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 .
Claims 1 and 5-15 are pending as amended on May 26, 2026. Support for amended claim 1 is found in claims 3, 7, 9-10, and page 13, lines 13-19 of the specification.
The new grounds of rejection set forth below were necessitated by Applicant’s amendment incorporating claims 3, 7, and 9-10 into claim 1 and limiting the additives used in the composition. Therefore, this action is properly made final.
Any objections and/or rejections made in the previous Office action and not repeated below are hereby withdrawn.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 the action can be found in a prior Office action.
Claim Objections
Claim 1 is objected to because of the following informalities:
In line 5 of claim 1, “- -“ should read “-“.
In the third to last line of claim 1, “9a” should read “a.”
Appropriate correction is required.
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.
Claims 7 and 9-10 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 7 depends from claim 1 and contains the limitation “wherein the reactive impact modifier (IM) concentration is from 1 wt.% to 20 wt.%.” Claim 7 does not further limit claim 1 because both claims recited the same range (see line 3 of claim 1).
Claim 9 depends from claim 1 and contains the limitation “further comprising, relative to the total weight of the polymer composition, from 5 wt.% to 70 wt.% of a reinforcing agent.” Claim 9 does not further limit claim 1 because both claims recited the same range (see lines 5-6 of claim 1).
Claim 10 depends from claim 9 and claim 9 depends from claim 1. Claim 10 contains the limitation “wherein the reinforcing agent is glass fiber or carbon fiber.” Claim 10 does not further limit claim 1 because claim 1 requires that the reinforcing agent is either carbon fiber or glass fiber (see lines 6-7 of claim 1).
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
Claims 1 and 5-13 are rejected under 35 U.S.C. 103 as being unpatentable over Lamberts (US-2016/0102202-A1).
Regarding claims 1, 6-7, and 9-12, Lamberts teaches a polymer composition comprising 29-89 wt% of a polyamide,1-15 wt.% an ethylene-vinyl acetate copolymer, and 10-70 wt.% of a reinforcing material ([0008-0011]). The composition further comprises 0-20 wt.% of an impact modifier other than the polyamide and ethylene-vinyl acetate copolymer, 0-20 wt.% of a flame retardant, and 0-5 wt.% of other additives ([0012-0014]). It would have been obvious to one of ordinary skill in the art prior to the effective filing date to have prepared a composition with comprising 29-89 wt% of a polyamide,1-15 wt.% an ethylene-vinyl acetate copolymer, 10-70 wt.% of a reinforcing material, 0 wt.% of an impact modifier other than the polyamide and ethylene-vinyl acetate copolymer, 0-20 wt.% of flame retardant, and 0 wt.% of other additives because Lamberts teaches this composition.
As the polyamide, Lamberts teaches a polyamide derived from monomers comprising a diamine component and a dicarboxylic acid component ([0041-0049]). The dicarboxylic acid component is 50-100 mol% terephthalic acid and 0-50 mol% of another dicarboxylic acid that can be a cycloaliphatic dicarboxylic acid. The diamine component is 50-100 mol% of an aliphatic diamine and 0-50 mol% of another diamine that can be a cycloaliphatic diamine. The cycloaliphatic dicarboxylic acids taught by Lamberts include 1,4-cyclohexanedicarboxylic acid (CHDA) (1,4-(cyclo-hexane-1,4-dicarboxylic acid, [0053]). The aliphatic diamines taught by Lamberts include 1,6-diaminohexane (1,6-hexanediamine, [0054]). The cycloaliphatic diamines taught by Lamberts include 1,3-bis(aminomethyl)cyclohexane (1,3-BAC) ([0056]), reading on 1,3-bis(aminoalkyl)cyclohexane. It would have been obvious to one of ordinary skill in the art prior to the effective filing date to have selected a polyamide derived from a dicarboxylic acid component that is 50-100 mol% terephthalic acid and 0-50 mol% CHDA and a diamine component that is 50-100 mol% 1,6-diaminohexane and 0-50 mol% 1,3-BAC because Lamberts teaches using these monomers in these amounts.
