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 .
Disposition of Claims
Claims 1, 3-4, 6-10, 13 and 20 are pending in the application. Claims 2, 5, 11-12 and 14-19 have been cancelled. Claim 13 is withdrawn from consideration due to Applicant’s elections.
Amendments to claims 1, 3, 13 and 20, filed on 9/2/2025, have been entered in the above-identified application.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3-4, 6-10 and 20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites the limitation “a content of a compound with a molecular weight of 310 or more and 1000 or less is 0.1 mass% or more and 1.5 mass% or less based on the weight of the polyamide resin, and a content of a compound with a molecular weight of less than 310 is 0.1 mass% or less based on the weight of the polyamide resin.” The specification does not provide support for the claimed content of either of the claimed compounds being based on the weight of the polyamide resin. Although paragraph 0041 of the specification discloses that the amount of oligomer with a molecular weight of less than 310 and the amount of oligomer with a molecular weight of 310 to 1000 are shown as an amount (mass %) with respect to the total amount polyamide resins with molecular weights of 1000 or more, the examiner notes that this would only provide support for contents of oligomers specifically being based on the weight of the polyamide resin, but not more broadly for contents of compounds as claimed.
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 1, 3-4, 6-10 and 20 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.
Claim 1 recites the limitation “a content of a compound with a molecular weight of 310 or more and 1000 or less is 0.1 mass% or more and 1.5 mass% or less based on the weight of the polyamide resin, and a content of a compound with a molecular weight of less than 310 is 0.1 mass% or less based on the weight of the polyamide resin.” Although the claimed mass percentages are based on the weight of the polyamide resin, it is unclear where the claimed compounds are present. Claims 3-4, 6-10 and 20 are rejected because they depend on claim 1.
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 3-4, 6-10 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mitadera (US 2013/0062806 A1) in view of Otsuka (US 2018/0171142 A1).
Regarding claim 1, Mitadera teaches a method of producing a polyamide resin-type composite material, comprising: a step of converting a polyamide resin (A) wherein at least 50 mole % of diamine structural units derived from xylylenediamine, and having a number-average molecular weight (Mn) of 6,000 to 30,000, and containing a component with a molecular weight of not more than 1,000, at 0.5 to 5 mass %, into a film or fiber ([0033]). The polyamide resin (A) is preferably a xylylenediamine-based polyamide resin in which at least 70 mole % and more preferably at least 80 mole % of the diamine structural units derived from meta-xylylenediamine and/or para-xylylenediamine and in which preferably at least 50 mole %, more preferably at least 70 mole %, and particularly at least 80 mole % of the dicarboxylic acid structural units (structural units derived from a dicarboxylic acid) derived from an α,ω-straight chain aliphatic dicarboxylic acid having preferably from 4 to 20 carbon atoms ([0052]). The C4-20 α,ω-straight chain aliphatic dicarboxylic acids preferred for use as the starting dicarboxylic acid component for the polyamide resin (A) can be exemplified by aliphatic dicarboxylic acids such as succinic acid, glutaric acid, pimelic acid, suberic acid, azelaic acid, adipic acid, sebacic acid, undecanedioic acid, dodecanedioic acid, and so forth ([0056]).
The polyamide resin (A) preferably contains cyclic compounds of 0.01 to 1 mass% ([0068]). The cyclic compound content is more preferably 0.05 to 0.8 mass % and even more preferably is 0.1 to 0.5 mass % ([0071]). This cyclic compound refers to a cyclic compound produced when a salt from the diamine component and dicarboxylic acid component as starting materials for the polyamide resin (A) forms a ring ([0068]). The examiner notes that, based on the molecular masses of xylylenediamine and dicarboxylic acid (e.g., dodecanedioic acid), the molecular weight of the cyclic compound would be above 310. Therefore, the cyclic compound reads on the claimed compound with a molecular weight of 310 or more and 1000 or less ([0068]).
