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 .
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 3/19/2026 has been entered. Claims 1, 7, 9-10 and 14 are amended. Accordingly, claims 1-16 are currently pending in the application.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Objections
Applicant is advised that should claim 1 be found allowable, claim 11 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim 7 is objected to because of the following informalities:
Claim 7 recites “water-free borax Na2O 2B2O3 disodium octaborate” (line 4) and should be “water-free borax Na2O 2B2O3, disodium octaborate”. Appropriate correction and/or clarification are required.
Claim 9 recites “dyes and marking substances” (line 6) is an improper Markush listing. Proper Markush grouping is listed as “selected from the group consisting of A, B, C and D”. Alternatively, it can be listed as “selected from A, B, C or D”. See MPEP 2173.05(h).
Claim Rejections - 35 USC § 101 and 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 14 provides for the “use of a polyamide moulding compound”, but, since the claims do not set forth any steps involved in the method/process, it is unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced.
Additionally, 35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Thus, claim 14 is also rejected under 35 U.S.C. 101 because the claimed recitation of a use, without setting forth any steps involved in the process, results in an improper definition of a process, i.e., results in a claim which is not a proper process claim under 35 U.S.C. 101. See for example Ex parte Dunki, 153 USPQ 678 (Bd.App. 1967) and Clinical Products, Ltd. v. Brenner, 255 F. Supp. 131, 149 USPQ 475 (D.D.C. 1966).
Claim Rejections - 35 USC § 112
Claim 14 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.
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 14 recites the broad recitation “mould-resistant and bacteria resistant moulded bodies” (line 2), and the claim also recites “in particular for door handles … process fan rotors” (lines 3-9) which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], 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.
Claims 2-3, 5, 8-9 and 15 are 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 2 recites “A is in a range of 40.4 to 74.4 wt%” (line 3); “A1 is in a range from 60 to 85 wt%” (line 6); “A2 is in the range from 15 to 40 wt%” (line 7); “component B is in a range from 25 to 55 wt% (line 10); “component C is in the range from 0.6 to 1.6 wt%” (line 13) and “component D is in the range from 0 to 3.0 wt%” (line 16) and fails to further limit the amount of these components. 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 3 recites “polymer A1 is selected from PA6, PA 56, PA 66, PA 610 and mixtures thereof” (lines 3-4), and “polyamide A2 is selected from PA 6I/6T, PA 6t/BACT/66/BAC6 and a mixture thereof” (lines 6-7) and fails to further limit the scope of species of polyamide A1 and polyamide A2”. 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 5 recites “reinforcing fibre B is a glass fibre; and/or is selected from the group consisting of E-glass fibres, ECR-glass fibres, D-glass fibres, L-glass fibres, S-glass fibres and/or R-glass fibres; and/or a long glass fibre in the form of continuous glass fibre from a roving” (lines 2-8) and fails to further limit the scope of reinforcing fiber in independent claim 1 on which this claim is dependent. 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 8 recites “metal borate C selected is a zinc borate compound with a boron:metal ration of 1 to 3” (lines 2-3) and fails to further limit the scope of zinc borate in independent claim 1 on which this claim is dependent. 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 9 recites “which are free of copper halides” (line 3) and fails to further limit the scope of independent claim 1 on which this claim is dependent because claim 1 already recites “comprises neither copper halides”. 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 15 recites “A is in a range of 46.6 to 69.25 wt%” (line 3); “A1 is in a range from 65 to 80 wt%” (line 6); “A2 is in the range from 15 to 40 wt%” (line 7); “component B is in a range from 30 to 50 wt% (line 10); “component C is in the range from 0.7 to 1.4 wt%” (line 13) and “component D is in the range from 0.05 to 2.0 wt%” (line 16) and fails to further limit the amount of these components. 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
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 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 1-16 are rejected under 35 U.S.C. 103 as being unpatentable over Philipp et al (US 2010/0279111 A1) in view of Sawada et al (US 2003/0030042 A1).
