DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 2/6/2026 has been entered.
Claims 16-23, 25-32 are pending.
Double Patenting
Claims 16-32 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 17-29 of copending Application No. 18/578,355 (reference application) in view of Maljkovic et al (US 2010/0324171).
Although the claims at issue are not identical, they are not patentably distinct from each other because:
While copending ‘355 claims an additional 1-10% by weight of a thermotropic polymer, this arrives at the present claim 16 in an anticipatory type manner.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 16-32 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 17-29 of copending Application No. 18/578,364 (reference application) in view of Maljkovic et al (US 2010/0324171).
Although the claims at issue are not identical, they are not patentably distinct from each other because:
While copending ‘364 claims an additional 17.5-55% by weight of a polyphenylene sulfide polymer, this arrives at the present claim 16 in an anticipatory type manner.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Objections
Claim 16 is objected to because of the following informalities:
Claim 16 line 12 recites “less the” and it appears Applicant intended to recite “less than”.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
Claims 16-23, 25-32 are rejected under 35 U.S.C. 103 as being unpatentable over Joel et al. (US 2021/0070996) in view of Maljkovic et al (US 2010/0324171).
Regarding claim 16: Joel is directed to a thermoplastic molding composition comprising as components
Up to 89 wt% of a non-sulfonated polyarylene ether sulfone polymer P3
1-50 wt% polymer P2 polysulfone polymer having at least 1 mol% sulfonated recurring units comprising at least one -SO3Y group wherein Y is a cation equivalent of Na, based on the total amount of the at least one sulfonated polyarylene ether sulfone polymer contained in the thermoplastic molding composition ([0175]-[0177]. A specific example of 5 mol% of sulfonated recurring units comprising at least one -SO3Y group is utilized in the working examples ([0203]).
Up to 65 wt% of a fibrous and/or particulate filler ([0179] Joel)
The % by weight values in each case are based on the total weight of the thermoplastic molding composition.
Joel doesn’t mention the non-sulfonated polyaryl ether sulfone polymer (P) has less than 0.05% by weight of OH end group based on the number average weight (Mn) of the non-sulfonated polyaryl ether sulfone polymer (P).
Maljkovic is directed to a composition comprising poly(biphenyl ether sulfone) wherein the PPSU preferably has a hydroxyl end group concentration of 10 μm eq/g or less (equivalent to 0.001 wt% or less). One skilled in the art would have been motivated to have selected a PPSU having terminal OH groups in the amount of Maljkovic since hydroxyl groups may undergo oxidation during melt processing and thereby impart undesirable color to the PPSU ([0085] ). Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have selected the PPSU polymer of Maljkovic as the PPSU polymer of choice in Joel to arrive at the present claim 24.
Regarding claim 17: Poly(biphenyl ether sulfone) (PPSU) is the same polymer as that of the present invention.
It is well settled that “even 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.” See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
In the present case, the same product of a non-sulfonated polyarylene ether sulfone polymer is disclosed, and therefore meets claim 17 of the present invention. Further, the sulfonated polyarylene is made by reacting a sulfonated aromatic dihalogen sulfone, aromatic dihydroxy compound, a carbonate compound and aprotic solvent ([0204] Joel) and therefore it is reasonable to conclude one skilled in the art would have made the non-sulfonated PPSU polymer utilizing the same reaction. Therefore, Joel meets the product by process limitations of claim 17.
Regarding claim 18: Component (II) is made by converting the reaction mixture comprising as components: (see [0204] Joel)
(IIA1) 559.04 g (1.95 mol, 95 mol% based on sum of (IIA1) and (IIA2)) of 4,4'-dichlorodiphenyl sulfone (DCPDS),
(IIA2) 50.34 g (0.10 mol, 5 mol% based on sum of (IIA1) and (IIA2))) of disodium diphenylsulfone-4, 4'-dichloro-3,3'-disulfonate (s-DCPPS) and
(IIB1) 4,4'-biphenol (BP),
(IIC) potassium carbonate (K2CO3)
(IID) an aprotic polar solvent of sulfolane.
Regarding claim 19: The non-sulfonated polyarylene sulfone polymer is the same polymer as that of the present invention, namely poly(biphenyl ether sulfone) (PPSU).
While the method of making the PPSU polymer is not mentioned, “even 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.” See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
In the present case, the same product of a non-sulfonated polyarylene ether sulfone polymer is disclosed, and therefore meets claim 17 of the present invention. Further, the sulfonated polyarylene is made by reacting a sulfonated aromatic dihalogen sulfone of 100% by weight 4,4-dichlorodiphenylsulfone based on component IA1, and therefore it is reasonable to conclude one skilled in the art would have made the non-sulfonated PPSU polymer utilizing the same reaction. Therefore, Joel meets the product by process limitations of claim 19.
Regarding claim 20: Example P2 comprises 100 wt% (IIA1) of non-sulfonated 4,4'-dichlorodiphenyl sulfone (DCPDS) based on the total weigh of component IIA1.
