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 § 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 1 and the claims dependent therefrom 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation “a diamine unit (X) having six to 10 carbon atoms having an alkyl group…”, and the claim also recites “wherein the diamine unit (X) comprises a diamine unit derived from the (an) aliphatic diamine having 9 carbon atoms” which is the narrower statement of the range/limitation. The Examiner cannot ascertain whether (i) the diamine (X) contains, in all cases, 9 carbon atoms or (ii) if the diamine (X) must comprise units derived from diamine compounds having 9 carbon atoms but also may include units derived from diamine compounds having 6-8 or 10 carbon atoms… any of which will necessarily feature pendant C2-3 alkyl groups at the 2-position.
For the purpose of evaluating the instant invention against the prior art, it will be presumed that the latter condition is true.
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.
Claims 1, 2, 4, and 6-14, are rejected under 35 U.S.C. 103 as being unpatentable over Jeol et al., WO 2021/037850.
Joel is directed to the preparation of polyamide polymers with specified weight contributions of different subgenera of a diamine monomer. Namely, the diamine monomer comprises 55-75 mol% of C4-8 aliphatic diamine, 25-45 mol% of C9-12 aliphatic diamine, and up to 10 mol% of a cycloaliphatic diamine (page 4, lines 4-9). Relevant to the present discussion, 2-ethyl-1,7-diaminoheptane is disclosed among the permutations of a C9-12 aliphatic diamine in (paragraph bridging pages 6 and 7). As such, an obvious embodiment of the prior art polyamide would be one that contains an overlapping number, i.e. 25 to 36 mol%, of repeat units derived from 2-ethyl-1,7-diaminoheptane.
As for claim 7, the approximately eight C4-8 aliphatic diamine compounds providing diamine units correlated with the diamine unit other than diamine unit (X) (also disclosed in the paragraph bridging pages 6 and 7) all conform with the description of a linear aliphatic diamine or branched diamine featuring methyl branches. Those with 6 to 8 carbon atoms are encompassed within the description of claims 8 and hexamethylenediamine and 2-methyl-1,5-diaminopentane are anticipatory of two of the compounds mentioned in claim 9.
Regarding claims 10-11, terephthalic acid makes up at least 90 mol% of the dicarboxylic acid monomer employed in the synthesis of the polyamide according to page 8, 7-8 lines from the bottom.
As for claims 13-14, the prior art polyamide is said to have utility in the production of various articles of commerce stretching across pages 18-21, said articles being obtained by molding the polyamide (composition) using one of the several techniques disclosed on page 21, lines 16-18.
Double Patenting
Claims 1, 3, 4, 5, 6, 7, 8, 9, 10, 11, and 13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 3, 4, 5, 6, 7, 8, 9, 10, and 15 of copending Application No. 18/721,481 (reference application) for the reasons outlined previously.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claim 5 is allowable over the prior art insofar as Jeol mandates the employment of at least 25 mol% the C9-12 diamine monomer. It is noted that, in every one of Applicants’ exemplifications, the amount of a diamine with a C2-3 pendant alkyl group at the 2-position, does not exceed 20 mol% thus Applicant is encouraged to consider amending the range of claim 1 defining the amount of the diamine unit (X) as 0.1 to 20 mol%.
Because Applicant could have been apprised of the status of Jeol as an obstacle to patentability at an earlier stage of prosecution, this Office action is NOT made final.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARC S ZIMMER whose telephone number is (571)272-1096. The examiner can normally be reached M-F 8:30-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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February 23, 2026.
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765