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 .
Response to Amendment
Applicant' s claim amendments and remarks filed December 24, 2025 are entered and have been fully considered. Applicant has amended the claims to overcome the 112b issues, therefore they are withdrawn. Applicant has canceled claims 11 and 13, therefore the 112f rejection is moot, and the 112f rejections of claims 12 and 14 are withdrawn.
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.
Claim 12 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 12 recites the limitation "the textile substrates" in line 1. There is insufficient antecedent basis for this limitation in the claim, claim 1 from which it depends, only mentions “a substrate” and not “a textile substrate.”
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.
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 1-4, 7-9, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Pineau et al, US20170130000A1, (Pineau I).
Regarding claims 1, 7 and 8, Pineau teaches a process of manufacturing articles by seamless assembly ¶¶[0004, 0168] comprising applying a polyamide in the form of a filament to textiles, ¶[0003-0004]. Pineau does not explicitly state the polyamide is printed, but the use of it in filament form renders obvious the action of printing because it is well known in the art that polymer filaments are used in printing processes.
Pineau further teaches a polyamide for hot-melt adhesives of the formula AP.Y/(A)m/(Pip.Y’)n/(B.Y”)q (see abstract and ¶[0018]) where AP is at least one asymmetric piperazine type diamine monomer, ¶[0013], Y represents at least one dicarboxylic acid, A is a polyamide with a long chain aliphatic unit, Pip. is piperazine, Y’ is at least one dicarboxylic acid, B is a polyalkylene ether diamine, Y” is at least one dicarboxylic acid, and m, n, and q are 0 or 1, ¶¶[0013-0023].
The polyamide (A) in the formula is derived from the polymerization of monomers selected from alpha-omega aminocarboxylic acids, lactams, diamine diacids derived from the reaction between an aliphatic diamine of 4-36 carbon atoms and a dicarboxylic acid having 4-36 carbon atoms, and their mixtures ¶¶[0042-0047]. This satisfies the selection of i), ii) and iii) of part a) of instant claim 1. For the optional part b) where the soft segment is the B.Y” in the formula above, it is a product of polyoxyalkylene diamine ¶[0079] and a dicarboxylic acid of sebacic acid or undecanoic acid, ¶[0077].
Pineau teaches that the copolyamide composition has a melting point less than or equal to 150°C, ¶[0001], which reads on the claimed melting temperature range.
Pineau does not teach the viscosity of the copolyamide at 170°C. But Pineau teaches using the same monomers as applicant, in similar ratios, which makes a copolyamide within the claimed melting point range, and are for the same use, as a hot melt adhesive, therefore it would be obvious to the skilled artisan to expect to achieve a similar melt viscosity within the claimed range. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See also MPEP 2112.01. Furthermore, “the fact that a characteristic is a necessary feature or result of a prior-art embodiment (that is itself sufficiently described and enabled) is enough for inherent anticipation." Abbot Labs v. Geneva Pharms., Inc., 182 F.3d 1315, 1319, 51 USPQ2d 1307, 1310 (Fed. Cir. 1999).
Regarding claims 2 and 3, Pineau teaches the polyamide (A) in the formula above is comprised of at least one monomer selected from the lactam types such as lactam 12, ¶[0051], the amino acid types such as 11-aminoundecanoic acid, ¶[0059], and diamine diacid types such as 1,6-hexamethylenediamine, and 1,10-decamethylene diamine, ¶[0055] or mixtures thereof. The carboxylic acid is selected from adipic acid and/or sebacic acid, ¶[0035].
Regarding claim 4, The soft segment, denoted as B.Y” in the formula above is a reaction product of polyoxyalkylene diamine ¶[0079] and a dicarboxylic acid of sebacic acid or undecanoic acid (which has 10 and 11 carbons respectively), ¶[0077]. The polyoxyalkylene diamine is exemplified as Jeffamine D400 and D2000 ¶[0146], which is also exemplified by applicant on page 9 of the instant specification, about halfway down the page. The numbers represent the molecular weight, so the D400 is 400 g/mol and D2000 is 2000 g/mol.
Regarding claim 9, Pineau teaches that the glass transition temperature of the copolyamide is less than or equal to 60°C ¶[0001].
Regarding claim 14, Pineau teaches the article for assembly with the polyamide as a hot melt adhesive is used in the context of the textile industry, specifically for the manufacture of seamless sports articles,¶[0168]. Although Pineau does not explicitly state the article is a garment or a shoe, the description of a “seamless sports article” suggests it can be any clothing item and it would be obvious that a garment or shoe is considered a sports article suitable for seamless assembly.
Claims 1-5, 7-8, 10, 12, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Pineau et al, US20170096529A1, (Pineau II).
