DETAILED ACTION
Status of Claims
Claims 1-20 are pending in the current application.
Claims 1, 4, 7, and 13-15 are amended in the current application.
Response to Arguments
Applicant's remarks and amendments filed September 5, 2025 have been fully considered.
Applicant requests withdrawal of the rejections under 35 USC 112(b) set forth in the previous office action.
The rejections over claims 1, 4, 14, and 15 under 35 USC 112(b) set forth in the previous office action are withdrawn due to the present claim amendments.
However, new rejections under 35 USC 112(b) are established below in response to the present claim amendments.
Applicant argues that the teachings of Mitsui have been overgeneralized and do not anticipate the claimed limitations, because Mitsui discloses PA6 and PA66 as options from a very broad list of material options, and only discloses example recycle blends of PPS/PA and ETFE/PA and not solely PA.
This is not persuasive for the following reasons. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994). See MPEP 2123, II. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). See MPEP 2123, I. Although Mitsui does not disclose examples solely of PA, Mitsui provides a broader disclosure that teaches material A can be a polyamide such as polyamide 12, polyamide 6, polyamide 66, or polyamide 11, and material B can be a polyamide such as polyamide 12, polyamide 6, polyamide 66, or polyamide 11 (Mitsui, [0039]).
Moreover, although Mitsui discloses lists of material options for material A and material B, Mitsui’s list for material A includes fluoropolymers, polyamides, polyester, polyurethane, polyvinyl chloride, polyketone, polyolefin, and polyphenylene sulfide, where specific examples are provided for the polyamides; and Mitsui’s list for material B includes polyamides, polyester, polyurethane, polyvinyl chloride, and polyolefin, where specific examples are provided for the polyamides and polyamide is identified specifically for use (Mitsui, [0018], [0039]-[0040], Table 1). In view of the foregoing, one of ordinary skill in the art would not need additional suggestion or additional motivation to specifically select polyamides for materials A and B from the limited and finite lists disclosed by Mitsui. Based on a fair and complete reading, one skilled in the art would be able to reasonably envisage embodiments formed solely of polyamides from Mitsui’s plain teachings and guidance.
Applicant argues that Mitsui does not teach that the overall tube composition is predominantly polyamide.
This is not persuasive for the following reasons. As discussed immediately above, one of ordinary skill in the art would not need additional suggestion or motivation to specifically select polyamides for materials A and B from the limited and finite lists disclosed by Mitsui. Furthermore, Mitsui specifically teaches a layer (material A layer) is a layer consisting substantially only of material A, another layer (material B layer) is a layer consisting substantially only of material B, and a recycle layer is formed solely of recycled materials A and B to prevent deterioration of quality (Mitsui, [0011]-[0018]). In view of the foregoing, Mitsui is considered to clearly and specifically teach the overall tube composition can be predominantly formed of polyamides.
Applicant argues that Mitsui does not teach the recycled material is obtained from a multilayer tubular structure that had initially transported fluids for motor vehicles.
This is not persuasive for the following reasons. Mitsui teaches the recycled material is obtained from crushing multilayer tubular bodies containing virgin materials that were formed for automotive parts such as cooling system radiators that transported fluids such as water and ethylene glycol (Mitsui, [0001]-[0029], [0040]-[0041], [0049]).
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 10, 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.
Claims 10, 14, and 15 are indefinite as the recitation of possible elements is not properly claimed in the alternative. Treatment of claims reciting alternatives is not governed by the particular format used (e.g., alternatives may be set forth as "a material selected from the group consisting of A, B, and C" or "wherein the material is A, B, or C"). See, e.g., the Supplementary Examination Guidelines for Determining Compliance with 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications ("Supplementary Guidelines"), 76 Fed. Reg. 7162, 7166 (February 9, 2011). Alternative expressions are permitted if they present no uncertainty or ambiguity with respect to the question of scope or clarity of the claims. A Markush grouping is a closed group of alternatives, i.e., the selection is made from a group "consisting of" (rather than "comprising" or "including") the alternative members. Abbott Labs., 334 F.3d at 1280, 67 USPQ2d at 1196. If a Markush grouping requires a material selected from an open list of alternatives (e.g., selected from the group "comprising" or "consisting essentially of" the recited alternatives), the claim should generally be rejected under 35 U.S.C. 112(b) as indefinite because it is unclear what other alternatives are intended to be encompassed by the claim. If a claim is intended to encompass combinations or mixtures of the alternatives set forth in the Markush grouping, the claim may include qualifying language preceding the recited alternatives (such as "at least one member" selected from the group), or within the list of alternatives (such as "or mixtures thereof"). Id. at 1281. See MPEP 2173.05(h).
For the purposes of examination, claim 10 is interpreted as reciting instead “the composition of layer (1) comprises at least one compound selected from the group consisting of a plasticizer, an impact modifier and an additive.” Alternatively, claim 10 could be amended to recite “the composition of layer (1) comprises at least one compound selected from a plasticizer, an impact modifier or an additive” to overcome the aforementioned deficiency.
