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 .
The response filed January 26, 2026 has been entered.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. NL2018455, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. The application does not provide support for a FDM modeling material including PAEK, optionally filled with inorganic or organic fillers, wherein the object has a porosity of less than 5 vol% as determined by the claimed porosity test procedure.
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.
Claims 1-4, 7-11 and 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Wu (“Influence of Layer Thickness and Raster Angle on the Mechanical Properties of 3D-Printed PEEK and a Comparative Mechanical Study between PEEK and ABS” Materials 2015, 8, 5834-5846).
Claims 1-2 and 16-18: Wu discloses a three-dimensional object created by FDM of a modeling material consisting of PEEK (pp. 5834 – 5842). Wu is silent as to the claimed porosity range. However, Wu teaches that reducing the percentage of pores within the printed PEEK part “substantially improves” the compressive strength and printing quality of 3D-printed PEEK objects (p. 5842). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the application to have reduced or eliminated the pores within the 3D-printed PEEK object of Wu in order to substantially improve the compressive strength and printing quality of 3D-printed PEEK objects, as explicitly taught by Wu.
Claims 3-4, 8 and 19: Elimination of the pores from the PEEK objects of Wu would be expected to form an object that has the claimed material parameters (p. 5842).
Claim 7: Wu discloses 100% PEEK (pp. 5834 – 5842).
Claims 9-11: The disclosed product and the instantly claimed product appear to be essentially the same and include the same components. In the event any differences can be shown for the product of the product-by-process claims 9-11, such differences would have been obvious to one of ordinary skill in the art as a routine modification of the product in the absence of a showing of unexpected results. See In re Thorpe, 227 USPQ 964 (Fed. Cir. 1985). Also, when the examiner has found a substantially similar product as in the applied prior art, the burden of proof is shifted to applicant to establish that their product is patentably distinct and not the examiner to show the same process of making. In re Brown, 173 USPQ 685 and In re Fessmann, 180 USPQ 324.
Claim 20: Wu discloses 100% PEEK (pp. 5834 – 5842).
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are not persuasive.
Applicant argues that Wu is non-enabling because “While Wu does mention advantages of a product with low porosity, Wu does not actually disclose such a product, nor does Wu describe any method or way of arriving at such a product.” This argument has been considered but is not persuasive. As Applicant correctly notes, Wu teaches advantages of a PEEK three-dimensional object having low porosity. A reference can be enabling for the purpose of obviousness, even in the absence of working examples. See Agilent Technologies, Inc. v. Synthego Corp., Case Nos. 23-2186; -2187 (Fed. Cir. June 11, 2025). There is a distinction between enablement under § 112 (which governs patent validity) and enablement under § 102 or 103 (which governs anticipation and obviousness). Statutorily, § 112 requires that a patent specification enable a person of ordinary skill in the art to “make and use” the invention. Sections 102 and 103 contain no such requirement. A prior art reference only needs to teach enough for a skilled artisan to practice at least one embodiment without undue experimentation. Wu explains that the purpose of the paper was to provide initial reference conditions under which PEEK is printed (p. 5845). And that modifying these conditions through experimentation will “reduce pore formation during the printing process and . . . improve interlayer bonding.” (p. 5845). There is no indication that this experimentation would be undue in any way, and there is a normal desire for scientists to improve or optimize what is already generally known. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003). Here, Wu is enabling for the purpose of obviousness, even in the absence of working examples.
Applicant further argues that “Wu explains they would reduce pores for improvements to the parts if they could, but they could not.” This argument has been considered but is also not persuasive. Wu does not state, or even imply, that they are not capable of reducing pores. Wu describes the next most obvious step to accomplish via experimentation – reduction of pores. Here, Wu is enabling for the purpose of obviousness, even in the absence of working examples.
Applicant finally argues that “no PAEK/PEEK product with reduced porosity is shown in Wu.” This argument has been considered but is also not persuasive. In Agilent, the Federal Circuit confirmed that prior art need not demonstrate success to be enabling. A skilled artisan has the capacity to fill in the gaps using routine techniques and reasonable effort. As discussed above, Here, Wu is enabling for the purpose of obviousness, even in the absence of working examples.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LARRY THROWER whose telephone number is (571)270-5517. The examiner can normally be reached 9am-5pm MT M-F.
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, Susan Leong can be reached at 571-270-1487. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LARRY W THROWER/ Primary Examiner, Art Unit 1754
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