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 .
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.
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 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Ueda (U.S. 20160163413) in view of Moss (U.S. 5,049,340).
Ueda teaches molded articles that can be films (¶[0066]) comprising an aromatic polyether ketone (I) and a fluororesin (II). (Abstract). The fluororesin can have a melting point of 230 oC to 350 oC and an average dispersed particles size of not larger than 3 microns. ¶[0053]. This reads over the particle size of Claim 1 and the melting temperature of Claim 7. The fluororesin details of Claim 8 are taught in the Abstract. The weight ratios of Claim 9 are taught in ¶[0051].
Ueda is silent on the aromatic polyether ketone having a crystallinity of less than 6 % in the film as recited by Claim 1.
Moss, working in the field of amorphous polyether ketone films similar to Applicant and Ueda, teaches polyetherketoneketone (PEKK) films which are strong, high gloss, transparent, uniform and substantially amorphous. (Column 1 lines 1-10). The PEKK of Moss’s process has processing advantages over other PEKK known in the art. (Column 4 lines 65-Column 5 lines 20). The exemplified PEKK films have no crystallinity. (Column 6 lines 40-50).
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the invention of Ueda by using the PEKK as the aromatic polyether ketone and processed according to Moss’s process to produce amorphous films of PEKK and fluororesin according to Ueda for the advantage of having films that are strong, high gloss, transparent, uniform and substantially amorphous (Column 1 lines 1-10) along with having processing advantages over other PEKK polymers. (Column 4 lines 65-Column 5 lines 20) One of ordinary skill in the art would have been motivated to have 0 % crystallinity films in the above modification because they are exemplified by Moss. (Column 6 lines 40-50) Therefore, one of ordinary skill in the art would be motivated to practice the invention of Ueda to achieve films with 0% crystallinity for the above reason.
This reads over the crystallinity of Claim 1. Ueda teaches glass transition temperatures and melt temperatures of aromatic polyether ketone which overlap that of Claim 5 and Claim 6 in ¶[0036] and ¶[0037]. While Moss does not teach the melting point or the glass transition temperature of PEKK, one of ordinary skill in the art is reasonably suggested they must in Ueda’s range due to the PEKK being in the aromatic polyether family taught by Ueda or, alternatively, must be in the claimed ranges when tested appropriately based for the same reason.
Neither Ueda nor Moss teach the resulting tensile strength of the combination of PEKK and fluororesin film. However, Moss does exemplify tensile modulus PEKK only films which is on the order of 2300 MPa (See example 5 Table 5 which also has no crystallinity). Therefore, based on the above evidence and analysis, one of ordinary skill in the art is reasonably suggested when tested appropriately, the above modified films of Ueda and Moss must have a tensile modulus in the claimed range of Claim 3.
Finally, neither Ueda nor Moss teach the ratio of Claim 2 or the fold number of Claim 4. However, the compositions discussed above have PEKK with a fluororesin according to the as-filed spec (See Claim 8) with an average dispersed particle size of 3 microns or less and a crystallinity of the aromatic polyether ketone component of 0%. Every example of Applicant’s as-filed specification that has this type of film has a ratio in the range recited by Claim 2 and a fold number in the range recited by Claim 4. As such, one of ordinary skill in the art is reasonably suggested that, when tested appropriately, the above discussed films of Ueda and Moss must have the ratio of Claim 2 and the fold number of Claim 4. This reads over both claims.
Finally, if Applicant intends to argue there is criticality which gives an unexpected result to the compositions in light of the teachings of the prior art, Applicant is reminded such arguments to unexpected results can only be properly considered when all the factors in MPEP §716.02 are properly taken into account. Overcoming a §103 rejection based on unexpected results requires the combination of three different elements: the results must fairly compare with the prior art, the claims must be commensurate in scope and the results must truly be unexpected. (See MPEP §716.02) Applicant’s showing of allegedly unexpected results must satisfy ALL of these requirements. Additionally, MPEP §716.01(b) states a “nexus” between the claimed invention and the evidence of secondary considerations, such as unexpected results, must be present. The burden rests with Applicant to establish results are unexpected and significant. (MPEP §716.02(b)).
Applicant’s only measured result is relative permittivity, an electrical property, which is on the order of the relative permittivity of Ueda’s exemplified compositions. Therefore, the evidence of record suggests Applicant’s results are not truly unexpected.
Relevant Cited Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Nakanishi (U.S. 20170204233) is substantially similar to the claimed invention but for the requirement the crystallinity is more than 10%.
Response to Arguments
Applicant’s claim amendments and remarks filed January 8, 2026 have been fully considered but are not sufficient to move the application to allowance. Applicant has narrowed the aromatic polyether ketone to exclude Bennett. Rejections based on Ueda and Bennett are withdrawn. New grounds of rejections are made in view of Ueda and Moss and any previous rejection based on Ueda and Bennett is necessarily modified to address Ueda and Moss. These modifications are necessitated by Applicant’s amendment.
Applicant’s remarks filed January 8, 2026 have been fully considered but are not persuasive. Applicant’s remarks to Bennett are moot as they have specifically amended around Bennett (see [3]) and Bennett is not used in the current rejection of record.
Applicant also argues in [2] the results in the as-filed specification demonstrate suitable permittivity along with excellent flexibility and bending resistance. This is taken as an argument to allegedly unexpected results. This argument is not persuaive.
Overcoming a §103 rejection based on unexpected results requires the combination of three different elements: the results must fairly compare with the prior art, the claims must be commensurate in scope and the results must truly be unexpected. (See MPEP §716.02) Applicant’s showing of allegedly unexpected results must satisfy ALL of these requirements. Additionally, MPEP §716.01(b) states a “nexus” between the claimed invention and the evidence of secondary considerations, such as unexpected results, must be present. The burden rests with Applicant to establish results are unexpected and significant. (MPEP §716.02(b)).
Applicant has not properly explained their proffered data especially in light of Ueda teaching fluororesins and aromatic polyether ketones already. Applicant appears to compare only to no fluororesin present in an aromatic polyether ketone film. The fact that Ueda does not specifically teaches better flexibility and bending resistance in their fluororesin / aromatic polyether ketone films does not separate Ueda from Applicant’s claimed invention especially as Applicant has not argued or presented any evidence to support their combination of new properties not appreciated by Ueda even though Ueda has the framework of their claimed invention.
"[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). See MPEP §2112.
Note also, the evidence must support the creation of a nexus between the claimed invention’s scope and the demonstration of allegedly unexpected results. Applicant has not argued this nexus exists with the current claimed invention.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 CHRISTOPHER M RODD whose telephone number is (571)270-1299. The examiner can normally be reached 7 am - 3:30 pm (Pacific).
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, Randy Gulakowski can be reached at (571) 272-1302. 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.
/Christopher M Rodd/ Primary Examiner, Art Unit 1766