DETAILED ACTION
In Reply filed on 01/15/2025, claims 21, 25-29, 31-32, 36-38, and 42-44 are pending. Claims 21, 26, 32, and 38 are currently amended. Claims 1-20 are canceled. No claim is newly added. Claims 21, 25-29, 31-32, 36-38, and 42-44 are considered in this Office 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 .
Response to Amendment
The amendment to the claims filed on 01/15/2026 does not comply with the requirements of 37 CFR 1.121(c) because the status identifiers of claims 21, 32, and 38 are improperly marked as “previously presented” WITH amendments. Amendments to the claims filed on or after July 30, 2003, must comply with 37 CFR 1.121(c).
Since the reply filed on 01/15/2026 appears to be bona fide, examiner would consider the claims 21, 32, and 38 as presented regardless of the status identifier.
Claim Objections
Claims 21 and 29 are objected to because of the following informalities:
Claim 21 should be corrected to “a monomer A [[is]]of methacrylic acid and a monomer B [[is]]of methyl methacrylate” (line 4).
Claim 29 should be corrected to “The soluble material of claim 21” (line 1).
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 38 and 42-44 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 38 recites the limitation “the water-dispersible sulfonated thermoplastic copolymer … having a melt flow ranging from 5-30 grams/10 minutes as measured by ASTM 1238” in lines 21-24. Instant Specification, as published in US 20240191087 A1, discloses that “the melt flow characteristics of thermoplastic used in fused deposition modeling have specific constraints in order to deposit and build an accurately shaped part using a heated liquefier the melt flow …… a desirable high melt flow for material deposited by a filament-pump type extruder is greater than 1 gms/10 minutes, as measured by ASTM D1238, ……more preferably, the melt flow is between 5-30 g/10 minutes” in para. [0053-0056] with a list of exemplary modeling materials such as ULTEMTM, PC, and ABS. Moreover, Instant Specification discloses that the sulfonated support material is a different element from the modeling material (e.g., see para. [0051]: “any shrinkage of the support material should be matched to that of the modeling material”). The disclosure does not support that the water-dispersible sulfonated thermoplastic copolymer has the met flow as recited. It seems the Applicant unintentionally missed to remove the limitation (see page 7 of Reply filed on 01/15/2026). For the purpose of examination, the limitation would not be considered.
Claims 42-44 are rejected under 35 U.S.C. 112(a) as being dependent from claim 38.
Appropriate correction of clarification is required.
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.
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 nonobviousness.
Examiner wishes to point out to applicant that claims are directed towards an article and as such will be examined under such conditions. The limitations which are directed to intended uses or capabilities of the claimed article are only given patentable weight to the extent which effects the structure of the claimed invention. Please see MPEP 2114, Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) and Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) for further details.
Examiner also wishes to point out to applicant that claims 21, 32, and 38 recites a product (i.e., a soluble material) comprising a water-dispersible sulfonated thermoplastic copolymer prepared by the process as recited in the respective claims. Each of the claims would be considered as product-by-process claims, and the claims would not be limited to the manipulations of the recited steps of the claims but only to the structure implied by the steps (see MPEP 2113).
Claims 21, 25-28, 31-32, 36-38, and 42-43 are rejected under 35 U.S.C. 103 as being unpatentable over Baum (US 20070055022 A1).
Regarding claim 21, Baum teaches a sulfonated (meth)acrylic acid copolymer that has been prepared by post-amidation (claims 11, 13; [0017-0021]; [0037-0038]). Baum teaches a soluble material configured as a consumable feedstock for use as a support material in the additive manufacture of a part (claim 11: (meth)acrylic acid copolymer; here, the limitation “configured as a consumable feedstock for use as a support material in the additive manufacture of a part” is directed to intended use or capabilities of the material; see MPEP 2114) comprising:
a water-dispersible sulfonated thermoplastic copolymer produced from a reaction product a monomer A is methacrylic acid and a monomer B is methyl methacrylate forming a primary carbon chain that comprises an initial non-water-dispersible thermoplastic copolymer, with monomer A containing pendant functional groups extending from the primary carbon chain, the pendant functional groups comprising acid groups; and wherein the non-water-dispersible thermoplastic copolymer comprises at least 18 mol % pendant functional groups, and wherein an alkali metal sulfonate salt is reacted onto some or all of the pendant functional groups to produce the water-dispersible sulfonated thermoplastic copolymer by amidizing the acid groups of the initial non-water-dispersible thermoplastic copolymer with an amine sulfonate salt (claim 11: (meth)acrylic acid copolymer comprising (a) from 50 to 80 % by weight of a poly(meth)acrylic acid basic structure and (c) from 5 to 50 % by weight of amide units based on aminoalkylsulfonic acids; claim 13: free-radical polymerization of (meth)acrylic acid to form a polymer I, and amidating the polymer I