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 § 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 (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 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 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Schauber (WO 2021/156403 A1; US 2023/0081308 A1 cited as English language equivalent) in view of Roth (US 2012/0095140 A1). All references have been cited in a prior Office action.
Regarding claims 1-5 and 8-12, Schauber teaches a composition of a polyketone and a diamine crosslinker (p. 4, [0037]-[0040]). In particular, the crosslinker may be DAPI (p. 5, [0046]), a saturated alicyclic compound having at least two primary amine groups (p. 3, [0025), a saturated alicyclic diamine (p. 9, [0103]), a diaminophenyl compound having two aminophenyl rings linked via an carbocyclic aliphatic group (p. 11, [0124]), or an asymmetric compound (p. 10, [0115], formula II.a). The composition may further include fillers, functional components, and/or customary additives (p. 6, [0070]). The composition is suitable for use in molded articles and electrical applications (claim 28).
However, Schauber does not specify use of a flame retardant. In the same field of endeavor, Roth teaches use of mixtures of phosphinic acid salts (phosphinates) and organic phosphorous compounds as flame retardant additives suitable for use with polyketones, in amounts ranging from 2.5% to 20% of the total composition (Abstract; p. 9, [0081]; p. 17-18, Table 1). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the composition of Schauber and the additives of Roth to arrive at the claimed invention, and to provide a composition with improved thermal stability, as taught by Roth (p. 1, [0004).
Regarding claims 6-7, Schauber remains as applied to claim 1 above. Schauber further teaches use of glass fiber filler in the composition (p. 15, [0175]).
Claims 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Schauber in view of Roth as applied to claim 1 above and further in view of Morita (JP 2012-045815 A, attached with translation).
Regarding claims 13-14, Schauber and Roth remain as applied to claim 1 above. Morita teaches polyketone membranes in batteries for electric vehicles (p. 1). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to select the crosslinked polyketone of Schauber for use in Morita’s membrane, to arrive at the claimed invention, to provide improved temperature stability, as taught by Schauber (p. 5, [0049]), and to provide an additional economic outlet for Schauber’s composition.
Response to Arguments
Applicant's arguments filed 11 December 2025 have been fully considered but they are not persuasive. Applicant argues that Schauber provides no motivation to add a flame retardant. However, motivation is to be found in the secondary reference, Roth, in order to combine prior art references. Here, Roth teaches that the flame retardants may be added to polyketone compositions for improved thermal stability, as taught by Roth (p. 1, [0004). As the crosslinking limitations of the claims are met by Schauber, Roth need not teach amine-crosslinked polyketones.
Applicant presents a Test Report as evidence that one of ordinary skill in the art would have no motivation to combine the prior art references, implying that a crosslinked polyketone already maintains sufficient thermal stability. However, one of ordinary skill in the art would have no reason to avoid the additional thermal stability contributed by the addition of a flame retardant.
In addition, the source of the data in the Test Report is unclear. The report is not cited in an Information Disclosure Statement, nor has it been included in an affidavit or declaration. Objective evidence must be factually supported by an appropriate affidavit or declaration to be of probative value. See MPEP 716.01(c). The Test Report cannot be relied upon in its current form to establish non-obviousness.
Similarly to Applicant’s argument about Schauber, Applicant argues that Morita is not combinable with Schauber and Roth because it does not mention an amine-crosslinked polyketone, or a flame retardant. As mentioned above, these limitations are met by Schauber and Roth, respectively, and need not be also met by Morita. Morita is relied on solely for its teachings regarding the industrial applicability of the composition. All rejections are maintained.
Applicant’s arguments are believed to be addressed in full above.
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 ELIZABETH K AMATO whose telephone number is (571)270-0341. The examiner can normally be reached 8:30 am - 4:30 pm M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Rob Jones can be reached at (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ELIZABETH K. AMATO
Examiner
Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762