DETAILED ACTION
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 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.
Claim 17 is 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.
Specifically, claim 17 requires an object that is “that is colored blue by an optical detection additive.” However, the claim also makes the optical detection additive optional based on recitation of between 0.05% and 5% by weight of an optical detection additive or between 1% and 40% by weight of a magnetic detection additive. It is unclear whether the optical detection additive is a required part of the composition.
Additionally, it is unclear whether the optical detection additive referenced in lines 13-14 of the claim is the same as the optical detection additive referenced in lines 13-14 of the claim. In particular, that the last bullet point references “an optical detection additive” rather than “the optical detection additive”.
Response to Arguments
Applicant’s arguments, filed 4/13/2026, with respect to the rejection(s) of claim(s) 17 under 35 USC 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Steele in view of Abbot and Diekmann.
Regarding claim 17, the Applicant argues that the optical detection additive ensures the resulting 3D object is colored in mass which advantageously ensures the detection of broken fragments by color.
Additionally, the claims are drawn to a powder composition in which the optional detection additive appears to be optional (note the “or” in line 10 of claim 17). The blue color is associated with the intended use of the composition. In other words, a composition capable of being combined with a blue colorant and used in an additive manufacturing process to form a 3D object falls within the scope of the claims whether or not an optical detection additive is present. The claims are not drawn to the three-dimensional object itself; the optional detection additive having a specified detection wavelength appears to be optional; and no further limitations are placed on the optical detection additive recited in the final bullet point of claim 17. The Applicant’s arguments relating to dyes and pigments appear drawn to the intended use rather than the composition.
The Applicant addresses that the optical detection additive is not a dye which is soluble in the surrounding medium but a pigment that is integrated into the polyamide particles. The Applicant argues that dyes are not taken in to consideration because they can migrate into food stuff due to their high solubility and spinels and oxides are highly insoluble.
The Applicant argues that Steele teaches a composition comprising copolyamides which is structurally different than the powder composition of claim 17.
The colorant of Steele reads on the claimed “optical detection additive.”
Additionally, the Examiner notes that a mixture of copolyamides does not teach away from the composition of claim 17.
The Applicant argues that Steele lacks the dry mixing of two distinct polyamide powders where one powder is in optical detection pigment with particles and the other is a natural polyamide. The amended claim “where the particles have been obtained by dry mixing a powder of natural polyamide with a powder of a polyamide containing an optical detection additive, the natural polyamide powder being a powder comprising 95-100% polyamide” is a product by process claim. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See MPEP 2113. Steele does teach the inclusion of a colorant in the powder composition which Steele does not refer to as an “optical detection additive” and does not teach is precrushed with a different polyamide than the first polyamide. However, the resulting composition is the same as the powder composition taught in claim 1. Therefore the colorant of Steele reads on the claimed optical detection additive of claim 1.
While Steele does not refer to the colorant as being buried insoluble pigments for post-manufacturing parts detection, the resulting blue polymer powder will have the same effect, where the resulting 3D object will be blue and the polyamide powder composition will also be blue.
While the stated goals of Steele and the Applicant are different, Steele in view of Abbot, in further view of Diekmann does read on the limitations of claim 17. The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) MPEP 2144 (IV).
Regarding claim 21, Steele in view of Abbot and Diekmann teaches a composition substantially identical to claimed composition. A composition identical to the claimed composition necessarily possesses the claimed physical properties. MPEP 2112.01.
Regarding claim 33, The Applicant’s arguments cite a portion of the specification describing certain tendencies associated with a previous intended use of a portion of the claimed polyamide powder. No evidence has been provided in support of this assertion and the applicant has not established that the prior art polyamide would have an internal viscosity falling outside the claimed range.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 17-23 and 33 are rejected under 35 U.S.C. 103 as being unpatentable over Steele US 20180009982A1 in view of Abbott US 20180147777A1 and Diekmann US 20180093925 A1 as evidenced by Cobalt Blue: Technical Analysis and Applications of a High-Performance Composite Inorganic Pigment (retrieved on: <https://www.zpigments.com/cobalt-blue-technical-analysis-and-applications-of-a-high-performance-composite-inorganic-pigment/#:~:text=and%20Chemical%20Stability-,I.,for%20outdoor%20and%20harsh%20environments> retrieved from: 1/5/2026).
Regarding claims 17-18, 20, 23, Steele teaches a polyamide powder (Title). Steele teaches the polyamide powder of embodiment 1 and 13 comprises 94-99% polyamide (Paragraph [0115] and Paragraph [0146]). This overlaps with the claimed range of 60-99% by weight polyamide. Steele also teaches the composition comprises less than 10% of an electro-magnetic radiation absorber (Paragraph [0090]. However, Steele is silent on the identity of the electromagnetic radiation absorber.
Abbott teaches 3D printing using a powder build material that may be a polyamide (Paragraph [0018]). Abbott also teaches that this polyamide powder may include magnetite as an EMR absorber (Paragraph [0064]). Steele teaches the polyamide powders are used in 3D printing applications (Paragraph [0003] and [0056]). It would have been obvious to one of ordinary skill in the art prior to the effective filing date to combine the teachings of Steele and Abbott to use magnetite as the EMR absorber because this represents an EMR absorber identified by Abbott as being suitable for use in applications similar to Steele. The selection of a known material based on its suitability for its intended use is prima facie obvious. See MPEP 2144.07
Magnetite reads on the claimed magnetic detection additive. The amount of less than 10% overlaps with the claimed range of 1-40% of magnetic detection additive.
