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 .
Claims 17 and 19-32 are pending as amended on July 31, 2026. Support for amended claim 17 is found in original claim 18. Claim 18 is canceled. Claims 30-32 stand withdrawn from consideration.
The rejections set forth below were solely modified to reflect the incorporation of claim 18 into claim 17. Therefore, this action is properly made final.
Any objections and/or rejections made in the previous Office action and not repeated below are hereby withdrawn. The text of those sections of Title 35, U.S. Code not included in the action can be found in a prior Office action.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 20 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 20 contains the limitation “the monomers (M) are added separately or together.” Claim 20 depends from claim 17 but does not require all the limitations of claim 17. Claim 17 has been amended to require premixing the lactam (A) with component (B1) before adding component (B2). M comprises both B1 and B2. Claim 17 therefore requires that the monomers are added separately. As a result, the claim 20 species where the monomers are added together does not require all of the limitations of amended claim 17.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
Claims 17 and 19-29 are rejected under 35 U.S.C. 103 as being unpatentable over Minkwitz (US 2019/0269075 A1, cite no. 2 on 5/26/2023 IDS) in view of Plachetta (US 2011/0245435 A1, cite no. 1 on 5/26/2023 IDS).
Regarding claims 17, 19-20, 24-27, and 29, Minkwitz teaches a process for preparing copolyamides by copolymerizing (A) 5-99 wt% of at least one lactam and (B) 1-95 wt% of a monomer mixture (M) comprising (B1) at least one C32-C40 dimer acid and (B2) at least one C4-C12 diamine (Minkwitz, [0068-0072]).
In the working examples, Minkwitz exemplifies polymerizing a combination of caprolactam, C36 dimer acid, and hexamethylenediamine (Minkwitz, [0309-0318]). Caprolactam reads on the instant lactam (A) is 6-aminohexanolactam (Minkwitz, [0114]) (claims 24-25). Minkwitz teaches that the C36 dimer acid is preferably prepared from unsaturated C18 fatty acids (Minkwitz, [0147]), reading on claim 19. Hexamethylene reads on a C6 diamine (B2) that is 1,6-diaminohexane (claims 26-27).
In the examples (Minkwitz, [0309-0318]), Minkwitz combines caprolactam, C36 dimer, an 85 wt% hexamethylenediamine in water solution, and water and stirs the mixture at 290 °C for 11 hours to produce the copolyamide.
Minkwitz’s method differs from the claimed method in that Minkwitz does not teach the steps of a) mixing the lactam with monomers at a temperature of 60 to 150 °C and b) passing the mixture obtained in step a) from the top downward through a vertical polymerization tube at polyamide-forming temperatures to obtain a copolyamide.
However, Minkwitz teaches that the polymerization can take place in any reactors known to those skilled in the art (Minkwitz, [0096]). In addition, Minkwitz teaches that the copolyamide is preferably a random copolymer (Minkwitz, [0084]), so one of ordinary skill would have understood that methods of random polymerization are desirable.
Plachetta teaches a continuous process for preparing copolyamides from lactams and salts of diamines and dicarboxylic acids in which the random distribution of the monomer units is improved (Plachetta, [0004]). In particular, Plachetta teaches that the comonomer units are distributed more randomly in the polymer chain than is possible by other known processes (Plachetta, [0010]). Copolyamides produced by this method also have the advantage of having improved product properties, such as lower intrinsic color (Plachetta, [0010]). Plachetta’s method utilizes vertical polymerization tubes that are referred to as VK tubes (Plachetta, [0030]) and comprises the following steps (Plachetta, [0006-0009]):
a) mixing an aqueous solution of lactams with salts of diamines and dicarboxylic acids under elevated pressure at a temperature of from 80 to 300° C,
b) feeding the mixture thus obtained to a heated helical tube evaporator in which a liquid phase and a vapor phase form at a temperature of from 140 to 300° C., a stream of water vapor and/or inert gas also being introduced into the mixture if appropriate upstream of the helical tube,
c) removing the vapor phase formed in stage b) from the liquid phase and separating it in a column into water vapor and into organic components comprising diamines, dicarboxylic acids and lactams, and recycling the organic components
into the polymerization, and
d) passing the liquid phase from the helical tube of stage b) mixed with the organic components of stage c) from the top downward through a vertical polymerization tube at polyamide-forming temperatures to obtain a copolyamide.