With respect to the claimed content of a compound with a molecular weight of less than 310, as applied to claims 1 and 3-4 herein, Mitadera teaches a polyamide resin comprising the same components in the same amounts as the polyamide resin of applicants. In addition, Mitadera teaches a method of adjusting a content of low-molecular-weight component having a molecular weight of not more than 1,000 that is the same as the method disclosed by applicant in Examples 1-2. Mitadera teaches that adjustment to any proportion can be carried out in the final phase of melt polymerization by reducing the pressure in the reactor and removing the low-molecular weight component ([0066]). Mitadera teaches a method (2) that includes a step of continuing a polycondensation reaction under negative pressure ([0111]). In the step of continuing the polycondensation reaction at a negative pressure, the pressure is preferably from 0.05 MPa to less than atmospheric pressure, more preferably from 0.06 to 0.09 MPa, and even more preferably from 0.07 to 0.085 MPa (i.e., even more preferably 525 to 638 Torr, as calculated by the examiner) ([0124]). 1 to 40 minutes is more preferred, 1 to 30 minutes is even more preferred, and 1 to 20 minutes is particularly preferred ([0124]). In addition, or in the alternative, Mitadera teaches, in Example 1, that after completion of a dripping step, pressure reduction was carried out to 0.078 MPa (585 Torr) and the reaction was continued for 30 minutes to adjust the amount of component with a molecular weight of not more than 1,000 ([0294]).
Therefore, since the polyamide resin of Mitadera is the same as or is substantially similar to the polyamide resin of applicants, and as Mitadera teaches adjusting the content of the low-molecular-weight component using the same process as applicants, it is the examiner’s position that the content of a compound with a molecular weight of less than 310 would be within the claimed range of 0.1 mass% or less. Furthermore, it is the examiner's position that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially processes, a prima facie case of either anticipation or obviousness has been established. See In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433, (CCPA 1977). "Where the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658, (Fed. Cir. 1990).
In addition, Mitadera teaches that additives may also be added to the polyamide resin (A) within a range that does not impair the effects of the invention ([0218]). These additives can be exemplified by stabilizers such as oxidation inhibitors and heat stabilizers, agents that improve the resistance to hydrolysis, weathering stabilizers, delustrants, ultraviolet absorbers, nucleating agents, plasticizers, dispersants, flame retardants, static inhibitors, discoloration inhibitors, gelation inhibitors, colorants, release agents, and so forth ([0218]). Preferred examples of this stabilizer are organic stabilizers such as phosphorus types, hindered phenol types, hindered amine types, oxalic anilide types, organic sulfur types, and aromatic secondary amine types, as well as amine-type oxidation inhibitors and inorganic stabilizers such as copper compounds and halides ([0219]). The molecular weight of the organic sulfur compound will generally be at least 200 and is preferably at least 500, while its upper limit is generally 3,000 ([0229]). The stabilizer content, expressed per 100 mass parts of the polyamide resin (A), is generally 0.01 to 1 mass part and preferably 0.01 to 0.8 mass parts ([0239]). The examiner notes that these compounds would also meet the claimed limitation “a content of a compound with a molecular weight of less than 310 is 0.1 mass% or less based on the weight of the polyamide resin.”
Mitadera teaches that when the polyamide resin (A) is used as a fibrous material, it may be, for example, a fiber, monofilament, multifilament, thread, twisted fiber, twisted yarn, cord, stretched fiber, rope, fiber in which the denier varies in the length direction, fiber in which the fiber surface is roughened, a woven fabric of the preceding, a yarn, or a nonwoven fabric ([0183]).
Mitadera does not explicitly disclose wherein the filament has a stretching ratio of 3.5 times or more and 6.5 times or less.
However, Otsuka teaches a highly durable polyamide resin fiber (Abstract). More preferably, the polyamide resin fiber is obtained by stretching fibers that are made of a polyamide resin composition ([0021]). The lower limit value of the total draw ratio of the fiber composed of the polyamide resin composition is preferably 1.5 or larger, more preferably 4.1 or larger, even more preferably 4.2 or larger, yet more preferably 4.5 or larger, and even may be 5.0 or larger ([0108]). The upper limit value is preferably 15 or smaller, more preferably 10 or smaller, particularly 8 or smaller, and furthermore preferably 5.5 or smaller ([0108]). (Also see [0103]-[0105]).
It would have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to have provided the fibers of Mitadera with a stretch ratio of preferably 1.5 or larger, or more preferably 4.1 or larger, and 8 or smaller, and furthermore preferably 5.5 or smaller, as drawing of bundled fibers is general practice, and in order to obtain fibers having excellent mechanical tensile and shear strengths (see [0019] and [0103]-[0108] of Otsuka).
Regarding claim 3, Mitadera teaches that the cyclic compound refers to a cyclic compound produced when a salt from the diamine component and dicarboxylic acid component as starting materials for the polyamide resin (A) forms a ring ([0068]).
Regarding claim 4, Mitadera teaches that while the meta-xylylenediamine and para-xylylenediamine can be used mixed in any proportion, 0 to 50 mole % meta-xylylenediamine and 50 to 100 mole % para-xylylenediamine is preferred when there is an emphasis on the heat resistance, while 50 to 100 mole % meta-xylylenediamine and 0 to 50 mole % para-xylylenediamine is preferred when the film moldability from the polyamide resin (A) is particularly important ([0053]).
