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 .
DETAILED ACTION
This Office action is in response to the communication filed on 03/13/2026. Currently claims 15-32 are pending in the application; with claims 23-32 withdrawn from consideration.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111 (a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 15-22 are provisionally rejected on the ground of non-statutory double patenting as being obvious over claim 15-17, 19, 21-23, and 26 of co-pending Application No. 18/019,254 (reference application), in view of Hattig et al. (US Patent Application Publication Number 2017/0129177 A1), hereafter, referred to as “Hattig”. Although the claims at issue are not identical, they are not patentably distinct from each other because both the present application claims and the co-pending application claims disclose a sinter powder. This is a provisional non-statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Regarding claim 15, Application No. 18/019,254 (reference application) teaches in claim 15, a sinter powder (SP) comprising the following components:
59.5% to 99.85% by weight, based on the sum total of the percentages by weight of (A), (B), (C), (D) and (E), of at least one thermoplastic polyurethane (A),
0.05% to 0.5% by weight, based on the sum total of the percentages by weight of (A), (B), (C), (D) and (E), of at least one flow agent (B),
0.1 % to 5% by weight, based on the sum total of the percentages by weight of (A), (B), (C), (D) and (E), of at least one organic additive (C),
0% to 5% by weight, based on the sum total of the percentages by weight of (A), (B), (C), (D)and (E), of at least one further additive (D) and
0% to 30% by weight, based on the sum total of the percentages by weight of (A), (B), (C), (D) and (E), of at least one reinforcer (E),
But Application No. 18/019,254 (reference application) fails to explicitly teach that the thermoplastic polyurethane prepared by reacting:
a) MDI (an aromatic diisocyanate); with
b) a polyester polyol (aliphatic isocyanate-reactive compound) resulting from the reaction of adipic acid with 1 ,4-butanediol; and
c) 1,6-hexanediol and 1,4-butanediol (chain extenders);
and that the component (a) is selected from the group consisting of hexamethylene 1,6-diisocyanate (HDI) and dicyclohexylmethane 2,2'-diisocyanate (H12 MDI), and that the components (a), (b) and (c) each comprise not more than 15 mol % of aromatic moieties, based on the total amount of the respective component (a), (b) and (c).
However, Hattig teaches a powder comprising (Example 2, para. [0050]):
A) 99.8% by weight, based on the sum total of the percentages by weight of the powder, of a thermoplastic polyurethane prepared by reacting:
a) MDI (an aromatic diisocyanate); with
b) a polyester polyol (aliphatic isocyanate-reactive compound) resulting from the reaction of adipic acid with 1 ,4-butanediol; and
c) 1,6-hexanediol and 1,4-butanediol (chain extenders);
Therefore, it would have been obvious to a person of ordinary skill in the art at the time of filing claimed invention, to use a known technique of thermoplastic polyurethane as prepared by Hattig in the same way, because it teaches a process to manufacture a sinter powder that can be used for 3D printing to form an article (KSR Rationale C, MPEP 2143).
Additionally, Hattig also teaches in (para. [0033]), a list of aliphatic diisocyanates which can be used instead of MDI in the preparation of said thermoplastic polyurethane. Hattig teaches to use hexamethylene 1,6-diisocyanate, which is among the claimed group of materials. Therefore, it would have been obvious to a person of ordinary skill in the art at the time of filing claimed invention, to substitute hexamethylene 1,6-diisocyanate instead of an MDI, to obtain predictable results (KSR Rationale B, MPEP 2143), which provides high tensile strength combined with a high elongation at break for articles produced using the power by means of additive manufacturing (para. [0032]). The selection (substitution) would result in achieving the thermoplastic polyurethane (A) of the instant claim. It would also have been obvious to any ordinary artisan that the property of the final article will depend on compositional range, therefore, the composition of the ingredients would be considered a result effective variable, and the ingredients would be optimized. Moreover, the CCPA held that a particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation. Therefore, the use of an aliphatic diisocyanate resulting in a composition, wherein components (a), (b) and (c) each comprise not more than 15 mol % of aromatic moieties; would be a matter of optimization that would be performed under routine experimentation. Please see In In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). Hattig teaches to use organic additives, other additives, and reinforcing material etc. such as pigments, dyes, flame retardants, stabilizers, organic additives and reinforcers in the composition (para. [0043-0044]).
