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 § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
Claims 39-44 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Drake et al. (US 20140284850).
Regarding claims 39-43
Although Drake does not disclose the percentage of crosslinking, Drake does disclose a method of controlling the cross-linking rate of a cross-linking compound for use in cross-linking an organic polymer (i.e., matrix material) (claim 26). Further, even if the crosslinking in Drake is greater than claimed, at some point the composition of Drake would pass through the claimed cross-linking range, and thus anticipate the claim.
In the alternative, Drake discloses controlling the crosslinking rate and also teaches that the degree of crosslinking can be limited with the results of a lower glass transition temperature, reduced chemical resistance and lesser tensile strength (para 0010). As such it would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to control the crosslinking amount through routine experimentation in an effort to optimize the properties such as the glass transition temperature and tensile strength of the resulting composition for the desired use.
Drake discloses that the polymer is an poly(arylene ether) (i.e., a polyarylene – aromatic polymer matrix material) (claim 34). It is noted that the instant specification discloses that the polymer may be a polyarylene (instant specification paragraph 0017), and is the specifically elected polymer.
Drake discloses a method heat molding the cross-linked organic polymer to forma heat molded article (claim 63).
With respect to the preamble limitation on being - for use in a high end PV end application in which it is subject to a frictional force or used in a tribological system - is an intended use. See Rowe v. Dror, 112 F.3d 473, 478, 42 USPQ2d 1550, 1553 (Fed. Cir. 1997) ("where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation").
With respect to the limitation of – when cross-linked, remains operable at a PV of at least about 75,000 psi-ft/min – it is noted that this is a property of the formed composition. When the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP § § 2112- 2112.02.
Regarding claim 44
Drake discloses that the organic polymer may include an additive such as carbon fibers, glass fibers, polytetrafluoroethylene (PTFE) or graphite (para 0028).
Response to Arguments
Applicants argue against the prior art rejections.
Applicants argue that Drake does not teach the claimed crosslinking percentage range. While this may be true it is not persuasive as Drake either anticipates or makes obvious the claimed range.
The remaining arguments have been fully considered but are not persuasive for the same reasons given 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 JAMES E MCDONOUGH whose telephone number is (571)272-6398. The examiner can normally be reached Mon-Fri 10-10.
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, Jonathan Johnson can be reached at 5712721177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
JAMES E. MCDONOUGH
Examiner
Art Unit 1734
/JAMES E MCDONOUGH/Primary Examiner, Art Unit 1734
