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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 May 29, 2026 has been entered.
Election/Restriction
Claims 29, 33 and 34 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.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 20-24, 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, the various monomer abbreviations ( e.g., 6I, MACM, etc.) making up the recited polyamide X species are not defined.
In claim 22, there is no express antecedent basis for “monomer units A to E”. Notably, some of the recited monomers (e.g., TMDC, etc.) do not have express antecedent basis from claim 20.
In claim 23, there is no express antecedent basis for “polyamide unit AC”.
Claim Rejections - 35 USC § 102
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 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.
Claims 20-22, 24, 35, 36, 38 and 39 are rejected under 35 U.S.C. 102(a1) and (a2) as being anticipated by US 2011/0023986 (Hoffmann).
Hoffman discloses a polyamide molding composition comprising:
20 to 65 wt.% of a semi-crystalline polyamide with an average of at least 8 C atoms such as PA 610 and PA 612 [0076] (meets Applicants’ polyamide Y);
8 to 25 wt.% of an amorphous and/or microcrystalline polyamide such as PA MACMI/MACMT/12 and PA MACMI/12 which is an alternative of PA MACMT/12 (meets Applicants’ polyamide X);
1 to 20 wt.% of at least one polyamide with an average maximum of 6 C atoms such as PA 6 and PA 66 [0105] (also meets Applicants’ polyamide Y);
10 to 40 wt.% of a polyamide elastomer (meets Applicants’ ingredient d));
0 to 35 wt.% of a non-polyamide elastomer (if present not precluded from present claims); and
optional additives such as a black colorant/heat stabilized- masterbatch necessarily comprising a black colorant and a heat stabilizer (meets Applicants’ coloring agent c) + additive b)) (e.g., abstract, Tables 1-6, [0092], [0104], [0122], [0132-0137], examples, claims).
As to claim 20, Hoffman sets forth various compositions (Tables 2-6) meeting the requirements of the present clams with respect to the materials added and their contents. Illustratively, Example VB3 comprises:
73.4 wt.% PA 610 (meets Applicants’ polyamide Y and content thereof);
20 wt.% PA MACMI/MACMT/12 (meets Applicants’ PA MACMI/MACMT/12 polyamide X and content thereof);
5 wt.% of a non-polyamide elastomer (meets Applicants’ ingredient d) and content thereof); and
1.6 wt.% of a black/heat stabilized masterbatch necessarily comprising a black colorant and a heat stabilizer (reasonably meets Applicants’ coloring agent c) + additive b) and contents thereof).
Given that Hoffmann’s PA MACMI/MACMT/12 contains at least 60 pbw of semi-aromatic units [0097-0100], it would be expected that such would necessarily comprise at least 30 mol% of aromatic units.
As to claim 21, Hoffman’s Example VB3 comprises 5 wt.% of a non-polyamide elastomer (meets Applicants’ ingredient d) and content thereof).
As to claim 22, Hoffman’s exemplified PA MACMI/MACMT/12 is derived from MACM (A), isophthalic acid + terephthalic acid (C) and aminododecanoic acid (E).
As to claim 24, Hoffman’s polyamide mixture per Example VB3 consists of 21 wt.% PA MACMI/MACMT/12 (polyamide X) and 79 wt.% of PA 610 (polyamide Y).
As to claim 35, it would be expected that Hoffmann’s exemplified masterbatch with heat stabilization would necessarily include a stabilizer.
As to claim 36, Hoffman’s exemplified non-polyamide elastomer is a Tafmer impact strength modifier [0137].
As to claim 38, Hoffmann discloses molded parts from the exemplified compositions [0140].
As to claim 39, Hoffmann discloses molded parts for motor vehicles [0126].
Claim Rejections - 35 USC § 102/103
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.
Claim 28 is rejected under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over US 2011/0023986 (Hoffmann) described hereinabove.
Hoffmann’s polyamide compositions, in particular those comprising PA MACMI/MACMT/12, are transparent [0094-0096]. Inasmuch as Hoffman’s exemplified compositions fall within the scope of the presently claimed composition in terms of materials added and their contents, it is reasonably that they would inherently possess the same properties because the properties are intrinsically linked to the chemical identity and formulation of a composition. Notably, the present composition 8 (Table 4) uses the same PA MACMI/MACMT/12 exemplified by Hoffmann. “Products of identical chemical composition cannot have mutually exclusive properties” because a chemical composition and its properties are inseparable, In re Spada 15 USPQ2d 1655, MPEP 2112.01 (II). Where the claimed and prior products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established, In re Best 195 USPQ 430. Where applicant claims a composition in terms of function, property or characteristic and the composition of the prior art is the same as that of the claim but the function property or characteristic is not explicitly disclosed, a rejection under both 35 U.S.C. 102 and 103 is appropriate (MPEP 2112).
In the alternative, it would have been within the purview of one having ordinary skill in the art to formulate polyamide compositions per Hoffmann having a desired transparency and haze in accordance with the ultimate properties desired.
Claim Rejections - 35 USC § 103
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over US 2011/0023986 (Hoffmann) described hereinabove.
As to claim 23, it is within the purview of Hoffmann’s preferred inventive disclosure [0101], and obvious to one having ordinary skill in the art, to use a copolyamide made from more than one cycloaliphatic diamine, e.g., MACM + PACM, with the reasonable expectation of success.
Claims 20-24, 28, 30-32 and 35-39 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2016069584 A (Mukai) abstract and machine translation.