Regarding claim 1, 7, and 8, Pineau teaches a process of manufacturing articles in the textile industry without stitching, ¶[0002], by using a hot melt adhesive to adhere two parts of a textile together, bonding without stitching, ¶[0178], which is a seamless assembly. The hot melt adhesive can be in the form of a filament, ¶¶[0001, 0179], while Pineau does not explicitly state the polyamide is printed, the use of it in filament form renders obvious the action of printing because it is well known in the art that polymer filaments are used in printing processes.
Pineau teaches a copolyamide with amide and polyether units and a melting point of 90-150°C, abstract and ¶[0177]. The amide unit is of the structure (A)x/(B)y/(C) where x and y equal 0 or 1 ¶¶[0019-0020]. A and B represent aliphatic repeat unit chosen from at least one amino acid (which is an alpha-omega aminocarboxylic acid), and at least one lactam or a unit X.Y obtained from the polycondensation of one aliphatic diamine and a dicarboxylic acid ¶¶[0022-0023]. The diamine and diacid comprise 4-36 carbon atoms each, ¶[0026]. C represents a long chain aliphatic repeat unit of an amino acid, lactam, or unit X.Y of 10 carbons or more, and each A, B and C are different from each other when present, ¶¶[0027-0028]. This satisfies the selections of i), ii), and iii) of part a) of instant claim 1.
For the optional part b) of instant claim 1, Pineau teaches the polyether unit of the composition comprises polyoxyalkylene diamines ¶[0090]. It is further taught that the copolyamide and polyether units correspond to the condensation product of polyamide blocks bearing dicarboxylic chain ends and polyoxyalkylene blocks bearing diamine chain ends, ¶[0094]. Where the dicarboxylic acid has 4-36 carbon atoms ¶[0026]. This condensation reaction produces the soft segment in the polymer.
Pineau does not teach the viscosity of the copolyamide at 170°C. But Pineau teaches using the same monomers as applicant, in similar ratios, which makes a copolyamide within the claimed melting point range, and are for the same use, as a hot melt adhesive, therefore it would be obvious to the skilled artisan to expect to achieve a similar melt viscosity within the claimed range. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See also MPEP 2112.01. Furthermore, “the fact that a characteristic is a necessary feature or result of a prior-art embodiment (that is itself sufficiently described and enabled) is enough for inherent anticipation." Abbot Labs v. Geneva Pharms., Inc., 182 F.3d 1315, 1319, 51 USPQ2d 1307, 1310 (Fed. Cir. 1999).
Regarding claims 2 and 3, Pineau teaches the polyamide comprises aliphatic repeat units derived from caprolactam, lauryllactam (which is lactam 12), ¶[0037], or hexanediamine (which is 1,6-hexamethylenediamine), ¶[0039]. When the polyamide comprises an amino acid, it can be selected from 11-aminoundecanoic acid ¶[0036]. The diacids can be selected from adipic acid, or sebacic acid, ¶[0044].
Regarding claim 4, Pineau teaches the polyether unit comprises polyoxyalkylene diamines ¶[0090] and exemplifies the Jeffamine brand, ¶¶[0124, 0160]. It is further taught that the copolyamide and polyether units corresponds to the condensation product of polyamide blocks bearing dicarboxylic chain ends and polyoxyalkylene blocks bearing diamine chain ends, ¶[0094]. The dicarboxylic acids are listed as sebacic and/or adipic acid ¶[0044], which have 10 and 6 carbons respectively. Pineau also teaches the number-average molecular weight of the polyether blocks is from 200-4,000 g/mol ¶[0162] which encompasses the claimed range.
Regarding claim 5, Pineau does not use the notation of POP for the polyoxyalkylene diamine, but applicant explains POP is polyoxypropylene diamine and the number represents the molecular weight (such as 400 g/mol in POP400), as described on page 9 of the instant specification. Pineau teaches that the preferred polyether unit is PPG (which is polyoxypropylene or POP), ¶[0160] and the number-average molecular weight of the polyether blocks is from 200-4,000 g/mol ¶[0162].
Pineau teaches using the polyoxypropylene diamine as stated above and the dicarboxylic acids with 4-36 carbons ¶[0026]; therefore the polymerization of those to create the POP4006, POP40010, or POP40036 is rendered obvious. Examiner presumes the last two numbers after the POP400 designation are the number of carbons in the carboxylic acid that is reacted with the POP400, because of what applicant says on page 13 of the instant specification, in the examples section, that Jeff4006 or Jeff40036 is from the polycondensation of the polyoxyalkylene diamine with the aliphatic dicarboxylic acid.
