,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 .
DETAILED ACTION
Response to Amendment
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The amendment is supported by the original disclosure.
The previous restriction has been maintained.
The previous 103 rejection has been maintained, but the position has been modified due to the amendment.
Claim Rejections - 35 USC § 103
Claim(s) 1, 7, and 11-12 is (are) rejected under 35 U.S.C. 103 as being unpatentable over Nataniel et al. (US 20050165211) in view of Hoffmann et al (US 20060235190) listed on IDS and ISR.
As to claims 1, 7, and 11-12, Nataniel (claims, abs., examples, 3, 5-9, 11, 26-27) discloses a mold comprising a polyamide comprising C36 dimer acid, sebacic acid, C36 dimer amine (34.85 wt%), and a diamine, such as ethylene diamine or C2-8 diamines, such as hexamethylene diamine. The C2-8 diamines is greater than 50 mol% or 80 mol%.
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Natanil is silent on the claimed C9-12 diamine of claims 1, 7, and 10 and terephthalic acid of claim 6.
In the same area of endeavor of producing molds comprising a polyamide comprising dimer acid and terephthalic acid, Hoffmann (claims, abs., EX1-3, table 1, 1-2, 5-6, 9, 12) teaches a polyamide having high melting points and increased toughness comprising exemplary terephthalic acid, exemplary Pripol 1012 (C36 dimer acid), and C4-18 diamines such as 1,10-deaminodecane or hexamethylene diamine (exemplary loadings of 26% wt., 28wt%, or 21 wt%, Table 1 EX1-3), which exhibits a melting point of at least 290 °C (claim 8), overlapping with the claimed range. It has been found that where claimed ranges overlap ranges disclosed by the prior art, a prima facie case of obviousness exists - see MPEP 2144.05.
Therefore, as to claims 1, 7, and 11-12, it would have been obvious to one of ordinary skill in the art to have modified the polyamide disclosed by Nataniel and replaced sebacic acid with terephthalic acid and hexamethylene diamine with 1,10-deaminodecane (with the aforementioned loading) in view of Hoffmann, because the resultant process would yield increased melting point and toughness.
The references are silent on the claimed flexibility and melting point of claim 1. Accordingly, the examiner recognizes that not all of the claimed effects or physical properties are positively stated by the references. However, the references teach a composition containing the claimed components in the claimed amounts prepared by substantially similar components. Therefore, one of ordinary skill would have a reasonable expectation that the claimed effects and physical properties, i.e. flexibility and melting point, would necessarily flow from a composition containing all of the claimed components in the claimed amounts prepared by a substantially similar polyamide. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. See In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977); In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990); see also MPEP § 2112.01(I)-(II). If it is the applicant’s position that this would not be the case: (1) applicant must provide evidence to support the applicant’s position, and (2) it would be the examiner’s position that the application contains inadequate disclosure on how to obtain the claimed effects or properties with only the claimed components in the claimed amounts by the disclosed or claimed process.
Response to Arguments
The argument for allowance of amended claims has been fully considered but not persuasive.
The applicant (5:1-2) attacked Hoffmann for not teaching a motivation to replace sebacic acid with terephthalic acid for the same intended use. The examiner disagrees. Hoffmann and Nataniel are in the same area of endeavor of producing molds, because Hoffmann (claims, abs., EX1-3, table 1, 1-2, 5-6, 9, 12) teaches a polyamide having high melting points and increased toughness comprising exemplary terephthalic acid, exemplary Pripol 1012 (C36 dimer acid), and C4-18 diamines such as 1,10-deaminodecane or hexamethylene diamine (exemplary loadings of 26% wt., 28wt%, or 21 wt%, Table 1 EX1-3). Thus, Hoffmann teaches the motivation to be combined with Nataniel that has been applied by the examiner for the rejection. Furthermore, one of ordinary skill in the art would obviously recognize that terephthalic acid having aromatic backbone and 1,10-deaminodecane having longer chains would help yielding a polyamide with higher melting points and increased toughness. The motivation to combine may be implicit and may be found in the knowledge of one of ordinary skill in the art, or, in some cases, from the nature of the problem to be solved. Id. at 1366, 80 USPQ2d at 1649. See MPEP-2143.
The applicant individually attacked Nataniel (5:3) for not teaching the claimed C2-8 diamines. One cannot show non-obviousness by attacking references individually where the rejections are based on combinations of references. See MPEP-2145. Hoffmann teaches 1,10-deaminodecane and alleviates the deficiency of Nataniel.
Therefore, as to claims 1, 7, and 11-12, it would have been obvious to one of ordinary skill in the art to have modified the polyamide disclosed by Nataniel and replaced sebacic acid with terephthalic acid and hexamethylene diamine with 1,10-deaminodecane (with the aforementioned loading) in view of Hoffmann, because the resultant process would yield increased melting point and toughness.
Therefore, the previous restriction and 103 rejections have been maintained, but the position has been modified due to the amendment.
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 extension fee 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 date of this final action.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHANE FANG whose telephone number is (571)270-7378. The examiner can normally be reached on Mon-Thurs. 8am-6pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached on 571.572.1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHANE FANG/Primary Examiner, Art Unit 1766
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