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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/16/2025, has been entered.
Claim Rejections - 35 USC § 112
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 13 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. Specifically, claim 13 broadens the scope of the range of “wherein the quantity of components C is from 0.3 to 1.5 % by weight” whereas claim 1 recites a narrower range “c) from 0.01 to 1% by weight of carbon black as component C”. For the purpose of further examination, it is taken to mean in claim 1 that “c) from 0.01 to 1% by weight of carbon black as component C”.
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
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 1-7, 10, 12-16 are rejected under 35 U.S.C. 103 as being unpatentable over Eibeck (US20100311882, herein Eibeck).
Regarding Claims 1, 2, 4, 5, 6, 13-15, Eibeck teaches a polyamide composition comprising:
“19.9 to 59.9% by weight of at least one polyamide” [0012], which overlaps the claimed range of a) from 34.89 to 99.89% by weight of at least one synthetic polyamide as component A; wherein the polyamide is “PA 6” [0027] matches the “polyamide A is preferably selected from PA 6” [Instant App. Spec. P11; L15].
“Component D/2” [0211] wherein the formulation of D/2 is as “Flexamin: about 65% of condensate derived from diphenylamine and acetone/formaldehyde and about 35% of 4,4′-diphenyl-p-phenylenediarnine” [0212] reads on the formulation as “typically obtained by condensing 2-propanone (acetone) with n-phenyl-benzene amine and subsequently condensing this product with formaldehyde.” [Instant App. Spec. P12; L29], herein, Eibeck teaches diphenylamine (C12H11N) structure see below:
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124
220
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which can reach the structural and functional similarity from the two rings and secondary amine group of the n-phenyl-benzene amine (C14H15N), see below:
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300
300
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Eibeck’s diphenylamine (C12H11N) differs from the n-phenyl-benzene amine (C14H15N) shown above in that it lacks the -CH2CH2- group between the benzene and amine group. Nevertheless, a prima facie case of obviousness may be made when chemical compounds have very close structural similarities and similar utilities. See MPEP 2144.09(I).
Eibeck’s diphenylamine (C12H11N) and the n-phenyl-benzene amine (C14H15N) are homologs differing regularly by two successive addition of -CH2- groups. Homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. See MPEP 2144.09(II).
Additionally, Eibeck’s diphenylamine (C12H11N) and the n-phenyl-benzene amine (C14H15N) have similar utility. Eibeck’s diphenylamine (C12H11N) lead to molding compositions with good mechanical properties (in particular toughness) [0010]; and the n-phenyl-benzene amine (C14H15N) lead to the molding preferably comprises functional elements requiring mechanical toughness [Instant App. Spec. P20; L27].
It would have been obvious to one of ordinary skill in the art at the time of the invention to modify Eibeck to select a homolog of the n-phenyl-benzene amine (C14H15N) described above falling within the scope of Claim 1, as such compounds are expected to possess similar properties and have similar utility relative to the claimed compounds.
Eibeck further teaches “in the concentration of 0.3%” [Table, P10, 0236] which lies the claimed range of b) from 0.1 to 5% by weight of component B;
“component D), from 0 to 3% by weight” [0068] wherein the “Component D/4:
Carbon black masterbatch with 33% by weight of carbon black” [0215-216], hence, the carbon black concentration is 0% to 0.99%, which overlaps the c) from 0.01 to 1% by weight of carbon black as component C.
Eibeck teaches “glass fibers, from 1 to 15% by weight” [0171] lies in the claimed range.
Eibeck further teaches “0.1 to 1% by weight, of a lubricant” [0068], and “components D), heat stabilizers” [0077] in the range of “0 to 3% by weight” [0068] wherein the combine the lubricant and heat stabilizer range lead to (0.1+0)=0.1% to (1+3)%=4% overlaps the range of component E.
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 3, 12, Eibeck teaches the polyamide composition as set forth in claim 1, Eibeck teaches the “pigments” [0183] in “component d)” [0183], Eibeck further teaches the component D/1 to D/6 [0209-220], wherein, only “D/4” [0125] has the pigment of “carbon black” [0216], hence, indicates the solo application of pigment of carbon black as no other dyes or coloring pigments.
Regarding Claims 7, 16, Eibeck teaches “copolymer of styrene” [0128].
Regarding Claim 10, Eibeck teaches “The constitutions of the molding compositions” [0236].
Response to Arguments
Applicant’s arguments, filed 12/16/2025, 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 is made in view of Eibeck (US20100311882, herein Eibeck).
In this case, the applicant’s arguments are directed toward the amendment to independent claim 1, which has been addressed by the rejection set forth above.
In response to the applicant’s argument that the “unexpected results”, the argument is not persuasive.
First, the argument is directed towards a feature not claimed, namely the good laser inscribability with high contrast but also good surface quality and good mechanical properties. The instant claims are directed towards a composition but not the molded article with specific functions, which is not in commensurate of the scope of the claims.
Second, when Examples 1-2 and Comparative Examples 1-4 are considered as a whole, they establish results associated with the ranges, respect to the claimed ranges provided for comparison. Claim 1 is open to the from 0 to 65% by weight of glass fibers. However, Examples 1-2 and Comparative Examples 1-4 include Glass Fiber 30% as single value. Claim 1 is open to from 0.01 to 1% by weight of carbon black as component C. However, Examples 1-2 and Comparative Examples 1-4 include carbon black 0.1% as single value. Claim 5 is open to lubricants from 0.05 to 1.0% by weight. However, Examples 1-2 and Comparative Examples 1-4 include lubricant 0.2% as single value.
The Examples 1-2 and Comparative Examples 1-4 are therefore insufficient to establish non-obviousness.
Whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support. In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. See MPEP 716.02(d).
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
In this case, First, the argument is based on the “technical result not taught or suggested in Eibeck”, which the applicants failed to specify.
Second, Eibeck explicitly teaches the “Component D/2” [0211] wherein the formulation of D/2 is as “Flexamin: about 65% of condensate derived from diphenylamine and acetone/formaldehyde and about 35% of 4,4′-diphenyl-p-phenylenediarnine” [0212], lead to molding compositions with good mechanical properties (in particular toughness) [0010]; wherein, the instant application actually lead to the molding preferably comprises functional elements requiring mechanical toughness [Instant App. Spec. P20; L27], i.e., the Eibeck’s “Component D/2” [0211] can reach the structural and functional similarity the claimed polycondensate of formaldehyde, n-phenyl-benzene amine and 2-propanone as component B, which is “typically obtained by condensing 2-propanone (acetone) with n-phenyl-benzene amine and subsequently condensing this product with formaldehyde.” [Instant App. Spec. P12; L29], furthermore, the claimed component B led to the molding preferably comprises functional elements requiring mechanical toughness [Instant App. Spec. P20; L27], which is similar utility compared to Eibeck.
Hence, Eibeck does not teach away from the instant application.
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
/KATARZYNA I KOLB/ Primary Examiner, Art Unit 1767