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 .
Response to Election of Species Requirement
2. Applicant's election with traverse of polycarbonate particles and method of making the polycarbonate particles in the reply filed on 02 December 2025 is acknowledged. The traversal is on the ground(s) that no undue burden is believed to be present and that the examiner has not established that the different species have a separate classification, a separate status in the art, or a different field of search. This is not found persuasive because in accordance with Office practice, the examiner has set forth rationale explaining why a serious search burden is present and applicant has not distinctly and specifically pointed out the supposed errors upon which the applicant relies for concluding that the requirement is in error (MPEP 818.01).
The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 112
3. 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.
4. Claim 8 is 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.
The language, “the polymer powder”, within claim 8, lacks antecedent basis.
Prior Art Rejections
5. 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.
6. Claim 10 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2019/040314 A1.
WO 2019/040314 A1 discloses polycarbonate particles having a Dv50 particle size of less than 125 micrometers. See abstract, paragraphs [0058]-[0061], and Tables 2 and 3. It has not been established that the method yields a patentably distinct product.
7. Claim 10 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2017/040887 A1.
WO 2017/040887314 A1 discloses polycarbonate particles having a D50 particle size of 20 to 100 micrometers, which meets the claimed particle size limitation. See abstract, paragraphs [0003], [0074], and [0075], and Table 3. It has not been established that the method yields a patentably distinct product.
8. Claims 10 and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by EP 376653 A2.
EP 376653 A2 discloses partially crystalline polycarbonate particles having a maximum dimension from 0.1 to 100 micrometers, which satisfies the claimed Dv50 value. See abstract and page 1, lines 31-46. It has not been established that the method yields a patentably distinct product.
9. Claims 1, 2, 4, 5, 7, 8, and 10-12 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].
10. Claims 1, 2, 4, 5, and 7-12 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].
11. 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.
Conclusion
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.
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/RABON A SERGENT/Primary Examiner, Art Unit 1765