DETAILED ACTION
Claims 17-27 are pending and currently under review.
Claims 1-16 are cancelled.
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.
Claims 17-27 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. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 17 recites the broad recitation that the binder (B) merely contains at least polyoxymethylene, and the claim also recites that the binder contains specific ranges of polyoxymethylene, polyolefin, and a further polymer, which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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 (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 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.
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.
Claim(s) 17-27 is/are rejected under 35 U.S.C. 103 as being unpatentable over ter Maat et al. (US 2012/0235330).
Regarding claim 17, ter Maat et al. discloses a process for treating a green shaped body, which one of ordinary skill would understand to exist in three dimensions and therefore be three-dimensional [abstract]. The process of ter Maat et al. includes a step of providing a green body of inorganic powder and a binder, said binder including 50 to 95 weight percent polyoxymethylene and 5 to 50 weight percent of other polymers such as polyolefin in addition to others (ie. further polymers); followed by providing an atmosphere of anhydrous oxalic acid in a concentration of 0.1 to 1 percent and treating the green body with said atmosphere at a temperature of 100 to 160 degrees C in an inert carrier gas [abstract, 0030, 0048, 0069-0072, 0076]. The examiner notes that the aforementioned parameters of ter Maat et al. overlap with those as claimed, which is prima facie obvious. See MPEP 2144.05(I).
Regarding claim 18, ter Maat et al. discloses the process of claim 17 (see previous). ter Maat et al. further teaches that the inorganic powder is metal having a powder size of up to 50 micrometers, which overlaps with the claimed range [0050-0052]. See MPEP 2144.05(I). ter Maat et al. does not expressly teach that powder size is measured by laser diffraction. However, the examiner notes that this recitation merely pertains to how powder size is determined, which is not considered to impart any structure other than the claimed size of 0.1 to 80 micrometers as would have been recognized by one of ordinary skill. See MPEP 2113.
Regarding claim 19, ter Maat et al. discloses the process of claim 17 (see previous). The examiner notes that the aforementioned acid ratio and treatment temperature taught by ter Maat et al. above further overlap with the claimed ranges. See MPEP 2144.05(I).
Regarding claim 20, ter Maat et al. discloses the process of claim 17 (see previous). ter Maat et al. further teaches that the green body includes 40 to 65 weight percent inorganic powder and 35 to 60 percent binder and is made by injection molding, which overlaps with the claimed ranges [abstract]. See MPEP 2144.05(I).
Regarding claim 21, ter Maat et al. discloses the process of claim 17 (see previous). ter Maat et al. further teaches that the inert gas can be nitrogen for example [0071].
Regarding claim 22, ter Maat et al. discloses the process of claim 17 (see previous). ter Maat et al. does not expressly teach using a mixture of acids such that the anhydrous oxalic acid of ter Maat et al. would be recognized by one of ordinary skill to be completely (ie. 100%) anhydrous oxalic acid. Furthermore, the examiner notes that the instant claim merely recites a purity of the anhydrous oxalic and the mere purity of a product, by itself, does not render the product nonobvious. See MPEP 2144.04(VII). Specifically, one of ordinary skill would readily understand that high purity serves to avoid impurities and undesirable inclusions and would therefore be motivated to increase treatment acid purity.
Regarding claim 23, ter Maat et al. discloses the process of claim 17 (see previous). ter Maat et al. does not expressly teach that acid treatment occurs in a heating chamber. However, ter Maat et al. expressly teaches heating such that one of ordinary skill would understand that treatment must naturally occur in some kind of heating apparatus (ie. heating chamber) absent a specific teaching to the contrary.
Regarding claim 24, ter Maat et al. discloses the process of claim 23 (see previous). ter Maat et al. does not expressly teach a volume flow rate such that one of ordinary skill would understand that no particular volume flow rate (ie. 0) is present absent a specific teaching to the contrary. The examiner notes that zero volume flow rate falls within the claimed range.
