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 . Per amendment dated 6/17/26, 1,3-5,7-8 and 11-21 are currently pending in the application, with claims 11-14 being withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 § 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, 3-5, 7, 8, 15-21 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 (references of record).
Regarding claims 1, 5-8, 15-21, 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, a rubber containing functional groups is not disclosed to be an essential component in the molding composition, and the molding composition does not include water as an essential component ([0046]-[0049], ref. claims).
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, i.e., as molding 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.
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 6/17/26, the 112(b) and (112(d) rejections set forth in office action dated 4/14/26 are withdrawn. Applicant’s arguments on Bauman et al. have been duly considered.
Applicant’s arguments focus on the feature recited in claim 1, i.e., that the molding compound is transparent or translucent. Applicant asserts that the inventive polyetheramides 1-10, 14-18 made of linear aliphatic diamines having 6 to 10 carbons and linear aliphatic or aromatic dicarboxylic acids having 13 to 14 carbon atoms, and that the claimed molding compound is transparent or translucent. Referring to the data in Table 1 and 2, Applicant points out that Experiments 1-10, 14-18 made of linear C6-C10 aliphatic diamines and linear C13-C14 aliphatic dicarboxylic acids produce molding compounds that are transparent, while those of Examples 11-12 that are also made from the same aliphatic diamines and diacids are opaque in appearance. On this basis, Applicant argues that one of ordinary skill in the art would not conclude that all PEAs made of linear aliphatic diamines also having 6 to 10 carbons and linear aliphatic or aromatic dicarboxylic acids having 13 to 14 carbons would be transparent or translucent and that the data demonstrates nonobviousness.
Applicant further asserts that the comparative PEA 6,12 formed from an aliphatic diamine having 6 carbons, a linear aliphatic dicarboxylic acids having 12 carbons (and polyether diamine, Mn 405) yields a milky cloudy molding compound that is outside of the scope of present PEA as it does not have the feature of transparency or translucency (pages 10 -11 remarks).
In response, based on the data on record (Tables 1 and 2) Examiner agrees that not all PEAs made from linear aliphatic diamines also having 6 to 10 carbons and linear aliphatic or aromatic dicarboxylic acids having 13 to 14 carbons would be transparent or translucent, and there is evidence of unexpected results. However, the data only demonstrates that PEAs of Examples 1-10, 14-18 made from 6 to 10 carbons, linear aliphatic dicarboxylic acid having 13 to 14 carbons and a specific polyether diamine (Mn 405) are all transparent, when compared to PEAs of comparative Examples 11-13 made from the same diamines and diacids but including a combination of polyether diamines (Mn 405 and Mn 2005), which are opaque/milky cloudy. From this data, it is also evident that in addition to the specific diamine and the diacid, the choice of polyether diamine also plays a role in providing for the claimed transparency. However, claim 1 is of a much broader scope and therefore, the data on record is not reasonably commensurate in scope with the claim language.
Furthermore, the translucency rating of comparative PEA 6,12 is 3 and that of comparative Example 11 (Table 6) is 4. However, given that claim 1 recites the limitation “wherein the molding compound is translucent or transparent”, i.e., a translucent compound without any degree associated with it to distinguish the inventive PEAs, the arguments on translucency transparency as a basis for nonobviousness lacks clarity. Applicant is advised to provide clarification on this front.
In argument (ii) and (iii), Applicant argues that a person of ordinary skill in the art would not be motivated to optimize carbon chain lengths because there is a symmetry in the lengths of diamines to diacids in Baumann's disclosure, would not go beyond Bauman to achieve the optimal properties, that the carbon chain length is not a result effective variable that can be routinely optimized and that Baumann teaches the desired properties, i.e., of Tm, relative solution viscosity and zero shear viscosity would be achieved by shorter diacid chains.
In response, on the symmetry concern, it is noted that Bauman teaches C6-C12 aliphatic diamines and C6-C12 diacarboxylic acids [0031], and does not mandate any symmetry requirement in selecting them. Thus, Examiner maintains a skilled artisan would have found it obvious to rely on a C13 diacid or a C14 diacid, which are homologs of a C12 diacid, reasonably expecting them to provide for PEAs with similar properties. Moreover, Applicant’s data establishes inv. PEA 6,13 and PEA 6,14 made with a polyether diamine (Mn 450) are transparent while comp. PEA 6,12 made with the same polyether diamine (Mn 450), i.e., the homolog basis as providing similar property may not apply to this specific comparison but as discussed in the preceding paragraphs, the choice of the polyether diamine also contributes to a material’s transparency/translucency. Furthermore, maintaining that the rejections of record do not rely on transparency as a result effective variable and incorporating the discussion on the lack of clarity on translucency as a basis for nonobviousness from paragraph 14 above, there is no objective evidence on record as to how Bauman’s Tm, relative viscosity and zero-shear viscosity requirements would be negatively impacted by substitution of C12 diacid with C13 or C14 diacid homolog, as proposed in the rejections.
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.
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
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