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.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 September8, 2026 has been entered.
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, 3-9 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 1 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 1 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 1 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 September 8, 2026 have been fully considered but are not sufficient to move the application to allowance. Applicant has placed the limitations of Claim 2 into Claim 1. Accordingly, the rejection of record has been modified by referencing these limitations with respect to Claim 1.
Applicant’s remarks filed September 8, 2026 have been fully considered but are not persuasive.
Applicant argues the as-filed specification (without citation) states high shear melt kneading at a shear rate of at least 600 sec-1 is necessary to achieve the recited ratio. This argument is not persuasive. Applicant misconstrues their own as-filed specification. The as-filed specification in ¶[0031] discloses the shear rates as preferable or that film of the disclose can be made by the melt-kneading of the resin and fluoropolymer. None of this section states these shear rates are required or it is the only way to make films with the ratios recited by Claim 1. Ueda melt kneads the fluororesin and the aromatic polyketones. The only data available on the ratio is Applicant’s Examples 1-9 which melt knead at 870 sec-1 vs. Example 10-11 which dry blend the components (i.e. do not melt knead). Examples 10-11 do not meet the claimed ratios while Example 1-9 always do. There is no data for Ueda’s kneading speed with respect to the ratio claimed. Applicant may present such data in the form of a Rule 132 declaration. However, at this time, the preponderance of evidence reasonably suggests when tested accordingly the films of Ueda and Moss as put forth in the rejection of record must have the recited ratio as claimed. Preferred shear speed does not reasonably suggest the shear speed is necessarily required to achieve the claimed ratio. The evidence of record reasonably suggests it is simply the choice of melt kneading the two components rather than dry blending them that gives the recited ratio.
Applicant remarks to Ueda and Moss not addressing the properties and processing (crystallinity and quenching) Applicant has addressed are not persuasive. There is no requirement that Ueda nor Moss address these properties for the combination to be applied to against the claimed invention.
The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Finally, Applicant argues Moss is directed to pure PEKK films. This argument is not persuasive as it does not address any reason why this is an issue with the rejection of record. Ueda is drawn to films of aromatic polyetherketone (generically – of which PEKK is a species) and Moss is directed to PEKK with beneficial properties. Applicant has presented no arguments as to why one of ordinary skill in the art cannot use Moss’s specific PEKK for films for the generic aromatic polyetherketones of Ueda’s films.
Conclusion
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).
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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.
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/Christopher M Rodd/ Primary Examiner, Art Unit 1766
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