DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-14 are pending as amended on 5/30/2023.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-10, and species wherein the part (M) is a filament and comprises a blend of PEEK-PEoEK and PEEK (co)polymer in the reply filed on 3/3/2026 is acknowledged.
Claims 9 (non-elected species) and claims 11-14 (non-elected invention) are withdrawn from further consideration pursuant to 37 CFR 1.142(b), there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 8 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 8 limits the part (M) recited in claim 1 to a filament, and recites “its diameter or at least one its section [sic] having a size…”
At least one word appears to be missing from “at least one its section.” It is not clear what word or words are missing, and it is not clear what is meant by “its section”, thereby rendering the scope of the claim unclear. For examination purposes, the claim has been interpreted as at least encompassing a filament having a diameter having a size within the recited range.
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.
Claim(s) 1-3 and 5-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Duckworth et al (US 2023/0257505).
Note that Duckworth is available as prior art under 102(a)(2) because Duckworth claims priority to foreign application GB 2010909.6 filed on July 15, 2020, which is before the filing date of instant provisional application 63/119171 (on November 30, 2020). Only portions of Duckworth which were described in the GB 2010909.6 foreign priority document have been relied upon in rejecting the presently claimed subject matter.
As to claims 1-3 and 5, Duckworth discloses a PEEK-PEDEK copolymer which is particularly useful in filament fusion additive manufacturing (AM) processes [0063-65], wherein a thin filament of polymer (corresponding to instant part M) is extruded to build up a component layer by layer into a 3D component shape [0065].
The copolymer consists essentially of 55-95 mol% of units of formula I, wherein the repeat units of formula I consist essentially of 50-90 mol% formula III (RPEEK):
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, which correspond to instant RPEEK units of formula (A-1),
and 10-50 mol% units of formula IV or formula V, wherein formula V (RoPEEK) has the following structure:
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[0025-26], and therefore corresponds to instant RPEoEK units of formula (B-1).
Duckworth exemplifies copolymers comprising 90 mol% of RPEEK and RPEoEK repeat units (which falls within the presently claimed range of at least 50 mol% relative to the total number of repeat units in the copolymer) (see Table 2, examples 4 and 5 on p 7). In Duckworth’s example 4, the molar ratio of RPEEK/RPEoEK is 80/10 (i.e., ~89/11), and in Duckworth’s example 5, the molar ratio of RPEEK/RPEoEK is 60/30 (i.e., ~67/33); both ratios fall within the presently claimed range of 95/5 to 5/95 (and the range of 95/5 to more than 50/50, recited in claim 5).
One having ordinary skill in the art would have been motivated to utilize a copolymer disclosed by Duckworth in any of the processes which Duckworth indicates that the copolymer is suitable, including an additive manufacturing process such as filament fusion, in order to provide a provide an enclosure which is more able to withstand the stresses and strains of prolonged everyday use [0080]. It would have been obvious to the person having ordinary skill in the art, therefore, to have made a 3D object (e.g., an enclosure) by extruding a filament in an AM method, as taught by Duckworth, by utilizing a filament comprising any copolymer exemplified by Duckworth, including a copolymer comprising 90 mol% RPEEK and RPEoEK repeat units in a molar ratio of 89/11 or 67/33, thereby arriving at the presently claimed method.
As to claim 6, Duckworth teaches that the composition may be a filled copolymer composition which comprises 40-60 wt% filler [0071, 76].
As to claim 7, Duckworth teaches that the copolymer may be compounded with a filler, and names aramid fibers among preferred fillers [0075]. An aramid fiber corresponds to a polymer which is distinct from the PEEK-PEoEK copolymer.
Claim(s) 1-8 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jeol et al (WO 2018/197157) in view of Duckworth et al (US 2023/0257505; only portions of Duckworth which were described in GB 2010909.6 have been relied upon in rejecting the presently claimed subject matter).
