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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 March 16, 2026 has been entered.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Response to Amendment
The amendments filed on March 16, 2026 have been entered. Claims 1, 6-12, and 14-23 are pending in the application.
Claim Rejections - 35 USC § 112(b)
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.
Claim 17 is 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 17 recites the limitation "an alkylene group of the C4 to C12 aliphatic diamine" in line 9. There is insufficient antecedent basis for this limitation in the claim. For the purpose of further examination, it is taken to read as “an alkylene group of the 1,6-diaminohexane.”
Claim Rejections - 35 USC § 112(d)
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.
Claims 8-10 and 16 are 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 8 broadens the limitations of claim 1 by reciting “comprising glass fiber.” Claim 1 uses the transitional phase “consisting of,” which excludes further elements. A claim which depends from a claim which "consists of" the recited elements or steps cannot add an element or step. See MPEP 2111.03(II).
Claims 9-10 and 16 are dependent on claim 8.
For the purpose of examination, the glass fibers will be taken to be an optional component and not positively recited in the claims.
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 § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 8-12, 14, and 16 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Kosaka et al (US 6133406 A).
Kosaka teaches a system comprising carbon fibers and a polyamide (col. 11, lines 39-45), wherein the polyamide comprises a dicarboxylic acid component comprising 45-75 mol% of a terephthalic acid and 15-55 mol% of a second dicarboxylic acid (col. 6, lines 31-44) such as cyclohexane dicarboxylic acid (col. 4, lines 23-29), and a diamine component comprising 60-100 mol% of a non-cyclic aliphatic diamine and 0-40 mol% of an alicyclic diamine (col. 6, lines 53-60), wherein the non-cyclic aliphatic diamine may be 1,6-diaminohexane (col. 5, lines 55-65) and the alicyclic diamine may be 1,3-bis(aminomethyl)cyclohexane (col. 6, lines 22-30). Kosaka does not teach any other components as being necessary in the system; therefore, the system can be considered to consist of the carbon fibers and the polyamide.
The disclosed molar amounts of each monomer in the polyamide teach the claimed ranges with sufficient specificity that they are considered anticipated. See MPEP 2131.03(II).
Not disclosed is the tensile strength retention after heat aging. However, the reference(s) teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Claim 17 is rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Kosaka et al (US 6133406 A), as evidenced by Vincent et al (US 2023/0203307 A1).
Kosaka teaches all of the limitations of claim 1, as set forth above. Kosaka further teaches the structure of the claimed recurring unit RPA1 (col. 4, formula [1]). However, Kosaka does not specifically teach the structures of recurring units RPA2, RPA3, and RPA4.
Vincent sets forth that said repeat units would naturally arise from the polycondensation reactions of the disclosed diamines and dicarboxylic acids (para. 0031). Furthermore, if one were to use only the disclosed diamines and dicarboxylic acids, as set forth above, one of ordinary skill in the art would expect the repeat units RPA1 to RPA4 to have a concentration of at least 99 mol% in the polyamide.
Claim 18 is rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Kosaka et al (US 6133406 A).
Kosaka teaches a system comprising carbon fibers and a polyamide (col. 11, lines 39-45), wherein the polyamide comprises a dicarboxylic acid component comprising 45-75 mol% of a terephthalic acid and 15-55 mol% of a second dicarboxylic acid (col. 6, lines 31-44) such as cyclohexane dicarboxylic acid (col. 4, lines 23-29), and a diamine component comprising 60-100 mol% of a non-cyclic aliphatic diamine and 0-40 mol% of an alicyclic diamine (col. 6, lines 53-60), wherein the non-cyclic aliphatic diamine may be 1,6-diaminohexane (col. 5, lines 55-65) and the alicyclic diamine may be 1,3-bis(aminomethyl)cyclohexane (col. 6, lines 22-30).
The disclosed molar amounts of each monomer in the polyamide teach the claimed ranges with sufficient specificity that they are considered anticipated. See MPEP 2131.03(II).
