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 .
Response to Arguments
To overcome anticipation rejection in their response dated 5/28/2026 the applicants amended claim 1 to contain limitation of claim 2 now cancelled. Specifically the amendment included process limitation of how the polyamide Ba1 was obtained, specifically repeating units are at least one amino acid or a unit obtain from at least one lactam, or unit X.Y, (wherein the definition of units X.Y has not been defined) obtained from the polycondensation of at least one diamine and at least one dicarboxylic acid.
In their amendment the use of lactam is attributed to polyamide block not polyether. Having said that the applicant’s statement that Stoppelman does not teach PEBA is not exactly correct. Stoppelman teaches combination of polyamides which includes block copolymers, where specifically semi-crystalline polyamides include polyetheramides however, term utilized in Stoppelman is generic genus of the rather extensive class of the polymers. Hence reason for using Chhun.
The main argument the applicants presented is that Stoppelman is directed to structural polyamide molding composition comprising polyamide matrix with carbon fibers and hollow glass beads, with the goal of achieving high breaking stress, high tensile modulus and low density. Applicants further indicated that Stopplemans’ focus is on structural rigid polyamides conventional thermoplastic engineering polyamides designed for stiffness-driven applications.
Applicants compared teachings of Chhun which discloses transparent PEBA based composition particularly for application requiring flexibility and impact resistance (eyewear). Chhun does not disclose carbon reinforcement or hollow glass reinforcement, because the focus is on flexible PEBA not on rigid high-modulus structural components.
The applicants summarized that there is no common objective between Stoppelman and Chhun and since different technical problems are solved the one of ordinary skill in the art would not have combined the references.
Examiner disagrees.
“[A]nalysis [of whether the subject matter of claim would have been obvious] need no seek out precise teachings directed to the specific subject matter of the challenged claim, for a court to take account of the inferences and creative steps that a person of ordinary skill in the art would employ.“ KSR Int’l v. Teleflex, Inc. 127 S. Ct 1727, 1740-1741, 82 USPQ2d 1385, 1396 (2007) (quoting In re Kahn, 441, F.3d 977, 988, 78 USPQ2d 1329, 1336-37 (Fed. Cir. 2006)). See DyStar Textilfarben GmBH & Co. Deutschland KG v. C.H. Patric Co., 464 F.3d 1356, 1361, 80 USPQ2d 1641, 1645 (Fed. Cir 2006) (“The motivation need not be found in the references sought to be combined, but may be found in any number of sources, including common knowledge, the prior art as a whole, or the nature of the problem itself.”; In re Bozek, 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969)(“Having established that this knowledge was in the art, the examiner could then properly rely, as put forth by the solicitor, on a conclusion of obviousness ‘from common knowledge and common sense of the person of ordinary skill in the art without any specific hint or suggestion in a particular reference.’”); In re Hoeschelle, 406 F.2d 1403, 1406-407, 160 USPQ 809, 811-12 (CCPA 1969) (“[I]t is proper to take into account not only specific teachings of the references but also the inference which one skilled in the art would reasonable be expected to draw therefrom …”). The analysis supporting obviousness, however, should be made explicit and should “identify reason that would have prompted a person of ordinary skill in the relevant field to combine elements” in manner claimed. KSR, 127 S. Ct. at 1739, 82 USPQ2d at 1396.
In other words, what the two references make from the composition disclosed therein is not the only reason why the two references can be combined. To make polyamide composition for those skilled in the art there has to be common knowledge established, the common sense and the recourse of logic as to what would be reasonable to expect from what is known.
Comparing the references together, specifically what each inventor would have to know:
Stoppelman
Chhun
Uses semi-crystalline, preferably amorphous or microcrystalline polyamides (p. 6-7)
Amorphous polyamides (p. 5)
Tg in a range of 60-200oC (p. 6)
Tg in a range of 75-150oC (p. 4)
Enthalpy 30 J/g (p. 6)
Enthalpy 31 J/g (p. 5)
Amorphous and semicrystalline polyamides with polyamide part nylon 4 (lactam), polyether component contemplated on page 7.
