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 .
DETAILED ACTION
This Office action is in response to the communication filed on 05/07/2026. Currently claims 1-20 are pending in the application; with claims 12-20 withdrawn from consideration.
Election / Restriction
Applicant's election of Group I, claims 1-11, without traverse, drawn to a composition, in the reply filed on 05/07/2026 is acknowledged.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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.
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Claims 1-11 are rejected on the ground of non-statutory double patenting as being obvious over claim 1-2, 4-5, 7, and 9-12 of Application No. 17/995,917 (reference application, issue of patent is in progress), in view of Virgilio et al. (US Patent Application Publication Number 2016/0200891 A1), hereafter, referred to as “Virgilio”. Although the claims at issue are not identical, they are not patentably distinct from each other because both the present application claims and the reference application claims, in view of Virgilio disclose a composition having similar characteristics.
Regarding claim 1, Application No. 17/995,917 (reference application) teaches in claim 1, a composition comprising: a plurality of piezoelectric particles in at least a portion of a polymer matrix comprising a polymer material and a plurality of interconnected pores; wherein the polymer material and the piezoelectric particles collectively define an extrudable material defined within the polymer matrix. But Application No. 17/995,917 (reference application) fails to explicitly teach the use of a sacrificial material (a second polymer material), which is removed from the blend of polymer materials (first and second polymer materials) to form the interconnected pores. However, Virgilio teaches forming a porous gel using a polymer blend (para [003-0033]). Virgilio teaches that Polystyrene (PS) and Polylactic Acid (PLA) are immiscible and often form co-continuous phase structures. Virgilio teaches a process where a 50/50 PS/PLA melt is processed, and the PS is subsequently dissolved using a solvent (such as cyclohexane) to leave behind a perfectly porous, interconnected PLA scaffold for tissue engineering or filtration (para. [0123], [0130], and [0135]). Therefore, it would have been obvious to a person of ordinary skill in the art at the time of filing the claimed invention, to incorporate the teaching of Virgilio, and use a known technique of using a polymer blend of polystyrene and polylactic acid, wherein polystyrene is a sacrificial material in the polymer matrix, because it offers superior control over pore size, geometry and interconnectivity, eliminates the risk of premature crystallization defects, avoids carbohydrate charring at high temperatures, and allows for clean, selective removal using organic solvents (KSR Rationale C, MPEP 2143). Since both the references deal with forming interconnecting pores, one would have reasonable expectation of success from the combination.
Regarding claim 2, Virgilio teaches a composition wherein Polystyrene (second polymer material) is dissolvable or degradable under specified conditions, but Polylactic Acid (PLA) (first polymer material) is not.
Regarding claim 3, Application No. 17/995,917 (reference application) teaches in claim 2, wherein the first polymer material, the sacrificial material, and the piezoelectric particles collectively define an extrudable material that is a composite having a form factor selected from the group consisting of a composite filament, a composite pellet, a composite powder, and a composite paste.
Regarding claim 4, Application No. 17/995,917 (reference application) teaches in claim 4, wherein the first polymer material, the sacrificial material, and the piezoelectric particles collectively define an extrudable material that is a composite filament.
Regarding claim 5, Application No. 17/995,917 (reference application), in view of Virgilio teaches a composition to form a porous nanoparticle-polymer composite structure, wherein the composition to form the porous nanoparticle-polymer composite structure comprises of a blend of liquid polymers; and piezoelectric nanoparticles. Virgilio teaches that Polystyrene (second polymer material) is dissolvable or degradable under specified conditions, but Polylactic Acid (PLA) (first polymer material) is not. Therefore, it would be obvious to any ordinary artisan that the piezoelectric particles are substantially localized in the first polymer material.
Regarding claim 6, Virgilio teaches, wherein the first and second polymer materials comprise first and second thermoplastic polymers, respectively; by teaching to use polylactic acid (first polymer) and polystyrene (second polymer), wherein both the polymers are thermoplastic material.
Regarding claim 7, Virgilio teaches, wherein the first polymer material comprises the first thermoplastic polymer and a curable resin; by teaching to use polylactic acid, which hardens (equivalent to cure) under desired condition.
Regarding claim 8, Virgilio teaches in Fig. 2, wherein the first and second polymer materials are distributed co-continuously in the polymer matrix.
Regarding claim 9, Virgilio teaches, wherein the first and second polymer materials are a pair selected from the group consisting of ethylene propylene rubber (EPR)/high density polyethylene (HDPE), ethylene propylene diene monomer rubber (EPDM)/HDPE, metallocene catalyzed linear low density polyethylene (mLLDPE)/HDPE, polyethylene oxide (PEO)/HDPE, EPDM/polypropylene (PP), EPR/PP, mLLDPE/PP, EPR/mLLDPE, polystyrene (PS)/polylactic acid (PLA), poly( styrene-ethylene-butylene-styrene) (SEBS)/PLA, and SEBS/polycaprolactone (PCL); by teaching to use Polystyrene (PS) and Polylactic Acid (PLA) (poly lactide) (para. [0123], {0130}, and {0135])).
