DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/19/25 has been entered.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Per amendment dated 12/19/25, claims 1, 3-8, 11-20 are currently pending in the application, with claims 11-14 being withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 112
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, 3-8, 15-20 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.
Claim 1 recites the limitation “wherein the molding compound is translucent and/or transparent”. It is unclear how a molding compound can be translucent and transparent at the same time. Claims 3-8, 15-20 are subsumed by the rejected base claim 1 and are therefore included in this rejection.
For the purpose of examination, the limitation is interpreted as “wherein the molding compound is translucent or transparent”.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 6 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 6 depends on claim 1 and recites the limitation “a sum total of carbon atoms from the at least one linear aliphatic diamine and the at least one linear aliphatic or aromatic dicarboxylic acid is 19-24”. However, given that the diamine component has 6 to 10 carbon atoms and the dicarboxylic acid component has 13 to 14 carbon atoms in claim 1, the sum of total carbon atoms in the two components can only be 19 to 24. Thus, claim 6 does not further limit the scope of claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
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.
Claims 1, 3-8, 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over Bauman et al. (US 2003/0162899 A1), as evidenced by JEFFAMINE® D-400 Polyetheramine, Technical Bulletin, 2019 (of record).
Regarding claim 1, 5-8, 15-20, Bauman teaches a molding composition (reads on molding compound) comprising a polyetheramide obtained from 1) a linear aliphatic diamine having from 6 to 12 carbon atoms, 2) a linear aliphatic dicarboxylic diacid having from 6 to 12 carbon atoms, and 3) a polyetherdiamine having a number average molecular weight of 230 to 4000, at least 3 carbon atoms per ethereal oxygen atom, and a primary amino group at an end of the chain, at 10 to 45 wt.% (Ab., [0031], ref. claims).
Bauman’s molding compositions comprise 95 to 99.9 parts by wt. of polyetherimide, i.e., as a main component I, and 0.1 to 5 parts by wt. of a copolymer II (ref. claim 1). It is noted that a cycloaliphatic diamine is not disclosed as an essential diamine for forming the disclosed polyetheramide, and a rubber containing functional groups is not disclosed to be an essential component in the molding composition.
Disclosed Example 1 is drawn to a polyetheramide formed from hexamethylenediamine, 1,12-dodecanedioic acid and JEFFAMIN® 400 [0054]-[0059], and used in a molding composition (TABLE 1), wherein said polyetherimide is prepared from an aqueous solution of the reactive components and hypophosphorous acid, in an autoclave under pressure and at 230°C, i.e., a method similar to that disclosed in the instant specification (PGPUB-[0016]).
Per evidence link, JEFFAMIN® 400 is a polyetheramine with oxypropylene units (reads on diaminated polypropylene glycol), having an average molecular weight of about 430 (i.e., Mn), and having the following structure:
PNG
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400
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Thus, per evidence reference, JEFFAMIN® 400 in Bauman’s Example 1 is a polyetherdiamine that has -NH2 groups at the chain ends, meets the claimed number of carbon atoms per ether oxygen, has an average molecular weight of about 430, and is capable of providing for the claimed subunit 2. In addition, Bauman’s polyetheramide of Example 1 is based on a linear aliphatic diamine having 6 carbon atoms that falls within the scope of claimed diamines for forming subunit 1.
Bauman is silent on a molding compound comprising a polyetheramide formed from a linear aliphatic dicarboxylic acid having from 13 to 14 carbon atoms as component, wherein said molding compound is transparent or translucent.
At the outset, it is noted 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). See MPEP § 2144.05.
Given the generic teaching in Bauman on linear aliphatic dicarboxylic diacids having C11 and C12 carbon atoms as suitable diacids, given that there is no teaching away from a homologs of such diacids, and given the teaching with sufficient specificity on a diamine and polyetherdiamine of the claimed invention, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to prepare polyetheramides of in the claimed invention from homologs of 1,12-dodecanedioic acid, as such compounds are expected to possess similar properties and have similar utility relative to the claimed compounds.
For instance, a skilled artisan would have found it obvious to prepare a polyetheramide as in Bauman’s Example 1, by substituting 1,12-dodecanedioic acid with a homolog thereof, e.g., a linear aliphatic dicarboxylic acid having 13 or 14 carbon atoms. Homologs “are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties”. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). Additionally, Bauman describes similarities in utility of prior art compounds and claimed compounds. A prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. "An obviousness rejection based on similarity in chemical structure and function entails the motivation of one skilled in the art to make a claimed compound, in the expectation that compounds similar in structure will have similar properties." In re Payne, 606 F.2d 303, 313, 203 USPQ 245, 254 (CCPA 1979).
Furthermore, a skilled artisan would have found it obvious to prepare Bauman’s polyetherimide as in Example 1 from homologs, such as linear aliphatic C13 or C14 diacid, by substantially a similar process as disclosed in the instant specification. In addition, given that Bauman’s molding composition may comprise such polyetherimides as the main component, i.e., in an amount of 95 to 99.9 wt.%, a skilled artisan would reasonably expect such molding compositions of overlapping scope to be translucent or transparent as in the claimed invention, absent objective evidence to the contrary. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons. In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
Regarding claims 3 and 4, Bauman’s nylon 6-12 block of Example 1 has an average molecular weight of 1083 [0065]. A skilled artisan would reasonably interpret the low value to mean a number average molecular weight, and the proposed homolog substitution, i.e., with nylon 6-13 or nylon 6-14, to provide for a number average molecular weight within the claimed range, absent evidence to the contrary.
Response to Arguments
In view of the amendment dated 12/19/25, all rejections of record are withdrawn. Additionally, new grounds of rejections are presented above, relying on the art of record to Bauman et al. Applicant’s arguments on Bauman et al. have been duly considered.