Regarding claims 1-2 and 15, Philipp et al disclose polyamide molding composition (i.e., reads on polyamide molding compound in present claim 1) comprising two different polyamides and contain long glass fibers (abstract). See example 1, wherein the composition comprises 37.5% by weight of PA Type A (i.e., Polyamide-66 and reads on A1 aliphatic polyamide PA-66 in present claim 1), 12.5% by weight of PA Type B (i.e., polyamide 6I/6T and reads on A2 semi-aromatic polyamide 6I/6T in present claim 1), and 50% by weight of long glass fiber type A (i.e., reads on long glass fibers in the form of continuous glass fibers from rovings and its amount in present claims 1, 2 and 15) (Table 1, and paragraph 0045). Hence, mixture of polyamide is present in amounts of 50% by weight (i.e., reads on amount of “A” in present claims 1, 2, and 15), A1 is present in amounts of 75% by weight and A2 in amounts of 25% by weight based on the sum of A1 and A2 adding to 100 wt% of A (i.e., reads on the amount of A1 in present claims 1, 2 and 15; and amount of A2 in present claims 1, 2, and 15). Given that polyamide-66, of Philipp et al, is the same as in inventive examples and obtained from Radici as in present invention, it is the Office’s position that polyamide-66 of Philipp et al is inherently semi-crystalline (see page 11, line 20 of specification in present application and paragraph 0045 of Philipp et al) which reads on semi-crystalline aliphatic polyamide in present claim 1. Additives such as antioxidants may be added in amounts of 0.1 to 5% by weight (paragraph 0037) which reads on the additive and overlaps with its amount in present claims 1, 2, and 15. Case law holds that when the range of instant claims and that disclosed in prior art overlap, a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05. It is noted that polyamide molding composition, of Philipp et al, does not include copper halides and metal phosphinates.
Philipp et al are silent with respect to metal borate and its amount.
However, Sawada et al teach zinc borate having a particular crystalline size (abstract). Zinc borate excellently disperses in the resin, imparts smoothness and luster onto the surfaces of molded articles of the resin blended therewith, and further, strikingly improves appearance (paragraph 0069). Examples of thermoplastic resins include polyamides such as nylon6, nylon 66, and nylon 12 (paragraph 0083). Zinc borate gives excellent advantages such as imparting flame-retarding property and smoke-suppressing property inherent in zinc borate (paragraph 0070). Zinc borate can be used as an antibacterial agent and to control fungi (paragraph 0129). The molar ratio of B2O3/ZnO is 1.49 to 1.51 (Table 3) which reads on the molar ratio of metal to boron in present claim 1. Zinc borate is used in amounts of 1 to 150 parts by weight based on 100 parts by resin (paragraph 0082) which overlaps with the amount of zinc borate in present claim 1. Case law holds that when the range of instant claims and that disclosed in prior art overlap, a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05. Therefore, in light of the teachings in Sawada et al, it would have been obvious to one skilled in art prior to the filing of present application to include the zinc borate, of Sawada et al, in the polyamide molding compound, of Philipp et al, in overlapping amounts, for above mentioned advantages. Alternatively, it is the Office’s position that zinc borate amount is a result-effective variable (MPEP 2144.5) since the amount used clearly affects flame retardancy and anti-bacterial properties. Hence, the choice of a particular amount of zinc borate (such as the amount in present claims) is a matter of routine experimentation and would have been well within the skill level of, and thus obvious to, one of ordinary skill in the art.
Regarding claim 3, see example 1, of Philipp et al, wherein the polymer mixture includes PA Type A (i.e., Polyamide-66 and reads on A1 aliphatic polyamide PA-66 in present claim 3), and PA Type B (i.e., polyamide-61/6T and reads on A2 in present claim 3) (see Table 1 and paragraph 0045).