Regarding claim 10, Application No. 17/995,917 (reference application) teaches in claim 9, a composition, wherein the piezoelectric particles are covalently bonded to at least a portion of the first polymer material, are covalently cross-linkable with a least a portion of the first polymer material, and/or interact non-covalently with at least a portion of the first polymer material by π-π bonding, hydrogen bonding, electrostatic interactions stronger than van der Waals interactions, or any combination thereof.
Regarding claim 11, Application No. 17/995,917 (reference application) teaches in claim 11, a composition, wherein the piezoelectric particles are substantially non-agglomerated within the polymer matrix.
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 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. 103 that form the basis for the rejections under this section made 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 non-obviousness.
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 1-2, and 5-9 are rejected under 35 U.S.C.103 as being obvious over Sirbuly et al. (US Patent Application Publication Number 2016/0181506 A1), hereafter, referred to as “Sirbuly”, in view of Virgilio et al. (US Patent Application Publication Number 2016/0200891 A1), hereafter, referred to as “Virgilio”.
Regarding claim 1, Sirbuly teaches a composition to form a porous nanoparticle-polymer composite structure, wherein the composition to form the porous nanoparticle-polymer composite structure comprises of a curable liquid polymer; and piezoelectric nanoparticles. The nanoparticle-polymer composite structure comprising the curable liquid polymer, and the piezoelectric nanoparticles are shaped to form a porous structure (para. [0005]). Sirbuly also teaches that the porous nanoparticle-polymer composite structure is implemented by, for example, the curable liquid polymer can include poly-dimethyl-siloxane (PDMS), and/or polyurethane. The piezoelectric nanoparticles can include BTO, PZT, ZnO, or NaNbO3 (para. [0006]). Sirbuly further teaches plurality of pores defined within the polymer matrix, by teaching that the porous structure can include a foam. Sirbuly teaches that foams are basically intact materials with large void fractions (e.g., 50-80% air), offer a unique means of creating materials with similar structuring in all dimensions. For piezoelectrics, this typically involves generating ceramic materials through fused-deposition or robocasting techniques which can be refined to create well-controlled porous structures either by layer-by-layer or polymeric templating.
Sirbuly further teaches the mixing of polymer material and a sacrificial material that is immiscible with the polymer material; wherein the sacrificial material is removable from the polymer material; by teaching to mixing a nanoparticle-polymer composite material with a predetermined amount of sugar and a curing agent to form a dough; shaping the dough into a geometric shape using molding techniques; curing the shaped dough as a conformal coating; and after curing is complete, removing the sugar to obtain the porous structure.
But Sirbuly fails to explicitly teach that the sacrificial material comprises a second polymer material, which is removed from the first polymer material. However, Virgilio teaches forming a porous gel using a polymer blend (para [003-0033]). Virgilio teaches that Polystyrene (PS) and Polylactic Acid (PLA) are immiscible and often form co-continuous phase structures. Virgilio teaches a process where a 50/50 PS/PLA melt is processed, and the PS is subsequently dissolved using a solvent (such as cyclohexane) to leave behind a perfectly porous, interconnected PLA scaffold for tissue engineering or filtration (para. [0123], [0130], and [0135]). Therefore, it would have been obvious to a person of ordinary skill in the art at the time of filing the claimed invention, to incorporate the teaching of Virgilio, and use a known technique of using a polymer blend of polystyrene and polylactic acid, wherein polystyrene is a sacrificial material in the polymer matrix, because it offers superior control over pore size, geometry and interconnectivity, eliminates the risk of premature crystallization defects, avoids carbohydrate charring at high temperatures, and allows for clean, selective removal using organic solvents (KSR Rationale C, MPEP 2143). Since both the references deal with forming voids, one would have reasonable expectation of success from the combination.
Regarding claim 2, Virgilio teaches a composition wherein Polystyrene (second polymer material) is dissolvable or degradable under specified conditions, but Polylactic Acid (PLA) (first polymer material) is not.
Regarding claim 5, Sirbuly, in view of Virgilio teaches a composition to form a porous nanoparticle-polymer composite structure, wherein the composition to form the porous nanoparticle-polymer composite structure comprises of a blend of liquid polymers; and piezoelectric nanoparticles. Virgilio teaches that Polystyrene (second polymer material) is dissolvable or degradable under specified conditions, but Polylactic Acid (PLA) (first polymer material) is not. Therefore, it would be obvious to any ordinary artisan that the piezoelectric particles are substantially localized in the first polymer material.
Regarding claim 6, Virgilio teaches, wherein the first and second polymer materials comprise first and second thermoplastic polymers, respectively; by teaching to use polylactic acid (first polymer) and polystyrene (second polymer), wherein both the polymers are thermoplastic material.
Regarding claim 7, Virgilio teaches, wherein the first polymer material comprises the first thermoplastic polymer and a curable resin; by teaching to use polylactic acid, which hardens (equivalent to cure) under desired condition.
Regarding claim 8, Virgilio teaches in Fig. 2, wherein the first and second polymer materials are distributed co-continuously in the polymer matrix.