Regarding claim 16, Application No. 18/019,254 (reference application) teaches in claim 16, a sinter powder, wherein the at least one flow agent (B) is selected from the group consisting of silicon dioxide, silicates, silicas, metal oxides, minerals, borates, phosphates, sulfates and carbonates.
Regarding claim 17, Application No. 18/019,254 (reference application) teaches in claim 17, a sinter powder, wherein the sinter powder (SP) comprises:
i) 73.3% to 99.9% by weight of component (A), based in
each case on the sum total of the percentages by weight of (A), (B), (C), (D) and (E), and/or
ii) 0.1 % to 1.2% by weight of component (B), based in each case on the sum total of the percentages by weight of (A). (B). (C), (D) and (E), and/or
iii) 0% to 3% by weight of component (C), based in each case on the sum total of the percentages by weight of (A), (B), (C), (D) and (E), and/or
iv) 0% to 2.5% by weight of component (D), based on the sum total of the percentages by weight of (A), (B), (C), (D) and (E). and/or
v) 0% to 20% by weight of component (E), based on the sum total of the percentages by weight of components (A), (B), (C), (D) and (E).
Regarding claim 18, Application No. 18/019,254 (reference application) teaches in claim 26, a sinter powder, wherein the at least one organic additive (C) is selected from the group consisting of polyethylene waxes, polypropylene waxes, maleic acid- and/or maleic anhydride-grafted polypropylene waxes, amide waxes, fatty acid esters and glycerol fatty acid esters.
Regarding claim 19, Application No. 18/019,254 (reference application) teaches in claim 19 and 23, a sinter powder, wherein the sinter powder (SP)
has a particle size (D50) in the range from 10 to 150 µm wherein the particle size (D50) is determined by means of laser diffraction according to ISO 13320: 2020-01 (claim 19, (i)), and/or
ii) has a melting temperature (T M(SP), HI) in the range from 90 to 220° C., wherein the melting temperature (TM(SP), HI) is determined according to DIN EN ISO 11357-3: 2018-04 by means of differential scanning calorimetry (claim 19, (ii)), and/or
iii) has a bulk density in the range from 250 to 700 g/L (claim 19, (iv)), and/or
iv) is prepared by grinding, by precipitation, by melt emulsification or by micro-granulation (claim 23, step (a), grinding)
Regarding claim 20, Hattig teaches a sinter powder, wherein as component (b); i) polyols are used, wherein the content of polyols, which are not polyether polyols, is ≤15 wt. %, based on the total weight of the polyols, or ii) polyols are used, wherein the content of polyols, which are not polyester polyols, is ≤15 wt. %, based on the total weight of the polyols; by teaching to use a polyester polyol (aliphatic isocyanate-reactive compound) resulting from the reaction of adipic acid with 1 ,4-butanediol (para. [0050]). The wt. % of polyol would be a matter of optimization that would be performed under routine experimentation. Please see In In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977).
Regarding claim 21, Application No. 18/019,254 (reference application) teaches in claim 21, a sinter powder, wherein the at least one further additive (D) is selected from the group consisting of antinucleating agents, stabilizers, conductive additives, end group functionalizers, dyes, antioxidants, flame retardants and color pigments.
Regarding claim 22, Application No. 18/019,254 (reference application) teaches in claim 22, a sinter powder, wherein the at least one reinforcer (E) is selected from the group consisting of carbon nanotubes, glass beads and aluminum silicates.
Claim Rejections - 35 USC § 103
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. 103 that form the basis for the rejections under this section made 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 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 non-obviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 15-22 are rejected under 35 U.S.C.103 as being obvious over Hattig et al. (US Patent Application Publication Number 2017/0129177 A1), hereafter, referred to as “Hattig”.
Regarding claim 15, Hattig teaches a powder comprising (Example 2, para. [0050]):
A) 99.8% by weight, based on the sum total of the percentages by weight of the powder, of a thermoplastic polyurethane prepared by reacting:
a) MDI (an aromatic diisocyanate); with
b) a polyester polyol (aliphatic isocyanate-reactive compound) resulting from the reaction of adipic acid with 1 ,4-butanediol; and
c) 1,6-hexanediol and 1,4-butanediol (chain extenders);
B) 0.2% by weight, based on the sum total of the percentages by weight of the powder, of silica as flow agent.