Regarding claim 6, with respect to the claimed tensile strength retention properties, the examiner notes that the polyamide resin of Mitadera in view of Otsuka is the same as or is substantially similar to the polyamide resin of applicant, meeting the limitations of claims 1 and 3-4 as applied herein. Thus, it is the position of the examiner that the composition of Mitadera in view of Otsuka would have the claimed properties as the same compound necessarily has the same properties. In the alternative, it would have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to have expected that the claimed properties would be so provided, as the references teach the same materials as those claimed, and as the properties cannot be separated from the materials. Thus, absent an objective showing to the contrary, the examiner expects the filaments taught by Mitadera in view of Otsuka to have the claimed properties.
Regarding claims 7-8, Mitadera teaches wherein the polyamide resin (A) that has been converted into a fiber is multifilament, and a monofilament fineness thereof is from 1 to 30 dtex ([0039] and [0184]).
Regarding claims 9-10, Mitadera teaches that when the polyamide resin (A) is used as a fibrous material, it may be, for example, a fiber, monofilament, multifilament, thread, twisted fiber, twisted yarn, cord, stretched fiber, rope, fiber in which the denier varies in the length direction, fiber in which the fiber surface is roughened, a woven fabric of the preceding, a yarn, or a nonwoven fabric ([0183]).
Regarding claim 20, Mitadera remains as applied to claims 3-4 and 6-8, teaching the claimed limitations.
Response to Arguments
Applicant's arguments filed 9/2/2025 have been fully considered but they are not persuasive.
Applicant contends the following: “Further, the content of a compound with a molecular weight of less than 310 is 0.1 mass% or less, as found in claim 1. When the amount falls above the claimed range, the claimed stretching ratio cannot be achieved. See Comparative Example 1 which has 1.1 mass% of a compound having a molecular weight of less than 310 and is only able to achieve a stretching ratio of 2.5, which is less than the value found in amended claim 1. See the portion of Table 1 from the present application….”
Regarding this contention, the examiner notes that, as claimed, a compound with a molecular weight of less than 310 can be any compound having a molecular weight of less than 310. Therefore, although applicant’s Table 1 shows, for Comparative Example 1, a stretch ratio of 2.5 being obtained for a composition comprising 1.1 mass% of a compound with a molecular weight less than 310, applicant’s evidence is not commensurate with the scope of the claims. The examiner also notes that the stretching ratio in Applicant’s Examples is not disclosed as being a maximum possible stretch ratio.
Applicant also contends the following: “Mitadera fails to disclose or suggest that the compound with a molecular weight of 310 or more and 1000 or less affects stretchability of the filament. In fact, Mitadera teaches materials that are the same as Comparative Example 1 and would be expected to have the same performance.” Applicant also compares Mitadera’s Production Example 2 to the Comparative Example 1 in the present application.
Regarding these contentions, the examiner notes that Mitadera's Production Examples 1 and 2 both use materials that are different from Applicant’s Example 1, but Mitadera's Production Example 1 incudes process steps for MW adjustment that are closer to those used in Applicant’s Example 1 than those used in Mitadera’s Production Example 2. Specifically, Mitadera’s Production Example 1 includes a pressure reduction step with continuation of the reaction for 30 minutes to adjust the amount of component with a molecular weight of not more than 1,000, as is similarly done in applicant’s Example 1, while Mitadera’s Production Example 2 omits a pressure reduction step. In addition, there is no showing that the material and process in Mitadera's Production Example 1 would fail to result in the claimed content of 0.1 mass% or less of a compound with a molecular weight of less than 310.
Further, as claimed, a compound with a molecular weight of less than 310 can be any compound having a molecular weight of less than 310. As applied above, Mitadera teaches stabilizers which have a molecular weight of 200 to 3,000, which overlaps with the claimed range of less than 310, wherein the content of said stabilizers, expressed per 100 mass parts of the polyamide resin (A), is generally 0.01 to 1 mass part and preferably 0.01 to 0.8 mass parts ([0227], [0229] and [0239]). The examiner notes that these compounds would also meet the claimed limitation.
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 Kevin Worrell whose telephone number is (571)270-7728. The examiner can normally be reached Monday-Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Marla McConnell can be reached at 571-270-7692. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Kevin Worrell/Examiner, Art Unit 1789
/MARLA D MCCONNELL/Supervisory Patent Examiner, Art Unit 1789