Regarding claim 21: Example P2 comprises 100% by weight of disodium diphenylsulfone-4, 4'-dichloro-3,3'-disulfonate (s-DCPPS) (equivalent to a sulfonated aromatic dihalogen of 4,4’-dichlorodiphenylsulfone) based on the total weight of component (IIA2).
Regarding claim 22: The non-sulfonated polyarylene sulfone polymer is the same polymer as that of the present invention, namely poly(biphenyl ether sulfone) (PPSU).
While the method of making the PPSU polymer is not mentioned, “even 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.” See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
In the present case, the same product of a non-sulfonated polyarylene ether sulfone polymer is disclosed, and therefore meets claim 22 of the present invention. Further, the sulfonated polyarylene is made by reacting a sulfonated aromatic dihalogen sulfone of 100% by weight 4,4’-dihydroxydiphenylsulfone based on component IB1, and therefore it is reasonable to conclude one skilled in the art would have made the non-sulfonated PPSU polymer utilizing the same reaction. Therefore, Joel meets the product by process limitations of claim 22.
Regarding claim 23: Example P2 comprises 100% by weight of 4,4’-dihydroxydiphenylsulfone based on the total weight of component (IIB1).
Regarding claim 25: Example P2 comprises 100% by weight of potassium carbonate based on the total weight of component (IIC).
Regarding claim 26: A solvent of sulfolane is utilized in the working examples (0204]).
Regarding claim 27: The at least one fibrous filler includes glass fibers, carbon fibers, aramid fibers, titanium fibers, and wollastonite and particulate fillers including talc, mica, kaolin, calcium carbonate, calcium silicate, magnesium carbonate ([0180]).
Regarding claim 28: The sulfonated recurring units comprise at least one -SO3Y group wherein Y is a cation equivalent of Na.
Regarding claims 29-30: A process for manufacturing a molded article and molded article are disclosed ([0191]-[0193] Joel).
Regarding claim 31: Component (II) is made by converting the reaction mixture comprising as components: (see [0204] Joel)
(IIA1) 559.04 g (1.95 mol, 95 mol% based on sum of (IIA1) and (IIA2)) of 4,4'-dichlorodiphenyl sulfone (DCPDS),
(IIA2) 50.34 g (0.10 mol, 5 mol% based on sum of (IIA1) and (IIA2))) of disodium diphenylsulfone-4, 4'-dichloro-3,3'-disulfonate (s-DCPPS) and
(IIB1) 4,4'-biphenol (BP),
(IIC) potassium carbonate (K2CO3).
Regarding claim 32: A solvent of sulfolane is utilized in the working examples (0204]).
Response to Arguments
Applicant's arguments filed 2/6/2026 (herein “Remarks”) have been fully considered but they are not persuasive.
Regarding the double patent rejection response set forth on page 6 of the Remarks, Applicant's request for abeyance is acknowledged to the extent that Applicant's lack of response to the cited rejection will not be treated as non-responsive under 37 CFR 1.111(b). However, since the rejection is considered proper it will be maintained until such time as a complete response is filed, or conditions appropriate for removal of the rejection are presented.
Applicant argues (p. 7 Remarks) Joel focuses on polyamide compositions using PAES as a compatibilizer, not a composition consisting of PAES polymers and fillers as claimed.
This argument is not found persuasive since Joel meets the claimed composition. The present claims do not exclude a polyamide, for instance.
Applicant argues (p. 7-8 Remarks) there is no motivation to combine Joel with Maljkovic since Maljkovic addresses color stability rather than mechanical performance after annealing. Joel does not address color stability.
This argument is not found persuasive since Maljkovic teaches the hydroxyl groups may undergo oxidation during melt processing and thereby impart undesirable color to the PPSU. Joel discloses a wide range of possible articles, ranging from injection moulding to additive manufacturing ([0196] Joel), and therefore one skilled in the art would understand the benefit of reduced undesirable color.
Applicant argues (p. 9-10 Remarks) unexpected results. Inventive Examples 2,3,5,6 and Comparative Example V8 (PESU-OH) demonstrate the claimed polyarylene ether sulfone polymer with less than 0.05 wt% OH end groups, the average retention of tensile strength and elongation after heat aging is significantly improved. They also retain high values of strength at break after annealing and elongation at break with unchanged appearance in comparison to Comparative Example V8.
The burden of showing unexpected results rests on the person who asserts them by establishing that the difference between the claimed invention and the closest prior art was an unexpected difference. See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). Further, the showing of unexpected results must be commensurate in scope with the claims. See In re Peterson, 315 F.3d 1325, 1330-31 (Fed. Cir. 2003).
In the present case, the working examples comprise specific polymers of components (I) and (II) and (III). For instance, PESU and PPSU are utilized in, while claim 16 includes an non-sulfonated polyarylene ether sulfone polymer, which is much broader in scope. Therefore, the present claims are not considered commensurate in scope with the claims.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT T BUTCHER whose telephone number is (571)270-3514. The examiner can normally be reached Telework M-F 9-5 Pacific Time Zone.
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/ROBERT T BUTCHER/Primary Examiner, Art Unit 1764
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