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 § 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 7 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 7 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 7-12 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 7-12 above. More specifically, the combined disclosures teaches polyarylether ketone 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 paragraphs 7-12 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 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).
Pertinent Art
ESSEGHIR et al. (U.S. Publication No. 2015/0284618) teaches polymer composites comprises a thermoplastic polymer and a filler (Abstract). The thermoplastic polymer includes polyarylether ketones [0018] and the filler [0025]. The fillers may be selected for its high thermal conductivity [0022]. In one embodiment, the filler can have a thermal conductivity of at least 5 W/mK [0022]. The polymer composite has a thermal conductivity of at least 0.5 W/mk (Abstract).
ZHANG et al. (U.S. Publication No. 2017/0055339) teaches a thermally conductive composite includes a polymer and boron nitride (Abstract). Polymers include polyarylether ketones [0019] and boron nitride is thermally conductive wherein the boron nitride have a thermal conductivity of 1 to 2000 W/mK [0022]. The composite can have a thermal conductivity of 1 W/mK or more [0024].
Note: boron nitride is a well-known ceramic filler.
Response to Arguments
Applicant's arguments filed 05/13/2026 have been fully considered but they are not persuasive. The response is insufficient to rebut the obviousness rejection. Despite the applicant’s arguments in view of the teachings of the prior art, the position is maintained.
The applicant argues the compositions of BOUGHER are not simple polymer-filler blends, but rather structured thermally conductive composite systems based on hybrid thermally conductive particles, which are fundamentally different from the compositions disclosed in PAUL. The Office’s position that it would have been obvious to combined PAUL and BOUGHER in a manner to arrive at the claimed subject matter relies on an overly generalized characterization of both references are materially different. PAUL seeks to improve flexibility and toughness, properties that are known to degrade with increasing filler loading, whereas BOUGHER relies on significant filler content and structural modification to achieve thermal conductivity. A person of ordinary skill in the art would recognize that incorporating BOUGHER’s conductive system into PAUL’s blends would undermine the mechanical improvements that PAUL seeks to achieve. Accordingly, there is no reason to combine these teachings.
The examiner has considered the applicant’s arguments, however, the examiner disagrees. Firstly, in response to applicant's argument that BOUGHER relies on significant filler content and structural modification to achieve thermal conductivity, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). In this case, BOUGHER is relied upon to teach the thermal conductivity of the conductive fillers which PAUL discloses in the polymer blend (i.e., carbon-based fillers, carbon nanotubes, and metal oxides) which satisfies the thermal conductivity as claimed (at least 0.5 W/mK).
Secondly, with regard to the arguments that a person of ordinary skill in the art would recognize that incorporating BOUGHER’s conductive system into PAUL’s blends would undermine the mechanical improvements that PAUL seeks to achieve, a prior art reference must be considered in its entirety, i.e., as a whole, including portions that would lead away from the claimed invention. W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540,220 USPQ 303 (Fed. Cir. 1 983), cert. Denied, 469 U.S. 851 (1984). In addition, a known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use, see In re Gurley, 27 F.3d 551,554,31 USPQ2d 1130, 1132 (Fed. Cir. 1994). Further, a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including non-preferred embodiments, see Merck & Co. v, Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See MPEP 2141.02, MPEP 2145X.D.l and MPEP 2123.
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.
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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DEVE V. HALL
Primary Examiner
Art Unit 1763
/DEVE V HALL/Primary Examiner, Art Unit 1763
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