Regarding claim 9, Virgilio teaches, wherein the first and second polymer materials are a pair selected from the group consisting of ethylene propylene rubber (EPR)/high density polyethylene (HDPE), ethylene propylene diene monomer rubber (EPDM)/HDPE, metallocene catalyzed linear low density polyethylene (mLLDPE)/HDPE, polyethylene oxide (PEO)/HDPE, EPDM/polypropylene (PP), EPR/PP, mLLDPE/PP, EPR/mLLDPE, polystyrene (PS)/polylactic acid (PLA), poly( styrene-ethylene-butylene-styrene) (SEBS)/PLA, and SEBS/polycaprolactone (PCL); by teaching to use Polystyrene (PS) and Polylactic Acid (PLA) (poly lactide) (para. [0123], {0130}, and {0135])).
Claims 3-4 are rejected under 35 U.S.C.103 as being obvious over Sirbuly et al. (US Patent Application Publication Number 2016/0181506 A1), in view of Virgilio et al. (US Patent Application Publication Number 2016/0200891 A1), in view of Bodkhe et al. (Sanpada Bodkhe et al.: One-Step Solvent Evapoation-Assisted 3D Pinting of Piezoelectric PVDF Nanocomposite Stricture, ACS Appl. Mater. Interfaces 2017, 9, pp. 20833- 20842), hereafter, referred to as “Bodkhe”.
Regarding claims 3-4, Sirbuly, in view of Virgilio teaches a composition to form a porous nanoparticle-polymer composite structure, wherein the composition to form the porous nanoparticle-polymer composite structure comprises of a a blend of liquid polymers; and piezoelectric nanoparticles. But Sirbuly and Virgilio fail to explicitly teach that the polymer material and the piezoelectric particles collectively define an extrudable material. However, Bodkhe teaches a composite filament comprising: a plurality of piezoelectric particles (baririum titanate nanoparticles) dispersed in a thermoplastic polymer (Polyvinylidene fluoride (PVDF)) (page 20834; column 2, lines 21-29), wherein the composite filament is compatible with fused filament fabrication and has a length and diameter compatible with fused filament fabrication (Fig. 1 (a)), and the piezoelectric particles are substantially non-agglomerated and dispersed along the length of the composite filament (page 20834; column 2, lines 30-34). Therefore, it would have been obvious to a person of ordinary skill in the art at the time of filing the claimed invention, to incorporate the teaching of Bodkhe, and form a composition that would be provided in the form of a filament, because that would allow to form a piezoelectric nanocomposite directly by a 3D printing process using a filament.
Claims 10-11 are rejected under 35 U.S.C.103 as being obvious over Sirbuly et al. (US Patent Application Publication Number 2016/0181506 A1), in view of Virgilio et al. (US Patent Application Publication Number 2016/0200891 A1), in view of Zheng et al. (WO 2019/227082 A1), hereafter, referred to as “Zheng”,
Regarding claim 10, Sirbuly, in view of Virgilio teaches a composition to form a porous nanoparticle-polymer composite structure, wherein the composition to form the porous nanoparticle-polymer composite structure comprises of a a blend of liquid polymers; and piezoelectric nanoparticles. But Sirbuly and Virgilio fail to explicitly teach that the piezoelectric particles are covalently bonded to at least a portion of the first polymer material, are covalently cross-linkable with at least a portion of the first polymer material, and/or interact non-covalently with at least a portion of the first polymer material by π-π bonding, hydrogen bonding, electrostatic interactions stronger than van der Waals interactions, or any combination thereof. However, Zheng teaches teaching a composition comprising a plurality of piezoelectric particles dispersed in a thermoplastic polymer (page 18, lines 13-25). Zheng teaches to use the composition form three-dimensional (3D) piezoelectric structure composed of a 3D periodic micro-lattice comprising a piezoelectric composite material (page 1, lines 16-21). Zheng also teaches that a plurality of functionalized piezoelectric particles are crosslinked (equivalent to covalently bonded) to a polymer matrix (claim 2). Therefore, it would have been obvious to a person of ordinary skill in the art at the time of filing the claimed invention, to incorporate the teaching of Zheng, and form a composition wherein the piezoelectric particles are covalently bonded to at least a portion of the first polymer material, are covalently cross-linkable with at least a portion of the first polymer material, and/or interact non-covalently with at least a portion of the first polymer material by π-π bonding, hydrogen bonding, electrostatic interactions stronger than van der Waals interactions, or any combination thereof, because a covalent bond between piezoelectric particles and a polymer matrix would drastically enhance structural and electrical properties. This chemical linkage creates a seamless, defect-free interface that provides several key advantages such as superior stress transfer, prevent interfacial debonding, and enhance electrical breakdown strength.
Regarding claim 11, Zheng teaches a composition, wherein the piezoelectric particles are substantially non-agglomerated within the polymer matrix; by teaching to use ultrasonic dispersion that would lead to non-agglomeration (page 31, lines 10-19).
Conclusion
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/MOHAMMAD M AMEEN/Primary Examiner, Art Unit 1742
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