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 .
Response to Amendment
The previous rejection of Claim(s) 1-5, 7, 12-15, and 19, under 35 U.S.C. 102(a)(1) as being anticipated by US 4,056,505 A to Taylor et al. (hereinafter Taylor) is/are withdrawn in light of the Applicant’s amendments.
The previous rejection of Claim(s) 1-5, 7-16, 18-20, under 35 U.S.C. 103 as being unpatentable over US 5,998,503 A to Jacobson et al. (hereinafter Jacobson) is/are withdrawn in light of the Applicant’s amendments.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-5, 7, 9-16, 18-20, are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1, 12, 13, 14, recites, “wherein the weight average molecular weight of the polyamide is less than 62,100.” However, Applicant’s specification only recites three data points for the weight average molecular weight of the polyamide in Table 5 such as 51,200 g/mol, 40,200 g/mol, and 62,100 g/mol. It is unclear where there is support for the broader ranges of the weight average molecular weight of the polyamide composition such as “less than 62,100 g/mol.” Thus, the term “less than 62,100 g/mol” is considered new matter as it does not have support in the Applicant’s specification.
Claims 2-5, 7, 9-11, 15, 16, 18-20, are dependent claims which fail to alleviate the issues above.
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.
Claims 1-5, 7, 9-16, 18-20, are 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.
Claims 1, 12, 13, 14, recites, “wherein the weight average molecular weight of the polyamide is less than 62,100.” However, it is unclear what units of measurements the weight average molecular weight is measured in, such as “g/mol.”
Claims 2-5, 7, 9-11, 15, 16, 18-20, are dependent claims which fail to alleviate the issues above.
Allowable Subject Matter
Claims 1-5, 7, 9-16, 18-20, would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph and under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
The first closest prior art is US 4,056,505 A to Taylor et al. (hereinafter Taylor). Taylor teaches a mouldable thermoplastic material comprising 20-90 wt% of a polyamide, 10-80 wt% of a glass fibre, and 0.05-15 wt% of an additive of coupling with the glass (See abstract), wherein the polyamide is specifically polyamide 6 (i.e. polycaprolactam), (See Examples 11-12, and Table III), which meets the claimed polyamide having formula (II) wherein R3 is a C6 hydrocarbon, and the additive is pyromellitic anhydride (also known as 1,2,4,5-benzenetetracarboxylic dianhydride), (See Examples 7 and 8, Table II). Taylor further teaches that the above additive is also specifically used in an amount of 2.0 wt%, (See Example 12, Table III). Taylor teaches the material is obtained by dry blending the polyamide, silane-treated glass fibre, and the additive, in a hopper and fed into a twin screw extruder, and melt mixing them together at a temperature of 230-265 deg C, and extruding the composition to obtain a mould, (col 1, ln 60 to col 3, ln 17). Taylor further teaches that the amount of additive is added to couple with the glass, is incapable of forming a homopolymer (col 1, ln 45-54), and increases the tensile, flexural and impact strength, (col 2, ln 9-13). Taylor also teaches that the additive is not reacted with the thermoplastic beforehand, such as prior to the supply thereof to the extruder. (col 2, ln 19-24).
Taylor does not teach wherein the weight average molecular weight of the polyamide is less than 62,100.
The second closest prior art is US 5,998,503 A to Jacobson et al. (hereinafter Jacobson). Jacobson teaches a molded bar that is 0.16 cm thick (1.6 mm thick), (col 10, ln 13-20), molded from an extruded mixture of nylon 6-6, melamine 0.54 wt% of pyrophosphate (MPP), pyromellitic dianhydride (PMDA), glass fibers, and Acrawax C (i.e. lubricant), (Table V, col14, ln 30-60). Jacobson further teaches the composition is used for molded plastic and structural applications with electrical properties (col 1, ln 40-50 and col 2, ln 1-5). Jacobson also teaches the above additive used is the pyromellitic dianhydride (col 8, ln 28-35), and is used in an amount of 0.1 to 8 wt% (col 9, ln 50-55). Jacobson further teaches that the additives added to the polymer will increase extruder throughput, achieving faster extrusion when compared to the same polymer containing no additive. (col 9, ln 5-37 and col 9, ln 50 to col 10, ln 11).
Jacobson does not teach wherein the weight average molecular weight of the polyamide is less than 62,100.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/HA S NGUYEN/ Primary Examiner, Art Unit 1766
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