In arguments (i) to (iii), applicant argues that there is no disclosure in Bauman on a molding compound that is translucent and/or transparent, that Bauman teaches a molding composition for extruded/blow molded flexible pipes, comprising 99.9 to 95 parts by wt. of a polyetheramide obtained from a linear aliphatic diamine having from 6-12 carbon atoms, a linear aliphatic or aromatic dicarboxylic acid having from 6 to 12 carbon atoms, and a polyetherdiamine having at least 3 carbon atoms per ethereal oxygen, having a primary amino group at the end of the chain, and from 0.1-5 parts by wt. of a copolymer containing 0.8 to 20 % by wt. of anhydride or epoxide in copolymerized form, and there is no reason for the pipes of Bauman to be transparent/translucent, and that a person having ordinary skill in the art would not have arrived at such molding compound of amended claim 1 absent any teaching or suggestion.
In response, as an initial matter, it is noted that Examiner has relied upon Bauman reference only in an obviousness rejection. Bauman teaches and exemplifies a polyetheramide formed from a linear aliphatic diamine and a polyetherdiamine within the scope of the claimed invention. While a C12 linear aliphatic diacid is taught with sufficient specificity, for reasons elaborated in the rejections above, polyetheramides formed from homologs of 1,12-dodecanedioic acid, e.g., linear aliphatic C13 and C14 diacids, are prima facie obvious because a skilled artisan would expect them to possess similar properties and have similar utility relative to the claimed compounds, absent objective evidence to the contrary.
Furthermore, given the teaching on a molding composition comprising a polyetherimide as the main constituent, i.e., at 99.9 to 95 parts by wt., and only a minor amount of a copolymer, i.e., 0.1-5 parts by wt., a skilled artisan would reasonably expect polyetheramides formed from homologs of 1,12-dodecanedioic acid, e.g., linear aliphatic C13 and C14 diacids as claimed, to provide for transparent or translucent molding compositions, absent objective evidence to the contrary. As stated in paragraph 13 above, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons. Moreover, Bauman teaches the use of polyetheramindes in pipes and therefore a skilled artisan would have found it obvious use them for molded pipes.
In argument (iv), applicant argues that amended claim 1 recites a number-average molar mass of subunit 2 is 300 to 700 g/mol, that there is no disclosure, teaching, or suggestion to subunit 2 composed of at least one polyether diamine having at least 2.3 carbon atoms per ether oxygen and NH₂ groups at the chain ends, and having a number average molar mass between the narrow range of 300-700 g/mol in Baumann either, that Jeffamine evidence reference discloses a D-400 polyetheramine characterized by repeating oxypropylene units, capped with amino end groups, for use in tank cars and tank wagons, and a person having ordinary skill in the art would not have been motivated to combine teachings of polyetheramides suitable for flexible pipes as in Baumann with those of sturdy tanks disclosed in Jeffamine.
Applicant’s arguments are not deemed persuasive. The general disclosure to Bauman teaches a polyetherdiamine, having a number average molecular weight of 230 to 4000 ([0031], ref. claims). Additionally, Example 1 of Bauman, while relying on JEFFAMIN® 400 as the polyetherdiamine, is silent on the structural features of the same. To that end, the evidence reference teaches the characteristics of Bauman’s JEFFAMIN® 400, i.e., that it is a polyetherdiamine that has -NH2 groups at the chain ends, at least 2.3 carbon atoms per ethereal oxygen and an average molecular weight of about 430, i.e., in other words, that JEFFAMIN® 400 is capable of providing for the claimed subunit 2. Examiner clarifies that the Jeffamine reference is not a secondary reference but only an evidence reference that teaches the characteristics of JEFFAMIN® 400, which would necessarily be present in Bauman’s JEFFAMIN® 400, and the proposed use in tank cars and tank wagons has no relevance as far as combinability of the evidence reference with Bauman is concerned.
In argument (v), applicant presents the data from Table 2, p. 5, and asserts that a person having ordinary skill in the art would not have been motivated to arrive at the present molding compound of amended claim 1 and reasonably expect the properties of translucency, that there is no disclosure, teaching, or suggestion on transparency in Baumann or Jeffamine, and that it would not have been advantageous for a tank to be transparent with those combined teachings.
In response, it is noted that the responses in the preceding paragraphs have presented reasons why Bauman’s molding compositions would reasonably be expected to be translucent or transparent. Furthermore, in considering the data in Table 2, as an initial matter, it is noted that Examples 14 to 18 rely on diamine B that is not a polyetheramine within the scope of Bauman reference. Additionally, PEAs of Examples 1-10 (Inv.) in Table 2 are transparent, while those of Examples 11-13 (comp.) are opaque or milky/cloudy. However, PEAs of Examples 1-10 that are transparent also have a subunit 2 that is composed of a specific polyetherdiamine, i.e., a polypropylene glycol diamine (diamine A) having a number average molecular weight of 405. It is not clear why this specific polypropylene glycol diamine (diamine A) would be reasonably representative of the “at least one polyether diamine” having a number average molecular weight of 300 to 700 as recited in claim 1. That is, the data on record falls short in demonstrating that the PEAs having a subunit 2 composed of a polyetherdiamine within the scope of claim 1 would necessarily be transparent.
Conclusion
Any inquiry concerning this communication or earlier communications from the
examiner should be directed to Satya Sastri at (571) 272 1112. The examiner can be reached Monday-Friday, 9AM-5.30PM (EST). If attempts to reach the examiner by telephone
are unsuccessful, the examiner's supervisor, Mr. Robert Jones can be reached at (571)-270-
7733. The fax phone number for the organization where this application or proceeding is
assigned is (571) 273 8300.
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/Satya B Sastri/
Primary Examiner, Art Unit 1762
Prosecution Insights