Lamberts does not anticipate the monomer contents recited in claim 1.
However, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to have select any diamine component that is 50-100 mol% 1,6-diaminohexane and 0-50 mol% 1,3-BAC and any dicarboxylic acid component that is 50-100 mol% terephthalic acid and 0-50 mol% CHDA because Lamberts teaches using the monomer in these amounts. A diamine component that is 50-100 mol% 1,6-diaminohexane and 0-50 mol% 1,3-BAC overlaps with the claimed ranges of 60-80 mol% 1,6-diaminohexane and 20-40 mol% 1,3-bis(aminoalkyl)cyclohexane. A dicarboxylic acid component that is 50-100 mol% terephthalic acid and 0-50 mol% CHDA overlaps with the claimed ranges of 30-99 mol% terephthalic acid and 1-70 mol% 1,4-cyclohexanedicarboxylic acid. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I.
Lamberts teaches that the ethylene-vinyl acetate copolymer is grafted to improve compatibility with the polyamide ([0105]). The ethylene-vinyl acetate copolymer preferably has acid or acid anhydride groups introduced in a concentration sufficient for good attachment to the polyamide. The graft is preferably carried out with maleic anhydride. An ethylene-vinyl acetate copolymer grafted with maleic anhydride (claim 6) and present in an amount of 1-15 wt.% (claim 7) reads on the instantly claimed reactive impact modifier (line 1 of page 14 of the instant specification states that the backbone of the reactive impact modifier can be an ethylene-vinyl acetate copolymer).
The reinforcing agent of Lamberts is selected from a group including glass fibers and carbon fibers ([0114]). It would have been obvious to one of ordinary skill in the art prior to the effective filing date to have selected any reinforcing agent taught by Lamberts, including glass fibers or carbon fibers (claim 10) and use it in the amount of 10-70 wt.% (claim 9), as taught by Lamberts.
Lamberts is silent as to the tensile strength reduction after aging in an aqueous polyol solution and the flexural strength retention after aging in a brine solution.
However, the instant abstract attributes the improved tensile strength retention and flexural strength retention after aging to the specific combination of the bis(aminoalkyl)cyclohexane and the cyclohexanedicarboxylic acid and Lamberts teaches the claimed combination of the bis(aminoalkyl)cyclohexane and the cyclohexanedicarboxylic acid. One would therefore expect the polyamide of Lamberts to similarly contribute to improved tensile strength retention and flexural strength retention of the composition after aging. In addition, Lamberts teaches a substantially similar composition prepared in a substantially similar manner as the instant invention, including the claimed combination of bis(aminoalkyl)cyclohexane and the cyclohexanedicarboxylic acid. Lamberts teaches a composition with 29-89 wt% of a polyamide with the monomer composition of claim 1, 1-15 wt.% of a maleic-anhydride functionalized reactive impact modifier, and 10-70 wt.% of a glass fiber. Instant example 1 has 61.44 wt.% of a polyamide derived from the monomers recited in claim 1, 3.2 wt.% of a maleic-anhydride functionalized reactive impact modifier (Kraton FG1901GT), and 33.2 wt.% of glass fibers as well as 0.66 wt.% of a stabilizer package and 1.5 wt.% of a pigment. Both the instant specification and Lamberts teach preparing the composition in an extruder (instant specification, page 19, lines 3-10; Lamberts, [0148]). Instant example 1 shows a tensile strength retention and a flexural strength retention well within the claimed ranges while properties within the claimed ranges are not reported for the comparative examples (see Table 2 and Table 3). Instant example 1 uses a polyamide derived from the claimed monomers, but the comparative examples comprise polyamides that are not derived from the claimed combination of bis(aminoalkyl)cyclohexane and cyclohexanedicarboxylic acid (instant specification, page 21, lines 1-11 and Table 1). No example of a composition with the components of claim 1 that does not meet the claimed mechanical properties has been provided.