Plachetta’s step a is similar to instant step a), but differs in that it teaches a broader temperature range. Plachetta’s step b reads on instant step (aa). Rep’s step c reads on instant step (ab) and step (ac). Plachetta’s step d reads on instant step b).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have copolymerized the lactam and monomer components of Minkwitz using the method of Plachetta, including the steps of mixing at a temperature of 80-300 °C, concentrating the solution as described in Plachetta’s steps b and c, and polymerizing the solution as described in Plachetta’s step d. One would have been motivated to use Plachetta’s method in order to achieve a random monomer distribution and achieve lower intrinsic color. One would have had a reasonable expectation of successfully producing a copolyamide useful in films because, like Minkwitz, Plachetta teaches polymerizing lactams, diacids, and diamines to form copolyamides that are used in films (Minkwitz, abstract; Plachetta, [0037]). The resulting method is continuous and satisfies step b) and steps (aa), (ab), and (ac) of claim 29.
Modified Minkwitz does not anticipate a temperature of 60-150 °C in step a).
However, modified Minkwitz teaches a temperature of 80 to 300° C. It would have been obvious to one of ordinary skill in the art prior to the effective filing date to have selected any temperature in the range of 80 to 300° C because Minkwitz in view of Plachetta teaches this temperature range. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I.
Modified Minkwitz does not specify the order of mixing.
However, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to have formed a mixture of caprolactam, C36 dimer acid, hexamethylenediamine, and water as taught by Minkwitz, by mixing Minkwitz’s disclosed components together utilizing any order of addition. Orders of addition include initially charging the lactam (caprolactam) and then premixing the at least one lactam (caprolactam) with component (B1) (C36 dimer acid) to obtain a premixture and subsequently adding component (B2) (hexamethylenediamine). This process reads on claim 20 where the lactam (A) is initially charged and the monomers (M) are added separately. One would have had a reasonable expectation of success in utilizing any order of mixing because the same desired combination of the components is ultimately obtained, and there is nothing of record to suggest that the order of mixing is critical to the process of preparing a mixture of the lactam and monomers. Case law has established that selection of any order of performing process steps is prima facia obvious in the absence of new or unexpected results (see MPEP § 2144.04, IV. C.).
Regarding claims 21-23, modified Minkwitz teaches the process of claim 17. In example C-3, Minkwitz exemplifies copolyamides derived from a combination of 932 kg of caprolactam, 323.2 kg of C36 dimer acid, and 66.2 of kg hexamethylenediamine (Minkwitz, [0316] where 85% of 77.84 kg is about 66.2 kg). The caprolactam is present in an amount of about 70.5 wt% (932/(932+323.2+66.2)=0.705) and the monomers are present in an amount of about 29.5 wt% (claim 23). The molar number of the amine groups from (B2) is essentially equal to the molar number of the sum total of the carboxyl groups from (B1) (323.2 kg/0.57kg/mole = 567 moles diacid and 66.2kg/0.116kg/mol = 570 moles diamine) (claim 22).
Hexamethylene diamine is provided in an 85 wt% aqueous solution (Minkwitz, [0316]). Because Minkwitz is silent as to any water content in the C36 dimer acid, it would be obvious to one of ordinary skill to use a C36 with a negligible amount of water. The total amount of water in the monomer is therefore about 3 wt% (77.84*0.15/(77.84+323.2)=0.029), satisfying the requirement of 0-5 wt% water in the monomer (claim 21). Because Minkwitz is silent as to any water content in the caprolactam, it would be obvious to one of ordinary skill to use a caprolactam with a negligible amount of water, satisfying the requirement of 0-10 wt% water (claim 21).
