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 .
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 1-6, 16-20, and 21-27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of U.S. Patent No. 12,227,659. Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claims 1-3, 16, 17, 19, 20, and 21-23, claim 1 of the ‘659 patent claims a materials kit for three-dimensional printing, comprising: a powder bed material comprising crystalline or semi-crystalline polymer particles selected from the group consisting of nylon 6 particles, nylon 9 particles, nylon 11 particles, nylon 12 particles, nylon 6,6 particles, nylon 6,12 particles, polyethylene particles, polypropylene particles, polyester particles, polyether ketone particles, polyacrylate particles, and a combination thereof; a fusing agent comprising water and a radiation absorber to selectively apply to the powder bed material, wherein the radiation absorber absorbs radiation energy and converts the radiation energy to heat; and a pore-promoting agent comprising water and a water-soluble pore-promoting compound to selectively apply to the powder bed material, wherein the pore- promoting compound is selected from the group consisting of a carbohydrazide, urea, a urea homologue, a carbamide-containing compound, ammonium carbonate, ammonium nitrate, ammonium nitrite, and a combination thereof; chemically reacts at an elevated temperature to generate a gas; and is present in the pore-promoting agent in an amount of from about 0.5 wt.% to about 8 wt.% with respect to a total weight of the pore-promoting agent. As such, the claim effectively anticipates the instant claims or discloses a range of pore-promoting compound that overlaps the claimed ranges.
As to claim 4, claim 4 of the ‘659 patent claims the same additional limitations.
As to claims 5 and 24, claim 3 of the ‘659 patent claims the same additional limitations.
As to claims 6, 18, 26 and 27, the claims of the ‘659 patent do not explicitly disclose the recited materials. However, as one having ordinary skill in the art would recognize, the additional additives, including the detailing agent, are routine expedients in the art and would have been readily utilized in the claims of the ‘659 patent in order to achieve the desired additive effect. Selecting the usage of conventional and known additives in this context is understood to be prima facie obvious. If required, additional references that would be properly combined with the claims of the ‘659 patent can be provided to demonstrate this.
Claims 1-6, 16-20, and 21-27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 and 10-13 of U.S. Patent No. 12,280,543. Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claims 1 and 21, claim 1 of the ‘543 patent claims a multi-fluid kit for three-dimensional printing comprising: a fusing agent comprising water and an electromagnetic radiation absorber, wherein the electromagnetic radiation absorber absorbs radiation energy and converts the radiation energy to heat; and a ductility agent comprising water, a water-soluble pore-generating compound that chemically reacts at an elevated temperature to generate a gas, and a plasticizer having a particular structure as set forth in the claim. As such, claim 1 of the ‘543 patent effectively anticipates the claimed invention.
As to claims 2 and 22, claim 2 of the ‘543 patent claims pore-generating compounds as claimed (e.g. urea).
As to claims 3, 16, 17, 23 and 25, claim 2 of the ‘543 patent claims pore-generating compounds such as urea and claim 4 claims amounts of the pore-generating compound that overlaps the claimed range.
As to claim 4, claim 3 of the ‘543 patent claims a temperature range that renders the claimed range prima facie obvious.
As to claims 5 and 24, claim 1 of the ‘543 patent claims an electromagnetic radiation absorber. Materials such as carbon black are rendered prima facie obvious in view of this as one having ordinary skill in the art would recognize.
As to claims 6, 18, 26 and 27, the ‘543 patent claims plasticizers and ductility agents comprising water. These read on or render prima facie obvious the claimed materials. Further, as one having ordinary skill in the art would recognize, the additional additives, including the detailing agent, are routine expedients in the art and would have been readily utilized in the claims of the ‘659 patent in order to achieve the desired additive effect. Selecting the usage of conventional and known additives in this context is understood to be prima facie obvious.
As to claims 19 and 20, the materials of the ‘543 claims are understood to be capable of being jetted as claimed (see claim 13 of the ‘543 claims). Further, supplying the materials together or separately is understood to be a routine expedient as the sequence of mixing the materials is understood to be prima facie obvious.