For the purposes of examination, claim 14 is interpreted as reciting instead “the additive is selected from the group consisting of a catalyst, …, a wax and mixtures thereof.” Alternatively, claim 14 could be amended to recite “the additive is selected from a catalyst, …, a wax or mixtures thereof” to overcome the aforementioned deficiency.
For the purposes of examination, claim 15 is interpreted as reciting instead “the additive is selected from the group consisting of a catalyst, …, a wax and mixtures thereof.” Alternatively, claim 15 could be amended to recite “the additive is selected from a catalyst, …, a wax or mixtures thereof” to overcome the aforementioned deficiency.
Correction is required.
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.
Claims 1-12 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mitsui et al. (JP 2003042351 A; herein English translation utilized for all citations) as evidenced by Djukic et al. (Mechanical Properties of Amorphous and Semi-Crystalline Semi-aromatic polyamides, Heliyon 6, 2020, Pgs 1-10).
Regarding Claim 1, Mitsui teaches a multilayer tubular body used for automobile parts including cooling system radiator water pipes (i.e., for transporting fluids for a motor vehicle) comprising two layers consisting of a single virgin material (a material A layer and a material B layer) and a recycle layer made up of only materials A and B from a recycled tube, where the recycle layer is bonded between the material A layer and the material B layer (Mitsui, [0001]-[0002], [0011]-[0012], [0019]-[0038], [0040]-[0041], [0049]). Mitsui teaches material A is polyamide 6 and material B is polyamide 66 (Mitsui, [0039]). The material A layer represents a claimed layer (2’), the material B layer represents a claimed layer (2), and the recycle layer represents a claimed layer (1). Mitsui teaches the recycle layer (layer (1)) consists substantially of a recycled material composition of material A and Material B (such as polyamide 6 or polyamide 66, respectively), the material A layer (layer 2’) is substantially made of a single virgin material (polyamide 6), and the material B layer (layer 2) is substantially made of a single virgin material (polyamide 66) (Mitsui, [0011]-[0012], [0039]). Therefore, each respective layer is considered to satisfy the claimed language of “consisting of a composition predominantly comprising.” Recycle layer (layer (1)) consists substantially of a recycled material composition of material A and Material B (such as polyamide 6 or polyamide 66, respectively), and therefore, satisfies the claimed range of at least 50 wt% of a recycled material from a multilayer tube (MPEP 2131.03). Material A layer (layer 2’) and material B layer (layer 2) are both substantially made of their respective single materials, and therefore, satisfy the claimed range of consisting of at least 90 wt% of virgin (i.e., non-recycled) material (MPEP 2131.03). As evidenced by Djukic, polyamide 6 and polyamide 66 are aliphatic and semi-crystalline polyamides (Djukic, Page 1, Column 1).
Regarding Claims 2 and 3, as recited above, the recycle layer (layer 1) is bonded between the material A layer and the material B layer (Mitsui, [0001]-[0002], [0011]-[0012], [0019]-[0038]). Mitsui teaches the material A layer (layer 2’) is in contact with fluid (Mitsui, [0017], [0040]).
Regarding Claim 4, Mitsui teaches material A can be polyamide 6 and material B can be polyamide 6 (Mitsui, [0039]). Mitsui teaches material A layer (layer 2’) and material B layer (layer 2) are both substantially made of their respective single materials (Mitsui, [0011]-[0012]), and therefore, Mitsui envisages embodiments having material A layer (layer 2’) and material B layer (layer 2) both being identical layers made of polyamide 6.
Regarding Claim 5, Mitsui teaches material A layer (layer 2’) and material B layer (layer 2) are each laminated with the recycle layer (layer 1) by forming melt bonding interfaces (i.e., binder layers (3)) therebetween (Mitsui, [0011]-[0012], [0024], [0026]).
Regarding Claim 6, Mitsui discloses an example having thickness of the layer (1) of 0.3 mm, and thicknesses of the layer (2) and layer (2’) of 0.5 and 1.2 mm (Mitsui, Table 1). This yields a total thickness ratio of layer (1) of 0.3/[0.3+0.5+1.2]*100 = 15%. Mitsui’s layer (1) thickness ratio falls within the claimed range of at least 10%, and therefore, satisfies the claimed range (MPEP 2131.03).
Regarding Claims 7 and 8, Mitsui teaches the recycle layer (layer (1)) consists substantially of a recycled material composition of material A and Material B (such as semi-crystalline aliphatic polyamide 6 and polyamide 66, respectively) that was provided from a crushed tubular body (Mitsui, [0010]-[0013], [0039]). Polyamide 6 and/or polyamide 66 satisfy the claimed polyamide C being included in at least 50 wt%.
Regarding Claim 9, Mitsui does not disclose that a plasticizer is required. Mitsui teaches the materials for forming the recycle layer (layer 1) contain only small amounts of additives that do not affect the characteristics of each layer (Mitsui, [0025]). Therefore, recycle layer (layer (1)) is free of plasticizer. Mitsui teaches the recycle layer (layer (1)) consists substantially of a recycled material composition of material A and Material B (such as semi-crystalline aliphatic polyamide 6 and polyamide 66, respectively) that was provided from a crushed tubular body (Mitsui, [0010]-[0013], [0039]).