Not disclosed is the tensile strength retention after heat aging. However, the reference(s) teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
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 6-7 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Kosaka et al (US 6133406 A) in view of Van Dijk et al (US 2021/0002481 A1).
Regarding Claims 6-7: Kosaka teaches the composition of claim 1, as set forth above. However, Kosaka is silent to the content of the carbon fiber and the polyamide.
Van Dijk teaches a composition containing 30-80wt% of a polyamide and 20-70wt% of a fibrous filler (para. 0109), such as a carbon fiber (para. 0101). Van Dijk and Kosaka are analogous art because they are directed toward the same field of endeavor, namely polyamide compositions.
One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to turn to Van Dijk for the suitable content of carbon fiber and polyamide in the composition taught by Kosaka, and they would have been motivated to do so in order to achieve a suitable reinforcement effect.
Regarding Claim 15: Van Dijk teaches an automotive component comprising the composition (para. 0121).
Claims 19-23 are rejected under 35 U.S.C. 103 as being unpatentable over Kosaka et al (US 6133406 A) in view of Van Dijk et al (US 2021/0002481 A1).
Regarding Claims 19-20: Kosaka teaches the composition of claim 18, as set forth above. However, Kosaka is silent to the content of the carbon fiber and the polyamide.
Van Dijk teaches a composition containing 30-80wt% of a polyamide and 20-70wt% of a fibrous filler (para. 0109), such as a carbon fiber (para. 0101). Van Dijk and Kosaka are analogous art because they are directed toward the same field of endeavor, namely polyamide compositions.
One of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to turn to Van Dijk for the suitable content of carbon fiber and polyamide in the composition taught by Kosaka, and they would have been motivated to do so in order to achieve a suitable reinforcement effect.
Regarding Claims 21-23: Kosaka teaches the composition of claim 18, as set forth above. Kosaka further teaches glass fibers (col. 11, lines 39-45). However, Kosaka is silent to the combination of glass fibers and carbon fibers.
Van Dijk teaches that the fibrous filler may be a combination of glass fibers and carbon fibers, wherein the fibrous filler consists of30-70wt% glass fiber and 30-70wt% carbon fiber (para. 0106). Based on calculations, the weight ratio of the carbon fiber to the glass fiber is from 0.4-2.3.
The total content of the fibrous filler is 20-70wt%, or preferably 25-60wt% (para. 0109). Based on the ratio of carbon fibers to glass fibers taught by Van Dijk, the glass fiber is present at 7.5-42wt%.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine carbon fibers and glass fibers in the composition of Kosaka in the amounts taught by Van Dijk because the combination of the two fibers in the disclosed amounts provide an optimal balance of mechanical properties, cost, and weight reduction (para. 0106).
Response to Arguments
Applicant's arguments filed on March 16, 2026 have been fully considered but they are not persuasive.
The amendments to claim 1 have been overcome by the new grounds of rejection in view of Kosaka, as set forth above.
Regarding Applicant’s allegations of unexpected results, Evidence of secondary considerations, such as unexpected results or commercial success, is irrelevant to 35 U.S.C. 102 rejections and thus cannot overcome a rejection so based. In re Wiggins, 488 F.2d 538, 543, 179 USPQ 421, 425 (CCPA 1973). MPEP 2131.04. However, if, arguendo, the ranges taught by Kosaka are not considered sufficiently specific to be anticipated, the phenomenon of alicyclic monomers such as those in the claims improving resistance to heat aging is well known in the art and would be expected. See Mitadera et al and Chen et al, cited below.
Additional Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Mitadera et al (US 2012/0094048 A1) teaches a polyamide comprising 1,3-bis(aminomethyl)cyclohexane that has a high resistance to heat aging.
Chen et al (The influence of 1,4-cyclohexanedicarboxylic acid on the thermal and mechanical properties of copolyamides, 16 March 2019, Polymer Bulletin, 77, p.235-253) teaches the thermal properties of a polyamide comprising 1,4-cyclohexanedicarboxylic acid.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAITLIN N ILLING whose telephone number is (571)270-1940. The examiner can normally be reached Monday-Friday 8AM-4PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at (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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/C.N.I./Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767
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