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 .
Election/Restriction
Applicant’s election of the polyamide X species with units AC, BC and E and the coloring agent species containing a combination of carbon black and at least one dye or pigment per claim 30 in the reply filed on December 15, 2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 29, 33 and 34 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on December 15, 2025.
Claim Rejections - 35 USC § 112
Claims 20-28, 30-32 and 35-39 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.
In claim 20, it is unclear whether the confusing text “AC, BC, AD” means AC, BC and AD?
Claim 26 is indefinite in listing several polyamides that no longer fall within amended claim 20, e.g., PA MACMI/12, PA MACMT/12, PA MACMI/MACMT, PA MACMI/MACMT/12, PA MACMI/MACMT/MACM12, PA 6I/6T/MACMI/MACMT, etc.
In claim 31, given the text “relative to the dye combination”, it is unclear whether the recited content refers only to the dye combination, but not to the pigment combination.
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.
Claims 20-25, 27, 28 and 35-39 are rejected under 35 U.S.C. 103 as being unpatentable over US 2021/0032466 (Stoppelmann).
Stoppelmann discloses a polyamide molding composition comprising:
37 to 100 wt.% of a polyamide mixture containing:
(A1) 50 to 100 wt.% of an aliphatic polyamide such as PA 616 (meets Applicants’ PA 616 polyamide Y and overlaps content thereof); and
(A2) 0 to 50 wt.% of a transparent polyamide VX/WX/VY/WY/Z such as PA 6I/6T/616/MACMI/MACMT/MACM16 (meets Applicants’ polyamide X with units AC, BC and AD and overlaps content thereof);
0 to 60 wt.% of fillers and/or reinforcing materials (meets Applicants’ additives b) and/or d) and overlaps contents thereof); and
0 to 3 wt.% of aids and/or additives such as colorants [0080] (meets Applicants’ coloring agent c) and overlaps content thereof) (e.g., abstract, [0011-0018], [0038-0043], [0054], [0079-0080], [0097], examples, claims).
Illustratively, Stoppelmann sets forth composition E3 (Table 1) comprising:
99.5 wt.% of a polyamide mixture containing:
(A1) ~60 wt.% PA 616 (meets Applicants’ polyamide Y and content thereof); and
(A2) ~40 wt.% of a transparent polyamide PA MACM16/PACM16 (differs from Applicants’ polyamide X in only containing units AD but not AC and BC, but meets content thereof); and
0.5 wt.% stabilizer (meets Applicants’ additive b) and content thereof).
As to claim 20, Stoppelmann differs therefrom in not expressly setting forth a working example containing i) a transparent polyamide falling within the scope of presently claimed polyamide X and ii) a coloring agent. With respect to the first difference, PA 6I/6T/616/MACMI/MACMT/MACM16 (meets Applicants’ polyamide X derived from units AC, BC and AD) is clearly disclosed [0054] as a preferred functional alternative to the exemplified PA MACM16/PACM16. Thus, it would have been obvious to one having ordinary skill in the art to replace the exemplified PA MACM16/PACM16 with PA 6I/6T/616/MACMI/MACMT/MACM16 with the reasonable expectation of success. As to the second difference, it is within the purview of Stoppelmann’s inventive disclosure [0079-0080]/[0097], and obvious to one having ordinary skill in the art, to further include a colorant as additive (C) in a preferred amount of 0.5 to 2.0 wt.% for its expected additive effect and with the reasonable expectation of success.
As to claim 21, Stoppelmann’s working example includes 0.5 wt.% stabilizer.
As to claim 22, Stoppelmann’s PA 6I/6T/616/MACMI/MACMT/MACM16 is derived from MACM (A), 1,6-hexanediamine (B), isophthalic acid + terephthalic acid (C) and adipic acid (D).
As to claim 23, it is within the purview of Stoppelmann’s inventive disclosure, and obvious to one having ordinary skill in the art, for the transparent polyamide (A2) to contain AC units from “mixtures” of cycloaliphatic diamines, e.g., MACM and PACM [0045], for their expected additive effect.