Because Lamberts teaches a substantially similar composition prepared by a substantially similar method and the instant abstract attributes the improved tensile strength retention and flexural strength retention after aging to the specific combination of the bis(aminoalkyl)cyclohexane and the cyclohexanedicarboxylic acid, it would be reasonable to expect the properties of the prior art composition to be similar to those of the instant composition, including a tensile strength retention within the claimed range of at least 60% after aging in a 130°C, 50:50 ethylene glycol:water solution for 1000 hours (claims 1 and 11) and a flexural strength retention within the claimed range of at least 85% after heat aging in a 130°C, 26 wt.% aqueous NaCl solution for 1000 hours (claims 1 and 12).
Regarding claim 5, Lamberts teaches the polymer composition of claim 1 where the composition comprises a 29-89 wt% of the polyamide ([0009]).
Lamberts does not anticipate the claimed range of 5-80 wt.%.
However, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to have selected any polyamide content in the range of 29-89 wt%, including the range of 29-80 wt%. A range of 29-89 wt% overlaps with the claimed range of 5-80 wt%. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I.
Regarding claim 8, Lamberts teaches the polymer composition of claim 1 wherein the composition comprises a halogen-free flame retardant ([0142]).
Regarding claim 13, Lamberts teaches the polymer composition of claim 1. Lamberts further teaches an article comprising the composition of claim 1 wherein the article is an automotive component (a component part produced from a polyamide moulding composition… in the automotive sector, [0148]).
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Lamberts (US-2016/0102202-A1) as applied to claim 1 above, and further in view of Kranbuehl (US 2004/0045620 A1) and Fish (US 2006/0111487 A1).
Lamberts teaches the polymer composition of claim 1 and further teaches an article comprising the polymer composition (molding, Lamberts, [0001]).
Lamberts does not teach wherein the article is a sub-sea oil and gas component.
However, prior to the effective filing date of the claimed invention, polymer compositions comprising polyamides were known to be useful in components used in sub-sea oil and gas applications, as taught by Kranbuehl and Fish. Kranbuehl teaches polyamide liners as gas-oil-water barriers in pipes used to transport gas, oil, water, and mixtures thereof (Kranbuehl, [0004]). Kranbuehl further teaches use in a sub-sea environment (Kranbuehl, [0004]). Fish teaches that polyamides are used in undersea oil pipes (Fish, [0003]) because of their good physical properties and chemical resistance.
Based on the disclosures of Kranbuehl and Fish, use of polymer compositions comprising polyamides was known in pipes and liners for pipes useful in sub-sea oil and gas applications. Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to have incorporated the polymer composition of claim 1 into a pipe or a liner for a pipe for use in sub-sea oil and gas applications in order to provide a gas-oil-water barrier. One would have had a reasonable expectation of successfully producing a pipe or pipe liner useful in sub-sea oil and gas applications because Lamberts teaches that the composition has good processability (Lamberts, [0007]) and can be processed by extrusion or injection molding (Lamberts, claim 28). A pipe or pipe liner comprising the composition of claim 1 and useful in sub-sea oil and gas applications reads on an article comprising the polymer composition (PC) of claim 1, wherein the article is a sub-sea oil and gas component.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Lamberts (US-2016/0102202-A1) as applied to claim 1 above, and further in view of Lamberts (US-2019/0225750-A1, referred to as Lamberts 2019).
Lamberts teaches the polymer composition of claim 1 and teaches using the composition in an automotive component (a component part produced from a polyamide moulding composition… in the automotive sector, [0148]).
Lamberts does not teach that the automotive component is in contact with an aqueous polyol solution.
However, prior to the effective filing date of the claimed invention, automotive components comprising polyamide compositions were known to be useful in automotive components in contact with coolants, as taught by Lamberts 2019. Lamberts 2019 teaches moldings used in the automobile sector that are in contact with coolants (Lamberts 2019, [0215]). Like Lamberts, Lamberts 2019’s compositions comprise polyamides based on terephthalic acid, CHDA, 1,3-BAC, and 1,6-hexanediamine (Lamberts 2019, [0038-0041], [0078-0081]), glass fibers (Lamberts 2019, [0015]), and maleic anhydride grafted impact modifiers (Lamberts 2019, [0016], [0183]).
