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 .
Claims 1-6, 8-9 and 14-17 are pending as amended on 8/18/2025.
Claim 1 has been amended to require a silica-based compound represented by Formula 1. Therefore, the claims no longer encompass the elected species wherein the catalyst consists of sodium hydride. Examination has been continued for the species (as in instant example 5) wherein the catalyst is a mixture of sodium hydride and silica-based compound. Claims 4, 16 and 17 stand withdrawn from consideration as being drawn to a nonelected species or invention. Claim 8 is no longer withdrawn from consideration due to the amendment to claim 1. Because Applicant’s amendment changing the scope of claim 1 necessitated the new rejection set forth below, this action is properly made final.
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
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, 5, 6, 8, 9, 14 and 15 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.
Claim 1 recites a “silica-based compound” having a formula 1:
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This chemical formula is unclear. The term “silica” refers to a silicon dioxide. However, given the definition of “R,” the chemical formula above does not even encompass silicon dioxide. Note that claim 8 further limits the “silica-based compound” to a Markush group which includes inorganic silicates, silica and silica gel, but it is not clear how inorganic silicates, silica and silica gel would fall within the scope of formula 1. Formula 1 further permits “n” to be values other than 4, and it is not clear what known compounds exist (i.e., what known compounds are encompassed by) instant Formula 1 when “n” is 1, 2 or 3.
Due to the uncertainty regarding the accuracy of instant Formula 1, uncertainty as to whether Si-O bonds must be present, and uncertainty as to what compounds other than those recited in claim 8 were intended to be encompassed by instant formula 1, the scope of the claims is unclear. For examination purposes, the “silica-based compound,” as recited in claim 1, has been interpreted as encompassing at least tetraethyl orthosilicate (as used in instant example 5) and species which are recited in claim 8.
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.
Claim(s) 1-3, 5, 6, 8, 9, 14 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al (KR 20190054562A; English language equivalent US 20200384725 cited herein) in view of Aramaki (JP 2001234058A, included machine translation cited herein).
As to claims 1-3, 8, 9, Kim discloses a method for preparing a polyamide through anionic polymerization of laurolactam in the presence of (based on 100 parts by weight of lactam) [0042]:
0.01 to 20 parts by weight (falling within the range of 0.001 to 20 parts by weight recited in instant claim 9) of an alkali metal initiator (corresponding to the presently recited polymerization catalyst),
0.3 to 10 parts by weight (falling within the presently claimed range of 0.01 to 10 parts by weight) of a molecular weight controller which is preferably EBS [0048] (corresponding to the presently recited molecular weight modifier),
0.002 to 10 parts by weight of octadecyl isocyanate as an activator, and 0.001 to 1.0 part by weight of carbon dioxide as a coactivator (falling within the presently claimed range of 0.002 to 20 parts by weight),
0.01 to 5 parts by weight of silica as a nucleating agent (meeting the presently recited silica-based compound, and further meeting claim 8).
Kim teaches that using amounts of catalyst above or below the disclosed range results in depolymerization, low reaction rate, or generation of low-molecular weight polymer [0047]. Kim further teaches that when too little molecular weight controller is added, high molecular weight and gelation may occur, and when too much is added, a low molecular weight polymer may be generated [0049]. Kim further teaches that adding amounts of carbon dioxide below the claimed range results in decreased reaction rate, while amounts exceeding the claimed range may cause gelation [0050].
While Kim discloses utilizing catalyst, molecular weight controller and carbon dioxide within appropriate ranges in order to achieve a desired reaction rate and desired molecular weight while avoiding gelation, Kim fails to disclose the molecular weight of a polyamide product, and therefore, fails to disclose a molecular weight within the presently claimed range of greater than 100,000 to 200,000 g/mol.
However, it was known in the art to select an appropriate polyamide molecular weight in order to achieve a desired balance of properties. For example, Aramaki discloses a polyamide foam molded article (translation, [0003]), wherein the polyamide can be nylon 12 (see translation p 3). Aramaki teaches that the weight average molecular weight is preferably 20,000 to 500,000 because the moldability and physical properties are excellent (translation p 6).
Considering Aramaki’s disclosure, when preparing a polyamide, including a polyamide intended to be foamed, the person having ordinary skill in the art would have been motivated to select an appropriate weight average molecular weight within a range of 20,000 to 500,000 in order to achieve a desired balance between moldability and physical properties, as appropriate for a given application/end use. It would have been obvious to the person having ordinary skill in the art, therefore, to have formed a polyamide, as taught by Kim, having any appropriate molecular weight within Aramaki’s disclosed range of 20,000 to 500,000, including within the presently claimed range of >100,000 to 200,000 g/mol.
As to claims 5 and 6, Kim discloses the same catalysts recited in claim 5 in [0044], and names sodium hydride as a specific example in [0045]. See also example 1 [0057].
As to claims 14 and 15, Kim discloses a reaction temperature of 180 to 250 C for 10 to 60 minutes [0051], which fall within the presently claimed ranges.
Response to Arguments
Applicant's arguments filed 8/18/2025 have been fully considered.
Applicant’s argument (p 9) that Do does not teach the presently recited silica-based compound is persuasive. In view of the amendment to claim 1 switching from species wherein the catalyst consists of sodium hydride to species wherein the catalyst further comprises silica-based compound, the rejections over Do have been withdrawn.
However, upon continuing search and examination for species wherein the catalyst is sodium hydride and silica-based compound, new art was found, and therefore, the claims are not in condition for allowance.
Applicant’s argument (p 8) that a polyamide without gelation can only be prepared when the specific combination of recited components are used within the specific claimed content ranges is not sufficient to overcome the new rejection citing Kim for at least the reason that Kim discloses the same components as presently recited in the same content ranges as presently recited.
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 RACHEL KAHN whose telephone number is (571)270-7346. The examiner can normally be reached Monday to Friday, 8-5.
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/RACHEL KAHN/Primary Examiner, Art Unit 1766