The PA 6/11 of instant claim 5 is derived from monomers of caprolactam and 11-aminoundecanoic acid, which Pineau teaches using as monomers as explained for claim 2 above. The teachings of Pineau render obvious at least the selections of PA6/11/POP40036, PA 6/11/POP4006, and PA 11/POP4006.
Regarding claim 10, Pineau teaches the copolyamide composition has an adhesive strength as determined by a peel strength test at 100 mm/min of 3-15 N/cm ¶[0189]. This range converts to 3.75 N/12.5 mm to 18.75/12.5 mm which encompasses the claimed range.
Regarding claims 12 and 14, Pineau teaches the textile substrate can be a polyamide ¶[0189], and that the articles assembled using the polyamide hot melt adhesive are sports articles such as clothing (garments), ¶[0145].
Allowable Subject Matter
Claim 6 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the cited prior art does not teach, suggest, or disclose that the hotmelt adhesive polyamide for seamless assembly is selected from PA6/11/12, PA6/612/12, PA6/1012/12 and PA6/66/11/12. The prior art of Pineau I and Pineau II require soft segments in both polyamides for seamless assembly, whereas the polyamide of claim 6 requires only hard segments, therefore prior art does not read on claim 6 because removing the soft segment from the polyamides would ruin their performance and properties.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Response to Arguments
Applicant's arguments filed 12/24/2025 have been fully considered but they are not persuasive.
Regarding the 103 rejection over Pineau I, specifically regarding the inherency of the viscosity limitation, applicant argues that the viscosity at 170°C is not inherent because the manufacturing method of the polyamide in the reference versus the application are different, see page 2 of remarks. In response to this argument, examiner points to page 10 of the instant specification where applicant states about halfway down the page, “The copolyamides used according to the invention can be manufactured according to the usual processes described in the prior art. Reference may be made in particular to the process described in patent application EP 1 533 330 A1. In this method, all the reagents are introduced in one go into a suitable reactor, optionally adding an acid such as phosphorous acid. The combined mixture is heated under nitrogen at a typical temperature of 235°C for a typical time of 60 min in order to then put the reactor under vacuum and continue the reaction for a typical time of 30 min. Of course, the temperatures and times can be varied to take account of the reactivity of the chosen reagents.”
This suggests there is not one specific way to produce applicant’s copolyamides and that any method known to one of ordinary skill in the art is sufficient. Furthermore, applicant does not detail the exact manufacturing process of the examples in the instant specification; on page 13 the only specifics given are the ingredients and states the hard segments are made from polycondensation. Because there are no specifics as to the exact process, examiner presumes applicant used the method already referenced, which is known to those skilled in the art. To compare to the reference of Pineau I, Pineau also teaches that the polyamides are prepared by techniques known to those skilled in the art, ¶[0183]. Then details the synthesis of one of the examples where the monomers are added to a reactor at the same time, mixed under heat and nitrogen, mixed for one hour at 250°C, then vacuum is applied, and a viscous medium is obtained. This is essentially the same method of manufacturing that is disclosed by applicant.
In response to applicant’s argument that the polyamides of Pineau differ in terms of melting point and glass transition temperature depending on the monomer content, examiner points to applicant’s examples, table 1 on page 14 and the physical properties in Table 2 on page 16 of the instant specification, which also show polyamides of varying amounts of monomers which also result in varying melting temperatures, and examiner notes the Tg of each polyamide is not given in table 2. Furthermore, Pineau’s polyamides satisfy the claimed melting point and glass transition temperature limitations, which are both ranges, it is not required that all of the polyamides have the same Tm and Tg in order to satisfy the viscosity limitation, which is also a range. Regarding the molar amounts of the monomers, applicant does not limit the molar amounts of hard segment or soft segment nor limit the specific monomers in regards to achieving the claimed viscosity. Applicant instead states on page 7 of the instant specification that the content of the hard segments in the copolyamide can vary widely, from 1 to 100 mol%. And on page 9 applicant states the soft segment can vary widely, from 0-99 mol%. Pineau I teaches polyamides within these molar ratios, ¶[0193] molar compositions.
In response to applicant’s argument that the molecular weight of a polymer depends on the process conditions, examiner points to the explanation given above comparing the method of Pineau with the method of applicant, and reminds applicant that it is disclosed in the instant specification that the inventive polyamides are made from any method known to those skilled in the art.
In response to the argument of improper speculation and insufficient inherency by the office, examiner respectfully disagrees. Examiner has shown that Pineau I teaches producing copolyamides using the same monomers as applicant (as mentioned in the rejection above), within the same molar ratios, and by essentially the same process as applicant for the same end-use, therefore the skilled artisan would be suggested that the polyamides of Pineau I must have the claimed viscosity at 170°C. Applicant has not shown how the prior art does not inherently meet the viscosity limitation.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., thermal resistance, washing resistance, and application in jetting, page) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Furthermore jetting is a type of printing, which as stated in the rejection above, Pineau teaches the polyamides are used in filament form, which is known for use in printing of polymers.