Mukai discloses a polyamide molding composition comprising:
60 to 95 pbw of an aliphatic polyamide such as PA 6 (meets Applicants’ polyamide Y);
5 to 40 pbw of an aromatic polyamide such as a polyamide derived from isophthalic acid/terephthalic acid/1,6-hexanediamine/bis(3-methyl-4-aminocyclohexyl)methane (meets Applicants’ PA 6I/6T/MACMI/MACMT polyamide X);
1 to 10 pbw of a swellable layer silicate (meets Applicants’ additive b) and/or component d));
0.5 to 5 pbw of a metallic pigment (meets Applicants’ additive b) and/or coloring agent c)); and
0.05 to 0.8 pbw of a coloring agent (also meets Applicants’ coloring agent c)) (e.g., abstract, Table, [0011], [0014], [0019], [0026], [0031-0041], examples, claims).
In Example 3, Mukai sets forth a composition comprising:
62.63 pbw of PA 6 (meets Applicants’ polyamide Y and content thereof);
40 pbw of an aromatic polyamide derived from isophthalic acid/terephthalic acid/1,6-hexanediamine;
0.3 pbw of a metallic pigment (meets Applicants’ ingredient b) and content thereof); and
0.3 pbw of perinone dye Solvent Red 135 (meets Applicants’ coloring agent c) and content thereof).
Notably the sum total of PA 6 and the aromatic polyamide constitutes about 99.4 wt.% (102.63/103.23) of total composition (meets Applicants’ polyamide mixture a) content).
In essence, Mukai’s working examples differ from present claim 20 in that the aromatic polyamide does not fall within the presently claimed polyamide X. Mukai, however, clearly teaches [0014] a polyamide derived from isophthalic acid/terephthalic acid/1,6-hexanediamine/bis(3-methyl-4-aminocyclohexyl)methane (meets Applicants’ PA 6I/6T/MACMI/MACMT polyamide X) as a functional alternative to the aromatic polyamide used in the working examples. Thus, it would have been obvious to one having ordinary skill in the art to use a polyamide derived from isophthalic acid/terephthalic acid/1,6-hexanediamine/bis(3-methyl-4-aminocyclohexyl)methane (meets Applicants’ PA 6I/6T/MACMI/MACMT polyamide X) as the aromatic polyamide in Mukai’s working examples for its expected additive effect as a functional aromatic polyamide alternative and with the reasonable expectation of success. It would be expected that Mukai’s aromatic polyamide derived from isophthalic acid/terephthalic acid/1,6-hexanediamine/bis(3-methyl-4-aminocyclohexyl)methane contains at least 30 mol% of the aromatic isophthalic acid/terephthalic acid.
As to claim 21, Hoffmann’s Example 3 comprises a total of 0.6 pbw of pigment/dye.
As to claim 22, Hoffman’s PA 6I/6T/MACMI/MACMT is derived from MACM (A), 1,6-hexanediamine (B) and isophthalic acid + terephthalic acid (C).
As to claim 23, Mukai discloses that the aromatic polyamide (B) is not particularly limited and, as such, it would have been within the purview of one having ordinary skill in the art to use an aromatic polyamide derived from at least two different cycloaliphatic diamines for their expected additive effect.
As to claim 24, Mukai’s polyamide mixture per Example 3 consists of about 39 wt.% (40/102.63) of the aromatic polyamide and about 61 wt.% .% (62.63/102.63) of PA 6.
As to claim 28, Mukai’s amorphous aromatic polyamide is transparent [0014]. It would have been within the purview of one having ordinary skill in the art to formulate polyamide compositions having a desired transparency and haze (inclusive of those presently claimed) in accordance with the ultimate properties desired.
As to claim 30, 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 pigments 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 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.
As to claim 35, Mukai exemplifies (examples) the use of stabilizers, e.g., Tinuvin 234.
As to claim 36, Mukai discloses the use of layered silicates.
As to claim 37, Mukai does not include an impact strength modifier.
As to claim 38, Mukai discloses molded parts from the exemplified compositions [0065].
As to claim 39, Mukai discloses molded parts for motor vehicles [0059].
Claims 30-32 are rejected under 35 U.S.C. 103 as being unpatentable over US 2011/0023986 (Hoffmann) in view of JP 2016069584 A (Mukai) both described hereinabove.
As to claim 30, Hoffmann does not expressly disclose that the exemplified black masterbatch includes carbon black and at least one other dye or pigment. 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 pigments 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 Hoffman 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 20-24, 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 such as PA MACMT/12, PA MACMI/MACMT/12, PA MACMI/MACMT/MACM12 (meets Applicants’ polyamide X), 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 May 29, 2026 have been fully considered and are persuasive in overcoming the 35 USC 103 rejections over US 2021/0032466 (Stoppelmann). As noted by Applicants’ Stoppelmann’ preferred embodiments are directed to polyamides containing the unit “MACM16”, which is not present in any of the recited polyamide X species. It is not seen that Stoppelmann fairly suggests the presently claimed polyamide X.
Applicant's arguments filed May 29, 2026 have been fully considered but they are not persuasive in the obviousness-type double patenting rejection. The patented claims are directed to polyamide molding compositions comprising an amorphous or microcrystalline polyamide such as PA MACMT/12, PA MACMI/MACMT/12, PA MACMI/MACMT/MACM12 (meets Applicants’ polyamide X), 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. Thus, while the presently claimed polyamide X excludes PA MACMI/12, such still includes other polyamide species disclosed in the patented claims. It would be expected that the amorphous or microcrystalline polyamide such as PA MACMT/12, PA MACMI/MACMT/12, PA MACMI/MACMT/MACM12 of the patented claims would reasonably comprise at least 30 mol% of aromatic units.
Conclusion
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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/ANA L. WOODWARD/Primary Examiner, Art Unit 1765
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