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 .
Priority
There is no English translation of the foreign priority in the record, the claims thusly have an effective date of the filing of the PCT: 9/24/21
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 5/19/25, 11/25/24, 10/10/24, 4/22/24, 6/28/23, 4/3/23, 12/10/25 have been considered by the examiner.
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 1, and its dependents, 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.
Regarding the “satisfying r1/r2” limitation of claim 1:
r2 is a value measured after melt flow processing, however, r1 is undefined as to when it is measured, thus the limitation is indefinite.
Since the fluorine-containing copolymer II of claim 4 has a melting point of 200-323C, it is unclear how r2 of claim 1 has a particle size at 380C.
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.
Claim(s) 1-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Masuda (US 2014/0329968).
Masuda discloses resin compositions and molded articles therefrom (title). Said compositions comprise a polyetherketone (I) and a fluororesin (II) (abstract). The polyetherketone is exemplified to be an aromatic polyetheretherketone [0096, 0097,0098] (meeting the claimed resin I of claim 1), the fluororesin comprises a monomer of formula I of the abstract and is exemplified to be tetrafluoroethylene-co-hexafluoroproplene [0099] (embracing the formula of instant claim 5). The fluororesin has a melting point from 230-350 [0046] (embracing the Tm of claim 4). The melting point of the polyetherketone is 300C or higher [0035] (embracing the Tm of claim 2) and the glass transition temperature of the polyetherketone is 130C or higher [0034] (embracing the Tg of claim 3). The average particle size of resin II dispersed in resin 1 is exemplified in Table 1 to range from 0.19-0.27 (embracing claim 7). Resin I:resin II is exemplified to be 70-80 parts I and 20-30 parts II (embracing claim 6).
Since the above elements embrace the composition requirements of claims 1-7, including wherein the exemplified average diameter is 0.19-0.27, it is the Examiner’s position the ratio r2/r1 of claim 1 is embraced. Other than the above components the instant specification discloses that shear/mixing plays a role in the particle size of resin II in resin I. Since the above particle size are better/lower than instantly exemplified (r1s of the instant specification range from 0.32-1.68), the r2/r1 is expected to be embraced by the reference.
The limitation “for three-dimensional printing” is drawn to the future intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Elements above render claims 1-7 obvious over Masuda in light of the ratio discussed above. Fiber fillers may be added [0060], as required by claim 8. The molded article may be in sheet, film, rod, pipe shape. Changes in shape are prima facie obvious. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) Thus forming such into a pellet, flake (which is similar to a sheet) or powder is prima facie obvious, meeting claim 9.
Claims 10 and 11 are drawn to the future intended use and are thusly met for reasons set forth above.
Claim(s) 12-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Masuda in view of Itami (WO 2019/155977 published 8/15/19, US 2022/0106475 is used as an equivalent English document) and Saito (US 2018/0001520).
Masuda includes elements as set forth above. Masuda discloses the composition to be used for molded articles having low friction and good PV (abstract). The articles may be any of those listed in [0073-0076]. Masuda discloses injection/extrusion/press type molding techniques [0078] but does not disclose 3d printing.
Saito discloses molded thermoplastic resin compositions (abstract). Said compositions may be polyetheretherketones, polyetherketones, polyetherketonketones and those others of [0026], which are aromatic (see figures of [0023, 0029], embracing the polyetherketone resin I of Masuda. Saito discloses these resins are suitably known for 3d printing [0003-0005, 0040].
Itami discloses welding materials made of a fluororesin and carbon nanotube (abstract). Though nanotubes are not disclosed in Masuda, Masuda does disclose a wide range of fillers including carbon fibers, carbon powder, graphite, carbon black and those others of [0060], thus akin to Itami. Itami discloses the fluororesin to be tetrafluoroethylene co hexafluoropropylene [0032], amongst others. Tetrafluoroethylene co hexafluoropropylene is exemplified in Masuda [0099]. Itami discloses the resins can be molded into sheets, films, pipes, injected molded, blow molded and 3d printed [0074]. Itami thusly is evidence that fluororesins that can be blow/injected molded can also be 3d printed.
In light of the teachings above, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include in Masuda the use of 3d printing, as taught by Itami and Saito, since Saito shows 3d printing is suitable for polyetherketone resins, and, Itami shows 3d printing is suitable for fluororesins that are known to be blow/injected molded. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), wherein the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination. See also MPEP 2143A, D, E
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.
Claim 1-4, 6-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of copending Application No. 18191484 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of ‘484 meets instant claims 1, 7, 8, 9, 10, 11, claim 3 of ‘484 meets instant claim 2, claim 4 of ‘484 meets instant claim 3, claim 5 of ‘484 meets instant claim 4 and claim 2 of ‘484 meets instant claim 6.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-6, 8-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 12448514. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of ‘514 meets instant claim 1, wherein ‘for three-dimensional printing’ is treated as future intended use in the instant claims. Since the same composition is claimed it must be capable of being used for 3d printing. Claims 2-6 of ‘514 meet instant claims 2-6, respectively, claim 7 of ‘514 meets instant claim 8, claim 8 of ‘514 meets instant claims 9-11.
Conclusion
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/ALICIA BLAND/ Primary Examiner, Art Unit 1759