Regarding claim 4, see example 1, of Philipp et al, wherein the polymer mixture includes PA Type B wherein ratio of 6I and 6T is 67:33 (see Table 1 and paragraph 0045). It is noted that polyamide 6I/6T is a reaction product of hexamethylene amine, isophthalic acid and terephthalic acid. Hence, 6I and 6T read on hexamethylene isophthalamide and hexamethylene terephthalamide in present claim 4. In an embodiment, A2 is amorphous and has a glass transition temperature of greater than 110 0C (paragraphs 0030). Additionally, given that polyamide-61/6T, of Philipp et al, is similar to that in inventive examples and obtained from EMS-Chemie AG as in present invention, it is the Office’s position that polyamide-61/6T, of Philipp et al, is inherently semi-aromatic (see page 11, line 22 of specification in present application and paragraph 0045 of Philipp et al) which reads on amorphous semi-aromatic polyamide in present claim 4.
Regarding claim 5, see example 1, of Philipp et al, wherein the composition comprises long glass fiber Type A (Table 1 and paragraph 0045) which reads on long glass fibre in form of continuous glass fibre from a roving glass fiber in present claim 5.
Regarding claim 6, see example 1, of Philipp et al, wherein the polyamide composition exhibits HDT-A of 256 0C (i.e., reads on HDT-A of at least 200 0C in present claim 6) and HDT-C of 230 0C (Table 1) which reads on HDT-C of at least 200 0C in present claim 6).
Regarding claim 7, examples of zinc borate, in Sawada et al, include 2ZnO.3B2O3.3-9H2O) (paragraph 0045-0047).
Regarding claims 8 and 16, zinc borate is represented by formula 2ZnO.mB2O3.xH2O wherein m is a number of from 2.8 to 3.2 (paragraph 0043-0044) which overlaps with the boron: metal ratio in present claims 8 and 16. Case law holds that when the range of instant claims and that disclosed in prior art overlap, a prima facie case of obviousness exists. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
Regarding claim 9, examples of additives in the polyamide composition, of Philipp et al, include mold release agents (paragraph 0037) which reads on the additive in present claim 9.
Regarding claim 10, Philipp et teach that additives can include heat protection agents and light protection agents (paragraph 0037) which are open to them being heat stabilizers and UV stabilizers (i.e., reads on the additives in present claim 10.
Regarding claim 11, see 17a to 17c above.
Regarding claims 12, Philipp et al teach that polyamide molding compounds are processed to form molded articles (paragraph 0039) by means of injection, extrusion or blow molding (see claim 18). Polyamides are widely used as structural elements for indoors and outdoors, which can be attributed to excellent mechanical properties (paragraph 0002).
Regarding claim 13, given that compositional limitations are met by the disclosure in Philipp et al combined with the teachings in Sawada et al, and zinc borate functions as an antibacterial agent and controls fungi, one skilled in art prior to the filing of present application would have a reasonable basis to expect the polyamide molding composition, of Philipp et al in view of Sawada et al, to form a molded article that exhibits the present claimed properties (such as fungicidal surfaces according to method A of DIN EN ISO 846:2020 are met and the test according to method described in Annex C gives the classification “Zero” or “One A” or “One” and/or resistance to bacteria according to method C of DIN EN ISO 846: 2020 is met and the test according to the method described in Annex C gives the classification “Zero” or “One”), absent evidence to the contrary. Since PTO cannot conduct experiments, the burden of proof is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977).
Regarding claim 14, given that compositional limitations are met by the disclosure in Philipp et al combined with the teachings in Sawada et al, and zinc borate functions as an antibacterial agent and controls fungi, one skilled in art prior to the filing of present application would have a reasonable basis to expect the polyamide molding composition, of Philipp et al in view of Sawada et al, to form a molded article that is mold resistant and bacteria resistant, absent evidence to the contrary. Since PTO cannot conduct experiments, the burden of proof is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). Additionally, it is the Office’s position that polyamide molding composition, of Philipp in view of Sawada, as door handles etc. is an intended use.
Response to Arguments
The objections, and rejections under 35 U.S.C. 112(b) and 103 as set forth in paragraphs 4, 6 and 11, of Office action mailed 12/19/2025, are withdrawn in view of amendments and/or applicant arguments and/or new grounds of rejection set forth in this Office action, necessitated by amendment.
While the grounds of rejection are changed, it was still deemed appropriate to address some of the arguments which would be pertinent to new grounds of rejection in this office action (See paragraph 19 below).