As to claims 1-5, Jeol discloses an additive manufacturing method for making a 3D object comprising extruding a part material in the form of filaments to print layers of the 3D object [0002-4]. The part material includes a PEEK polymer comprising at least 96 mol% (or all) repeat units of:
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, based on the total number of moles in the polymer [0029-33].
Jeol teaches that each phenylene moiety of the RPEEK recurring unit may independently from one another have a 1,2-, a 1,3- or a 1,4- linkage to the other phenylene moieties [0030]. Jeol exemplifies PEEK having 1,4- linkages formed from 4,4’-difluorobenzophenone with p-hydroquinone [0082], however, Jeol fails to specifically teach a polymer having a combination of units with 1,4-phenylene linkages (according to instant (A-1)) and units with 1,2- linkages (according to instant (B-1)).
Like Jeol, Duckworth discloses a polymer which is particularly useful in filament fusion additive manufacturing (AM) processes [0063-65], wherein a thin filament of polymer (corresponding to instant part M) is extruded to build up a component layer by layer into a 3D component shape [0065]. Duckworth discloses that PEEK has a suitably high Tg of 143 C to enable its use for high temperature applications without loss of crystallinity, and that it is the material of choice for many applications because of its outstanding chemical and mechanical properties, but its melting temperature (Tm) of 343 C is much higher than desirable because of the high temperatures needed to process the PEEK in its molten state [0009].
Duckworth discloses copolymers which have repeating units corresponding to instant RPEEK (units having 1,4-linkages according to instant A-1), instant RPEoEK (units having 1,2-linkages according to instant B-1), as well as polyetherdiphenylether ketone (RPEDEK) units. (Like in Jeol, the PEEK units in Duckworth’s copolymer are derived from reaction of 4,4’-difluorobenzophenone with dihydroxybenzene [0039].) Duckworth teaches that the PEEK units (of formula I) consist of 50-90 mol% 1,4-linked units of formula III, and 10-50 mol% 1,3- or 1,2- linked units of formula IV or V [0026]. Duckworth provides data in Table 4 (p 9) for sets of copolymers wherein the content of PEDEK units is held constant at 10, 25 or 40 percent. In each set of copolymers, the ratio of RPEEK units to RoPEEK and/or RmPEEK units is varied. Duckworth’s data shows that (with the PEDEK comonomer content held constant), as the amount of RoPEEK and/or RmPEEK increases relative to RPEEK, the melting temperature of the copolymer substantially decreases and there is some reduction in crystallinity, while the Tg of the copolymer does not decrease substantially [0116-0121].
Considering Duckworth’s disclosure, one having ordinary skill in the art would have recognized that, for a polymer having repeat units of formula (J’-A) derived from 4,4-difluorobenzophenone and dihydroxybenzene
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, the properties of the polymer, such as melting temperature and crystallinity, must depend on the relative contents of units having 1,2-, 1,3- and 1,4- linkages [0030]. Given Duckworth’s disclosure establishing that the ratio of 1,4- linkages (RPEEK) to 1,2 or 1,3- linkages (RoPEEK/RmPEEK) in a polymer according to formula J-A as taught by Jeol is a result effective variable, the person having ordinary skill in the art would have been motivated to select an appropriate ratio of 1,4 (PEEK) to 1,2- or 1,3 (oPEEK or mPEEK) linkages in a polymer according to Jeol’s formula (J’-A) in order to achieve a desired decrease in the melting temperature relative to a 1,4-linked PEEK homopolymer (thereby improving processability), while also maintaining a desirably high glass transition temperature and crystallinity for an intended application.
It would have been obvious to the person having ordinary skill in the art, therefore, to have carried out an additive manufacturing method for making a 3D object comprising extruding a filament part material (M) comprising a polymer, such polymer comprising all (J’-A) repeat units, as taught by Jeol, by combining 1,4-linked (J’-A) units (i.e., RPEEK) and 1,2-linked (J’-A) units (i.e., RPEoEK) in any appropriate ratio within Duckworth’s disclosed range of 90/10 to 50/50 RPEEK/RPEoEK, thereby arriving at the presently claimed subject matter.
