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 .
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.
Claim Rejections - 35 USC § 102
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.
Claims 13-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mumcu (U.S. 4,687,837) as evidenced by Perraud (U.S. 5,830,975).
Mumcu is silent on the process of making the powder coating composition of Claim 13, however, Claim 13 is considered a product by process claim. Product by process claims are evaluated based on the structure imparted on the product by the process claimed. In instant case, the process is considered to impart no additional structure over the powder composition comprising a polyamide with the recited inherent viscosity and particle limitations of the powder claimed as Applicant.
Mumcu teaches a process of making powdered polyamide (Example 1) with a particle size distribution (average grain size reasonably suggests D50 – Column 2 lines 45-55) that has 0 particles below 60 microns and 100 % of the particles are below 140 microns. These are made from polyamide 12 with a relative solution viscosity of 1.65.
The relative solution viscosity is not inherent viscosity but is related to inherent viscosity by the relation [Symbol font/0x68]inherent = ln ([Symbol font/0x68]inherent)/c where c is the concentration of the polymer in the test solution. Mumcu teaches this is 0.5 % in Column 3 lines 45-50 and Perraud provides evidence the same conditions as taught by Mumcu are used to determine inherent viscosity. (Column 6 lines 20-25). Therefore, one of ordinary skill in the art is reasonably suggested the c of Mumcu is 0.5 g/dL and the resulting inherent viscosity of the polyamide 12 of is ln(1.65)/0.5 = 1 dL/g which anticipates the range of Claim 13.
As above, Mumcu in Example 1 teaches a particle size distribution in weight % with particle sizes from 60 to 140 microns. While the table of Mumcu in Example 1 based on weight not volume, the substantial overlaps coupled with 99 wt% - 1.2 wt % = 97.8 wt% of the particles being in the claimed range of Claim 13, reasonably suggests that when a volume D50 of Example 1 is created and / or tested the powered polyamide of Mumcu discussed above must anticipate the claimed range of Claim 13.
The polyamide particle size claimed is interpretated to operate against the polyamide powder of the preamble.
There are no particles less than 50 microns in the above example of Mumcu which anticipates the 50 micron limitation of Claim 13.
Note also that Mumcu teaches these powders are dustless (no dust generated in the fluidized bed) (Example 6 lines 30-40).
TiO2 is used by Mumcu as an additive (See Example 2) which anticipates the additive of Claim 14.
Fluidized based coating process are anticipates by Claim 5 lines 5-20 which anticipates Claim 15 (See Column 6 lines 30-40 of Example 1) and the coatings on sheetmetal sheets in the same section anticipate Claim 16 as the sheetmetal sheets coated are capable of being a component of paint (such as the paint cans) or TiO2 pigmented polyamide paint coatings, corrosion resistant compositions, powder coating for automotive or electronics industry.
Allowable Subject Matter
Claims 1-12 are allowed.
The closest prior art is Kilner (U.S. 20050017385) or Zeeuwe (EP0683199) which both teach methods or recycling fines in waste materials but fail to teach the starting with a prepolymer of IV at most 0.6 dL/g, grinding it then separating the resulting granulate into two compositions based on the Dv50 of the resulting granulate and recycling the lower Dv50 particles as recited by Claim 1.
Heinrich (U.S. 7,951,416) teaches separating out fines to remove the completely from the powder coating of the invention and states nothing that would lead one of ordinary skill in the art to the specific steps recited by the method of Claim 1.
While all the various limitations of Claim 1 are known in the abstract in the prior art there is no teaching or motivation to modify either of Kilner or Zeeuwe to have the above recited steps without hindsight.
Loyen (U.S. 20170130008) teaches cosmetic or pharmaceutical formulations which use a polyamide prepolymer (preferably PA 11) with an inherent viscosity of less than 0.5 dL/g that under goes polycondensation to arrive at whatever viscosity is desired. However, as with Kilner and Zeeuwe above, there is no motivation to recycling the fines in these applications according to the claimed method.
Response to Arguments
Applicant' s claim amendments and remarks filed February 24, 2026 have been fully considered and are not persuasive in moving the application to allowance. The §101, §102 and §112 rejections of record have been overcome due to Applicant’s amendment. Applicant’s amendment to Claims 13-16 have necessitated new ground of rejection on the claims based on Mumcu as these particle size limitations where never previously presented with respect to Claim 13.
Note that Applicant’s arguments to the powdered having the properties of (1) and (2) are not persuasive as Applicant appears to be arguing secondary considerations in overcoming the prior art. Evidence of secondary considerations, such as unexpected results or commercial success, is irrelevant to 35 U.S.C. 102 rejections and thus cannot overcome a rejection so based. In re Wiggins, 488 F.2d 538, 543, 179 USPQ 421, 425 (CCPA 1973). See MPEP §2131.04.
Further, Mumcu appears to teach all of (1) and (2) and also limit the flyaway as there is no dust along with narrow particles sizes (which are controlled – See Column 5 lines 5-15).
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 CHRISTOPHER M RODD whose telephone number is (571)270-1299. The examiner can normally be reached 7 am - 3:30 pm (Pacific).
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/Christopher M Rodd/Primary Examiner, Art Unit 1766