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 .
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required:
The instant specification does not disclose where the PBT particles are distinctly identifiable.
The instant specification also does not disclose where the powder comprises less than 5% by weight of free PBT particles that are not directly or indirectly bonded to one of the Al2O3 particles.
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.
Claims 6-8 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.
In claim 6, applicants claim “where the PBT particles are distinctly identifiable.” Applicants do not disclose what distinctly identifiable means or how this is determined. It is unclear as to whether a PBT particle is distinctly identifiable if it is, for example, fused together with another particle(s), or if it is only viewed as half of a particle.
In claim 7, applicants claim “where the powder comprises less than 5% by weight of free PBT particles that are not directly or indirectly bonded to one of the Al2O3 particles.” Applicants do not determine how this property is determined; therefore, it is unclear as to how one of ordinary skill in the art would measure whether or not a product met the scope of this claim.
In claim 8, applicants claim the flowability of the powder; however, do not define how the flowability is measured. There are a number of possible ways to measure the flowability; therefore, it is unclear as to how applicants obtained this value.
Regarding claim 8, the phrase "optionally" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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 1-7 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over WO 2021/059218.
WO ‘218 discloses core-shell particles or powders comprising a ceramic core, specifically listed to include alumina, and a shell of a semi-crystalline polymer, specifically listed to include PBT (p. 2, [0008]). WO ‘218 discloses that in the core-shell particles, the shell can surround substantially all of the surface of the core (p. 3, [0009]). WO ‘218 discloses that the core-shell particles can have relatively large fractions of ceramics, between 50-90 vol%, and 50-70 vol% (p. 3, [0010]). WO ‘218 discloses that the semi-crystalline polymer is present between 10-50 vol% and is not crosslinked (p. 4, [0012]). WO ‘218 discloses that the core-shell particles are in powder form and have a Dv50 of 50 nm to 100 micron (p. 4, [0012]).
WO ‘218 does not specifically disclose whether the shell polymer is agglomerated; however, WO ‘218 discloses at least partially dissolving the polymer in the solvent ([0067]) and then cooling to precipitate the polymer; therefore, the polymer inherently agglomerates when precipitated as the particles were never fully dissolved.
Alternatively, one of ordinary skill in the art would expect the PBT to be present as an agglomerated polymer as WO ‘218 appears to teach a similar method as taught by the instant invention and WO ‘218 does not teach de-aggregating the polymer particles as it does the ceramic particles.
WO ‘218 anticipates or is prima facie obvious over instant claims 1-2 and 4.
As to claim 3, WO ‘218 discloses that the powders have a solvent content of 3000 ppm or less (p. 9, [0038]).
Claims 4-8 are rejected under 35 U.S.C. 103 as obvious over WO 2021/059218, as applied above to claims 1-4.
WO ‘218 anticipates or is prima facie obvious over instant claims 1-4, as described above and applied herein as such.
As to claim 4, WO ‘218 teaches that the core-shell particles are in powder form and have a Dv50 of 50 nm to 100 micron (p. 4, [0012]), which overlaps with the claimed range of 10-30 micron, and it has been held that overlapping ranges are sufficient to establish prima facie obviousness. See MPEP 2144.05.
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the range taught by the reference because overlapping ranges have been held to establish prima facie obviousness.
As to claim 5, WO ‘218 teaches the cores in a ceramic powder as having a Dv50 of 50 nm to 100 micron, which overlaps with the claimed range of 1-10 micron, and it has been held that overlapping ranges are sufficient to establish prima facie obviousness. See MPEP 2144.05.
As to claim 6, WO ‘218 discloses that the shells of adjacent core-shell particles join sufficiently to resist separation but not so much that the independent boundaries/identities of the adjacent shells are lost (p. 9, [0041]). WO ‘218 shows the unmodified polymer as a powder (Table 1B, p. 24, [0093]). WO ‘218 also discloses at least partially dissolving the polymer in the solvent ([0067]) and then cooling to precipitate the polymer; therefore, the polymer agglomerates when precipitated as the particles were never fully dissolved. Therefore, one of ordinary skill in the art would expect the PBT shell powder to be distinctly identifiable.
As to claims 7-8, WO ‘218 teaches composite particles which are prepared using a similar method. One of ordinary skill in the art would expect the PBT to fully precipitate upon the ceramic and/or itself, resulting in little to no free PBT. Additionally, WO ‘218 teaches that the core-shell composite particles are agitated during cooling to resist agglomeration of the core-shell particles. Therefore, one of ordinary skill in the art would expect the core-shell composite particles to have a high flowability.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
WO 2017/012119 teaches core-shell structured particles; however, the polyester is crosslinked.
US 2018/0369908 teaches powder particles where PBT is sintered together with alumina; however, the particles only allow for the presence of 1-5 vol% PBT.
US 20130171416 teaches polymer-coated inorganic particles; however, does not teach or suggest PBT as a suitable polymer.
US 2020/0339764 teaches a modifying a polymer particle with an additive; however, the amount of additive is outside of the claimed amount of 50-90 vol% PBT.
US 9796897 teaches ceramic-polymer composite; however, the volumetric ratio of ceramic powder to thermoplastic polymer is 1:3 to 1:30, which is outside of the claimed amount of ceramic powder.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIEANN R JOHNSTON whose telephone number is (571)270-7344. The examiner can normally be reached Monday-Friday, 8:00 AM - 4:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at (571)272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Brieann R Johnston/Primary Examiner, Art Unit 1766
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