with at least one aminoalkanesulfonic acid; [0026]: the inventive (meth)acrylic acid copolymers can additionally comprise units of other ethylenically unsaturated monomers which can be copolymerized with (meth)acrylic acid, and suitable monomers are, for example, monoethylenically unsaturated carboxylic acids such as maleic acid, fumaric acid, itaconic acid, mesaconic acid, methylenemalonic acid and citraconic acid, and C1-C4-alkyl esters of monoethylenically unsaturated carboxylic acids such as methyl acrylate, ethyl acrylate, methyl methacrylate, ethyl methacrylate, hydroxyethyl acrylate, hydroxyethyl methacrylate, hydroxypropyl acrylate, hydroxypropyl methacrylate and hydroxybutyl acrylate; [0031-0033]: amide units based on aminoalkylsulfonic acids e.g., structural unit II based on aminoethansulfonic acid (taurine), saturated with any desired counter ion such as alkali metal ions; [0045]: monomers containing acid groups can be used in the polymerization in the form of free acids, or as salts, for example, sodium, potassium; [0080-0081]: in presence of excessive sodium hydroxide; of note, the reaction product (based on [0031-0033, 0045, 0080-0081]) is equivalent to the reaction product with an alkali metal sulfonate salt; [0017-0021]; [0037-0038]); and
wherein the pendant groups in the water-dispersible sulfonated thermoplastic copolymer is at least 18 mol % but not more than 40 mol % (claims 11, 13: (c) from 5 to 50 % by weight of amide units based on aminoalkylsulfonic acids; here, the disclosed range does not anticipates the recited range, and the disclosed range is represented by weight %, compared to the recited range represented by mol %. However, it would have been obvious, in consideration of comparable molecular weights of monomer units and the sulfonated amide units, respectively, that the disclosed range overlaps1 with the recited range between about 18 mol % and about 50 % by weight or about 40 mol %).
Baum is silent that the water-dispersible sulfonated thermoplastic copolymer is configured as a consumable feedstock for use as a support material in the additive manufacture of a part, has a glass transition temperature of at least 45 °C, and is configured to be extruded or to be deposited by electrophotography and being dispersible in tap water. However, Baum’s sulfonated polymeric compounds are identical or substantially identical in structure to the water-dispersible sulfonated copolymer as recited in claim 21 and [0062] of Instant Specification, as published in US 20240191087 A1).
Therefore, a prima facie case of anticipation is established to the claimed properties (i.e., water-dispersibility, a glass transition temperature, extrudability or deposit-ability by electrophotography, dispersibility in tap water) by Baum. See MPEP 2112.01. (Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)).
Regarding claim 32, Baum teaches all the limitations as presented above regarding claim 21. Although Baum is silent that (1) the water-dispersible sulfonated thermoplastic copolymer is provided as a toner powder consumable feedstock that is configured to be deposited in a layer-wise manner proximate a layer of the thermoplastic build material used to print the part, (2) the water-dispersible thermoplastic copolymer, and (3) the water-dispersible sulfonated thermoplastic copolymer is separable from the part by subjecting the water-dispersible sulfonated thermoplastic copolymer to ambient temperature water without the aid of any other solubility or dispersibility adjuvant, the limitations (1) through (3) are directed to intended use or capabilities of the sulfonated polymeric compounds or related to the intrinsic/implied properties of the polymeric compounds having identical or substantially identical in structure to the water-dispersible sulfonated copolymer as recited in claim 21 and [0062] of Instant Specification, as published. See MPEP 2112.01 and 2114.
Regarding claim 38, Baum teaches all the limitations as presented above regarding claim 21. Although Baum is silent that (1) the water-dispersible sulfonated thermoplastic copolymer is provided as the consumable feedstock that is configured to be extruded in a layer-wise manner, (2) the water-dispersible thermoplastic copolymer, and (3) the water-dispersible sulfonated thermoplastic copolymer is separable from the part by subjecting the water-dispersible sulfonated thermoplastic copolymer to ambient temperature water without the aid of any other solubility or dispersibility adjuvant, the limitations (1) through (3) are directed to intended use or capabilities of the sulfonated polymeric compounds or related to the intrinsic/implied properties of the polymeric compounds having identical or substantially identical in structure to the water-dispersible sulfonated copolymer as recited in claim 21 and [0062] of Instant Specification, as published. See MPEP 2112.01 and 2114.
Regarding claims 25, 36, and 42, Baum teaches that the alkali metal sulfonate salt is a sodium sulfonate salt or a lithium sulfonate salt ([0031-0033]: amide units based on aminoalkylsulfonic acids e.g., structural unit II based on aminoethansulfonic acid (taurine), saturated with any desired counter ion such as alkali metal ions; [0045]: monomers containing acid groups can be used in the polymerization in the form of free acids, or as salts, for example, sodium, potassium; [0080-0081]: in presence of excessive sodium hydroxide; of note, the reaction product (based on [0031-0033, 0045, 0080-0081]) is equivalent to the reaction product with an alkali metal sulfonate salt).
