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 .
Claim Objections
Claims 1 and 16 are objected to because of the following informalities:
“the” appearing before condensation in each bullet point in Claim 1 should be deleted; and
the recitation of “including xylylenediamine” should be deleted in Claims 1 and 16 should also be deleted, as the recitation of aromatic diamines necessarily includes this compound and further xylylenediamine is never expressly set forth in the instant specification.
Appropriate correction is required.
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.
Claims 1 – 11 and 13 – 19 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 because:
It is also unclear how the PEBA copolymer in Claim 1 continues to comprise the carboxylic acid chain ends after they have been blocked by an epoxide function. For the purposes of further examination, Claim 1 will be interpreted as setting forth a copolymer containing polyamide blocks and polyether blocks (PEBA) obtained by a process in which carboxylic chain ends of said polyamide blocks are blocked with an epoxide compound.
It is unclear from what the aromatic diamines including xylylenediamine are excludes in Claims 1 and 16. For the purposes of examination, Claims 1 and 16 will be interpreted as setting forth condensation of a linear or branched aliphatic, cycloaliphatic or aromatic dicarboxylic acid and of a linear or branched aliphatic or cycloaliphatic diamine, in the absence of aromatic diamines.
As Claims 2 – 11, 13 – 15, and 17 – 19 all ultimately depend on Claim 1, they incorporate the subject matter thereof and are also consequently rejected under this statute.
Additionally, Claim 8 sets forth mixing a PEBA copolymer and an epoxide compound to form the composition of Claim 1. However, in Claim 1, the PEBA copolymer set forth corresponds to a polyamide polyether block copolymer which is already blocked with the epoxide compound. Consequently, for the purposes of further examination, the PEBA copolymer set forth in the mixing step of Claim 8 will be interpreted as referring to a polyamide polyether block copolymer. Claim 9 will also be interpreted accordingly.
Claim 8 sets forth optionally one or more component(s) (C) but does not provide a definition of what these components correspond to. For the purposes of examination, one or more component(s) (C) will be interpreted as corresponding to those listed in instant Claim 7.
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, 3 – 11, and 13 – 19 are rejected under 35 U.S.C. 103 as being unpatentable over US 2019/0071570 to Cocquet et al. (hereinafter Cocquet) in view of US 2015/0218731 to Mitadera et al. (hereinafter Mitadera).
Regarding Claims 1, 3, 6, 8 – 11, and 16 – 19. Cocquet teaches a composition comprising a PEBA copolymer comprising polyamide blocks and polyether blocks [0037], wherein the polyamide blocks may have dicarboxylic chain ends [0038] – [0039].
The polyamide blocks may be obtained from condensation of: a dicarboxylic acid with an aliphatic diamine [0043]; one or more α,ω-aminocarboxylic acids and/or one more lactams having 6 to 12 carbon atoms in the presence of a dicarboxylic acid containing 4 to 12 carbon atoms or a diamine [0047]; at least one α,ω-aminocarboxylic acids or a lactam and at least one dicarboxylic acid [0049]; or at least two α,ω-aminocarboxylic acids or at least two lactams having from 6 to 12 carbon atoms or from a lactam and aminocarboxylic acid not having the same number of carbon atoms in the possible/optional presence of a chain limiter [0057].
Cocquet does not expressly teach end blocking the PEBA copolymer with an epoxide compound. However, Mitadera teaches a composition comprises a PEBA copolymer which is reacted with a compound containing two or more epoxy groups [0034] and [0103], i.e. an epoxy compound having a functionality of two or more. Specifically, in Example 1-3, the polyether polyamide obtained in Production Example 1-3 comprising 100.8 µeq/g free COOH functional groups is provided ([0176] and [0187]). The polyether polyamide is then blended and reacted in an extruder with 0.2 parts by mass JONCRYL® ADR-4368. This commercially available compound corresponds to a random copolymer of glycidyl methacrylate, i.e. a methacrylate bearing epoxide functions; an alkyl acrylate, i.e. a non-functional acrylic monomer; and a styrene monomer having an epoxy equivalent of 285 g/eq [0187]. The molar ratio of carboxylic acid chain end to epoxide function content can further be calculated to be roughly 14.3 in this example. Cocquet and Mitadera are analogous art as they are from the same field of endeavor, namely PEBA compositions. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to react the PEBA copolymer with an epoxide compound, e.g. JONCRYL® ADR-4368, as taught by Mitadera. The motivation would have been that Mitadera teaches this compound in the disclosed amount functions as a chain extender for PEBA copolymers [0103] and provides further advantages such as enhancing their heat aging resistance and elongation [0131].
Mitadera is silent with respect to the complex viscosity of the above described composition, the ratio of the weight-average molar mass (Mw) to the number-average molar mass (Mn), and the ratio of the z-average molar mass (Mx) to Mw. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Mitadera, when modified in the manner proposed above, teaches a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. Therefore, the claimed effects and physical properties - i.e. a composition which has a complex viscosity conforming to the power law defined by the instantly claimed equation, as well as ratios Mw:Mn and/or Mn:Mw in the instantly claimed ranges - would implicitly be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
Regarding Claim 4. Cocquet teaches the composition of Claim 1 wherein the polyamide blocks may be based on PA 6 [0062].
