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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3-5, 8, and 9 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The newly amended ranges in claim 1 are not supported by the original specification. For instance, the original specification teaches from about 0.01 wt% to about 10 wt% of propylene glycol based on the total weight of the absorber extract solution [0104]. The claimed ranges are taught in the original specification as based upon the total weight of the first-generation fusing agent, and is an active weight percentage [0036]. Original claim 1 is directed toward a three-dimensional printing kit and not a fusion agent. It is also noted that the limitations of original claim 11 do not have an antecedent basis in the specification.
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.
Claim(s) 1, 3 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Discekici et al. (WO 2023/140831).
Discekici et al. teach a fusing agent composition comprising:
16 wt% benzyl alcohol (plasticizing solvent);
40 wt% HE2P (water miscible co-solvent);
15 wt% of an absorber extract solution comprising 0.75 wt% of AY-23, 10 wt% HE2P, and balance water; and
0.8 wt% of Tergitol 15-S-9 (surfactant) [0036; Example 1]. The HE2P in the example was divided in the manner as claimed. The final, total amounts of the components in composition are the same.
Discekici et al. teach overlapping ranges for the solvent [Table 2], and using propylene glycol interchangeably with HE2P.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use propylene glycol in place of the HE2P in the examples of Discekici et al. It is a simple substitution of one known element for another to obtain predictable results.
The subject matter as a whole would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention, since it has been held that choosing the overlapping portion, of the range taught in the prior art and the range claimed by the applicant, has been held to be a prima facie case of obviousness, see In re Malagari, 182 USPQ 549, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976) and MPEP 2144.05.
Claim(s) 4-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Discekici et al. (WO 2023/140831) as applied to claim 1 above further in view of Rudisill et al. (2023/0312950).
Regarding claims 4-5: Discekici et al. fail to teach the claimed dye.
However, Rudisill et al. teach that the claimed yellow dyes can be used as the yellow dye in a fusing agent [0020-0024].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use yellow dye of Rudisill et al. in place of the acid yellow 23 of Discekici et al. as the yellow dye in the composition. It is a simple substitution of one known element for another to obtain predictable results.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Discekici et al. (WO 2023/140831) as applied to claim 1 above further in view of Discekici et al. (WO 2023/149883).
Regarding claim 9: Discekici et al. (‘831) fail to teach a solubilizer.
However, Discekici et al. (‘883) teach adding a 3 wt% [0036] of a solubilizer to an analogous composition [0028] to help the components stay in solution, and provide additional stability [0031].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add 3 wt% of the solubilizer of Discekici et al. (‘883) to the composition of Discekici et al. (‘831) to help the components stay in solution, and provide additional stability.
Response to Arguments
Applicant's arguments filed 7/29/2026 have been fully considered but they are not persuasive.
The applicant has alleged that Discekici fails to teach the claimed water percentage in the examples. This is not persuasive because the instant claims only specify that water is present, and do not require a particular percentage. Furthermore, the composition is treated as a whole. It is the final amounts of each component after the entire composition is combined, is what is required to meet the claims. The prior art could have different concentrations of components in the absorber extract solution as long as the final concentration of all of the components is met.
The applicant appears to be arguing a product by process limitation, the concentration of components before they are mixed together. Process limitations in product claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. "In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). 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). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN USELDING whose telephone number is (571)270-5463. The examiner can normally be reached on M-F 8am to 6:30pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN E USELDING/ Primary Examiner, Art Unit 1763
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