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 .
Response to Amendment
The previous objection of Claims 4-22, and 26-34, under 37 CFR 1.75(c) as being in improper form is/are withdrawn in light of the Applicant’s amendments.
The previous objection of Claim(s) 1-3 under 35 U.S.C. 102(a)(1) as anticipated by US 3,791,890 A to Gander et al. (hereinafter Gander) is/are withdrawn in light of the Applicant’s amendments.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-22, 34,and 35, are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1 and 34 recites “the fraction s2 of reaction solvent being preheated to a temperature range T2 ranging from 40°C to 80°C…” and Claims 11-14 also recite different T2 temperature ranges. However, the Applicant’s specification appears to only describe the temperature range T2 in reference to a second temperature the reaction mixture is brought up to and/or maintained at (See page 4, ln 21-25 of the specification) or in reference to a second temperature the reaction medium is brought up with a preheated fraction s3 reaction solvent (See page 17, ln 1-5, and page 23, ln 4-14 of the specification).
It does not appear that claim 1 has support for the temperature range T2 as the preheated temperature of the fraction s2 of reaction solvent and thus, is considered new matter. This is further evident by claim 16 which recites temperature range T2 as a second temperature the reaction mixture is brought up to and/or maintained and which causes further confusion as to which temperature T2 is being referred to.
Claims 2-22, and 35, are dependent claims which fail to alleviate the issues above.
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.
Claims 7-10, 22, 26 and 28-33, are 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.
Claim 7 recites “in which s2≥0.25.” However, it is unclear what the fraction s2 number is measured in relation to. For example, whether the number is an amount, a ratio and/or percentage.
Claim 8 recites “in which s1≥0.25.” However, it is unclear what the fraction s1 number is measured in relation to. For example, whether the number is an amount, a ratio and/or percentage.
Claim 9 recites “in which s1+s2≥0.25.” However, it is unclear what the fraction s1+s2 number is measured in relation to. For example, whether the number is an amount, a ratio and/or percentage.
Claim 10 recites “in which s1+s2=1.” However, it is unclear what the fraction s1+s2 number is measured in relation to. For example, whether the number is an amount, a ratio and/or percentage.
Claim 22 recites “formula (I)” and “formula (II),” but then later recite “[Chem 14]” and “[Chem 15].” It is unclear if those formulas are the same.
Claim 26 recites “formula (I)” and “formula (II),” but then later recite “[Chem 16]” and “[Chem 17].” It is unclear if those formulas are the same.
Claims 28-33 recites “Polyether ketone ketone powder…” There is insufficient antecedent basis for this limitation in the claims.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 16 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 16 recites “in which the reaction medium is brought up to and optionally maintained at a temperature T2 ranging from a temperature of at least 10° C higher than T1 to 120° C…” However, claim 1 appears to recite temperature T2 as a range for the preheated fraction s2 of reaction solvent and thus, fails to further limit the claim.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 1-35 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-34 of copending Application No. 19/585,293 (App. No. 19/585,293).
Although the claims at issue are not identical, they are not patentably distinct from each other because App. No. 19/585,293 teaches each and every component and reads upon the claims in an anticipatory manner.
Regarding claims 1-35, App. No. 19/585,293 teaches the process of manufacturing a polyether ketone ketone by contacting a diphenyl ether or 1,4-bis(4-phenoxybenzoyl)benzene, an isophthaloyl chloride, a Lewis acid, and first fraction s1 reaction solvent to form a premix at a temperature T0 of less than or equal to 25 deg C, placing the premix at with a fraction s2 reaction preheated to form a reaction mixture brough to a temperature T1 from 40-80 deg C (See claim 1), the solvent is o-dichlorobenzene, (claim 2), the Lewis acid is aluminum trichloride (claim 4), in which s2 is ≥ 0.25 and s1 is ≥ 0.25 (claim 7 and 8), s1+s2 ≥ 0.75 or = 1 (claim 9-10), and the reaction medium is brought to an optionally maintained to a temperature of T2 ranging from 10 deg higher than T1 to 120 deg C (claim 16), the process further comprises a purification step (claim 17), a chain-limiting agent added before the T1 step (claim 18), the mole ratio of the aromatic ether relative to solvent is 0.005-0.030 (claim 19), having the formula (1) and (II) in a ratio units of formula (II) to (I) of 55:45 to 95:5 (claim 22). App. No. 19/585,293 also teaches a polyether ketone ketone consists of three molecular mass fractions A, B and C, A is 500 g/mol or below, B is 500-3000 g/mol, C is above 3000 g/mol, wherein A+B is ≤ 5.0% and A+B+C=100% (claim 23), with an inherent viscosity of 0.4 dl/g or greater, (claim 25), having the formula (1) and (II) in a ratio units of formula (II) to (I) of 55:45 to 95:5 (claim 26), does not comprise any dispersant (claim 27), with a mass proportion of particle sizes of greater than 1000 microns of less than or equal to 50% (claim 28), and a mass proportion of particle sizes of 315-1000 microns of greater than equal to 50% (claim 29), and a tapped density of 180-400 kg/m4 (claim 33).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 23-27 and 34 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2022/203076 A1 in which US 2024/0166810 A1 to Watanabe et al. is used as a US English equivalent.(hereinafter Watanabe).
