DETAILED ACTON
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 without traverse of Group I, claims 1-11 in the reply filed on 7/9/2026 is acknowledged.
Claims 12-21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 7/9/2026.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-11 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-3, 5-9, and 11 of copending Application No. 18/683,453 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Claim Rejections - 35 USC § 112(b)
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 1-11 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 1, 6-7, and 9-11 recite the limitation “wax-type material” throughout the listed claims. The addition of the word “type” extends the scope of the claims so as to render them indefinite since it is unclear what “type” is intended to convey. The addition of the word “type” to the otherwise definite expression renders the definite expression indefinite by extending its scope. Ex parte Copenhaver, 109 USPQ 118 (Bd. App. 1955).
Regarding dependent claims 2-5, and 8, these claims do not remedy the deficiencies of parent claim 1 noted above, and are rejected for the same rationale.
Claim Rejections - 35 USC § 102(a)(1)
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 (i.e., changing from AIA to pre-AIA ) 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. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2020/200426 A1 (hereinafter “WO426”). Applicant provided a copy of WO426 with the IDS filed 2/13/2024.
Regarding claims 1, 2, 3, 4, 5, and 7, WO426 teaches a filament suitable to be used in a 3D printing device comprising a metallic powder, a thermoplastic binder, and processing additives, where the process includes printing a shaped green body and sintering the body to obtain a shaped body (WO426, pg. 1, lines 3-5 and pg. 4, lines 5-11). WO426 further teaches Example 1 in which the filament comprises 93.48 wt.% tungsten carbide powder, 1.22 wt.% polyamide, 4.71 wt.% plasticizers of 4.56 wt.% docosanyl-4-hydroxybenzoat and 0.15 wt.% 2-ethylhexyl-4-hydrobenzoat, and 0.59 wt.% release agent (WO426, pg. 13, Example 1). The total amount of binder material is 5.93%, i.e., 1.22+4.56+0.15=5.93, therefore the amount of polyamide is 20.6% of the binder, i.e., 1.22/5.93, and the total amount of plasticizer is 79.4%, i.e., 4.71/5.93. WO426 teaches the plasticizer should be readily soluble and the polymer should be poorly soluble or insoluble in the extraction solvent (WO426, pg. 7, lines 22-24).
The binder material of Example 1 of WO426 falls within the compositional requirements of claims 1 and 7. The printing and sintering of WO426 corresponds to for use in a shaping and sintering process of claim 1. The polyamide of WO426 corresponds to the at least one first thermoplastic and/or wax-type material. The plasticizers of WO426 corresponds to at least one second thermoplastic and/or wax-type material or a plasticized thermoplastic and/or wax-type material. Moreover, the polyamide being insoluble and plasticizers being readily soluble of WO426 satisfy the requirement that the two materials differ in at least one material property (solubility in a solvent) and the first material is less soluble than the second material.
Given that the binder components of WO426 are substantially identical to the binder components as used in the present invention, as set forth above, it is clear that the binder of WO246 would inherently have a Tcross below 120°C (claim 1), exhibit a DSC melt peak temperature below 130°C (claim 2), and exhibit a viscosity, at a shear rate of 1/s, below 6 Pa·s at a temperature of 130°C (claim 3), below 8 Pa·s at a temperature of 110°C (claim 4), and below 10 Pa·s at a temperature of 100°C (claim 5).
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). See MPEP 2112.01 (I).
Regarding claims 6, 8, 9, 10, and 11, WO426 further teaches Example 1 in which the filament comprises 93.48 wt.% tungsten carbide powder, 1.22 wt.% polyamide, 4.71 wt.% plasticizers of 4.56 wt.% docosanyl-4-hydroxybenzoat and 0.15 wt.% 2-ethylhexyl-4-hydrobenzoat, and 0.59 wt.% release agent (WO426, pg. 13, Example 1). WO426 also teaches the at least one plasticizer is an ester mixture produced from p-hydroxybenzoic acid (WO426, pg. 8, lines 7-8).
The polyamide of WO426 corresponds to:
Claim 6: wherein the first thermoplastic and/or wax-type material b-i) and/or the second thermoplastic and/or wax-type material b-ii) is selected from vinyl ester polymers; polyolefins; polyamides; polyurethanes; paraffin waxes; ester-type waxes; polyolefin waxes; amide waxes; polycarbonate, poly-α-methylstyrene; water-soluble or water-dispersible thermoplastic polymers; and mixtures thereof
Claim 8: wherein b-i) is selected from polyesters, polyethers, polyolefins, polyolefin waxes, polyamides and polyacrylates
Claim 11: the first thermoplastic and/or wax-type material (b-i) is a polyamide (row 2 of table in claim 11).
The plasticizers containing docosanyl-4-hydroxybenzoat and 2-ethylhexyl-4-hydrobenzoat of WO426 corresponds to:
Claim 9: wherein b-ii) is selected from polar waxes, or a plasticized thermoplastic and/or wax-type material containing a polar plasticizer
Claim 10: wherein the binder component b-ii) is a wax-type material selected from aromatic esters and aromatic sulfonamides, or a plasticized thermoplastic and/or wax-type material containing a plasticizer selected from aromatic esters and aromatic sulfonamides
Claim 11: the second thermoplastic and/or wax-type material (b-ii) is an ester-type waxes (row 2 of table in claim 11).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIELLE CARDA whose telephone number is (571)270-1240. The examiner can normally be reached Monday-Friday 8:30-4:00 EST.
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, Sally Merkling can be reached at (571) 272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DANIELLE M. CARDA/Primary Examiner, Art Unit 1738
Prosecution Insights