Hattig also teaches that the powder can be sintered (para. [0046]), and therefore it is considered to be a sinter powder.
But Hattig fails to explicitly teach in Example 2, that the component (a) is selected from the group consisting of hexamethylene 1,6-diisocyanate (HDI) and dicyclohexylmethane 2,2'-diisocyanate (H12 MDI), and that the components (a), (b) and (c) each comprise not more than 15 mol % of aromatic moieties, based on the total amount of the respective component (a), (b) and (c). However, Hattig teaches in (para. [0033]), a list of aliphatic diisocyanates which can be used instead of MDI in the preparation of said thermoplastic polyurethane. Hattig teaches to use hexamethylene 1,6-diisocyanate, which is among the claimed group of materials. Therefore, it would have been obvious to a person of ordinary skill in the art at the time of filing claimed invention, to substitute hexamethylene 1,6-diisocyanate instead of an MDI, to obtain predictable results (KSR Rationale B, MPEP 2143), which provides high tensile strength combined with a high elongation at break for articles produced using the power by means of additive manufacturing (para. [0032]). The selection (substitution) would result in achieving the thermoplastic polyurethane (A) of the instant claim. It would also have been obvious to any ordinary artisan that the property of the final article will depend on compositional range, therefore, the composition of the ingredients would be considered a result effective variable, and the ingredients would be optimized. Moreover, the CCPA held that a particular parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation. Therefore, the use of an aliphatic diisocyanate resulting in a composition, wherein components (a), (b) and (c) each comprise not more than 15 mol % of aromatic moieties; would be a matter of optimization that would be performed under routine experimentation. Please see In In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977). Hattig also teaches to use organic additives, other additives, and reinforcing material etc. such as pigments, dyes, flame retardants, stabilizers, organic additives and reinforcers in the composition (para. [0043-0044]). However, it is noted that the claimed ingredient range of organic additives (C), further additives (D), and reinforcer (E) include 0%.
Regarding claim 16, Hattig teaches a sinter powder, wherein the at least one flow agent (B) is selected from the group consisting of silicon dioxide, silicates, silicas, metal oxides, minerals. borates, phosphates, sulfates and carbonates; by teaching to use silica (para. [0051]).
Regarding claim 17, Hattig teaches a sinter powder, wherein the sinter powder (SP) comprises:
i) 73.3% to 99.9% by weight of component (A), based in
each case on the sum total of the percentages by weight of (A), (B), (C), (D) and (E), and/or
ii) 0.1 % to 1.2% by weight of component (B), based in each case on the sum total of the percentages by weight of (A). (B). (C), (D) and (E), and/or
iii) 0% to 3% by weight of component (C), based in each case on the sum total of the percentages by weight of (A), (B), (C), (D) and (E), and/or
iv) 0% to 2.5% by weight of component (D), based on the sum total of the percentages by weight of (A), (B), (C), (D) and (E). and/or
v) 0% to 20% by weight of component (E), based on the sum total of the percentages by weight of components (A), (B), (C), (D) and (E)
by teaching in Example 2 (para. [0050]):
A) 99.8% by weight, based on the sum total of the percentages by weight of the powder, of a thermoplastic polyurethane
B) 0.2% by weight, based on the sum total of the percentages by weight of the powder, of silica as flow agent.
Hattig teaches to use organic additives, other additives, and reinforcing material etc. such as pigments, dyes, flame retardants, stabilizers, organic additives and reinforcers in the composition (para. [0043-0044]). However, it is noted that the claimed ingredient range of organic additives (C), further additives (D), and reinforcer (E) include 0%.
Regarding claim 18, Hattig teaches a sinter powder, wherein the at least one organic additive (C) is selected from the group consisting of polyethylene waxes, polypropylene waxes, maleic acid- and/or maleic anhydride-grafted polypropylene waxes, amide waxes, fatty acid esters and glycerol fatty acid esters; by teaching to use fatty acid esters (para. [0044]).