Regarding claims 23-27 and 34, Watanabe teaches a polyether ketone ketone (PEKK) polymer obtained in example A1 (para 167-168) with an average Mn of 8200 g/mol, and a Mw/Mn of 2.1. (para 167-168 and Table 1, para 215), the molecular weights are measure with a PMMA standards (para 150), which meets the claimed molecular mass fraction C of above 3000 g/mol. Watanabe further teaches that the amount of low molecular weight components is 3.2% (Table 1, para 215). This appears to show that the amount of lower molecular weight components, i.e. under 8200 g/mol, is 3.2%, which meets the claimed amount of molecular mass fractions A and B. Watanabe further teaches the polymer has an intrinsic viscosity of 0.58 to 3.00 dL/g (para 74). Watanabe also teaches the PEKK consists of unit (1-1)
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89
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and (2-1)
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, at a molar ratio of (1-1) and (2-1) is 100:0 to 50:50, (para 24 and 46), which meets claim 26.
Regarding claim 34, although, the composition is defined by the process of claim 34, this is a product-by-process claim. As cited above, Watanabe teaches each and every component of the PEKK such as the three molecular mass fractions. Thus, the product is the same and reads upon the claims. See MPEP 2113. (“[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)).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-17, 19-35, is/are rejected under 35 U.S.C. 103 as obvious over US 3,791,890 A to Gander et al. (hereinafter Gander).
Regarding claims 1-17, 19-35, Gander teaches in Example 1, mixing 11.95 g (0.07 mols) of diphenyl ether, 10.81 g (0.05 mols) of terephthaloyl chloride, 2.72 g (0.01 mols) of isophthaloyl chloride, 80 mL (25% of total solvent) of o-dichlorobenzene (density 1.3 g/mL) solvent and aluminum chloride (i.e. Lewis acid, aluminum trichloride) to form a reaction mixture maintained at 0 deg C. (See Example 1, col 3, ln 39-52), which meets the claimed first fraction solvent and premix. The above reaction mixture is then streamed into a second reaction vessel containing 250 mL (75% of total solvent) of dichlorobenzene preheated to a temperature with rapid stirring, (col 3, ln 50-54), which meets the preheated second reaction solvent fraction. Gander further teaches that the above reaction mixture is maintained at a temperature of at least about 50 deg C, preferably at least about 70 deg C (col 2, ln 23-26) to form the polyketone (See Example 3), which meets the claimed T1 temperature range. Gander further teaches when the above reaction mixture maintained at 0 deg C, is dispersed in the fluid medium, and the fluid medium is at a higher temperature and maintained at a temperature of at least 50 deg C to 120 deg C (col 2, ln 24-55) and preheated (col 3, ln 8-12), which overlaps and meets the claimed T2 range. (See MPEP 2144.05, “where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists”). Gander also teaches that the preheated fluid medium is necessary for an abrupt temperature rise in order to segregate the particles of copolymer that are formed in the initial reaction mixture, which facilitates the completion of the reaction by elevated temperatures and, at the same time, prevents the agglomeration of these particles into the gelatinous mass. (col 3, ln 8-26). Gander further teaches the above is filtered, washed and dried to from a granular copolyketone, (See examples), which meets the purified product. The above also correlates to 0.07 mols of diphenyl ether and 2.9 mols of total solvent (330 mL total is 429 g and correlates to 2.9 mols of solvent), which correlates to a mole ratio of 0.07/2.9 = 0.024 of aromatic ether to total solvent, which meets claim 19. The above also correlates to a polyether ketone ketone having 0.05 mol units of formula (II) and 0.01 mol units of formula (I), which correlates to a unit ratio of 83:16, which meets claim 22. Gander also teaches the above reaction period at the above temperatures is for 0.5 hours (Example 3) or 1 hour (Example 1).
