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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2/26/2026 has been entered.
Response to Amendment
The amendment of claim 1 is supported by the specification.
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
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 Rejections - 35 USC § 112
Claims 1-4, 7, 10-11, 13, 20-21 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 pre-AIA the applicant regards as the invention.
Claim 1 recites “the polyamide resin is an amorphous resin……does not have a distinct melting point peak”. Amorphous or not having a distinct melting point peak is a feature depending on the sample preparing conditions. Without citing sample preparing conditions, the term “an amorphous polymer” and “does not have a distinct melting point peak” are meaningless from scientific point of view.
Claim Rejections - 35 USC § 103
Claims 1-4, 7, 10, 11, 13, 20-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Matsuda et al (JP2003252986).
Claim 1, 3-4, 7, 13, 20-21: Matsuda teaches a polyamide resin, the diamine is at least 40 mol% of meta-xylylenediamine units, preferably 100mol% (0034, table 1, examples), diacid can be a mixture of adipic acid and isophthalic acid [0036, example 4]. Matsuda teaches the content of phosphorus atom can be 30-420ppm (table 2). The resin comprises alkali metal atom of 100 ppm or less [0017]. One exemplary ratio between P and Na is 30 ppm of phosphorus atom and 45 ppm of sodium atom (table 2, example 8). Case law holds that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Matsuda does not teach the content of each diacid.
However, Matsuda discloses the diacid can be a mixture of adipic acid and isophthalic acid, therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to utilize these two acids in any ratio, including the claimed ratio, because they are useful for the same purpose. In re Lindner 457 F,2d 506,509, 173 USPQ 356, 359 (CCPA 1972).
For limitations “amorphous resin” and “does not have a distinct melting point peak”, the instant specification defines the term “amorphous resin” and “does not have a distinct melting point peak” as having a melting enthalpy of not more than 5 J/g. The specification further discloses “the heat quantity of the endothermic peak and the melting point are measured in accordance with the method described in paragraph 0036 of WO2017/090556”, which use DSC to measure the heat quantity of the endothermic peak and the melting point.
In a DSC measurement, a slower cooling rate allows more time for polymer chains to re-organize into a crystalline structure, resulting in a higher degree of crystallinity. Conversely, a faster cooling rate gives the chains less time to organize, which leads to a lower degree of crystallinity and a larger amorphous (non-crystalline) phase. In other words, if a resin has a melting enthalpy of not more than 5 J/g or does not have a distinct melting point peak depends on the cooling rate, i.e. sample preparing conditions! However, instant specification does not disclose how the sample was prepared. And the polyamide of Matsuda can be amorphous, or has a crystal melting enthalpy of 0 J/g as measured, or does not have a distinct melting point peak like claimed, if the sample was quenched from melt before DSC measurement.
Alternatively, for limitations “amorphous resin” and “does not have a distinct melting point peak”, Matsuda is silent with respect to the claimed feature. However, the teachings from Matsuda have rendered obvious the instantly claimed ingredients and amounts thereof. Therefore, it is reasonable that one of ordinary skill in the art would expect the claimed feature to naturally arise.
Matsuda is silent with respect to the claimed properties of the resin (i.e. yellowness index, oxygen transmission coefficient). However, Matsuda teaches adding phosphorus compounds can suppress thermal oxidative decomposition and gelation of the polyamide resin. The teachings from Matsuda have rendered obvious the instantly claimed ingredients and amounts thereof. Therefore, it is reasonable that one of ordinary skill in the art would expect the claimed yellowness index and other physical properties to naturally arise.
Claim 2, 10-11: Matsuda teaches the phosphorus compound can be sodium hypophosphite [0018]. Additionally, the claim is a product-by-process claim. Case law holds 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).
Response to Arguments
Applicant's arguments filed 2/26/2026 and 4/21/2026 have been fully considered but they are not persuasive.
In response to applicant's argument regarding 112(b) rejection, it is noted that the newly added limitation is directed to the same feature as “having a melting enthalpy of not more than 5 J/g”, both are related to a DSC measurement, and depend on sample preparing conditions.
In response to applicant's argument regarding example 4 of Matsuda, it is noted that 1) sample preparation conditions are not disclosed; 2) the claim rejection above is not completely based on example 4 of Matsuda. The teachings from example 4 of Matsuda the claim rejection relies on is “diacid can be a mixture of adipic acid and isophthalic acid”.
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/WENWEN CAI/
Primary Examiner, Art Unit 1763
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