Made of linear aliphatic diamines such as tetramethylendiamine or hexamethylene diamine (p. 4) wherein lactam can be starting material
Article requires impact resistance (p. 12), high stiffness, low density, high mechanical properties (p. 12), dimensional stability and accuracy (p. 16), reduced thermal expansion, low shrinkage. Articles include helmets, optical components (transparent), safety glasses and the like (p. 18)
Article requires: impact and chemical resistance (p. 6), light density (p. 9), stiffness based on articles made (ballistic glass, safety glasses, helmets, armored window – definitely not flexible and not necessarily transparent)
Use modified polyolefins as impact modifiers
Uses impact modifiers.
Uses carbon fibers and hollow glass beads
Uses carbon reinforcement (carbon black, carbon nanotute) and glass fibers as well as glass beads
Article made using molding
Article made using molding
Important aspect is flowability of the melt, for the injection molding, extrusion and blow molding
Aim is to provide composition that has good flow for injection molding with avoiding withdrawal problems after the injection due to presence of polyether blocks.
It should be noted that in most preferred embodiment, Stoppelman discloses combination of polyamides one of which has to have density of 1.1 g/cm3 and the density of the PEBA of Chhun is 1.05 g/cm3.
In summary both inventors have to have good understanding of both amorphous and semi-crystalline polyamides, understanding the flow properties and their importance to injection molding. Both invention utilize amorphous polymers with specific density to achieve that. There is more to the term “the same field of endeavor” than the articles made and their properties.
Should applicants continue to argue the product made, table above discloses articles made in both references, such as helmets, safety glasses, optical parts requiring transparency and a lot of others that require stiffness in both references.
It would have been obvious to one of ordinary skill in the art to use PEBA of Chhun in Stoppelman because Stoppelman contemplates use of polyetheramides. Impact resistance was utilized in previous office action however, since claims have been amended, the rejection of instant claim 1 has to be modified to meet what is not required by independent claims.
Note – Examiner noted that the file wrapper did not include translation of the CN document to Chhun even though translation was submitted for mailing. The same CN document was scanned twice. However at the moment, the Chinese translation site is not functioning properly, examiner will therefore provide FR 2965269 which is equivalent to the Chinese document as well and was translated without glitch. Translation was requested and will be provided soonest.
Claim Interpretation
Instant claims have properties measured using ISO 1183:1999, ASTM D 822-17, ASTM D 2840-69, ASTM D 3102-71. These standards have equivalents which will be also considered when determining the patentability of instant claims. ISO 1883 is equivalent to ASTM D1505 and ASTM D 792. ASTM D 822 is equivalent to ISO 527-3. ASTM D2840 is equivalent to ISO 12937, and ISO 8295, ASTM D3102 is equivalent to ISO 1288-5 and ISO 13320. Any of these methods will meet the claims depending on the property that is claimed.
Claim 9 is interpreted as having hollow glass beads of any compressive strength as it does not include any value of the compressive strength.
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 § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 3-16 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2020/094624 to Stoppelman (as submitted by applicants, WIPO priority document is utilized as translation Wo document qualifies as (102(a)1 and 102(a)2 reference) in view of Chhun (CN 103124770) and in view of evidence in Saillard (WO 2009/153534).
With respect to claim 1, Stoppelman discloses composition comprising (see page 3 of translation):
55-85 wt.% of at least one polyamide, wherein at least one encompasses two or more.
7-20 wt.% of hollow glass spheres, tradename iM16K as that utilized by the applicants.
8-20 wt.% of carbon fibers.
0-5.0 wt.% of at least one additive.
Wherein content of components A-D results in 100%.
Polyamide of Stoppelman is defined as amorphous polyamide, wherein polyetheramides are explicitly envisaged (see page 7, line 4). Mixtures of polyamides can also be utilized (page 8). It should be noted that according to list of components in Table 1 (page 21 of the translation). Mixtures of polyamides include of polyamide 6, wherein the starting material includes lactam or is a condensation product of diamine with dicarboxylic acid.
While Stoppelman recites a genus of polyetheramides, Stoppelman does not teach any details, which would require one of ordinary skill in the art to look at what types of polyetheramides can be utilized that meet the requirements of the polyamides of Stoppelman. Specifically, being amorphous or semicrystalline and having comparable density as required by dependent claims.