Applicant's arguments filed 3/19/2026 have been fully considered but they are not persuasive. Specifically, applicant argues that (A) Sawada et al mentions the antibacterial properties of zinc borate but is silent about any anti-mold properties. In present application zinc borate is shown to impart both antibacterial properties and anti-mold properties; (B) Sawada et al mentions polyolefins, aliphatic polyamides such as nylon 6, nylon 66, nylon 610, nylon 11 and nylon 12, and polyesters, which can be used in combination with zinc borate. Sawada et al does not suggest using zinc borate with any semi-aromatic polyamides. Examiner refers to polyester such as polyethylene terephthalate (PET) and polybutylene terephthalate (PBT) as semi-aromatic polymers but they are not polyamides One skilled in art will find no suggestion to use zinc borate in a polymer mixture of an aliphatic polyamide with a semi-aromatic polyamide, let alone in the concentrations specified in amended claim; (C) Sawada et al discloses a range of 3 to 23 wt% zinc borate in the resin compound (paragraph 0082). This is significantly larger than the amount of zinc borate specified in amended claim 1; (D) using zinc borate alone with an aliphatic polyamide will not lead to any favorable anti-bacterial and anti-mold properties. This is shown in comparative example B13 of present application. Even higher zinc borate concentrations in purely aliphatic polyamides will not work sufficiently well in respect to anti-bacterial and anti-mold properties; (E) Examiner writes: the choice of a particular amount of zinc borate is a matter of routine experimentation and would have been well within the skill level of, and thus obvious to one of ordinary skill in art. There is no reason to apply the disclosure of Sawada in combination with semi-aromatic polyamides. Sawada et al does not identify the amount of zinc borate as a result effective variable. If the amount is too low in a polyamide composition with an aliphatic and a semi-aromatic polyamide as shown example 11, anti-bacterial and anti-molding properties are lacking. Claimed lower boundary of 0.7 wt% of zinc borate is lower than the lowest boundary suggested by Sawada et al. The higher boundary of 1.4 wt% zinc borate is significantly lower than the upper boundary given by Sawada et al of 60 wt% or 23%.
With respect to (A), applicant attention is drawn to Sawada et al wherein it teaches that zinc borate can be used as an antibacterial agent and control fungi (i.e., can act as an anti-molding agent).
With respect to (B), primary reference of Philipp et teach a polyamide molding composition comprising a combination of aliphatic polyamides and semi-aromatic polyamides. Graham v. Deere analysis was done and the secondary reference provided the motivation to use zinc borate in thermoplastic resins including polyamides. Secondary reference is only used for its teaching that zinc borate can be included in thermoplastic resins such as polyamides. Examiner’s reference to aliphatic polyamides and other polymers such as PET and PBT are to note that zinc borate can be added to thermoplastic resins that are both aliphatic and semi-aromatic.
With respect to (C), applicant attention is drawn to Sawada et al, wherein it teaches that zinc borate is used in an amount of from 1 to 150 parts by weight based on 100 parts by weight of the resin (paragraph 0082). Hence, it is clear the amount of zinc borate in Sawada et al overlaps with its presently claimed amount. Also, note the amounts in Sawada et al are based on 100 parts by weight of resin and would be lower when added to a composition comprising less than 100 parts by weight.
With respect to (D), primary reference of Philipp et al teaches a composition comprising both an aliphatic polyamide and semi-aromatic polyamide. Graham v. Deere analysis was done and the secondary reference of Sawada et al in only used for its teaching that zinc borate functions as an antibacterial agent and controls fungi.
With respect to (E), Sawada et al specifically teach that zinc borate can be used as an antibacterial agent and controls fungi. Hence, it is the Office’s position that amount of zinc borate can be optimized based on the teachings in Sawada et al. Furthermore, the amount of zinc borate taught in Sawada et al overlaps with the amount in present claims. Additionally, one skilled in art would have a reasonable basis to expect lower amounts to be not as effective as higher amounts. Even if there is a showing of unexpected results, data is not commensurate with scope of present claims. Specifically, scope of present claims is broader compared to the amount of each of the components used in examples.
/KARUNA P REDDY/Primary Examiner, Art Unit 1764
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