DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Election of Species Requirement
2. Since claims 3 and 6 are drawn to a non-elected species, claims 3 and 6 remain withdrawn from further consideration.
Prior Art Rejections
3. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
4. Claims 1, 2, 4, 5, 7, 8, and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2018/080911 A1.
WO 2018/080911 A1 discloses the production of semi-crystalline polymer particles having a Dv50 value that meets that claimed (see abstract and Table 2), wherein polycarbonate is disclosed within paragraph [0039] in the same grouping as polyetherimide, accordingly the position is taken that the reference encompasses the use of polycarbonate polymers within the process to produce polymer particles. The process of preparing polymer particles includes combining a polymer and a solvent, meeting that claimed (see paragraph [0030]), at a first temperature, meeting that claimed (see paragraph [0020]), to provide a slurry, wherein the polymer is not soluble in the solvent at the first temperature; heating the slurry to a second temperature and at a pressure, meeting those claimed (see paragraphs [0041] and [0043]), effective to dissolve the polyetherimide in the solvent to provide a homogenous solution; cooling the homogenous solution to a third temperature, meeting that claimed (see paragraph [0044]), to provide a dispersion including a plurality of polymer particles; and isolating the polymer particles. Regarding claim 7, the claimed solids content is disclosed within paragraph [0020]. Regarding claim 8, isolating by means of filtration is disclosed within paragraph [0049].
5. Claims 1, 2, 4, 5, 7-9, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2018/080911 A1.
WO 2018/080911 A1 discloses the production of semi-crystalline polymer particles having a Dv50 value that meets that claimed (see abstract and Table 2), wherein polycarbonate is disclosed within paragraph [0039] in the same grouping as polyetherimide. The process of preparing polymer particles includes combining a polymer and a solvent, meeting that claimed (see paragraph [0030]), at a first temperature, meeting that claimed (see paragraph [0020]), to provide a slurry, wherein the polymer is not soluble in the solvent at the first temperature; heating the slurry to a second temperature and at a pressure, meeting those claimed (see paragraphs [0041] and [0043]), effective to dissolve the polyetherimide in the solvent to provide a homogenous solution; cooling the homogenous solution to a third temperature, meeting that claimed (see paragraph [0044]), to provide a dispersion including a plurality of polymer particles; and isolating the polymer particles. Regarding claim 7, the claimed solids content is disclosed within paragraph [0020]. Regarding claim 8, isolating by means of filtration is disclosed within paragraph [0049].
6. Even if it is determined that the disclosure of polycarbonate fails to be anticipatory, as set forth above within paragraph 10, the position is taken in view of the disclosure of polycarbonate, that it would have been obvious to produce polycarbonate particles using the disclosed process, so as to obtain particles having the claimed properties. Regarding claim 9, though the reference fails to disclose the polycarbonate being amorphous initially, it is noted that the reference discloses that polyetherimides are amorphous within paragraph [0001], and that polyetherimides can be processed in accordance with the teachings of the reference to produce semi-crystalline products. Accordingly, the position is taken that it would have been obvious to process amorphous polycarbonates in accordance with the teachings of the reference to also produce semi-crystalline products.
7. Applicant’s response to the prior art rejections has been carefully considered; however, it is insufficient to overcome the prior art rejections for the following reasons. Firstly, despite applicant’s argument that the disclosure of paragraph [0039] as well as the reference is lacking with respect to polycarbonate, the position is maintained, to the extent claimed, that the disclosure of polycarbonate in association with polyetherimide is sufficient to establish the equivalency of the two species or to render the selection of polycarbonate prima facie obvious. The examiner finds that the disclosure within paragraph [0039] stating that additives comprising polymers are different from the polyetherimide and polycarbonate is adequate to distinguish the disclosed/argued additives from the polyetherimide or polycarbonate species, thereby rendering the selection of polycarbonate from either polyetherimide or polycarbonate anticipated or prima facie obvious. Secondly, applicant’s argument concerning the property disclosures within the examples fails to establish that the substitution of polycarbonate for polyetherimide or the combination of the two would have yielded different properties from those claimed. It is noted that there is no limitation within the claims, including limitations with respect to the amount of polycarbonate utilized relative to other polymer species, or excluding other polymer species such as the disclosed polyetherimide. The position is maintained that the reference adequately discloses the claimed process such that the claimed properties would have been reasonably expected to result. It is not seen that applicant has provided any definitive showing or explanation to support an argument that the claimed property distinguishes the instant claims from the prior art.
Conclusion
8. 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.
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rabon A Sergent whose telephone number is (571)272-1079. The examiner can normally be reached on Monday through Friday from 9:00 AM until 5:00 PM, ET.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley, can be reached at telephone number (571)270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from Patent Center. Status information for published applications may be obtained from Patent Center. Status information for unpublished applications is available through Patent Center to authorized users only. Should you have questions about access to the USPTO patent electronic filing system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
Examiner interviews are available via a variety of formats. See MPEP § 713.01. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/InterviewPractice.
/RABON A SERGENT/Primary Examiner, Art Unit 1765
Prosecution Insights