Regarding claim 26, Baum teaches that the proportion of the sulfonated pendant groups in the water-dispersible sulfonated thermoplastic copolymer is between 25-35 mol% (claims 11, 13: (c) from 5 to 50 % by weight of amide units based on aminoalkylsulfonic acids; here, the disclosed range does not anticipates the recited range, and the disclosed range is represented by weight %, compared to the recited range represented by mol %. However, it would have been obvious, in consideration of comparable molecular weights of monomer units and the sulfonated amide units, respectively, that the disclosed range overlaps2 with the recited range between about 25 mol % and about 50 % by weight or about 40 mol %).
Regarding claims 27 and 28, although Baum is silent that the consumable feedstock is melt extrudable and the additive manufacture is a fused deposition modeling process, and the consumable feedstock is a filament, the limitations are directed to intended use or capabilities of the sulfonated polymeric compounds or related to the intrinsic/implied properties of the polymeric compounds having identical or substantially identical in structure to the water-dispersible sulfonated copolymer as recited in claim 21 and [0062] of Instant Specification, as published. See MPEP 2112.01 and 2114.
Regarding claims 31, 37, 43, although Baum is silent that that the water-dispersible thermoplastic copolymer has a charge density of at least about 0.4 meq./g, suitable to exhibit water solubility or water-dispersibility, the limitation is related to the intrinsic/implied properties of the polymeric compounds having identical or substantially identical in structure to the water-dispersible sulfonated copolymer as recited in claim 21 and [0059, 0061] of Instant Specification, as published. See MPEP 2112.01.
Regarding claim 44, although Baum is silent that the water-dispersible thermoplastic copolymer is in a filament form, the limitation is directed to intended use or capabilities of the sulfonated polymeric compounds or related to the intrinsic/implied properties of the polymeric compounds having identical or substantially identical in structure to the water-dispersible sulfonated copolymer as recited in claim 21 and [0062] of Instant Specification, as published. See MPEP 2112.01 and 2114.
Claim 29 is rejected under 35 U.S.C. 103 as being unpatentable over Baum (US 20070055022 A1) in view of Fong 821 (US 4,919,821).
Regarding claim 29, Baum teaches the soluble material of claim 21, wherein the reaction is amidization (claim 13), but does not specifically teach that the amine sulfonate salt comprises sodium sulfanilate and the reaction is amidization.
Fong 821 teaches a water-soluble polymeric sulfonate compound that has been prepared by post-polymerization derivatization (col. 1 lines 12-14; col. 2 lines 1-4; col.2 lines 14-17). The derivatization process includes direct amidation of polyalkyl carboxylic acids and transamidation of copolymers containing carboxylic acid and (meth)acrylamide units (col.2 lines 34-37). The polymeric sulfonates are produced by an addition reaction between an aminosulfonic acid, such as sulfanilic acid, and taurine, or their sodium salts, and a copolymer of maleic anhydride and a vinylic compound such as styrene, methyl vinyl ether, or (meth)acrylamide (col. 2 lines 38-59). Fong 821 teach that the amine sulfonate salt comprises sodium sulfanilate and the reaction is amidization (Fong 821: col. 13 lines 35-50: sulfanilic acid with a solution of sodium hydroxide (i.e., in-situ generation of sodium sulfanilate), amidization; Table II, col. 15 line 40- col. 16 line 6: sodium sulfanilate, imidization) .
In the same field of endeavor of copolymer for water treatment as a scale inhibitor (Baum: abstract, [0001]; Fong 821: abstract), it would have been obvious to one of ordinary skill in the art at the time of filing invention to modify/substitute the aminosulfonic acid (e.g., taurine) of Baum with another known aminosulfonic acid such as sulfanilic acid or its sodium salt, listed as an alternative of taurine or its salt, as taught by Fong 821 in order to obtain known results or reasonable expectation of successful results of forming amide units based on aminosulfonic acids or their salts via amidation so as to integrate the sulfonic acid or sulfonated group to form a desired copolymer.
Response to Arguments
Applicant’s arguments with respect to claim(s) 21, 32, and 38 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.
The Examiner notes that this Office Action is made Non-Final as Applicant's amendment did not necessitate the new ground(s) of rejection presented in this Office action.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Fong (US 4,604,431) teaches a method of preparing copolymer of acrylamido sulfonic acids which comprises converting the acrylic acid or methacrylic acid groups in a polymer into acrylamido sulfonic group (abstract).
Yoshimura (US 20200157276 A1) teaches a sulfonated support material for 3D printing (abstract).
Swada (US 20210087341 A1) teaches a sulfonated thermoplastic resin composition as a soluble 3D modeling support material (abstract).
Sackmann (US 6,310,132 B1) teaches an aqueous emulsion polymers – a sulfo-containing maleic anhydride copolymer (abstract, formula I).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to INJA SONG whose telephone number is (571)270-1605. The examiner can normally be reached Mon. - Fri. 8 AM - 5 PM.
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/INJA SONG/Examiner, Art Unit 1744
1 In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP 2144.05 I).
2 In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP 2144.05 I).
Prosecution Insights