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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-5, 7 and 10 in the reply filed on 06/03/2026 is acknowledged.
Claims 11-13, 15, 17 and 19-22 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 06/03/2026.
Specification
The disclosure is objected to because of the following informalities: at p.16 in line 16, it is suggested to insert “,” between 2(i) and 2(j). Appropriate correction is required.
Claim Objections
Claims 1-5 are objected to because of the following informalities:
In reference to claim 1, in line 5, amend “composites” to “composite”, in order to ensure consistency and proper antecedent basis in the claim language. Appropriate correction is required.
In reference to claim 2, (1) in line 2, amend “(Ra)” to “, Ra,”, in order to avoid the use of parentheses in the claim language and (2) in line 4, amend “metal powder composite sheet” to “metal powder-polymer composite sheet”, in order to ensure consistency and proper antecedent basis in the claim language. Appropriate correction is required.
In reference to claim 3, (1) in line 2, amend “the ratio” to “a ratio”, (2) in line 2 amend “the densities” to “a density” and (3) in line 2, after “to” and before “the metal”, insert “a density of”, in order to ensure consistency and proper antecedent basis in the claim language. Appropriate correction is required.
In reference to claim 4, (1) in line 2, amend “the ratio” to “a ratio”, (2) in line 2 amend “the densities” to “a density” and (3) in line 3, after “to” and before “the metal”, insert “a density of”, in order to ensure consistency and proper antecedent basis in the claim language. Appropriate correction is required.
In reference to claim 5, in line 2, amend “the metal content” to “a metal content”, in order to ensure consistency and proper antecedent basis in the claim language. Appropriate correction is required.
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 3 and 4 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 reference to claim 3, the limitation “the polymer solution” is recited in line 2. There is insufficient antecedent basis for the limitation in the claim. For the purpose of compact prosecution, “the polymer solution” will be interpreted as “a polymer solution” in which the metal powder is to be dispersed and applied to a polymer substrate. It is suggested to amend “the polymer solution” to “a polymer solution”.
Further, a unit of the ratio of densities is set as gcm-3 in line 3, however, it is unclear how a ratio has a unit of density. For the purpose of compact prosecution, the unit will be interpreted as a unit associated with a density of the polymer solution and a density of metal powder. However, clarification is requested.
In reference to claim 4, the limitation “the polymer solution” is recited in lines 2-3. There is insufficient antecedent basis for the limitation in the claim. For the purpose of compact prosecution, “the polymer solution” will be interpreted as “a polymer solution” in which the metal powder is to be dispersed and applied to a polymer substrate. It is suggested to amend “the polymer solution” to “a polymer solution”.
Further, a unit of the ratio of densities is set as gcm-3 in line 3, however, it is unclear how a ratio has a unit of density. For the purpose of compact prosecution, the unit will be interpreted as a unit associated with a density of the polymer solution and a density of metal powder. However, clarification is requested.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 10 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
In reference to claim 10, claim 10 depends upon claim 1 which recites the limitation “the metal powder-polymer composite sheet has an increased polymer to metal powder ratio at a first side when compared to a second side of the metal powder-polymer composite sheet” in lines 3-5. The limitation of claim 1 requires the ratio of polymer to power to be larger at the first side when compared to the second side. Therefore, the first side having a higher polymer content when compared to the second side is already implied by the limitations of claim 1 and claim 10 is not further limiting.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 1, 5 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lupoi et al. (WO 2020/165193) (Lupoi).
In reference to claims 1 and 10, Lupoi discloses a metal powder-polymer matrix film comprising at least one metal powder and a polymer sheet, wherein the metal powder is on a surface of the polymer sheet (p. 4, lines 1-6) (corresponding to a metal powder-polymer composite sheet, the metal powder-polymer composite sheet comprising at least one metal powder and at least one polymer). The metal powder-polymer matrix film is flexible and recyclable (p. 3, lines 29-31) (corresponding to a recyclable and flexible metal powder-polymer composite sheet).
Lupoi discloses the metal powder particles are closely packed and attached to one side of the polymer sheet (p. 4, lines 33-34). Thus, it is clear the surface of the polymer sheet including the metal powder will have a polymer to metal powder ratio lower than a surface of the polymer sheet not including the metal powder (corresponding to an increased polymer to metal powder ratio at a first side when compared to a second side of the metal powder-polymer composite sheet, providing a non-homogenous composition in a cross-section; the first side of the metal powder-polymer composite sheet is higher in polymer content when compared to the second side of the metal powder-polymer composite sheet).
In reference to claim 5, Lupoi discloses the limitations of claim 1, as discussed above. Lupoi further discloses the flexible film comprises at least 90 wt% of the metal powder (p. 4, lines 12-13; claim 1) (corresponding to the metal content in the metal powder-polymer composite sheet is between about 80 wt% and about 99 wt%). Lupoi further discloses specific examples having a metal content between 91.0 and 97.5 wt% (Table 2).
Claim Rejections - 35 USC § 102/103
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.
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 2 is 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 Lupoi in view of Tomantschger et al. (US 2015/0111673) (Tomantschger).
In reference to claim 2, Lupoi discloses the limitations of claim 1, as discussed above. Lupoi discloses metal powder particles are closely packed and attached to one side of the polymer sheet (p. 4, lines 33-34; p. 5, lines 13-14, p. 12, line 35-p. 13, line 1; claim 7).
