DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This rejection is response to the applicant’s arguments with respect to claims 1-13, dated 5/20/2025. The case was reopened after the notice of Panel Decision mailed 6/12/2025.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 2, 4, 5, 8-13 are rejected 35 U.S.C. 103 as being unpatentable over Nakagawa-1 (US20130209784, herein Nakagawa-1)
Regarding Claims 1, 3, 8, 12, 13, Nakagawa-1 teaches polyamide resin composition [0020] comprising: the polyamide resin (A) comprises a crystalline polyamide resin (a) and a noncrystalline polyamide resin (b), the proportion of which is (a):(b)=0 to 100:100 to 0 (mass ratio) [0024], wherein, the polyamide resin (A) accounts for 30 to 99% by mass [0090], hence, both crystalline polyamide resin (A) and a noncrystalline polyamide resin (B) overlap the claimed ranges. Nakagawa-1 teaches the inorganic reinforcing material (C), accounts for 0 to 65% by mass [0090], overlaps the claimed range; acid-modified high molecular weight polyethylene [0096], reads on the elastomer (D) in therange of 0.05 to 3 parts by mass overlaps the claimed range; the glycidyl group-containing styrene copolymer (B) accounts for 0 to 10% by mass [0090] which lies in the claimed range; “preferably has a weight average molecular weight of 4000 to 25000” [0082] lies in the claimed range. Nakagawa-1 teaches the glycidyl group-containing styrene copolymer reacts with the amine or carboxyl terminals of the polyamide [0081], match the claimed copolymer (E). Nakagawa-1 also teaches Polyamide 6T6I; “GRIVORY G21” [0171] which is the non-crystalline polyamide resin (B) polyamide 6I/6T, which containing an aromatic component in diamine component and dicarboxylic acid component.
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). See MPEP § 2144.05.
Regarding Claims 2, 9, 10, 11, Nakagawa-1 teaches polyamide 6-1 [0166] which is crystalline polyamide resin polyamide 6; and Polyamide 6T6I; “GRIVORY G21” [0171] which is the non-crystalline polyamide resin (B) polyamide 6I/6T.
Regarding Claims 4-5, Nakagawa-1 teaches polyamide resin composition as set forth above, Nakagawa-1 further teaches expansion molding is controlled by a process of cooling resin, and the growth of foam cells is formed through the deformation of molten resin under a relatively low shear rate [0104] indicates the foam molding process.
Regard to the crystallization temperature and melt viscosity, the Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the crystallization temperature and melt viscosity would necessarily arise from a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Claims 6, 7 are rejected 35 U.S.C. 103 as being unpatentable over Nakagawa-1 (US20130209784, herein Nakagawa-1) as applied to claim 1 above, and in the view of Nakagawa-2 (US20160032068, herein Nakagawa-2)
Regarding Claims 6, 7, Nakagawa-1 teaches the composition of claim 1 as shown above. Nakagawa-1 does not explicitly teach the configuration of the foam molded body comprising the polyamide resin composition for foam molding; however, Nakagawa-2 teaches a foam molded body of polyamide resin [0123]. Nakagawa-2 teaches the constitution of the foam molded body as “foamed cells are independent of a continued phase of resin” [0068] and “continued phase of resin” [0068]. Nakagawa-2 further teaches the sandwich structure as of “the foamed layer is sandwiched by the non-foamed structure” [0068] indicates the sandwich structure of foam layer and non-foam skin, wherein “foamed layer comprising foamed cells of 300 μm average cell diameter in an inner layer” [0068] which lies in the claimed range and the “non-foamed skin layer of 100 to 800 μm in a surface layer” [0068] overlaps the claimed range. Nakagawa-1 and Nakagawa-2 are both considered to be analogous to the claimed invention because they are in the same field of endeavor, that of functional polyamide resins . Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Nakagawa-1 to add the teachings of Nakagawa-2 and provide wherein said the polyamide resin molding structure of “foamed cells are independent of a continued phase of resin” [0068] and “continued phase of resin” [0068]; “the foamed layer is sandwiched by the non-foamed structure” [0068]; “foamed layer comprising foamed cells of 300 μm average cell diameter in an inner layer” [0068] “non-foamed skin layer of 100 to 800 μm in a surface layer” [0068]. Doing so would further achieve the desired property as of providing a product that can be used as automobile-related parts, due to its excellent characteristic property, the foam molded body of the polyamide resin prepared by the present invention. [0074]
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). See MPEP § 2144.05.
With regard to the glossiness, the Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Nakagawa-1 teaches all of the claimed ingredients, in the claimed amounts, and Nakagawa-2 teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the glossiness would necessarily arise from a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Response to Arguments
Applicant’s arguments, filed 5/20/2025, with respect to the rejection(s) of claim(s) 1 under 35 USC § 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection by Nakagawa-1 (US20130209784, herein Nakagawa-1).
In this case, the new primary reference_Nakagawa-1 teaches polyamide resin composition as set forth above, comprising: the polyamide resin (A) comprises a crystalline polyamide resin (a) and a noncrystalline polyamide resin (b), the proportion of which is (a):(b)=0 to 100:100 to 0 (mass ratio) [0024], wherein, the polyamide resin (A) accounts for 30 to 99% by mass [0090], hence, both crystalline polyamide resin (A) and a noncrystalline polyamide resin (B) overlap the claimed ranges. Nakagawa-1 teaches the inorganic reinforcing material (C), accounts for 0 to 65% by mass [0090], overlaps the claimed range; acid-modified high molecular weight polyethylene [0096], reads on the elastomer (D) in the range of 0.05 to 3 parts by mass overlaps the claimed range. Nakagawa-1 teaches the glycidyl group-containing styrene copolymer (B) accounts for 0 to 10% by mass [0090] which lies in the claimed range; “preferably has a weight average molecular weight of 4000 to 25000” [0082] lies in the claimed range. The glycidyl group-containing styrene copolymer reacts with the amine or carboxyl terminals of the polyamide [0081], overlaps the claimed range. Nakagawa-1 further teaches polyamide 6-1 [0166] which is crystalline polyamide resin polyamide 6; and Polyamide 6T6I; “GRIVORY G21” [0171] which is the non-crystalline polyamide resin (B) polyamide 6I/6T.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zhen Liu whose telephone number is (703)756-4782. The examiner can normally be reached Monday-Friday 9:00 am - 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner' s supervisor, Mark Eashoo can be reached on (571)272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Z. L./Examiner, Art Unit 1767 /MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767
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