Regarding claims 25-26, ter Maat et al. discloses the process of claim 17 (see previous). ter Maat et al. further discloses that it is known to perform debinding to achieve a brown part and subsequent sintering to achieve a sintered part, wherein the acid treatment of ter Maat et al. is a debinding treatment such that the green part is formed into a brown part after acid treatment, followed by sintering [0003].
Regarding claims 27, ter Maat et al. discloses the process of claim 26 (see previous). ter Maat et al. teaches acid heat treatment and sintering as stated above. ter Maat et al. does not expressly teach both steps performed in the same chamber. However, ter Maat et al. does not teach separate heating chambers or movement of the body between heating steps, such that one of ordinary skill would understand that heat treatment is performed in the same chamber absent a specific teaching to the contrary.
Claim(s) 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over ter Maat et al. (US 2012/0235330) in view of Todd et al. (2013, Developments in metal injection molding) and Sigma Aldrich (2009, Oxalic acid).
Regarding claim 22, ter Maat et al. discloses the process of claim 17 (see previous). ter Maat et al. does not expressly teach a purity as claimed. Todd et al. discloses that it is know to utilize highly concentrated oxalic acid for debinding [p.128]; wherein highly concentrated anhydrous oxalic acid of greater than 99% purity has been well-known and commercially available since 2009 [p.1]. Therefore, it would have been obvious to modify the process of ter Maat et al. by utilizing a highly concentrated oxalic acid for debinding as taught by Todd et al. for debinding, wherein an anhydrous oxalic acid of greater than 99% purity (ie. highly concentrated) is commercially available as taught by Sigma Aldrich.
Claim(s) 23 and 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over ter Maat et al. (US 2012/0235330) in view of Rodriguez (US 2019/0315964).
Regarding claims 23 and 27, ter Maat et al. discloses the process of claim 17 (see previous). ter Maat et al. does not expressly teach acid treatment in a chamber and sintering in the same chamber. Rodriguez discloses that it is known to perform debinding and sintering in the same furnace (ie. heating chamber) such that continuous processing can be achieved to increase production [0023]. Therefore, it would have been obvious to one of ordinary skill to modify the method of ter Maat et al. by performing debinding and sintering in the same furnace (ie. heating chamber) for the aforementioned benefits disclosed by Rodriguez.
Claim(s) 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over ter Maat et al. (US 2012/0235330) in view of Krug et al. (EP1438152, machine translation referred to herein).
Regarding claim 24, ter Maat et al. discloses the process of claim 23 (see previous). ter Maat et al. does not expressly teach acid treatment in a chamber and sintering in the same chamber. Krug et al. discloses that it is known to control distribution of acid during acid debinding treatment by controlling a volume flow rate of inert carrier gas of 500 to 1500 L/h for a chamber having a volume of 40 to 120 L [0020-0023]. Therefore, it would have been obvious to one of ordinary skill to modify the method of ter Maat et al. by controlling inert gas flow rate in order to control distribution of acid during debinding as disclosed by Krug et al. The examiner notes that the aforementioned parameters of Krug et al. result in a gas flow rate of approximately at least 4.2 chamber volume per hour as determined by the examiner, which overlaps with the claimed range. See MPEP 2144.05(I).
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 § 2146 et seq. 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 actual 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/apply/applying-online/eterminal-disclaimer.
Claims 17-27 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 9,162,97 in view of Nestle et al. (US 2016/0024293). The instant claims are identical to or overlapping with the patented claims in all aspects except for specific inorganic powder ratios and sizes and sintering steps. However, these parameters are all taught by Nestle et al. as desirable parameters for binders and debinding of said binders.
Claims 17-27 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5, and 7 of U.S. Patent No. 12,168,728 in view of ter Maat et al. (US 2012/0235330). The instant claims are identical to or overlapping with the patented claims in all aspects except for the use of anhydrous oxalic acid. However, this would have been obvious over ter Maat et al. as a desirable acid for debinding.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS A WANG whose telephone number is (408)918-7576. The examiner can normally be reached usually M-Th: 7-5.
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, Jonathan Johnson can be reached at 5712721177. 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.
/NICHOLAS A WANG/Primary Examiner, Art Unit 1734
Prosecution Insights