As to claim 6, modified Jeol suggests a method according to claim 1, as set forth above. Jeol further discloses an embodiment wherein the part material comprises 0.1 to 30 wt% of at least one additive, such as fillers etc… [0023, 27]. See also claim 11 on p 32, reciting a range of 0.1 to 30 wt%, which falls within the presently claimed range.
As to claims 7 and 10, modified Jeol suggests a method according to claim 1, as set forth above. Jeol further discloses forming a blend of at least two PEEK polymers of different molecular weight to allow the manufacture of 3D objects presenting improved mechanical properties [0011, 26, 41]. Jeol teaches an embodiment wherein 20 to 50 wt% of the blend is a PEEK polymer having a Mw ranging from 50,000-85,000, and 50 to 80 wt% of the blend is a PEEK polymer having a Mw ranging from 85,000 to 120,000 [0041]. In an embodiment utilizing a blend of 20-50 wt% PEEK-PEoEK copolymer having a Mw of 50,000-85,000 and 50 to 80 wt% of PEEK-PEoEK copolymer having a Mw ranging from 85,000 to 120,000, as suggested by modified Jeol, either one of the polymers in the blend can be considered to correspond to the presently recited “PEEK-PEoEK copolymer,” while the other polymer having a different molecular weight can be considered a polymer which is distinct (in view of the different Mw) from the PEEK-PEoEK copolymer (as recited in claim 7), and, which is a PEEK copolymer (as recited in claim 10).
As to claim 8, modified Jeol suggests a method according to claim 1, as set forth above. Jeol discloses a filament having a cylindrical geometry [0058] and a diameter varying between 0.5 mm and 5 mm [0059].
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 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 12018124 in view of Duckworth et al (US 2023/0257505; only portions of Duckworth which were described in GB 2010909.6 have been relied upon in rejecting the presently claimed subject matter). Although the claims at issue are not identical, they are not patentably distinct from each other.
As to instant claims 1-5, claim 14 of ‘124 recites a method of manufacturing a 3D object by a powder bed fusion method using a powder comprising a PEEK-PEoEK copolymer according to the presently recited PEEK-PEoEK copolymer (see claim 1 of ‘124). The claims of ‘124 do not recite extruding a part material.
Duckworth discloses that powder bed fusion and filament fusion are examples of additive manufacturing processes for which a PEEK copolymer is particularly useful, and both are low shear processes for which it is desirable to having a polymer with relatively low viscosity at low shear rates [0063-65]. The powder bed fusion process described by Duckworth is the type of process recited in claim 14 of ‘124. Duckworth teaches that in filament fusion, filament of polymer is extruded to build up a component layer by layer [0065].
Considering Duckworth’s disclosure, one having ordinary skill in the art would have had a reasonable expectation of success in utilizing a PEEK copolymer in both powder bed fusion and filament fusion types of additive manufacturing processes. One would have been motivated to utilize a PEEK polymer known in the art for a powder bed fusion process in a filament fusion process in order to diversify the types of equipment able to be used to manufacture components, thereby improving process flexibility. It would have been obvious to the person having ordinary skill in the art, therefore, to have manufactured a 3D object by an additive manufacturing technique utilizing a PEEK-PEoEK copolymer, as recited in ‘124 claim 14, by utilizing Duckworth’s filament fusion method instead of the recited powder fusion method, thereby arriving at a method according to the instant claims.
The recitations of instant claim 6 are in ‘124 claim 7.
Claims 1-6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 12247101 in view of Duckworth et al (US 2023/0257505; only portions of Duckworth which were described in GB 2010909.6 have been relied upon in rejecting the presently claimed subject matter). Although the claims at issue are not identical, they are not patentably distinct from each other.
