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
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Rejections - 35 USC § 103
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.
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.
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Jeol (WO 2019197587) in view of Bheda (US 2017009576).
Regarding Claims 1 and 2,
Jeol teaches a method of manufacturing a three-dimensional printed object (Abstract) in which the primary component is a poly(aryl ether ketone) (Paragraph 2) which can be a poly(ether ketone ketone) (PEKK) polymer (Paragraph 65) which is comprised of the following units:
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wherein the above units preferably comprise all of the repeating units, with J-B1 equivalent to the T unit of the instant claims and J-B2 equivalent to the I unit of the instant claims (Paragraph 69). Jeol also teaches that the ratio between J-B2 and J-B1 be at least 1:1 to 5.7:1, with the latter value equaling 85% content of I, meeting the requirements of the instant claims. Additionally, Jeol teaches that the composition preferably contains at least 50% of this polymer by weight (Paragraph 9). Finally, Jeol teaches that the composition can me be used in an additive manufacturing process where the material is extruded through a tip on a print head (Paragraph 4) and can be done when the materials is in a molten or softened form (Paragraph 138) and that typical processing temperatures are from 280 to 450 °C (Paragraph 135), which overlaps with the range of the instant claim. As the temperature required to soften the composition would be a function of the polymer and any additives used to make the composition, the ordinarily skilled artisan would recognize that this temperature would be set based upon the properties of the composition used. It would therefore have been obvious prior to the effective filing date of the instant application to have selected any temperature that allowed for the extrusion of the composition and further, it would have been obvious to have selected the overlapping portion of the ranges because the selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
While Jeol teaches the use of PEKK polymers for use in additive manufacturing, Jeol does not teach that the PEKK polymer is amorphous. Bheda teaches that compositions for additive manufacturing, specifically in extrusion based methods (Paragraph 3) containing PEKK polymers (Paragraph 4), are easier to process in amorphous form (Paragraph 6) and that the use of such compositions reduces warpage and shrinkage, allowing for tighter geometric tolerances (Paragraph 22). The ordinarily skilled artisan would note that both the compositions of Bheda and Jeol primarily use PEKK polymers in extrusion based printing methods and would be motivated to combine Bheda’s teaching of the use of amorphous polymers with the composition taught by Jeol to more easily process the composition and to obtain improved properties in the printed article such as the reduced warpage allowing for tighter tolerances. It would therefore have been obvious to have combined the teachings of Bheda and Jeol to obtain the predictable result or a PEKK-based additive manufacturing composition and method that is more easily processable with a reasonable expectation of success.
Regarding Claim 3,
Jeol teaches that polymers useful in the method can have repeating units of the following structure:
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wherein the linkages can independently be 1,2-, 1,3-, or 1,4- in nature (Paragraph 40). As such, Jeol teaches structures that can contain only 1,3-linkages between the carbonyl groups. One of ordinary skill in the art would recognize that changing the orientation of these linkages would result in polymers with differing properties and would therefore be motivated to alter this characteristic when different properties were desired. It would have been obvious prior to the effective filing date of the instant application to have tried polymers with different linkages for this reason.
Regarding Claim 4,
Jeol teaches that the PEKK polymer used in the composition for the method have an inherent viscosity of at least 0.5 dL/g when measured as a solution in 96% by weight sulfuric acid (Paragraph 71), which overlaps with the range of the instant claim. As the viscosity of the polymer would be related to its molecular weight and repeat unit(s) as well as any additives, it would logically follow that this property is a function of the composition itself. The ordinarily skilled artisan would recognize that compositions of reduced viscosity would be easier to extrude and would therefore provide motivation to adjust this value to be suitable for the extrusion process. It would therefore have been obvious prior to the effective filing date of the instant application to have selected the overlapping portion of the ranges because the selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
Regarding Claim 5,
Claim 5 is being interpreted as a product-by-process claim, as it is constructed to specify a method of synthesis of the PEKK polymer. As such, the patentability of this claim is determined solely on the basis of the final product and not the method used for its generation, absent the showing of evidence that the method of synthesis alters the properties of the polymer. As such, because Jeol teaches polymers that are comprised of identical repeating units as would be obtained through the method of the claim, the PEKK polymer of Jeol meets the requirements of the instant claim.
Regarding Claims 6 and 7,
While Jeol does not specify the viscosity at the softening temperature or the softening temperature itself, these values would be a function of the composition itself, and it would logically follow that a composition containing similar components in similar amounts would have similar viscosities and softening temperatures. Because the composition taught by Jeol is substantially similar to that of the instant application, it would necessarily follow that it would have a similar softening temperature and viscosity and under the conditions of the instant claim. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding Claim 8,
Jeol teaches that the composition is made into a filament for use in additive manufacturing (Paragraph 126), meeting the requirement of the instant claim.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Reber (SAMPE Conference Proceedings, May 20-23, 2019) teaches the use of PEKK polymers, particularly in amorphous form, in additive manufacturing.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM J BERRO whose telephone number is (703)756-1283. The examiner can normally be reached M-F 8:30-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.J.B./Examiner, Art Unit 1765
/JOHN M COONEY/Primary Examiner, Art Unit 1765