It would have been obvious to one ordinarily skilled in the art before the effective date of the claimed invention to preheat the dichlorobenzene fluid medium in a range of 50 deg C to 120 deg C of before dispersing the reaction mixture in the Example of Gander because Gander teaches that the preheated fluid medium is necessary for an abrupt temperature rise in order to segregate the particles of copolymer that are formed in the initial reaction mixture, which facilitates the completion of the reaction by elevated temperatures and, at the same time, prevents the agglomeration of these particles into the gelatinous mass. (col 3, ln 8-26).
Regarding the molecular weight distribution, homogenous powder size distribution and viscosity, one skilled in the art would have a reasonable expectation for the polyketone granules of Gander to have the claimed molecular weight distribution, homogenous powder size distribution, and viscosity, properties of the claimed invention because Gander teaches a substantially identical polyether ketone ketone obtained by substantially the same process of the claimed invention such as contacting the same aromatic ether, acyl chloride, and Lewis acid in a o-dichlorobenzene solvent to form a premixture at the same T0 and placing it in contact with preheated dichlorobenzene solvent at an overlapping temperature range, and the Applicant recites in their specification that is the polymerization process at the claimed temperature ranges that directly affects amount of low molecular weight oligomers (para 60 of US publication) and polymer particle homogeneous size distribution. (para 60 of US publication), and this is further evident by Gander teaching that the preheated fluid medium is necessary for an abrupt temperature rise in order to segregate the particles of copolymer that are formed in the initial reaction mixture, which facilitates the completion of the reaction by elevated temperatures and, at the same time, prevents the agglomeration of these particles into the gelatinous mass, (col 3, ln 8-26), and forms a uniform granular configuration. (col 5, ln 18-20). See MPEP 2112.01. (Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)).
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gander as applied to claim 1 above, and further in view of US 2012/0263953 A1 to Towle (hereinafter Towle).
Regarding claim 18, as cited above and incorporated herein, Gander teaches claim 1.
Gander does not explicitly teach the chain-limiting agent.
However, Towle teaches a method of preparing a poly(ether ketone ketone) comprising polymerizing monomers in a reaction medium with a Lewis acid and a controlling agent (See abstract), which is in the same field of preparing poly(ether ketone ketone) as the Applicant’s invention. Towle further teaches a capping agent may be added to the reaction medium (para 44 and 58), which caps the polymer on at least one end of the polymer chain and controls the molecular weight range of the produced polymer within a selected narrow molecular weight range. (para 58).
It would have been obvious to one ordinarily skilled in the art before the effective date of the claimed invention to further include the capping agent of Towle in the reaction medium of Gander because Towle teaches the same field of preparing poly(ether ketone ketone) as the Applicant’s invention and Towle further teaches the capping agent controls the molecular weight range of the produced polymer within a selected narrow molecular weight range. (para 58).
Response to Arguments
Applicant's arguments filed 07/28/2026 have been fully considered but they are not persuasive in part.
On page 11-12, the Applicant argues that Watanabe does not teach the claimed molecular weight distribution, such as the low molecular mass range A. This is not persuasive because Watanabe teaches the Mn of 8200 g/mol with a narrow polydispersity, and measures the higher molecular weight components of the polymer at 4.8 or more in the horizontal axis of the GPC graph (para 160-161), and the lower molecular weight components of the polymer at 3.4 or less the horizontal axis of the GPC graph (para 162-163), which demonstrates that the Mn of 8200 g/mol would be the peak in between 3.4-4.8 of the horizontal axis of the GPC graph. This further demonstrates that if the lower molecular weight components are measured from 3.4 or less of the horizontal axis of the GPC graph, this would result in measuring the % of polymer chains below 8200 g/mol, and at 3.2 wt%, this would meet the claimed A+B.
On page 12-13, the Applicant argues that Gander does not teach the claimed preheated temperature range. This is not persuasive because, as cited above, Gander does teach preheating the solvent to an overlapping temperature range and thus, meets the claimed range.
On page 13-14, the Applicant argues unexpected results of molecular weight and particle size distribution by the claimed polymerization method. Although the arguments are found persuasive, the Applicant’s data in their specification does not commensurate in scope to the claims. In the Applicant’s examples, they contain a chain limiter, and the temperature range appears to be from 55-65 deg C. Furthermore, the molecular weight fractions are not claimed. Thus, because the claims do not commensurate in scope to the evidence of unexpected results, the Applicant has not met their burden in establishing unexpected results. See MPEP 716.02 (a-e).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HA S NGUYEN whose telephone number is (571)270-7395. The examiner can normally be reached Mon-Fri, Flex schedule 7:30am-4:00pm.
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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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/HA S NGUYEN/Primary Examiner, Art Unit 1766
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