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 12/31/2025 has been entered.
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 12-13 and 17-29 are rejected under 35 U.S.C. 103 as being unpatentable over Liggat (US 5,693,389).
Claim 12: Liggat discloses a particulate composition obtained by annealing and milling polyhydroxybutyrate into a powder having a size of 5-500 microns, which encompasses the claimed range (Example 4; col. 2, lines 4-55). A prima facie case of obviousness exists when the ranges of a claimed element overlap or are encompassed by the ranges disclosed in the prior art. E.g., In re Geisler, 116 F.3d 1465, 1469, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (CCPA 1976); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974). Such is the case here. It has also been held that a prima facie case of obviousness exists when the claimed range and the prior art range do not overlap but are close enough such that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (concluding that a claim directed to an alloy containing “0.8% nickel, 0.3% molybdenum, up to 0.1% maximum iron, balance titanium” would have been prima facie obvious in view of a reference disclosing alloys containing 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium).
Claim 13: With respect to the material properties required by the claims, it is the position of the examiner that because the reference teaches the use of the same materials for the same purpose as required by the instant claims, the material properties would be expected to be the same. "[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)).
Claim 17: Liggat discloses the starting material being a copolymer of 3-hydroxybutyric and 3-hydroxyvaleric acid (col. 2, lines 4-8).
Claim 18: Liggat discloses additives (col. 3, lines 65-67).
Claim 19: Liggat discloses filtering (col. 7, lines 20-28).
Claim 20: Liggat discloses flow aids (col. 3, lines 65-67).
Claim 21: Liggat does not rely on optional step (b).
Claim 22: Liggat discloses the temperature being 170C (Example 4).
Claims 23-29: The disclosed compositions and the instantly claimed compositions appear to be essentially the same, comprised of the same components, i.e. a milled polyhydroxybutyrate powder with a D50 encompassing the claimed range. In the event any differences can be shown for the composition of the product-by-process claims 23-29 as opposed to the composition taught by Liggat, such differences would have been obvious to one of ordinary skill in the art prior to the effective filing date of the application as a routine modification of the composition in the absence of a showing of unexpected results. See In re Thorpe, 227 USPQ 964 (Fed. Cir. 1985). Also, when the examiner has found a substantially similar product as in the applied prior art, the burden of proof is shifted to Applicant to establish that their product is patentably distinct and not the examiner to show the same process of making. In re Brown, 173 USPQ 685 and In re Fessmann, 180 USPQ 324.
Allowable Subject Matter
Claims 14-15 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is an examiner’s statement of reasons for allowance: the prior art of record does not teach or suggest an additive manufacturing sintering process as claimed, as discussed in the response filed 12/31/2025.
Response to Arguments
Applicant's arguments filed 12/31/2025 have been fully considered, to the extent they are applicable to the rejections above, but they are not persuasive.
Applicant argues that the preamble of claim 12 recites “for additive manufacturing sintering processes” and that a person of ordinary skill in the art “would recognize that additive manufacturing is fundamentally different from the processes of Liggat.” (Emphasis in Applicant’s response). This argument has been considered but is not persuasive. The preamble language is taken to be an intended use which does not limit the scope of a composition claim. It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable. See In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990) ("The discovery of a new property or use of a previously known composition, even when that property and use are unobvious from prior art, can not impart patentability to claims to the known composition."); Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 782, 227 USPQ 773, 778 (Fed. Cir. 1985) (composition claim reciting a newly discovered property of an old alloy did not satisfy section 102 because the alloy itself was not new); In re Pearson, 494 F.2d 1399, 1403, 181 USPQ 641, 644 (CCPA 1974) (intended use of an old composition does not render composition claim patentable); In re Zierden, 411 F.2d 1325, 1328, 162 USPQ 102, 104 (CCPA 1969) ("[M]ere statement of a new use for an otherwise old or obvious composition cannot render a claim to the composition patentable."); In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962) (statement of intended use in an apparatus claim failed to distinguish over the prior art apparatus); In re Hack, 245 F.2d 246, 248, 114 USPQ 161, 162 (CCPA 1957) ("the grant of a patent on a composition or a machine cannot be predicated on a new use of that machine or composition"); In re Benner, 174 F.2d 938, 942, 82 USPQ 49, 53 (CCPA 1949) ("no provision has been made in the patent statutes for granting a patent upon an old product based solely upon discovery of a new use for such product").
Applicant further argues that Liggat states that the size of the particles is not critical, and “a person of ordinary skill in the art is aware that particle size is crucial for an additive manufacturing process . . .” (Emphasis in Applicant’s response). This argument has been considered but is also not persuasive. Liggat discloses a particle size range encompassing the claimed range, and the preamble is interpretated as an intended use, as discussed above. Applicant can rebut a prima facie case of obviousness based on overlapping or encompassed ranges by showing the criticality of the claimed range. "The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range." In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Applicant has asserted “particle size is crucial," but has provided no evidence of unexpected results relative to the particle size range taught by Liggat.
Conclusion
THIS ACTION IS MADE FINAL. 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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