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 .
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-13) in the reply filed on 03/03/2026 is acknowledged.
Claim Objections
Claim 6 is objected to because of the following informalities: The claim recites, “unidirectionnally oriented” should be replaced with --unidirectionally oriented--.
Appropriate correction is required.
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 6 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. The claim 6 recites, “the composite article according to claim 5, wherein the reinforcing fibers are sensibly unidirectionnally oriented,” the term “sensibly” is a relative term which renders the claim indefinite. The term “sensibly” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear the meaning of “sensibly unidirectionally oriented.” Clarification is needed.
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 non-obviousness.
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 1-5 and 7-13 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2019/150060 in view of BOUGHER et al. (U.S. Publication No. 2020/0131419, hereinafter BOUGHER).
To further advance the prosecution of this invention, PAUL et al. (U.S. Publication No. 2021/0222009, hereinafter PAUL) which is an English equivalent of WO 2019/150060 will be used in the rejection.
Regarding claims 1-5, 7, 11 and 13, PAUL teaches a polymer blend including (i) poly(aryl ether ketone) and the polymer blend is used for manufacturing parts in petroleum, cabling, aeronautical, motor vehicle, electronics, additive manufacturing, and etc. (Abstract; [0001 and 0013-0014]).
The poly(aryl ether ketone) (PAEK) is chosen from the group consisting of poly(ether ketone) (PEK), poly(ether ether ketone) PEEK, poly(ether ketone ketone) PEKK, poly(ether ether ketone ketone) (PEEKK), and etc. [0018-0020]. The blend include customary additives including carbon-based fillers (carbon fibers [0109]), carbon nanotubes, metal oxides [0109], conductive agents [0110], other polymers [0107-0108], antioxidants, melt stabilizers, flame retardants, and colorants [0110].
The polymer blend for the manufacture of parts are molded by using injection molding or by compression molding, extrusion, laser sintering additive manufacturing for the production of composites [0031 and 0119].
However, PAUL does not teach wherein the composite article has a thermal conductivity of at least 0.5 W/mK and wherein the composite article has a thermal conductivity measured according to the Guarded Heat Flow Meter Technique as described in ASTM E1530-19 at 25oC of at least 0.5 W/mK.
In the same field of endeavor of polymer blend composite, BOUGHER teaches a thermally-conductive polymer resin that may be molded using a range of thermoplastic manufacturing techniques, a composition includes a thermoplastic polymer (i.e., polyaryetherketone [0010]) and a thermally conductive filler (Abstract). The thermally conductive filler includes aluminum nitride, aluminum oxide, boron nitride, silicon carbide, graphite, graphene, graphite oxide, carbon fibers, carbon nanotubes, zinc oxide, magnesium hydroxide, or any combination thereof [0068 and 0072]. The filler has a thermal conductivity greater than or equal to 10 W/m-K. The thermally conductive filler particles have a mean particle size of 50 microns [0047]. The composition is characterized by a thermal conductivity of at least 1 W/m-K (Abstract) (which would read on the claimed thermal conductivity).
The thermally conductive component is molded using the thermally conductive resin in act 501. The thermally conductive component may be formed by injection molding and compressing molding [0069].
The thermally conductive component may be additive manufactured by 3D printing the thermally conductive component directly onto a thermally conductive substrate [0070-0071].
Given PAUL teaches the polymer blend comprises customary additives including carbon-based fillers, carbon nanotubes, metal oxides [0109], and conductive agents [0110], it would have been obvious to a person of ordinary skill in the art to have provided the thermally conductive fillers of BOUGHER with the polymer blend of PAUL for the benefit of obtaining a composition having a thermal conductivity of at least 1 W/m-K. It is well settled that it is prima facie obvious to combine two ingredients, each of which is targeted by the prior art to be useful for the same purpose. In re Linder 457 F,2d 506,509, 173 USPQ 356, 359 (CCPA 1972).
With regard to the claim limitations, “wherein the composite article has a thermal conductivity measured according to the Guarded Heat Flow Meter Technique as described in ASTM E1530-19 at 25oC of at least 0.5 W/mK,” as discussed in paragraph 11 above, BOUGHER teaches the thermally conductive filler includes aluminum nitride, aluminum oxide, boron nitride, silicon carbide, graphite, graphene, graphite oxide, carbon fibers, carbon nanotubes, zinc oxide, magnesium hydroxide, or any combination thereof [0068 and 0072]. The filler has a thermal conductivity greater than or equal to 10 W/m-K. The composition is characterized by a thermal conductivity of at least 1 W/m-K (Abstract). Given the present invention the same conductive fillers as PAUL and BOUGHER, the position is taken that the composite would possess the same thermal conductivity.
With regard to the claim limitations, “wherein the composite article is obtained by electromagnetic radiation-generated sintering additive manufacturing,” although PAUL does not disclose wherein the composite article is obtained by electromagnetic radiation-generated sintering additive manufacturing, it is noted that “[E]ven though product by process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product by process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) . Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed (process) and given that PAUL meets the requirements of the claimed composition, PAUL clearly meet the requirements of present claims composite article made of a composition comprising at least one polyarylether ketone (PAEK) and at least one thermally conductive filler.
Regarding claim 8, as discussed in paragraph 11 above, PAUL teaches the poly(aryl ether ketone) PAEK may be chosen from poly(ether ketone ketone) PEKK [0018-0020].