As to instant claims 1-5, claim 15 of ‘101 recites a method of manufacturing a 3D object by a powder bed fusion method using a powder comprising a PEEK-PEoEK copolymer according to the presently recited PEEK-PEoEK copolymer (see claim 1 of ‘101). The claims of ‘101 do not recite extruding a part material.
Duckworth discloses that powder bed fusion and filament fusion are examples of additive manufacturing processes for which a PEEK copolymer is particularly useful, and both are low shear processes for which it is desirable to having a polymer with relatively low viscosity at low shear rates [0063-65]. The powder bed fusion process described by Duckworth is the type of process recited in claim 15 of ‘101. Duckworth teaches that in filament fusion, filament of polymer is extruded to build up a component layer by layer [0065].
Considering Duckworth’s disclosure, one having ordinary skill in the art would have had a reasonable expectation of success in utilizing a PEEK copolymer in both powder bed fusion and filament fusion types of additive manufacturing processes. One would have been motivated to utilize a PEEK polymer known in the art for a powder bed fusion process in a filament fusion process in order to diversify the types of equipment able to be used to manufacture components, thereby improving process flexibility. It would have been obvious to the person having ordinary skill in the art, therefore, to have manufactured a 3D object by a known additive manufacturing technique utilizing a PEEK-PEoEK copolymer, as recited in ‘101 claim 15, by utilizing Duckworth’s filament fusion method instead of the recited powder fusion method, thereby arriving at a method according to the instant claims.
The recitations of instant claim 6 are in ‘101 claim 5.
Claims 1-6 and 8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 11845832 in view of Jeol et al (WO 2018/197157).
As to instant claims 1-5 and 8, claim 15 of ‘832 recites a method of manufacturing a shaped article by an additive manufacturing process using a PEEK-PEoEK copolymer according to the presently recited PEEK-PEoEK copolymer (see claim 1 of ‘832). The claims of ‘832 do not recite any particular additive manufacturing process, and therefore fail to recite extruding a part material.
Jeol discloses that examples of commercially available additive manufacturing systems include extrusion-based techniques, SLS, powder/binder jetting, electron-beam melting and stereolithography [0004]. Like the part material recited in the claims of ‘832, the part material disclosed by Jeol is formed from a PEEK polymer comprising at least 96 mol% (or all) repeat units of:
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, based on the total number of moles in the polymer [0029-33]. Jeol teaches that each phenylene moiety of the RPEEK recurring unit may independently from one another have a 1,2-, a 1,3- or a 1,4- linkage to the other phenylene moieties [0030]. Jeol discloses extruding a part material in the form of filaments to print layers of the 3D object [0002-4], and discloses a filament having a cylindrical geometry [0058] and a diameter varying between 0.5 mm and 5 mm [0059].
When manufacturing a shaped article by additive manufacturing as recited in claim 15 of ‘832, the person having ordinary skill in the art would have been motivated to use any commercially available additive manufacturing process in order to conveniently provide the recited shaped article. It would have been obvious to the person having ordinary skill in the art, therefore, to have formed a shaped article by an additive manufacturing process using a PEEK-PEoEK copolymer, as recited in ‘832 claim 15, by extruding a filament as taught by Jeol. Case law has established that it is prima facie obvious to apply a known technique to a known product ready for improvement to yield predictable results. KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398 (2007). MPEP 2143, rationale (D).
As to claim 6, Jeol further discloses an embodiment wherein the part material comprises 0.1 to 30 wt% of at least one additive, such as fillers etc… [0023, 27]. See also claim 11 on p 32, reciting a range of 0.1 to 30 wt%, which falls within the presently claimed range. It would have been obvious to the person having ordinary skill in the art, therefore, to have included a filler, as taught by Jeol, in the process recited in ‘832 claim 15 in order to provide an article comprising a filler.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RACHEL KAHN whose telephone number is (571)270-7346. The examiner can normally be reached Monday to Friday, 8-5.
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/RACHEL KAHN/Primary Examiner, Art Unit 1766
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