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 with traverse of Group III, claims 2-8 and 10 in the reply filed on August 4, 2025 is acknowledged. The traversal is on the ground(s) that EP ‘563 does not disclose the common technical feature. This is not found persuasive because the common technical feature is obvious over Monsheimer (US 2006/0071359) in view of Gabriel (US 2019/0177537), as discussed in the rejection below. Applicant also argues that there is no search burden. However, there is no requirement for a search burden in national stage applications.
The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 2-8 and 10 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claims do not fall within at least one of the four categories of patent eligible subject matter because “use” claims that do not purport to claim a process, machine, manufacture, or composition of matter fail to comply with 35 U.S.C. 101. In re Moreton, 288 F.2d 708, 709, 129 USPQ 227, 228 (CCPA 1961) (“one cannot claim a new use per se, because it is not among the categories of patentable inventions specified in 35 U.S.C. § 101”).
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 2-8 and 10 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.
Claims 2-8 and 10 recite a “use” but fail to recite any active, positive steps, rendering the claims indefinite.
Regarding claim 2, the phrase "in particular" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention.
Regarding claims 6-7, the term "preferably" renders the claims indefinite because it is unclear whether the limitation(s) following the term are part of the claimed invention.
Claim 6 recites the limitation "the range." There is insufficient antecedent basis for this limitation in the claim.
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.
Claims 2-8 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Monsheimer (US 2006/0071359) in view of Gabriel (US 2019/0177537).
Claims 10 and 4-5: Monsheimer discloses a use of a powdery composition (abstract). The composition includes at least one powder made of a polyamide, where the powder includes a high solution viscosity (1.4 – 2.0) which corresponds to a low melt flow index under standard conditions (20g/10 min at 160C/2.16 kg; ¶¶ 125). Monsheimer discloses that using higher viscosity polyamide leads to improved mechanical properties, especially higher tensile strain at break after sintering (elongation; ¶¶ 39-40). Thus, although Monsheimer does not test the composition at the temperatures claimed, Monsheimer’s composition would be expected to have the claimed melt flow indexes and elongation at break given the teachings regarding viscosity and melt flow index of the powder polyamide composition. "[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...[footnote 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) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)).
Monsheimer’s examples focus on nylon-11 and nylon-12 having a melting temperature that lies just below the claimed range (185-189C; ¶ 59). However, Gabriel discloses a use of a powder composition including at least one powder made of a polyamide, wherein the powder includes polyamides having melting points well above 240C (nylon-6,6 and nylon-4,6; ¶¶ 118-121). As taught by Gabriel, using polyamides within the claimed melting point range allows for reduced warpage and better recyclability of the powder (¶ 19). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the application to have included the polyamides of Gabriel in the powder of Monsheimer in order to reduce warpage and attain better recyclability of the powder.
Claim 2: Gabriel discloses the polyamide including a first polyamide being PA6.6 (¶¶ 118-121).
Claim 3: Gabriel discloses the polyamide including PA 6 (¶¶ 118-120).
Claim 6: Gabriel discloses the powder having a particle size in a range of 20-110 microns (¶ 62).
Claim 7: Gabriel discloses the PA powder is present 100% (¶ 12).
Claim 8: Monsheimer discloses 0.5 to 40% by weight of a filler (¶ 67).
Conclusion
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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/LARRY W THROWER/Primary Examiner, Art Unit 1754