Regarding claim 28, modified Minkwitz teaches the process of claim 17 where the copolyamide is prepared from a lactam, a dimer acid, and a diamine. Minkwitz exemplifies a combination of caprolactam, C36 dimer acid, and hexamethylenediamine without any polyoxyalkylene monomers in the working examples and makes no mention of utilizing polyoxyalkylene monomers in the broader disclosure. Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date to have prepared the copolyamide by a method wherein the monomers do not comprise polyoxyalkylene groups.
Response to Arguments
Applicant’s arguments filed July 31, 2026 have been fully considered.
Applicant’s arguments, see page 5, with respect to the rejection over Nielinger (US 5,013,518) in view of Plachetta (US 2011/0245435 A1) claims 17, 19-20, 22, and 24-29 have been fully considered and are persuasive. Claim 17 has been amended to include the limitations of claim 18. These limitations are not taught by Nielinger in view of Plachetta. The rejection over Nielinger in view of Plachetta has been withdrawn.
With respect to the rejection over Minkwitz (US 2019/0269075 A1) in view of Plachetta (US 2011/0245435 A1), Applicant argues (page 5-6) that the step of premixing at least one lactam and at least one C32-C40 dimer acid at temperatures between 60 and 150 °C followed by addition of component (B2) and subsequent temperature increase has the unexpected effect of an improvement in the optical quality of films thus produced. Applicant points to example E-1 and comparative example C-4. Applicant reports that the total number of defects is larger for C-4 than for E-1. This argument is not persuasive because Applicant has not explained why the improvement is unexpected, has not compared the data to the closest prior art, and has not provided evidence that is commensurate in scope with the claims, as explained below.
MPEP 716.02(b) states that appellants have the burden of explaining the data in any declaration they proffer as evidence of non-obviousness. Applicant has not described how the data demonstrate an unexpected result and has not compared the evidence to the closest prior art. Applicant has not established that the improvement in optical quality is a result of the step of premixing at least one lactam and at least one C32-C40 dimer acid at temperatures between 60 and 150 °C followed by addition of component (B2) and subsequent temperature increase because E-1 and C-4 differ by more than just this step. E-1 is a continuous process whereas C-4 is a discontinuous process (see instant specification page 21, lines 22-36 and page 22, line 30 through page 23, line 4). In addition, the methods use different polymerization conditions and reactor types. C-4 stirs the mixture at 290 °C for 11 hours where the first 7 hours is under reduced pressure and the last 4 hours include distillation to remove water. In contrast, E-1 heats the mixture to 200-205 °C, then processes it with a helical tube evaporator. The E-1 mixture exits the evaporator at 195-205 °C and is then transferred to a VK tube. The top of the VK tube is at 260 °C and the temperature decreases from 265-280 °C to about 250 °C at the outlet of the tube. The comparison of E-1 and C-4 is not sufficient to show criticality of the step of premixing at least one lactam and at least one C32-C40 dimer acid at temperatures between 60 and 150 °C followed by addition of component (B2) and subsequent temperature increase because the methods of E-1 and C-4 differ by more than this step. In addition, Applicant has not compared the data to the closest prior art. Minkwitz in view of Plachetta teaches a continuous process using a VK tube and is thus closer to E-1 than to C-4. Applicant has not explained why one would not expect superior properties for a copolyamide prepared using a continuous process given Plachetta’s teaching of a method using a VK tube that leads to more evenly distributed comonomer units and, consequently, improved properties compared to other known processes (Plachetta, [0010] and [0030]).
Evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support. See MPEP 716.02(d). E-1 is not commensurate in scope with claim 17 at least because claim 17 encompasses a broad range of monomer chemistries, monomer ratios, reaction conditions, and reactor types than E-1. In addition, the product of claim 17 is a copolyamide, but the optical defect data presented for E-1 is of a film. If Applicant wishes to overcome the present rejection by showing unexpected results, Applicant must provide sufficient evidence to show that unexpected results would be obtained for all species and the full breath of ranges encompassed by the claims.
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 AUDRA DESTEFANO whose telephone number is (703)756-1404. The examiner can normally be reached Monday-Friday 9-5.
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/AUDRA J DESTEFANO/Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766