Chhun discloses polyetheramides or PEBA as they are known under the tradename of Akrema. PEBA polymers of Chhun would meet the requirements of the polyetheramides of Stoppelman because Chhun discloses molding composition which require PEBA to be amorphous or semicrystalline just like Stoppelman.
Another condition of the Stoppelman is the polymer density Stoppelman teaches on the bottom of page 3 that the density of the polyamide should be less than 1.07 g/cm3 preferably less than 1.05 g/cm3, as determined by ISO D1183-3:1999. The PEBA of Chhun discloses PEBA polymers have density of less than 1.05 g/cm3 also determined ISO D1183. Consequently the properties of the PEBA of Chhun are exactly the same properties as required by Stoppelman.
Polyamide block of PEBA of Chhun is formed using diacid or diamine which includes both cyclic and acyclic diamines including lactams [0044], wherein preparation of Chhun’s polyamides is described in WO 2009/153534 which discloses polycondensation of the monomers.
With respect to claim 3, polyether block of the PEBA in Chhun utilizes monomers such as polytetramethylene glycol [0096] as well as polyethylene glycol, polypropylene glycol, polytrimethylene glycol [0053].
Chhun discloses composition to make molded articles, which include PEBA. The resulting article has high impact strength, flexibility and light density which are also requirements of Stoppelmann. Stoppelman also produces the same type of articles as disclosed above.
Both references disclose articles that are injection molded into articles or parts used in the same type of industry. In both references inventors have to have in depth knowledge of amorphous and semi-crystalline polyamides as well as fillers and additives required to make light density articles.
In the light of the above disclosure, including the response to the applicant’s arguments which are incorporated here by reference, it would have been obvious to one having ordinary skill in the art at the time instant invention was filed to utilize PEBAX of Chhun as the amorphous or semi-crystalline polymer of Stoppelman. As it was disclosed above, PEBAX which meets the properties required by Stoppelman to be injection molded and form the same articles such as helmets and safety goggles.
As such one of the ordinary skill in the art in order to find it appropriate to utilize already known in the art PEBA as the polyetherimide of Stoppelman to make the same articles.
With respect to claim 4, Stoppelman discloses that the polyamide has to have density of 1.10 g/cm3 or less, wherein density is measures using ISO 1183:3-1999 (see page 3) of the translation.
With respect to claim 5, the composition of Stoppelman has density of less than 1.01 g/cm3 (Table 2).
With respect to claim 6, hollow filler of Stoppelman are glass spheres which are hollow (description starts on the bottom of page 9).
With respect to claim 7, hollow glass spheres have volume mean diameter of 10-80 microns in accordance with ASTM B 822-10 (page 10 of the translation), wherein difference between B822-10 and B822-17 are minor editorial changes clarifying procedures for light scattering/laser diffraction techniques, specifically definition, updated safety precautions and text clarification.
With respect to claim 8, the hollow glass beads of Stoppelman have density of 0.2-0.6 g/cm3 according to ASTM D2840-69 (page 10 of the translation).
With respect to claim 9, hollow glass beads of Stoppelman have compressive strength of at least 50MPa according to ASTM D3102-72 which meets claim 9, especially when claim 9 does not provide any numerical value for compressive strength (see page 10 of the translation).
With respect to claims 10 and 11, polyamide polymer may include block comprising PA11, PA12, PA610, PA612, PA 1010 and PA 1012 (see page 6 of the translation).
With respect to claim 12, additives of Stoppelman as described on page 13 of the translation include fillers, pigments, nucleating agents, stabilizers, release agents, lubricants, antioxidants, organic pigments, dyes, impact modifiers such as polyolefin grafted with acid functional group, styrene polymers (page 14 of the translation) and the like.
With respect to claim 13-15, the composition of Stoppelman is utilized to make molded article, which is made using injection molding (pages 16 and 17 of the translation).
With respect to claim 16, the components of the composition as defined in rejected above claim 1 of Stoppelman is mixed and compounded by in single or double wall extruder or screw kneader. The properties measured for the composition of Stoppelman disclosed in Table 2, teach density of the composition to be 1.01 g/cm3 or less.
If applicants believe that an interview would further advance the prosecution of this application such is highly solicited.
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 KATARZYNA I KOLB whose telephone number is (571)272-1127. The examiner can normally be reached M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 5712701046. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 June 19, 2026
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