Regarding claim 19, Hattig teaches a sinter powder, wherein the sinter powder (SP)
i) has a particle size (D50) in the range from 10 to 150 µm (140 µm, para. [0051]) wherein the particle size (D50) is determined by means of laser diffraction according to ISO 13320: 2020-01, and/or
ii) has a melting temperature (T M(SP), HI) in the range from 90 to 220° C. (80-155° C., Table 1), wherein the melting temperature (TM(SP), HI) is determined according to DIN EN ISO 11357-3: 2018-04 by means of differential scanning calorimetry, and/or
iii) has a bulk density in the range from 250 to 700 g/L (density 1.01 g/cm3, Table 3), wherein the bulk density is determined according to DIN EN ISO 60: 2000-01. (It would have been obvious to any ordinary artisan that bulk density would be always lower than the material’s true (particle) density because bulk density measures the mass of a volume including the air-filled pores between particles, whereas particle density measures only the solid material, excluding those voids, so the same mass occupies more total space, resulting in a lower density value. The claimed value of 250 to 700 g/L, would be a matter of optimization that would be performed under routine experimentation. Please see In In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977)), and/or
iv) is prepared by grinding, by precipitation, by melt emulsification or by micro-granulation (use of pin mill (a type of grinder machine) to form the powder, para. [0051])
Regarding claim 20, Hattig teaches a sinter powder, wherein as component (b); i) polyols are used, wherein the content of polyols, which are not polyether polyols, is ≤15 wt. %, based on the total weight of the polyols, or ii) polyols are used, wherein the content of polyols, which are not polyester polyols, is ≤15 wt. %, based on the total weight of the polyols; by teaching to use a polyester polyol (aliphatic isocyanate-reactive compound) resulting from the reaction of adipic acid with 1 ,4-butanediol (para. [0050]). The wt. % of polyol would be a matter of optimization that would be performed under routine experimentation. Please see In In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977).
Regarding claim 21, Hattig teaches a sinter powder, wherein the at least one further additive (D) is selected from the group consisting of antinucleating agents, stabilizers, conductive additives, end group functionalizers, dyes, antioxidants, flame retardants and color pigments; by teaching to use pigments, dyes, flame retardants, stabilizers etc. (para. [0043]).
Regarding claim 22, Hattig teaches a sinter powder, wherein the at least one reinforcer (E) is selected from the group consisting of carbon nanotubes, glass beads and aluminum silicates; by teaching to use aluminum silicates (equivalent to aluminum oxide, and silicon dioxide, sometimes with other elements such as magnesium or sodium), Kaolin (hydrated aluminum silicates) in the composition (para. [0046]).
Responses to Arguments
Applicant’s argument filed on 3/13/2026 for the double patenting rejections has been fully considered. Applicant’s argument with respect to claim 15 has been considered, but is not persuasive. Applicant argues that the two applications (the present application and U.S. 18/019,254) address different technical problems, each of which is solved in a different way. However, the examiner takes the position that both the applications deal with sinter powder comprising of thermoplastic polyurethane, and thereby in the same technical field; and claim recitations read on each other. Additionally, Hattig teaches to compensate the deficiency between the two claim recitations. The applicant’s assertion that Office has not set forth sufficient reason or rationale for one of ordinary skill in the art to arrive at the present invention in view of the cited references is not persuasive, as the Office action clearly states to use a known technique of thermoplastic polyurethane as prepared by Hattig in the same way, because it teaches a process to manufacture a sinter powder that can be used for 3D printing to form an article (KSR Rationale C, MPEP 2143).
Similarly, applicant’s argument with respect to claim 15 for the 103 rejections has also been considered, but is not persuasive. Applicant argues that the Office's reasoning is only possible based on impermissible hindsight. However, as stated in the rejection section, the examiner maintains that, in light of Hattig, it would have been obvious to a skilled person to use hexamethylene 1,6-diisocyanate instead of MDI in example 2, to obtain predictable results (KSR Rationale B, MPEP 2143), which would provide high tensile strength combined with a high elongation at break for articles produced using the powder by means of additive manufacturing (para. [0032]). The examiner maintains that based on the teaching of Hattig, the rejection set forth in this office action address the scope of the claim, and is relevant.
Because the rejections are being maintained on the independent claim, and since there is no substantive arguments on the rejections against the references applied against rest of the dependent claims, these rejections are being maintained.
Conclusion
Applicant’s amendment necessitated the rejection presented in this Office action. Accordingly, 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOHAMMAD M AMEEN whose telephone number is (469) 295 9214. The examiner can normally be reached on Monday to Friday from 9.00 am to 6.00 pm (Eastern Time).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christina Johnson can be reached on (571) 272-1176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MOHAMMAD M AMEEN/Primary Examiner, Art Unit 1742
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