Regarding claim 9, as discussed in paragraphs 11-16 above, PAUL teaches the poly(aryl ether ketone) PAEK may be chosen from poly(ether ketone ketone) PEKK comprising units of formula IA, of formula IB, and a blend thereof:
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The blend contains 50% to 98% by weight of the poly(aryl ether ketone) PAEK. The amount of the PAEK (blend of Formula IA and Formula IB) can be adjusted to the claimed ratio in order to obtain desired properties in the composition. It would have been obvious to one of ordinary skill in the art at the time the invention was made to select the portion of the prior art's range which is within the range of applicant's claims because it has been held to be obvious to select a value in a known range by optimization for the best results. As to optimization results, a patent will not be granted based upon the optimization of result effective variables when the optimization is obtained through routine experimentation unless there is a showing of unexpected results which properly rebuts the prima facie case of obviousness. See In re Boesch, 627 F.2d 272,276,205 USPQ 215,219 (CCPA 1980). See also In re Woodruff 919 F.2d 1575, 1578,16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990), and In re AIIer, 220 F.2d 454,456,105 USPQ 233,235 (CCPA 1955).
Regarding claim 10, PAUL teaches the polymer blend is poly(aryl ether ketone) is in the amount of 50 to 98% [0013-0019]. The blend may include minor amounts of functional additives including carbon nanotubes [0109] and conductive agents [0110] in the amount of 0% to 30% by weight of additives [0111]. The amounts of the poly(aryl ether ketone) and conductive agents/carbon nanotubes can be adjusted to obtain a desired property in the composition.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to select the portion of the prior art's range which is within the range of applicant's claims because it has been held to be obvious to select a value in a known range by optimization for the best results. As to optimization results, a patent will not be granted based upon the optimization of result effective variables when the optimization is obtained through routine experimentation unless there is a showing of unexpected results which properly rebuts the prima facie case of obviousness. See In re Boesch, 627 F.2d 272,276,205 USPQ 215,219 (CCPA 1980). See also In re Woodruff 919 F.2d 1575, 1578,16 USPQ2d 1934, 1936-37 (Fed. Cir. 1990), and In re AIIer, 220 F.2d 454,456,105 USPQ 233,235 (CCPA 1955).
Regarding claim 12, the combined disclosures of PAUL and BOUGHER teaches the present invention, see paragraphs 11-16 above. More specifically, the combined disclosures teaches polyaryletherketone and thermally conductive fillers which have thermal conductivity greater than or equal to 10 W/m-K. The thermally conductive filler includes aluminum nitride, aluminum oxide, boron nitride, silicon carbide, graphite, graphene, graphite oxide, carbon fibers, carbon nanotubes, zinc oxide, magnesium hydroxide, or any combination thereof [0068 and 0072]. The composition is characterized by a thermal conductivity of at least 1 W/m-K (Abstract). The position is taken that the composite article would intrinsically possess a compressive modulus of at least 3.8 GPa. The courts have held that “a compound and all its properties are mutually inseparable,” In re Papesch, 315F.2d 381, 137 USPQ 42, 51 (CCPA 1963). Further, attention is drawn to MPEP 2112.01, which states that “products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present,” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over WO 2019/150060 in view of BOUGHER et al. (U.S. Publication No. 2020/0131419, hereinafter BOUGHER) in further view of WO 2020/040121.
To further advance the prosecution of this invention, PAUL et al. (U.S. Publication No. 2021/0222009, hereinafter PAUL) which is an English equivalent of WO 2019/150060 will be used in the rejection and KOSHI et al. (U.S. Publication No. 2021/0253813, hereinafter KOSHI) which is an English equivalent of WO 2020/040121.
Regarding claim 6, the combined disclosures of PAUL and BOUGHER substantially teaches the present invention, see 11-16 paragraph above. More specifically, PAUL teaches the composite include customary additives including carbon-based fillers (carbon fibers [0109]).
However, the combined disclosures do not teach the composite article wherein the reinforcing fibers are sensibly unidirectionally oriented.
In the same field of endeavor of a fiber-reinforced thermoplastic resin, KOSHI teaches the thermoplastic includes a continuous fibers base material made from continuous reinforcing fibers and a thermoplastic resin (polyarylene ether ketone resin (PAEK) [0009 and 0030]) applied to the surface. A laminate uses the fiber-reinforced thermoplastic resin base material (Abstract) for electric component parts or electric/electronic parts such as LED reflector and SMT connector [0088]. The fiber-reinforced thermoplastic resin base material and contained unidirectionally oriented reinforcing fibers (Example 1; [0085]). The obtained fiber-reinforced thermoplastic resin base material was evaluated [0086] and Table 1 shows mechanical properties (Table 1).
Given the combined disclosures of PAUL and BOUGHER teaches the composite comprising carbon fibers for electric/electronic parts, it would have been obvious to a person of ordinary skill in the art at the time the invention was made to have provided the unidirectionally oriented reinforced fibers of KOSHI with the combined disclosures of PAUL and BOUGHER for the benefit of obtaining fiber-reinforced thermoplastic resin with improved mechanical properties as taught by KOSHI (Table 1; [0085 and 0088]). It is well settled that it is prima facie obvious to combine two ingredients, each of which is targeted by the prior art to be useful for the same purpose. In re Linder 457 F,2d 506,509, 173 USPQ 356, 359 (CCPA 1972).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEVE V HALL whose telephone number is (571)270-7738. The examiner can normally be reached M-F, 9 am-5 pm, EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at (571) 272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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DEVE V. HALL
Primary Examiner
Art Unit 1763
/DEVE V HALL/Primary Examiner, Art Unit 1763