Given that the flexible film of Lupoi is substantially identical to the present claimed metal powder-polymer composite sheet in composition and structure, it is clear that the flexible film of Lupoi would inherently have a surface roughness value on the polymer sheet surface not having the metal powder particles attached thereon be less than about 60% of a higher surface roughness of the surface including the meal powder particles attached thereon.
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).
Alternatively, Lupoi does not explicitly teach the first side of the flexible film has a surface roughness value (Ra) less than about 60% of a higher Ra value of the second side of the flexible film, as presently claimed.
Tomantschger teaches a metal-clad polymer article ([0002]). The article includes a polymer substrate and a metallic layer deposited on a surface of the polymer substrate ([0021]). In order to achieve a desired appearance, ease of gripping/holding or antimicrobial use, the outer metal surface has a rough surfaces ([0174]). The surface roughness, Ra, of the outer metal surface is between ≥0.5 microns and ≤50 microns ([0174]; [0045]).
Tomantschger further teaches the of the polymer substrate to receive the metallic layer must be roughened to eliminate the smooth surface ([0031]; [0208]). Thus, it is clear the polymer substrate has a smooth surface before roughening or texturing, wherein a smooth surface has a Ra≤0.25 microns ([0093]).
In light of the motivation of Tomantschger, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to have the surface roughness of the metal powder attached to the one side of the polymer sheet of Lupoi have a surface roughness, Ra, between ≥0.5 microns and ≤ 50 microns, in order to provide a desired appearance, ease of gripping/holding or antimicrobial properties to the flexible film. Further, in light of the disclosure by Tomantschger that polymer substrates have smooth surfaces that require texturing before coating to achieve better adhesion between the substrate and coating, it would have been obvious to one of ordinary skill in the art that a polymer sheet has a smooth surface (i.e., Ra ≤0.25 microns), in order to provide a usable polymer sheet substrate.
Given that the flexible film of Lupoi in view of Tomantschger includes a surface roughness Ra of ≥0.5 microns and ≤50 microns at the surface of the polymer sheet having the metal powder particles attached thereon (i.e., second surface) and the surface of the polymer sheet not receiving the metal powder particles is smooth with a surface roughness of ≤0.25 microns (i.e., first surface), it is clear the first side has a surface roughness less than 50% of the higher surface roughness of the second side (i.e., (0.25/0.5)*100 = 50%; (0.25/50)*100 = 0.5%) (corresponding to the first side of the metal powder-polymer composite sheet has a surface roughness (Ra) value less than about 60% of a higher value of the second side of the metal powder composite sheet).
As set forth in MPEP 2144.05, in the case where the claimed range “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).
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.
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 3-4 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Lupoi.
In reference to claims 3 and 4, Lupoi teaches the limitations of claim 1, as discussed above. Lupoi teaches the metal powder-polymer matrix flexible film is fabricated by a solvent casting method using a doctor-blade coating technique, which produced a flexible film with uniform thickness and smooth surface properties. A coating paste was prepared by dispersing metal particles into a stock polymer solution and casting the viscous solution over a selected substrate. The polymer solution comprising 14 wt% polycaprolactone (PCL) in chloroform (p. 10, lines 23-35; p. 14, lines18-20). The metal powder is selected from the group comprising stainless steel, tungsten, titanium, titanium alloys, aluminium, aluminium alloys, copper, nickel, nickel alloys, super alloys, high entropy alloys, cobalt-chrome, barium, molybdenum, NiTi (nitilon), NiTi alloys, ceramic materials, metal-ceramic composites, metal-diamond composites, tantalum, tantalum carbide, and combinations thereof (p. 4, lines 25-29). The instant application’s Specification discloses the polymer solution is about 14 wt% PCL in chloroform and the metal powder is selected from the same list of metal powders disclosed by Lupoi (p. 6, lines 16-17; p. 6, line 31 – p. 7, line 2).
Given that Lupoi teaches a polymer solution and metal powder that overlaps the presently claimed polymer solution and metal powder, including the compositions disclosed in the instant applications Specification, as listed above, it therefore would be obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention, to use the polymer solution including about 14 wt% PCL in chloroform and a metal powder from the list above, which is both disclosed by Lupoi and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
Given that the polymer solution and metal powder of Lupoi is substantially identical to the present claimed polymer solution and metal powder in composition, a ratio of densities of the polymer solution to the metal powder would be between about 1:5 to about 1: 10 or be 1:7.
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).
“Products of identical chemical composition can not have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties Applicant discloses and/or claims are necessarily present. Id. (MPEP 2112.01).
In reference to claim 7, Lupoi teaches the limitations of claim 1, as discussed above. Lupoi further teaches a substrate on which the flexible metal powder-polymer matrix film is formed, wherein the flexible metal powder-polymer matrix film can be peeled or removed from the substrate (p. 9, line 29-p. 10, line 3; p. 14, lines 18-36) (corresponding to comprising a removable casting surface).
In light of the disclosure by Lupoi, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to include a substrate underlying the flexible metal powder-polymer matrix film that can be removed, in order to provide a surface on which the flexible metal powder-polymer matrix film can be formed, and thereby arriving at the presently claimed invention.
Conclusion
The prior art made of record and not relied upon, namely Lai et al. (US 2016/0153081), is considered pertinent to applicant's disclosure. However, the rejection using this reference would be cumulative to the rejection of record set forth above.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Mary I Omori whose telephone number is (571)270-1203. The examiner can normally be reached M-F 8am-4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at (571) 272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARY I OMORI/Primary Examiner, Art Unit 1784
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