DETAILED ACTION
Response to Amendment
No new grounds of rejection have been introduced, therefore this action is properly deemed FINAL.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Double Patenting
Claims 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11,970,600.
The rejection is adequately set forth in the office action mailed on 2/13/2026 and is incorporated here by reference. Applicant’s Remarks are address below.
Claim Rejections - 35 USC § 103
Claim(s) 1-18 are rejected under 35 U.S.C. 103 as being unpatentable over Muratoglu (US 2016/0215117).
The rejection is adequately set forth in the office action mailed on 2/13/2026 and is incorporated here by reference.
Regarding the limitation where the ACP index is measured by FTIR analysis, there is no evidence that the method of measuring the ACP index provides any structural distinctions and therefore the prior art meets this limitation.
Response to Arguments
Applicant's arguments filed 5/12/2026 have been fully considered but they are not persuasive.
Regarding the double patenting rejection, Applicant argues that the instant claims are distinct because they require heating above 250˚C for at least 50 hours and less than 70 houirs, limiting 295˚C exposure of no longer than 9 hours and achieving an ACP index of no greater than 0.06.
This is not persuasive because US ‘600 recites the ACP index (less than 0.3) that falls in the range of the instant claims (less than 0.06). Additionally, the claims are directed to a product, not a process. Thus, the process limitations are interpreted as product-by-process limitations and there is no evidence on the record that establishes the instant claimed process limitations result in a structurally distinct product than the claims of US ‘600. Therefore, the double patenting rejection is maintained.
Regarding the rejection over Moratuglu, Applicant argues that the instant claims provide a triple balance between ACP index, wear resistance, and oxidative stability resulting from the HTM cycle. Applicant argues that Muratoglu does not teach the ACP index in conjunction with the EAB less than 400%.
As noted in the rejection, Muratoglu teaches EAB of less than 400% and treatment at elevated temperatures, at for example 300˚C, for a duration between 1 minute to 24 hours (¶ 397). This is expected to provide the combination of features claimed.
Applicant argues that the heating of the sample of Fig. 10 of Muratoglu is below the boing point of acetophenone and the heating time based on the teaching of Muratoglu would not allow effective removal of the biproducts. Applicant argues there is no connection between EAB and ACP levels present in Figures 10 and 18.
It is respectfully requested that Applicant provide the processing temperatures of the example of Figure 10. The examiner was unable to determine the processing temperature and given the general teaching of processing at an elevated temperature, at for example 300˚C, for a duration between 1 minute to 24 hours (¶ 397), Applicant’s argument is not persuasive.
Applicant argues that the ACP index is not inherent in Muratoglu because Muratoglu does not disclose measuring the ACP index. This is not persuasive. If Muratoglu taught the ACP index, then a position of inherency would not be presented.
The only evidence provide regarding the ACP index is in Figure 2 of the instant specification. In this situation, there are two groups of samples, Pre-HTM and HTM at different times. The only data that provides an ACP index greater than 6 is when there is no heat treatment (Pre-HTM). A reasonable conclusion from this data is that heat treatment vs. no heat treatment provides the claimed ACP index. As Muratoglu teaches a heat treatment (as discussed in the rejection and above), the ACP index is expected to provide the same results, giving an ACP index in the claimed range. As there is no evidence to the contrary, the position of inherency is maintained.
Applicant notes that Muratoglu teaches a different heating process than the instant invention. However, there is no evidence that the different heating process results in a different ACP index. Absent such evidence, the position of inherency is maintained.
Applicant argues that the claimed material formed by the claimed product-by-process limitations is distinguished from Muratoglu by the ACP index. Again, there is no data to support Applicant’s position.
Applicant argues that the reasons for allowance in application no. 17/703,288 (now US 11,970,600) apply to the instant claims. However, US ‘600 has an ACP index of less than 0.03 while the instant application recites an ACP index of less than 0.06. Figure 2 of US ‘600 provides data that shows a heating process that gives an ACP index outside the claimed range. This provides a strong foundation for a position that the ACP index of less than 0.03 is not necessarily present. This is distinguished from the instant claimed range of less than 0.06. Again, Figure 2 does not have any data of any type of heating process that give an ACP index outside the claimed range.
Furthermore, it is noted that in the prosecution history of 17/703,288, when the claims recited the ACP index of less than 0.06 (see the claims of 8/21/2023), those claims were rejected. Thus, maintaining the rejection of record is consistent with the treatment of the 17/703,288 application.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT C BOYLE whose telephone number is (571)270-7347. The examiner can normally be reached Monday-Thursday, 10am-4pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie (Lanee) Reuther can be reached at (571)270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT C BOYLE/Primary Examiner, Art Unit 1764
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