Based on the disclosures of Lamberts 2019, compositions comprising glass fibers, maleic anhydride grafted impact modifiers, and polyamides based on terephthalic acid, CHDA, 1,3-BAC, and 1,6-hexanediamine were known to be suitable for automotive components in contact with coolants. Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to have prepared an automotive component used in contact with coolants as taught by Lamberts 2019 from the composition of Lamberts. One would have had a reasonable expectation of successfully making an automotive component because Lamberts teaches that the composition can be used to make automotive components. The instant specification states that engine coolant utilizes an aqueous polyol solution (instant specification, page 4, lines 6-7). Therefore, an automotive component in contact with coolants reads on wherein the polymer composition is in contact with an aqueous polyol solution.
Response to Arguments
Applicant’s arguments filed May 26, 2026 have been fully considered.
Applicant’s arguments, see page 7-8, filed May 26, 2026, with respect to the rejection of claim 1 under 35 U.S.C. 103 have been fully considered and are persuasive. Lamberts (US 2019/0225750 A1) requires both carbon fibers and glass fibers whereas amended claim 1 permits only carbon fibers or glass fibers. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Lamberts (US 2016/0102202 A1).
Applicant argues (page 8-9) that the instant composition has the unexpected advantage of retention of mechanical properties after aging. Applicant points to E1 and CE1-CE7 (Tables 1-3). E1 comprises a polyamide derived from 1,6-diaminohexane, 1,3-BAC, terephthalic acid, and CHDA as well as a maleic anhydride functionalized SEBS copolymer as the impact modifier, a stabilizer, a pigment, and glass fibers. The comparative examples use different polyamides, none of which are derived from 1,3-BAC and/or CHDA. Applicant points out that E1 has a higher tensile strength retention than CE1 and CE6 and a higher flexural strength retention than CE3-CE7. Of the comparative examples, only CE4 differs by only the choice of polyamide. The other comparative examples differ in the choice of polyamide as well as other additives. Comparing E1 and CE4 demonstrates that a composition comprising a polyamide derived from 1,6-dimainohexane, 1,3-BAC, terephthalic acid, and CHDA (PA1) has higher flexural strength after aging at 130 °C in a 26 wt% aqueous NaCl solution for 1,000 hours than a composition comprising PA 6T/6I/66.
Applicant argues that the instant examples unexpectedly show retention of mechanical properties after aging, but does not explain what mechanical properties after aging would be expected. In addition, evidence of unexpected results has only been presented for a polyamide with unknown monomer ratios rather than showing criticality of the upper and lower bounds of the claimed monomer ratios. Applicant shows no examples where a composition comprising a polyamide derived from the claimed monomers including CHDA and 1,3-BAC does not meet the claimed mechanical properties after aging. Consequently, Applicant has not established unexpected flexural strength retention after aging in a brine solution and/or unexpected tensile strength retention after aging in an aqueous polyol solution.
In addition, evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support. See MPEP 716.02(d). Claim 1 encompasses a broader range of compositions than instant E1. For example, claim 1 encompasses 1,3-bis(aminoalkyl)cyclohexanes other than 1,3-BAC and a range of monomer ratios that extends beyond the unspecified single monomer ratio used in E1. Claim 1 further encompasses a broader quantity of each component than E1. Claim 1 does not require the specific impact modifier, stabilizer, pigment, and glass fibers used in E1 and can comprise components other than those used in E1 (e.g. plasticizers). If Applicant wishes to overcome the present rejection by showing unexpected results, Applicant must provide sufficient evidence to show that unexpected results would be obtained for all species and the full breath of ranges encompassed by the claims.
Terminal Disclaimer
The terminal disclaimer filed on May 26, 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of co-pending applications 17/923529, 17/923791, and 17/998013 has been reviewed and is accepted. The terminal disclaimer has been recorded.
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 AUDRA DESTEFANO whose telephone number is (703)756-1404. The examiner can normally be reached Monday-Friday 9-5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at (571)272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/AUDRA J DESTEFANO/Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766
Prosecution Insights