Steele also teaches the composition comprises 2.5-40 wt% of a flow agent (Paragraph [0118]). This overlaps with the claimed range of 0.1-4.5wt% of a flow agent. Steele also teaches the polyamide powder comprises a D10 20-35 microns, a D50 of 45-70 microns and a D90 of less than 120 microns (Paragraph [0135]). This overlaps with the claimed range of D50 of 35-55 microns, D10 of 15-25 microns, D90 of less than 80-100 microns.
Steele teaches the composition can comprise a colorant or pigment but Steele is silent on the type of color imparting compound (Paragraph [0117]). Steele teaches the amount of colorant ranges from 0-5wt%. This overlaps with the claimed range of 0.05-5% and reads on the claimed “optical detection additive.”
Diekmann teaches a polyamide powder used for sintering applications (Title). Steele teaches the polyamide powder can be used in sintering applications (Paragraph [0032]). Diekmann teaches the composition can comprise from 0.05-5% of flow aids (Paragraph [0026]). Diekmann teaches the polyamide powder can also comprise pigments and dyes (Paragraph [0024-0025). Diekmann also teaches the composition can comprise metal powders that enhance magnetic properties (Paragraph [0027]).
Diekmann teaches a similar polymer powder composition used in similar applications. Diekmann teaches a colorant can be cobalt blue (Paragraph [0025]). Cobalt blue is a compound that comprises a spinel structure (Cobalt Blue: A Technical Analysis, Page 1). Diekmann teaches a suitable colorant used in similar applications. It would have been obvious to one of ordinary skill in the art at the time of filing to select cobalt blue as the pigment in Steele’s composition as Diekmann recognizes it as being suitable for use in the same capacity in similar compositions with similar end uses. It is prima facie obvious to select a known material based on its suitability for its intended use. See MPEP 2144.07. This reads on the claimed “3 dimensional object colored blue.”
The Applicant argues that Steele lacks the dry mixing of two distinct polyamide powders where one powder is in optical detection pigment with particles and the other is a natural polyamide. The amended claim “where the particles have been obtained by dry mixing a powder of natural polyamide with a powder of a polyamide containing an optical detection additive, the natural polyamide powder being a powder comprising 95-100% polyamide” is a product by process claim. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See MPEP 2113. Steele does teach the inclusion of a colorant in the powder composition which Steele does not refer to as an “optical detection additive” and does not teach is precrushed with a different polyamide than the first polyamide. However, the resulting composition is the same as the powder composition taught in claim 1. Therefore the colorant of Steele in view of Abbot and Diekmann reads on the claimed optical detection additive of claim 1.
Steele and Diekmann are silent on the detection wavelength range of cobalt blue. However, cobalt blue spinel structure is known to have notable UV vis absorption from 500-650 nm. This overlaps with the claimed range of 0.5-0.12 microns. Therefore this reads on the claimed “optical detection additive” which allows for optical detection between 0.5-0.12 microns.
Steele teaches the composition comprises copolyamides. Steele teaches the copolyamides can be copolyamides of nylon 6.12, nylon 6I, and nylon 6T (Paragraph [0059]). A copolyimide comprised of those components would be 100% polyamide. This overlaps with the claimed range of 95-100% polyamide.
Regarding claim 19, Steele teaches a method of forming polyamide powder where a natural polyamide powder is compounded with a carbon black polyamide (Table 3). Carbon black is a pigment so this reads on the claimed detection additive. This reads on the limitations of claim 19.
Regarding claim 21, Steele in view of Abbott and Diekmann results in a composition identical to the claimed composition and will therefore necessarily possess the claimed physical property. See MPEP 2112.01.
Regarding claim 22, Steele teaches that the delta T of the composition is greater than 45C (Paragraph [0042]). This overlaps with the claimed range of 30-50C.
Regarding claim 33, claim 33 is defined in terms of product-by-process,
specifying a previous intended use of a portion of the polyamide-based powder. The
claim does not appear to impart any physical or compositional distinction between the
fresh polyamide powder and recovered polyamide powder.
When a product recited in product-by-process format reasonably appears to be
the same as or obvious from a product of the prior art, the burden is on applicant to
show that the prior art product is in fact different from the claimed product, even though
the products may be made by different processes. In re Thorpe, 777 F.2d 695, 697
(Fed. Cir. 1985).
The product-by-process limitation in question does not appear to contribute
additional structure to the claimed product and therefore need not be explicitly taught by
the prior art in order to be taught by Steele in view of Abbott and Diekmann.
Steele in view of Abbott and Diekmann results in a composition identical to the claimed composition and will therefore necessarily possess the claimed internal viscosity See MPEP 2112.01.
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 LILY K SLOAN whose telephone number is (703)756-5875. The examiner can normally be reached Monday-Friday 9:00-5:30 ET.
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, Robert Jones can be reached at (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LILY K SLOAN/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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