Applicant’s argument that there is no reason for a skilled artisan to modify the invention of Pineau I to arrive at the claimed subject matter, examiner points to the 103 rejection which states that the teachings of the prior art inherently meet the viscosity limitation, without modification. Furthermore, discovering the optimal viscosity range for a specific application is not in itself novel, and is within the ambit of one skilled in the art.
Regarding the 103 rejection over Pineau II, specifically regarding the inherency of the viscosity limitation, applicant argues that the manufacturing process is not demonstrated or suggested to be identical to applicant’s method. Examiner points to ¶[0111] of Pineau II, where it states that all the monomers can be added at the start in a single step to perform polycondensation, and further states a catalyst of phosphoric acid may be added ¶[0119], and the polycondensation is performed from a temperature of 240-280°C, ¶[0120]. It is also taught in ¶[0110] that stirring is under vacuum. Comparing this to applicant’s specification, applicant states on page 10 of the instant specification about halfway down the page, “The copolyamides used according to the invention can be manufactured according to the usual processes described in the prior art. Reference may be made in particular to the process described in patent application EP 1 533 330 A1. In this method, all the reagents are introduced in one go into a suitable reactor, optionally adding an acid such as phosphorous acid. The combined mixture is heated under nitrogen at a typical temperature of 235°C for a typical time of 60 min in order to then put the reactor under vacuum and continue the reaction for a typical time of 30 min. Of course, the temperatures and times can be varied to take account of the reactivity of the chosen reagents.”
This suggests there is not one specific way to produce applicant’s copolyamides and that any method known to one of ordinary skill in the art is sufficient, and the method disclosed by Pineau II is essentially the same as what applicant discloses. Furthermore, applicant does not detail the exact manufacturing process of the examples in the instant specification; on page 13 the only specifics given are the ingredients and states the hard segments are made from polycondensation. Because there are no specifics as to the exact process, examiner presumes applicant used the method already referenced, which is known to those skilled in the art.
Regarding the molar amounts of the monomers, applicant does not limit the molar amounts of hard segment or soft segment nor limit the specific monomers in regards to achieving the claimed viscosity. Applicant instead states on page 7 of the instant specification that the content of the hard segments in the copolyamide can vary widely, from 1 to 100 mol%. And on page 9 applicant states the soft segment can vary widely, from 0-99 mol%. Pineau II teaches polyamides within these molar ratios, and specifically teaches polyamides with 1:1 weight ratio of hard to soft segments, ¶¶[0235, 0237], which is similar to applicant’s exemplified weight ratios of table 1.
In response to the argument of improper speculation and insufficient inherency by the office, examiner respectfully disagrees. Examiner has shown that Pineau II teaches producing copolyamides using the same monomers as applicant (as mentioned in the rejection above), within the same molar ratios, and by essentially the same process as applicant for the same use, therefore the skilled artisan would be suggested that the polyamides of Pineau II must have the claimed viscosity at 170°C. Applicant has not shown how the prior art does not inherently meet the viscosity limitation.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., thermal resistance, washing resistance, and application in jetting, page 5 of remarks) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Furthermore, Pineau II does teach the resistance to washing, table IV ¶[0258], and teaches the polyamides are used as a filament, which is known for use in printing of polymers.
Applicant’s argument that there is no reason for a skilled artisan to modify the invention of Pineau I to arrive at the claimed subject matter, examiner points to the previous 103 rejection which states that teachings the prior art inherently meet the viscosity limitation, without modification. Furthermore, discovering the optimal viscosity range for a specific application is not in itself novel, and is within the ambit of one skilled in the art.
For all the reasons given above, the 103 rejections over Pineau I and II are maintained. Due to the amendments, claim 14 is now included in the rejections over Pineau I and Pineau II, and claim 12 is included in the rejection over Pineau II.
The 103 rejection over Malet of 8/7/2025 is withdrawn. Upon reconsideration of Malet, examiner finds that Malet requires a polyether block in the copolyamide, which does not satisfy claim 6 as previously stated, because claim 6 requires the copolyamide be only composed of the hard segments and no soft segment. Furthermore, Malet teaches the polyamide is for injection molding articles ¶[0099], and does not teach the claimed process of manufacturing articles by seamless assembly comprising printing on a substrate. Nor is it used as a hot melt adhesive, therefore it would not obvious to use it as such for seamless assembly.
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 VIRGINIA L STONEHOCKER whose telephone number is (571)272-3431. The examiner can normally be reached Monday-Friday 7:00AM-4:00PM EST.
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/V.L.S./Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766