Claims 1, 3-6, 16, 18-20, 21, 23, 24, 26 and 27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 12,472,682. Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claims 1, 19, 20, and 21, claim 1 of the ‘682 patent claims a multi-fluid kit for three-dimensional printing, the multi-fluid kit comprising: a fusing agent comprising water and a radiation absorber, wherein the radiation absorber absorbs radiation energy and converts the radiation energy to heat; an acidic agent contained separately from the fusing agent, the acidic agent comprising water and an acidic component, the acidic agent having a pH from about pH 1 to about pH 6.9; and a pore-promoting agent contained separately from the fusing agent and the acidic agent, the pore-promoting agent comprising water and a pore-promoting compound that is water-soluble, wherein the pore-promoting compound chemically reacts with the acidic component of the acidic agent to generate a gas and the pore-promoting compound is selected from the group consisting of sodium bicarbonate, potassium bicarbonate, and a combination thereof. As such, the claim effectively anticipates the claimed invention.
As to claims 3, 16 and 23, claims 2 and 3 of the ‘682 patent claim amounts that render the claimed ranges prima facie obvious.
As to claim 4, claim 7 of the ‘682 patent renders the range prima facie obvious.
As to claims 5, 6, 18, 24, 26, and 27, claims 1, 4, 5, 6, and 8 of the ‘682 patent claim materials that read upon the claimed materials. Further, as one having ordinary skill in the art would recognize, the additional additives, including the detailing agent, are routine expedients in the art and would have been readily utilized in the claims of the ‘682 patent in order to achieve the desired additive effect. Selecting the usage of conventional and known additives in this context is understood to be prima facie obvious.
Claim Rejections - 35 USC § 102
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, 2, 4-6, 18-22, 24, 26 and 27 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Erickson et al. (WO 2017/196321).
Note: there is a paragraph numbering problem in the ‘321 document. As such, both page numbers and paragraph numbers are utilized together to provide sufficient citation to the relied upon portions of the reference.
Regarding claims 1, 2 and 20-22, Erickson et al. teach a multi-fluid kit for three-dimensional printing (Abstract) comprising a thermal coalescent fluid that reads upon the claimed fusing agent comprising water and a radiation absorber, wherein the radiation absorber absorbs radiation energy and converts the radiation energy to heat (page 2, paragraph [0009]; page 7, paragraph [0025]; page 9, paragraph [0003] – thermal coalescent fluid includes a thermal fusing agent as claimed; pages 8-15, paragraphs [0001], [0003], [0004], [0010], [0014] and [0018], make clear the thermal coalescent fluid and the coalescent fluid can be used separately or together and that water can be utilized as a fluid/liquid); and a coalescent fluid, including a viscosity reducing agent, that reads upon the claimed pore-promoting agent comprising water and a water-soluble pore-promoting compound, wherein the pore-promoting compound chemically reacts at an elevated temperature to generate a gas (Abstract; page 7, paragraph [0025]; page 8, paragraph [0027] – urea; pages 8-9, paragraph [0001] – amounts of the viscosity reducing agent (e.g. urea) and the fluid composition includes water; page 13, paragraph [0014]).
Erickson et al. do not explicitly refer to the components of the coalescent fluid as being “pore-promoting” agents. However, Erickson et al. disclose some of the same claimed and disclosed materials (e.g., urea – page 8, paragraph [0027]) As such, since the same claimed and disclosed material (e.g., urea) is being utilized, it follows that the claimed property is also present.
As to claim 4, Erickson et al. disclose urea may be utilized as set forth above. This material is claimed and disclosed as being a suitable material and would be capable of reacting at temperatures as claimed.
As to claims 5 and 24, Erickson et al. teach the fusing agent can include materials as claimed (page 10, paragraph [0005]).
As to claims 6 and 27, Erickson et al. teach a detailing fluid as claimed (page 12, paragraphs [0011] and [0012]).
