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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on June 22, 2026 has been entered.
Response to Amendment
Applicant’s claim amendments and remarks filed June 22, 2026 are entered and have
been fully considered. Claims 3, 6, and 7 have been cancelled and claims 1, 5, and 8 have been amended. In light of the amended claim 1, the previous 102 and 103 rejections are withdrawn because they no longer read on the claims.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: Claim 10 states the flow or cross-flow coefficient of thermal expansion is to be less than 50 1/°C, but this number is unsupported by the instant specification. In ¶[0036] of the specification it states a CTE of 50 µm/°C.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 10 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 10 fails to further limit claim 1 from which it depends. Claim 10 claims a flow or cross-flow coefficient of thermal expansion of less than 50 1/°C, which is much higher than the CTE of claim 1, less than 6.5E-5 1/°C.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
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, 4-5, 8-10, 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Shan et al US20180247731A1 in view of Chaote et al, US20050131105A1 as evidenced by the material transmission curve for Ultem/PEI by Apollo Optical Systems found at https://www.apollooptical.com/material-transmission-data-graphs (provided in previous office action).
Regarding claims 1, 4, 5, 8, 10, Shan teaches a composition comprising 10-60 wt.% of a polyetherimide, ¶[0003], which overlaps with the claimed percents in claims 1 and 10, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
The composition further includes 0-20 wt.% flame retardants, ¶[0003]. The flame retardants include Aluminum oxide hydroxide ¶[0043], the chemical name for boehmite, and is exemplified as Actilox 200AS1, table 1-continued on page 9; this is the same AlOOH that applicant uses in the instant examples, and satisfies the required refractive index of claims 1, 10 and the particle size of claim 8. The AlOOH is used in the amounts of 5 and 10 wt.% in the examples, see table 3 page 10, which satisfies the amount of boehmite for claims 1 and 10.
Shan exemplifies the PEI Ultem 1010, see Table 1 page 8, derived from BPA dianhydride and m-phenylene diamine, which reads on the PEI of claims 4, 5, and 10.
Shan is silent as to the percent transmission of the PEI within the claimed wavelengths. The Ultem 1010 inherently meets the claimed transmission as evidenced by the Apollo Optical Systems transmission curve, page 10; the curve shows that within the claimed wavelengths the transmittance for Ultem PEI is greater than 70%. Therefore, based on the evidence of Apollo Optical Systems, one of ordinary skill in the art is reasonably suggested the PEI of Shan must have the claimed transmission properties when tested appropriately.
Shan teaches the thermoplastic composition is useful as an electrical wire coating and covering for conductor wires, see abstract and ¶[0008]. Shan is silent as to the CTE of the PEI composition.
Chaote discloses a composition electrical components such as electrical wire coverings ¶[0132] that comprises polyetherimide and reinforcing fillers, abstract and ¶[0001]. The compositions have excellent dimensional resistance at high temperature and low expansion coefficients ¶[0016] which is required to be used in electrical appliances, ¶[0022]. The exemplified coefficients of thermal expansion are 1.5-2 x10-5/°C in the flow direction and between -30°C to 120°C, see last row of embodiments in table 1 page 9; these coefficients in the flow direction are less than the claimed CTE of claims 1 and 10.
Shan and Chaote are analogous to the claimed invention because both are in the field of polyetherimide compositions with inorganic fillers.
Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have practiced in the invention of Shan selecting the overlapping portion of the percent weight of the PEI because selection of the overlapping portion of ranges has been held to be prima facie obvious and further obtain an expected coefficient of thermal expansion in the flow direction of 1.5-2 x10-5/°C with the motivation of producing a thermoplastic composition for wire coverings with excellent dimensional resistance at high temperatures because Chaote discloses a low expansion coefficient is required for compositions used in electrical appliances.
Regarding claim 2, Shan teaches the compositions have a notched Izod impact strength of greater than or equal to 50 J/m at 23°C, ¶[0057], and see results of examples in table 4 page 11, 8th row down.
Regarding claim 9, Shan teaches adding antioxidants and mold release agents to the compositions, see Table 1-continued page 9 list of ingredients where mold release is listed and AO-1 Irganox 1010 is listed as stabilizer and is an antioxidant.
Regarding claims 12-13, Shan teaches the compositions are melt mixed in a twin-screw extruder, pelletized and injection molded to form articles, ¶¶[0079-0080]. The coated wire samples were prepared by extrusion coating, ¶[0081].
Regarding claim 14, Shan teaches the coated conductor wire comprises optical fibers, which reads on the optical article.
Response to Arguments
Applicant's arguments filed June 22 have been fully considered and are persuasive in light of the amended claims. The previous 102 and 103 rejections are withdrawn because they no longer read on the amended claim 1.
However, upon further consideration, a new ground(s) of rejection is made under 103 over Shan in view of Chaote.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VIRGINIA L STONEHOCKER whose telephone number is (571)272-3431. The examiner can normally be reached Monday-Friday 8:00AM-4:00PM EST.
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/V.L.S./Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766
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