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 .
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.
Claims 16-22, 24-27 and 31-34 are rejected under 35 U.S.C. 103 as being unpatentable over Rossini EP0965627 A1.
Rossini teaches polyamide compositions which are derived from condensation product of a) an acid component consisting essentially of one or more polymeric fatty acids and one or more dicarboxylic acid and b) an amine component consisting of aliphatic diamines, and one or more organic amines selected from cyclic aliphatic diamines or a polyoxyalkylene diamines (para [0009]).
Regarding claims 16 and 24, Rossini discloses a polyamide hot melt adhesive composition (instant claim 24) which comprises condensation product of mixture of carboxylic acids and diamines (Reference claims 1-3).
The carboxylic acid component comprises 30 to 95 mol% polymeric fatty acid which are also referred to as dimer acid (para [0015], line 24) and 5 to 70 mol% of aliphatic C4-C12 diacid.
Rossini further teaches that the diamine component comprises 20 to 85 mol% of aliphatic diamines, 0 to 70 Mole % of cycloaliphatic diamines and 0 to 60 mol% polyoxyalkylene diamines (corresponding to applicant’s polyetheramine).
Both the acid components and amine components overlap the claimed requirement. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Rossini adds that the polyamide resin may be prepared by condensation methods where the acid components are present in stochiometric quantities. Rossini notes that residual acid groups can be present after the condensation, but no more than 10% equivalent of all functional groups is used. Thus, providing the molar ratio of -COOH/-NH2 range of 1.0 to 1.1, which meets the claimed requirement (Rossini para [0019]).
Regarding claims 17 and 31, Rossini teaches C36 dimer acid, derived from dimerization of C18 fatty acid, meeting the claimed requirements (Rossini para [0015]). Applicant is additionally reminded that product by process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP 2113 I.
Regarding claims 18 and 32, Rossini teaches the aliphatic dicarboxylic acid such as azelaic acid, meeting the claimed requirement (para [0016], and reference claim 4).
Regarding claims 19 and 33, Rossini teaches addition of small amounts of monofunctional carboxylic acid like stearic acid to control the viscosity of the polyamide, meeting the claimed requirement (para [0019]).
Regarding claims 20 and 34, Rossini teaches aliphatic diamine butanediamine, meeting the claimed requirement (para [0017] (i)).
Regarding claim 21, Rossini teaches cycloaliphatic diamine piperazine, meeting the claimed requirement (para [0017] (ii)).
Regarding claim 22, Rossini teaches polyoxyalkylene diamines with molecular weight ranging from 200 to 4000g/mol, meeting the claimed requirement (para [0017] (iii)).
Regarding claim 25, Rossini teaches conventional additives such as antioxidants, thus meeting the claimed requirement (para [0025]).
Regarding claim 26, Rossini is silent on the viscosity range of the inventive polyamide compositions at 150 oC, however since Rossini’s hot melt adhesive compositions are derived from substantially identical monomers with overlapping amounts (as discussed when addressing claim 1) and via the same condensation polymerization conditions as the instant specification, they would be reasonably expected to meet the claimed requirement. Additionally, since the prior art compositions are being utilized for similar end products as the instant specification (abstract), such as hot melt adhesives, it would be obvious to optimize the polyamide compositions such that they exhibit similar viscosity levels at 150 oC.
Regarding claim 27, Rossini teaches (para [0020]) the polyamide compositions with softening point in the range of 80 to 170 oC, overlapping the claimed requirement.
Claim 28 is rejected under 35 U.S.C. 103 as being unpatentable over Rossini EP0965627 A1, as applied to claims 16 and 24 above, and in view of Carlson et al. US 2004/0018269 A1.
Regarding claim 28, Rossini teaches (paras [0021] and [0022]) that the inventive polyamide hot melt adhesive composition is useful for assembly of parts such as in cable and electronic industry. Rossini does not discuss overmolding of an insert, however a person of ordinary skill in the art would look to analogous art related to hot melt adhesives derived from polyamides which can also be used for assembly of electronics materials. Reference Carlson teaches hot melt adhesive derived from dimer acid based polyamide resins (para [0002]) which can be used for encapsulation of fragile components such as electronic circuit boards or thin strands of wire (paras [0002] and [0017]). Carlson further teaches insert over-molding (para [0017]) which allows for cost effective way to use hot melt adhesives for molding.
It would have been obvious to one of ordinary skilled in the art before the effective filing date of the invention to have utilized Rossini’s polyamide adhesive composition for over-molding an insert as taught by Carlson for the same application of creating an encased electronic circuit board in a cost-effective manner.
Claim 30 is rejected under 35 U.S.C. 103 as being unpatentable over Rossini EP0965627 A1, as applied to claim 16 above, and in view of Ferraro et al. US 2020/0053889 A1.
Regarding claim 30, Rossini teaches (paras [0021] and [0022]) that the inventive polyamide hot melt adhesive composition is useful for assembly of parts such as in cable and electronic industry. Rossini does not discuss low-pressure overmolding of a heat-sensitive battery, however a person of ordinary skill in the art would look to analogous art which is related to polyamide based composition specifically utilized for assembly of electronics. Reference Ferraro teaches (references claims 1-4 and 6) a battery which is mounted to a printed circuit board which is overmolded by a hot melt polyamide material (adhesive, para [0031]) having low pressure and low temperature molding properties, to generate an electronic medical device, which meets the claimed requirement. Ferraro further notes that the batteries are sensitive to heat (para [0032]). Advantageously, Ferraro provides the motivation for low pressure overmolding of batteries so that the batteries can be protected against degradation (para [0031])
It would have been obvious to one of ordinary skilled in the art before the effective filing date of the invention to have utilized Rossini’s polyamide adhesive composition for low pressure over-molding a heat-sensitive battery as taught by Ferraro for the same application of creating an encased battery which is protected against degradation.
Claim 29 is rejected under 35 U.S.C. 103 as being unpatentable over Wustrich et al. CA 2347818A1.
Wustrich teaches a method for producing smart cards wherein the thermoplastic hot-melt adhesives can be used at low temperature and low pressure injection molding process (page 5, lines 34-37; page 6, lines 1-4).
Regarding claim 29, Wustrich provides (page 9, lines 5-13) details of the molding process to create a smart cart. The chip and the associated antenna (which correspond to the required insert), is first placed in the injection mold of the injection molding unit. After the mold is closed, the hot-melt adhesive is then injected. After brief cooling, the mold is opened and the molded component thus produced is removed from the mold.
Wustrich further discloses (page 6, lines 6-19) that the thermoplastic hot-melt adhesive is a low-melting polyamide with processing temperatures between 100°C and 230°C, used in the low-pressure injection molding process at pressures of between 1 and 50 bar (10 x 105 Pa and 5 x 106 Pa), which overlap the claimed requirement. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Allowable Subject Matter
Claim 23 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.
Reference Rossini EP0965627 A1 teaches a polyamide composition, however is silent on the specific amounts of the chain limiter. Rossini further teaches away from the use of ethylenediamine as the aliphatic diamine (para [0008]), and additionally does not teach the required amount of piperazine. Additional close prior art reference Becker US2012/0175817 seems to suggest polyamide with overlapping acid and amine components, but only allows for excess amine groups and therefore does not the required -COOH/-NH2 molar ratio (Reference claims 1 and 2 and para [0018]). No additional references or reference combinations were discovered which render the claimed requirements obvious. Thus, the limitations of claim 23 were found to be novel over the prior art on record.
Conclusion
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/S.M.D./
Examiner
Art Unit 1765
/HEIDI R KELLEY/ Supervisory Patent Examiner, Art Unit 1765