Regarding Claim 5. Cocquet teaches the composition of Claim 1 wherein the PEBA copolymer results from polycondensation of polyamide blocks with dicarboxylic chain ends with polyetherdiols [0039].
Regarding Claim 7. Cocquet teaches the composition of Claim 1 may further comprise a copolymer of ethylene and vinyl acetate [0092].
Regarding Claim 13. Cocquet teaches a foam obtained from the composition of Claim 1 [0091].
Regarding Claims 14 and 15. Cocquet teaches a sports equipment article obtained from the composition of Claim 1 [0102].
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over US 2019/0071570 to Cocquet et al. (hereinafter Cocquet) in view of US 2015/0218731 to Mitadera et al. (hereinafter Mitadera), as applied to Claim 1 above, and further as evidenced by US 2016/0024343 to Nakai et al. (hereinafter Nakai).
Regarding Claim 2. Cocquet teaches the composition of Claim 1 wherein PEBAX® copolymers may be used as the PEBA copolymer [0070]. Nakai provides evidence that PEBAX® copolymers have molecular weights in the instantly claimed range, e.g. 208,000 and 171,000 g/mol [0207] – [0208]. The further reaction of a small amount of chain extender (0.2 parts by weight) as proposed in the rejection of Claim 1 would not result in a significant increase in molecular weight; thus, it would be reasonably expected that the composition arising from the proposed combination of references would have a molecular weight below 300,000 and therefore within the instantly claimed range.
Response to Arguments
Applicant's arguments filed February 24, 2026 have been fully considered. The Office responds as follows:
Claim Objections:
The Office agrees that the amendments to the claims are sufficient to overcome the outstanding claim objections. Accordingly, all outstanding claim objections have been withdrawn. However, several new claim objections are set forth in light of the amendments to the instant claims.
35 U.S.C. 112:
The Office agrees that the amendments to the claims are sufficient to overcome all outstanding claim rejection under 35 U.S.C. 112(b) and (d), except the rejections set forth with respect to Claims 1 and 8 (see first, sixth, and seventh bullet points set forth in the rejections under 35 U.S.C. 112(b) in the Non-Final Office action). No amendment or argument has been made to address these particular rejections. Accordingly, these particular rejections have been maintained.
35 U.S.C. 102:
The Office agrees that the amendments to the claims overcome the outstanding rejection under 35 U.S.C. 102 over US 2015/0218731 to Mitadera et al. The reference requires the polyamide blocks be prepared with a dicarboxylic acid and xylylenediamine, which is an aromatic diamine. All instant claims now exclude the use of aromatic diamines when the polyamide block is based on polycondensation of a dicarboxylic acid and diamine. Accordingly, the anticipation rejection in view of Mitadera has been withdrawn.
35 U.S.C. 103:
Applicant traverses the rejection of the instant claims under 35 U.S.C. 103 over Cocquet (US 2019/0071570) in view of Mitadera, as Cocquet does not teach blocking the polyamide chain ends with an epoxide. However, this limitation is taught by Mitadera in the outstanding rejection.
Applicant further argues that Cocquet relies on chain limiters rather than chain extenders and therefore teaches away from epoxide modification. The Office respectfully disagrees. The Office does note that Cocquet teaches the use of a chain limiter. However, this chain limiter is simply an excess of dicarboxylic acid precursor used to prepare the polyamide block ([0055] – [0056] and [0084] – [0085]). Secondary reference Mitadera teaches the concept of providing a ratio of diamine:dicarboxylic acid component of 0.9 to 1.1. When this ratio is above 1, an excess of dicarboxylic acid precursor is provided. Mitadera then teaches the PEBA copolymer comprising such polyamide blocks is further reacted with the disclosed molecular epoxy chain extender [0103]. Mitadera consequently shows that the use of a chain limiter in the preparation of polyamide block is not an inherent teaching away from the use of a chain extender to modify the PEBA copolymer comprising this polyamide block.
In response to applicant's argument that Mitadera does not teach using epoxides to achieve a specific complex viscosity behavior, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
As detailed in the outstanding and present Office actions, Mitadera teaches other motivation for modifying the PEBA copolymer with epoxides, including enhancing the heat aging resistance and elongation of the copolymer [0131]. With respect to the claimed complex viscosity, Cocquet - when modified with Mitadera in the manner proposed - teaches a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. Therefore, the claimed effects and physical properties - i.e. a composition which has a complex viscosity conforming to the power law defined by the instantly claimed equation - would implicitly be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position and (2) it would be the Office’s position that the application contains inadequate disclosure as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
The outstanding rejection under 35 U.S.C. 103 has consequently been maintained.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MELISSA RIOJA whose telephone number is (571)270-3305. The examiner can normally be reached Monday - Friday 10:00 am - 6:30 pm EST.
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/MELISSA A RIOJA/Primary Examiner, Art Unit 1764
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