As to claim 24, Stoppelmann's modified composition would comprise (A1) ~60 wt.% PA 616 (meets Applicants’ polyamide Y and content thereof) and (A2) ~40 wt.% PA 6I/6T/616/MACMI/MACMT/MACM16 (meets Applicants’ polyamide X and content thereof).
As to claim 25, given that 4 out of the 6 polyamide units making up Stoppelmann’s PA 6I/6T/616/MACMI/MACMT/MACM16 are derived from an aromatic dicarboxylic acid, it would be expected that such would contain at least 30 mol% of aromatic monomers.
As to claim 27, Stoppelmann’s modified composition does not require PA MACM/12.
As to claim 28, Stoppelmann’s transparent polyamide (A2) exhibits a similar transparency of at least 88% [0044].
As to claim 35, Stoppelmann exemplifies Irganox 1010 [0128].
As to claim 36, Stoppelmann discloses silicate-based fillers as viable component (B) [0075], rendering their use obvious to one having ordinary skill in the art.
As to claim 37, Stoppelmann’s modified composition does not require impact strength modifiers.
As to claim 38, Stoppelmann discloses molded articles from the exemplified compositions [0120].
As to claim 39, Stoppelmann discloses everyday molded articles (implicitly including those presently claimed).
Claim 26 has not been included in the above rejection in that Stoppelmann requires at least one aliphatic dicarboxylic acid with 16 carbon atoms.
Claims 30-32 are rejected under 35 U.S.C. 103 as being unpatentable over US 2021/0032466 (Stoppelmann) described hereinabove in view of JP 2016069584 A (Mukai).
As to claim 30, Stoppelmann discloses [0100] carbon black, dyes and pigments as viable colorants. Mukai discloses polyamide compositions comprising a metallic pigment and a coloring agent which can be a dye (e1) such as anthraquinone dyes, azo dyes, pyrazolone dyes, coumarin dyes, etc. and/or a pigment (e2) such as carbon black. Mukai teaches that a , plurality of dyes and/or pigment can be selected to obtain the desired color tone (e.g., page 4). Thus, it would have been within the purview of one having ordinary skill in the art to use a combination of carbon black and at least one dye or pigment as disclosed by Mukai as the black masterbatch colorant used by Stoppelmann in accordance with the ultimate color tone desired and with the reasonable expectation of success.
As to claim 31, Mukai discloses that when a dye and pigment are used in combination, it is preferable that the pigment (e.g., carbon black) comprise less than 50 wt.% of the sum total (page 4) to express a vivid color tone.
As to claim 32, Mukai discloses Solvent Green 3, Solvent Red 52, Solvent Red 179 and Solvent Black 27 as suitable dyes (page 4). Thus, it would have been within the purview of one having ordinary skill in the art to use the presently claimed carbon black mixtures for their expected additive effect and with the reasonable expectation of success.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 20-28, 30-32 and 35-39 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No.12,104,055. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims are directed to polyamide molding compositions comprising an amorphous or microcrystalline polyamide derived from cycloaliphatic and aliphatic diamines (Applicants’ monomers A and B), aliphatic dicarboxylic acids (Applicants’ monomer D) and aromatic dicarboxylic acids (meets Applicants’ monomer C), an aliphatic polyamide such as PA 612 (meets Applicants’ polyamide Y), a colorant (meets Applicants’ coloring agent c)), a stabilizer (meets Applicants’ additive b)) and additives.
Response to Arguments
Applicant’s arguments and amendments filed December 15, 2025 have been fully considered and are persuasive. Therefore, the rejections over US 2011/0023986 (Hoffmann) and JP 2016069584 A (Mukai) have been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of US 2021/0032466 (Stoppelmann).
Applicant's arguments filed December 15, 2025 have been fully considered but they are not persuasive in overcoming the nonstatutory double patenting rejection. It is maintained that US 12,104,055 embraces compositions meeting the presently claimed components.
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 Ana L Woodward whose telephone number is (571)272-1082. The examiner can normally be reached M-F 8am-5pm.
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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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/ANA L. WOODWARD/Primary Examiner, Art Unit 1765