As to claims 18 and 26, Erickson et al. disclose additional materials as claimed (pages 13 and 14, paragraphs [0014]-[0017]; pages 15-17, paragraphs [0018]-[0022]).
As to claim 19, Erickson et al. teach the fluid is jettable (Figures 2 and 3; page 15, paragraph [0018])
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.
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, 16, 17, 23 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Erickson et al. (WO 2017/196321), as applied to claims 1, 2, 4-6, 18-22, 24, 26 and 27above.
As to claims 3, 16, 17, 23, and 25 Erickson et al., disclose amounts ranging from about 0.5 wt.% to about 10 wt.% with respect to a total weight of the pore-promoting agent (Abstract; page 7, paragraph [0025]; page 8, paragraph [0027] – urea; pages 8-9, paragraph [0001] – amounts of the viscosity reducing agent (e.g. urea) in amounts that overlap and encompass the claimed amount and the fluid composition includes water; page 13, paragraph [0014] and further suggest additional ranges that encompass or overlap the claimed ranges (pages 8-9, paragraph [0001] – 2-100%, 5-100%, 5-95%, 10-50%, greater than 5%). Overlapping ranges are prima facie obvious.
Claims 1, 3, 5, 6, 16, 18-21, 23, 24 26 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Nauka et al. (US 2018/0126631) in view of Kamono (JP 2017-057467).
Regarding claims 1, 3, 16, 19, 20, 21 and 23, Nauka et al. teach a materials kit for three-dimensional printing, comprising: a powder bed material comprising polymer particles (Abstract; paragraph [0042]; Figure 3A (9)) and a fusing agent comprising water and a radiation absorber to selectively apply to the powder bed material, wherein the radiation absorber absorbs radiation energy and converts the radiation energy to heat (paragraphs [0021], [0031]-[0037, [0059]-[0068], [0076], [0077], Tables 1 and 3]). Nauka et al. do not teach a pore-promoting agent comprising water and a water-soluble pore-promoting compound to selectively apply to the powder bed material, wherein the pore-promoting compound chemically reacts at an elevated temperature to generate a gas and is present in an amount as claimed with respect to a total weight of the pore-promoting agent.
However, Kamono (Figures (10) (91) – void forming agent corresponds with pore-promoting agent; paragraphs [0073], [0087]-[0090], [0101] and [0139]) discloses an analogous process wherein a pore-promoting agent comprising water and a water-soluble pore-promoting compound to selectively apply to the powder bed material, wherein the pore-promoting compound chemically reacts at an elevated temperature to generate a gas is present. Kamono further suggests that the amount of pore-promoting agent utilized is readily determined to achieve properties such as thickness while ensuring a good quality product is produced (paragraph [0139]).
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date to have combined the teaching of Nauka et al. and Kamono and to have utilized a pore-promoting agent as claimed with the kit/composition of Nauka et al., as suggested by Kamono, for the purpose, as suggested by Kamono of reducing/controlling the density of the produced article (paragraph [0054], [0094], [0101]). Kamono teaches the amount of the pore-promoting material utilized impacts the results of the process. As such, determining the amount of this material to utilize is prima facie obvious.
As to claim 5 and 24, Nauka et al. disclose the radiation absorber includes materials as claimed (paragraph [0035]; Table 1; paragraphs [0064], [0065], claim 2).
As to claims 6, 18, 26 and 27, Nauka et al. disclose surfactants, co-solvents, biocides, anti-kogation agents, and combinations thereof (paragraphs [0068]-[0073]) which read upon the claimed materials, including a detailing agent, absent further specificity.
Claims 2, 4, 17, 22 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Nauka et al. (US 2018/0126631) in view of Kamono (JP 2017-057467), as applied to claims 1, 3, 5, 6, 16, 18-21, 23, 24 26 and 27 above, and further in view of Yaqing et al. (Inorganic Chemical Foaming Agent, IDS document).