Regarding Claim 10, Mitsui teaches the materials for forming the recycle layer (layer 1) contain only small amounts of additives that do not affect the characteristics of each layer (Mitsui, [0025]). Therefore, recycle layer (layer (1)) contains additives. Mitsui teaches the recycle layer (layer (1)) consists substantially of a recycled material composition of material A and Material B (such as semi-crystalline aliphatic polyamide 6 and polyamide 66, respectively) that was provided from a crushed tubular body (Mitsui, [0010]-[0013], [0039]).
Regarding Claim 11, Mitsui teaches the tubular structure has the same structure and comprises the same material as the crushed multilayer tube (Mitsui, [0033]). Therefore, the tubular structure and multilayer tube are capable of transporting the same fluid.
Regarding Claim 12, Mitsui suggests the fluid transported by the tubular structure can be different from the fluid transported by the multilayer tube, because the tubular structures can be distinctly different structures designed for different automobile parts to transport water or ethylene glycol (Mitsui, [0040]-[0041]).
Regarding Claim 20, Mitsui teaches a tubular structure that consists of three layers of the material A layer (layer (2’)), the recycle layer (layer (1)), and the material B layer (layer (2)) (Mitsui, [0001]-[0002], [0011]-[0012], [0019]-[0038]).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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 13-19 are rejected under 35 U.S.C. 103 as being unpatentable over Mitsui et al. (JP 2003042351 A; herein English machine translation utilized for all citations) as evidenced by Djukic et al. (Mechanical Properties of Amorphous and Semi-Crystalline Semi-aromatic polyamides, Heliyon 6, 2020, Pgs 1-10) as applied to claims 1 and 7 above, and further in view of Schmitz et al. (US 2004/0265527 A1).
Regarding Claims 13, 14, and 15, Mitsui teaches the tubular structure as discussed above for claims 1 and 7. Mitsui teaches the material B layer (layer (2)) consists substantially of a single material B that is semi-crystalline aliphatic polyamide 6 and/or polyamide 66 (Mitsui, [0010]-[0013], [0039]). Polyamide 6 and/or polyamide 66 satisfy the claimed polyamide D being included in at least 50 wt%.
Mitsui remains silent regarding an impact modifier in the amount of 3-45% by weight.
Schmitz, however, teaches a tubular structure that is a pipe (Schmitz, [0045]) comprising polyamide 6 or polyamide 66 (Schmitz, [0016]) and an impact modifier in the amount of not more than about 50% by weight for the purpose of establishing desired impact properties (Schmitz, [0112]-[0114]). Schmit’s content range encompasses the claimed range of 3-45 by weight, and therefore, renders obvious the claimed range (MPEP 2144.05). Schmitz is in the same field of endeavor, which is tubular structures as evidenced by [0045].
Since Mitsui and Schmitz both pertain to polyamide-based tubular structures, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have added Schmitz’s impact-modifying rubber into Mitsui’s material B layer (layer (2)) to obtain a tubular structure exhibiting desired impact properties as taught by Schmitz (Schmitz, [0112]-[0114]).
Regarding Claims 16 and 17, Mitsui teaches a crushed tube that comprises a single layer formed of a virgin material can be utilized for forming the recycle layer (layer (1)) to ensure the functionality and lifespan, but also a crushed multilayer tube can be utilized without separation of layers to improve recyclability with a predictable and reasonable expectation of success (Mitsui, [0006]-[0016]; MPEP 2143).
Regarding Claim 18, Mitsui teaches the recycle layer (layer (1)) can be made of recycled PA6 (Mitsui, [0010]-[0012], [0039]). The melting temperature of PA disclosed at [0029] and [0202] of the specification as originally filed is 220oC. "Products of identical chemical composition can not 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. Id. See MPEP 2112.01, II. Therefore, Mitsui’s PA6 is considered to satisfy and/or render obvious a melting temperature of 220oC that falls within and satisfies the claimed range (MPEP 2131.03, MPEP 2112.01, II).
Regarding Claim 19, Mitsui teaches the recycle layer (layer (1)) can be made of recycled PA6 (Mitsui, [0010]-[0012], [0039]). The heating enthalpy of PA disclosed at [0029] and [0202] of the specification as originally filed is >25 J/g. "Products of identical chemical composition can not 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. Id. See MPEP 2112.01, II. Therefore, Mitsui’s PA6 is considered to satisfy and/or render obvious a heating enthalpy >25 J/g that falls within and satisfies the claimed range (MPEP 2131.03, MPEP 2112.01, II).
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 ELI D STRAH whose telephone number is (571)270-7088. The examiner can normally be reached M-F 9 am - 7 pm.
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, Aaron Austin can be reached at 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Eli D. Strah/Primary Examiner, Art Unit 1782
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