 1748-49 (Fed. Cir. 2011), and IPXL Holdings v. Amazon.com, Inc., 430 F.3d 1377, 1384, 77 USPQ2d 1140, 1145 (Fed. Cir. 2005).
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 10, 2-8 and 12-17 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Saito (US 2018/0355144).
Claim 10: Saito discloses a powdery composition for use in a production of a molded article (abstract). The composition includes at least one powder made of a polyamide (examples 2-3), the powder having a melting temperature in a range of 240 to 320 C (examples 2-3), a melt flow rate of 7 g/10 min and 10 g/10 min measured at a temperature 15C above the molding point under a 2.16 kg load (examples 2-3), and further teaches that the powder MFR under these conditions is preferably 0.5-50 g/10 min, and 1.5-30 g/10 min in terms of strength of a fabrication object (¶ 34). A MFR of 7 g/10 min corresponds to a melt volume flow rate on the order of about 7 cm3/10 min (polyamide melt density is about 1 g/cm3). Even accounting for the higher 5 kg load recited in the claim and, for the first condition, the moderately higher test temperature of 30-35 C above the melting temperature, the melt flow of Saito’s polyamide powders remains far below, by roughly an order of magnitude or more, the claimed ceilings of 700 cm3/10 min and 300 cm3/10 min. Because Saito’s powder is identical or substantially identical to the claimed powder (a PA66 or PA9T laser-sintering powder of like particle size and low melt flow), it is reasonably presumed to inherently satisfy the claimed melt-flow-index ceilings when tested under the recited conditions, and the burden shifts to Applicant to prove otherwise. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977). Regarding the claim recitation, “wherein the melt flow index is determined according to ISO 1133-1 and ISO 1133-2, with the PA powder to be tested being oven dr[ie]d for at least 24 hours,” this is a measurement protocol that does not further limit the structure of the composition (see claim interpretation above). Nevertheless, Saito measure the melt flow according to “JIS K7210 format (ISO 1133 regulation)” (¶ 33), and teaches drying the powder (¶ 87). Regarding the recitation, wherein, after sintering, the powdery composition in a dried, unconditioned state has an elongation at break of at least 2.0%, wherein the water content in the dry, unconditioned state is at most 0.2 weight percent, based on the total weight of the powdery composition after sintering, and the elongation at break is determined according to ISO 527-1, Saito laser-sinters the Example 2 (PA66) and Example 3 (PA9T) powders on an SLS apparatus into ISO 3167 Type 1A multipurpose tensile specimens and tensile-tests them “according to ISO 527 regulation” at 50 mm/min (¶ 116). The sintered Example 2 specimens were free of surface defects and exhibited an initial tensile strength of 83 MPa; the Example 3 specimens exhibited 165 MPa (table 2). Although Saito does not expressly report elongation at break or specimen water content, the sintered article is produced from a powdery composition that is identical or substantially identical to the claimed composition (the same polyamide, with the claimed melting temperature and melt-flow characteristics, dried before processing) by the very SLS process recited in the claim. The resulting article is therefore reasonably presumed to inherently possess the recited characteristics and the burden shifts to Applicant to prove otherwise. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977). Saito’s powder is dried before fabrication and the build is conducted at a part-bed temperature of 262C, which drive off moisture, and no post-build conditioning step is disclosed, so the as-built, as-tested specimens are in a dried, unconditioned state; and the Example 2 specimens sustained an 83 MPa stress in the ISO 527 tensile test, evidencing dense, well-consolidated, ductile parts consistent with an elongation at break of at least 2.0%. The final intended use phrase in claim 10 is, in any event, expressly disclosed in Saito. The powder is used in layer-by-layer powder bed (¶ 3).
Claim 2: Saito discloses the polyamide including PA6.6 and PA9T (examples 2-3).
Claim 3: Saito discloses mixtures with second polyamides including PA410 (claim 11).
Claim 4: Saito discloses a melt flow rate of 7 g/10 min and 10 g/10 min measured at a temperature 15C above the molding point under a 2.16 kg load (examples 2-3), and further teaches that the powder MFR under these conditions is preferably 0.5-50 g/10 min, and 1.5-30 g/10 min in terms of strength of a fabrication object (¶ 34). A MFR of 7 g/10 min corresponds to a melt volume flow rate on the order of about 7 cm3/10 min (polyamide melt density is about 1 g/cm3). Even accounting for the higher 5 kg load recited in the claim and, for the first condition, the moderately higher test temperature of 30-35 C above the melting temperature, the melt flow of Saito’s polyamide powders remains far below, by roughly an order of magnitude or more, the claimed ceilings of 700 cm3/10 min and 300 cm3/10 min. Because Saito’s powder is identical or substantially identical to the claimed powder (a PA66 or PA9T laser-sintering powder of like particle size and low melt flow), it is reasonably presumed to inherently satisfy the claimed melt-flow-index ceilings when tested under the recited conditions, and the burden shifts to Applicant to prove otherwise. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977).
Claim 5: Saito laser-sinters the Example 2 (PA66) and Example 3 (PA9T) powders on an SLS apparatus into ISO 3167 Type 1A multipurpose tensile specimens and tensile-tests them “according to ISO 527 regulation” at 50 mm/min (¶ 116). The sintered Example 2 specimens were free of surface defects and exhibited an initial tensile strength of 83 MPa; the Example 3 specimens exhibited 165 MPa (table 2). Although Saito does not expressly report elongation at break or specimen water content, the sintered article is produced from a powdery composition that is identical or substantially identical to the claimed composition (the same polyamide, with the claimed melting temperature and melt-flow characteristics, dried before processing) by the very SLS process recited in the claim. The resulting article is therefore reasonably presumed to inherently possess the recited characteristics and the burden shifts to Applicant to prove otherwise. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977). Saito’s powder is dried before fabrication and the build is conducted at a part-bed temperature of 262C, which drive off moisture, and no post-build conditioning step is disclosed, so the as-built, as-tested specimens are in a dried, unconditioned state; and the Example 2 specimens sustained an 83 MPa stress in the ISO 527 tensile test, evidencing dense, well-consolidated, ductile parts consistent with an elongation at break in the claimed range.
Claim 6: Saito discloses a D50 of 51 microns (Table 1).
Claims 7 and 16: Saito discloses the PA powder is present at 99.8 % (Example 2).
Claim 8: Saito discloses the composition includes 1% PEP-36 (example 2).
Claims 12-14: Saito discloses PA6.6 (example 2).
Claim 15: Saito discloses a D50 of 51 microns (example 2).
Claim 17: Saito discloses a strength of 83 MPA (example 2).
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 LARRY THROWER whose telephone number is (571)270-5517. The examiner can normally be reached 9am-5pm MT M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Susan Leong can be reached at 571-270-1487. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LARRY W THROWER/Primary Examiner, Art Unit 1754
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