As to claim 2, 4, 17, 22 and 25, the combination teaches the materials kit set forth above. Nauka et al. do not teach the pore-promoting agent as claimed. However, Yaqing et al. (pages 1-3 of provided English translation) provide additional teaching to flesh out the teaching of Kamono wherein the pore-promoting agent is a material as claimed (e.g., ammonium carbonate; ammonium nitrite; azide compounds; urea derivatives). The same materials will have the same properties.
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have combined the teaching of Nauka et al. with Kamono and Yaging et al. and to have utilized pore promoting agents as claimed, as suggested by Kamono and Yaqing et al., for the purpose, as suggested by the references of utilizing an art recognized suitable and commercially available material suitable for reducing/controlling foamed density.
Claims 1-6, 18-24, 26 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Nauka et al. (US 2018/0126631) in view of Rohringer et al. (US 4,382,884).
Regarding claims 1, 3, 19, 20, 21, and 23 Nauka et al. teach a materials kit for three-dimensional printing, comprising: a powder bed material comprising polymer particles (Abstract; paragraph [0042]; Figure 3A (9))) and a fusing agent comprising water and a radiation absorber to selectively apply to the powder bed material, wherein the radiation absorber absorbs radiation energy and converts the radiation energy to heat (paragraphs [0021], [0031]-[0037], [0059]-[0068], [0076], [0077], Tables 1 and 3]). Nauka et al. do not teach a pore-promoting agent comprising water and a water-soluble pore-promoting compound to selectively apply to the powder bed material, wherein the pore-promoting compound chemically reacts at an elevated temperature to generate a gas and is present in an amount of from about 0.5 wt.% to about 10 wt.% with respect to a total weight of the pore-promoting agent.
However, Rohringer et al. (Abstract; col. 1, lines 10-20; col. 1, line 59-col. 2, line 10 – materials such as urea and urea homologues utilized as a blowing agent/pore-promoting agent; col. 3, lines 28-37 and claim 13 – 10-30 wt% of the blowing agent/pore promoting agent is utilized; col. 7, lines 37-40 – the composition can be utilized to coat plastic articles) discloses an analogous process wherein a pore-promoting agent comprising water and a water-soluble pore-promoting compound to selectively apply to the powder bed material, wherein the pore-promoting compound chemically reacts at an elevated temperature to generate a gas is present in amounts that overlap the claimed range (e.g. endpoint overlap at 10 wt%; plus “about 10 wt%” includes a certain amount over 10 wt%).
Therefore it would have been prima facie obvious to one having ordinary skill in the art before the effective filing date to have combined the teaching of Nauka et al. and Rohringer et al. and to have utilized a pore-promoting agent as claimed with the kit/composition of Nauka et al., as suggested by Rohringer et al., for the purpose, as suggested by Rohringer et al. of making the produced article of Nauka et al. more fire retardant. In the combination, all of the claimed materials are included and present together for use. As such, this is reasonably understood to form a “materials kit” as claimed. For example, applying the fire-retardant material of Rohringer et al. as a finishing step after 3D printing the article of Nauka et al. is understood to render the claim prima facie obvious because all the materials are available for use together.
As to claims 2 and 22, Rohringer et al. teach the material may be urea. The same claimed and disclosed material will have the same claimed and disclosed properties. The reason to combine the references is the same as that set forth above.
As to claim 5 and 24, Nauka et al. disclose the radiation absorber includes materials as claimed (paragraph [0035]; Table 1; paragraphs [0064], [0065], claim 2).
As to claims 6, 18, 26 and 27, Nauka et al. disclose surfactants, co-solvents, biocides, anti-kogation agents, and combinations thereof (paragraphs [0068]-[0073]) which read upon the claimed materials, including a detailing agent, absent further specificity.
Note: claims 16, 17 and 25 are not rejected over the combination of Nauka et al. in view of Rohringer et al.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jeff Wollschlager whose telephone number is (571)272-8937. The examiner can normally be reached M-F 7:00-3:30.
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, Christina Johnson can be reached at 571-272-1176. 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.
/JEFFREY M WOLLSCHLAGER/Primary Examiner, Art Unit 1742
Prosecution Insights