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 .
This communication is responsive to Request for Reconsideration-After Non-Final Rejection filed 10/29/2025. No claims were filed after the claim set of 11/18/2022. Therefore, This Office Action is responsive to the claim set filed 11/18/2022. Claims 1-7 are currently pending.
This is the 2nd non-final Office Action based on the references used in the 35 USC 103 rejections dated 08/01/2025.
The text of those sections of Title 35 U.S. Code not included in this action can be found in a previous Office Action.
Terminal Disclaimer
The terminal disclaimer filed on 10/29/2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of any patent granted on the pending reference Appl. No. 18/012,016 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Claim Rejections - 35 USC§ 103
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Sayaka et al.
(JP2015134907 A) in view of Liu et al. (CN109208177 A).
Regarding Claim 1, Sayaka teaches an antistatic agent comprising a block polymer containing a
block of polymer (a) and a block polymer (b) as constitutional units (claim 1)
wherein the polymer (a) is polyamide and polymer (b) is a polyether (b1) and/or a polyether containing hydrophilic polymer (b2) claim 2) wherein the hydrophilic polymer (b2) is preferably ethylene glycol (lns410-435). Sayaka further teaches the antistatic agent comprising a carbodiimide compound (claim 1).
The difference between Sayaka and instant Claim 1 is that Sayaka is silent on that the agent
comprising an amid-forming monomer and the amount.
However, Liu teaches an antistatic material comprising 30-40 parts of polyamide, polypropylene,
30-35 parts ethylene glycol, 2-5 parts caprolactam (ab.) and carbodiimide as a crosslinking agent (claim
5). Liu further teaches the step 1 of making the antistatic material is reacting polyamide, polypropylene
and ethylene glycol (lns168-170), then adding carbodiimide and caprolactam at step 2 (lnsl71-173). Liu
further teaches the antistatic material has excellent mechanical properties and antistatic properties (lns69-
71 ). Therefore, Liu teaches that adding caprolactam and carbodiimide into a composition comprising polyamide resulting an antistatic material has excellent mechanical properties and antistatic properties. In view of such benefits, one ordinary skilled artisan would have been motivated to incorporate caprolactam taught by Liu into the antistatic agent of Sayaka to obtain a modified antistatic agent for the desirable mechanical properties and antistatic properties.
Sayaka in view of Liu is silent on the weight ratio of caprolactam to the block copolymer. However, caprolactam absorbs moisture which is beneficial to antistatic effects. Nonetheless, if the amount of caprolactam is too high, absorbing too much moisture would bring in the disadvantages of decreasing mechanical properties of stability of the composition containing the modified antistatic agent. Thus, one of ordinary skill in the art must balance the benefits of caprolactam (antistatic effects) with the disadvantages (reducing mechanical properties of stability). The amount of caprolactam, consequently, the weight ratio caprolactam to the block polymer, would be considered a result effective variable by one of ordinary skill in the art before the effective filing date of instant application. As such, without showing unexpected results, the claimed weight ratios cannot be considered critical. Accordingly, one of ordinary skill in the art before the effective filing date of instant application would have optimized, by routine experimentation, the weight ratio caprolactam to the block polymer to reach the desired antistatic effects balanced by maintaining mechanical properties and stability of the composition containing the modified antistatic agent, since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (See MPEP 2144.05(b).)
Regarding Claim 2, Sayaka teaches the hydrophilic polymer is a polyether (claim 2).
Regarding Claim 3, caprolactam is a C6 lactam.
Regarding Claim 4, Sayaka teaches that the antistatic agent comprises l-ethyl-3-
methylimidazolium salts (lns711-713).
Regarding Claim 5, Sayaka teaches an antistatic composition comprising the antistatic agent and
a thermoplastic resin (lns734-735).
Regarding Claim 6, Sayaka teaches the weight ratio of the antistatic agent (Z) to the thermoplastic
resin (E) [(Z) / (E)] is more preferably 3/97 to 20/80 (lns735-738).
Regarding Claim 7, Sayaka teaches a molded article of the antistatic composition (ab.)
Response to Arguments
Applicant's arguments filed 10/29/2025 have been fully considered but they are not persuasive.
Examiner understood that Applicant argued that Liu teaches ethylene glycol as an organic synthesis agent, therefore, the antistatic material of Liu does not result a block polymer comprising a block of polyamide and a block of a hydrophilic polymer like Sayaka discloses and required by the present claimed. Therefore, one ordinary skilled would not incorporate caprolactam disclosed in
Liu into the antistatic agent of Sayaka. And a person having ordinary skill in the art would
have lacked a reasonable expectation of achieving the properties disclosed in Liu in view of the
distinct constitution taught in Sayaka.
In response to applicant's argument that Examiner bodily incorporated caprolactam disclosed in Liu into the antistatic agent of Sayaka , the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). To reply on a reference under 35 USC 103, it must be analogous art to the claimed invention. In this case, Sayaka teaches an antistatic agent. Liu teaches an antistatic material. Therefore, Sayaka and Liu are from the same field of endeavor as the instant applicant. Thus, Sayaka and Liu are analogous art with the instant application (See MPEP2141.01 (a) I). The teaching and suggesting of the reference have discussed above. As to the concern of reasonable expectation of success, “obviousness does not require absolute predictability, but at least some degree of predictability is required. Evidence showing there was no reasonable expectation of success may support a conclusion of nonobviousness.” (See MPEP 2143.02 II). As discussed above, caprolactam absorbs moisture which is beneficial on anti-static effects, therefore, adding caprolactam into the anti-static agent of Sayaka should result in an anti-static agent with improved anti-static effects.
Conclusion
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/HUIHONG QIAO/ Examiner, Art Unit 1763
/CATHERINE S BRANCH/ Primary Examiner, Art Unit 1763
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