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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 1-20 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.
Claim 1 recites the limitation “at least one (co)polyamide of formula PACMY/Z, wherein: PACM is bis(4-aminocyclohexyl)methane consisting of at least 30 mol% of trans, trans-bis(4-aminocyclohexyl)methane with respect to the sum of all the isomers of the PACM, Y is at least one aliphatic dicarboxylic acid” in lines 2-8, which is indefinite because the formula for the “(co)polyamide” is unclear. Specifically, the definitions of the “PACM” and the “Y” in the “PACMY/Z” are unclear because in the formula, the “PACM” and the “Y” are polymerized, but “trans, trans-bis(4-aminocyclohexyl)methane” and “at least one aliphatic dicarboxylic acid” are compounds that are not polymerized. Based on the specification of the instant application [0021-0015], for further examination of the claims, this limitation is interpreted as “at least one (co)polyamide of formula PACMY/Z, wherein: PACM is a unit obtained from bis(4-aminocyclohexyl)methane consisting of at least 30 mol% of trans, trans-bis(4-aminocyclohexyl)methane with respect to the sum of all the isomers of the PACM, Y is unit obtained from at least one aliphatic dicarboxylic acid”.
Claim 1 recites the limitation “at least one semi-crystalline copolyamide of formula A/WS, A being as defined for Z, W being chosen from 3,3’-dimethyl-4,4’-diamino-dicyclohexylmethane (MACM) and PACM as defined hereinbefore, S being an aromatic dicarboxylic acid“ in lines 14-20, which is indefinite because the formula for the “A/WS” is unclear. Specifically, the definitions of the “W” and the “S” in the “A/WS” are unclear because in the formula, the “W” and the “S” are polymerized, but “3,3’-dimethyl-4,4’-diamino-dicyclohexylmethane (MACM) and PACM as defined hereinbefore” and “an aromatic dicarboxylic acid” are compounds that are not polymerized. Also, the definition of the “A” in the “A/WS” is unclear because claim 1 recites the limitation “Z being comprised from 0 to 15% by weight in the PACMY/Z (co)polyamide, with respect to the sum of the constituents of the (co)polyamide” in lines 12-13, which refers to the “PACMY/Z” instead of the “A/WS”, which makes it unclear if the amount of the “A” is with respect to the sum of the constituents of the PACM/Z (co)polyamide. Also, it allows for 0% by weight of “A”, which makes it unclear if the “at least one semi-crystalline copolyamide of formula A/WS” is required to be a copolyamide. Based on the specification of the instant application [0048-0057], for further examination of the claims, this limitation is interpreted as “at least one semi-crystalline copolyamide of formula A/WS, A being as defined for Z with the proviso that the A/WS copolyamide comprises greater than 0% and less than or equal to 15% by weight of A, with respect to the sum of the constituents of the copolyamide, W being a unit obtained from a compound chosen from 3,3’-dimethyl-4,4’-diamino-dicyclohexylmethane (MACM) and PACM as defined hereinbefore, S being a unit obtained from an aromatic dicarboxylic acid”.
Claim 1 recites the limitation “from 0 to 10%, preferentially from 3 to 6%” in line 26, which is indefinite because the term “preferentially” makes it unclear if “from 3 to 6%” is required. For further examination of the claims, this limitation is interpreted as “from 0 to 10%”.
Claim 1 recites the limitation “the polyether block amides (PEBA) and the core-shell polymers” in line 26. There is insufficient antecedent basis for this limitation in the claim because claim 1 does not recite “polyether block amides (PEBA)” and “core-shell polymers” prior to this recitation. For further examination of the claims, this limitation is interpreted as “polyether block amides (PEBA) and core-shell polymers”.
Claim 1 recites the limitation “from 0 to 2% by weight, preferably 0.1 to 1% by weight” in line 28, which is indefinite because the term “preferably” makes it unclear if “0.1 to 1% by weight” is required. For further examination of the claims, this limitation is interpreted as “from 0 to 2% by weight”.
Claim 1 recites the limitation “good alcohol resistance as determined by an ethanol resistance test,” “according to ISO 22088:2006,” in lines 31 and 35, which is indefinite because “ISO 22088:2006” does not define what “alcohol resistance” is “good”, and the specification of the instant application does not define what “alcohol resistance” is “good”. Based on the specification of the instant application [0011, 0012, 0013, 0158, 0159, 0160], for further examination of the claims, this limitation is interpreted as “good alcohol resistance as determined by an ethanol resistance test,” “according to ISO 22088:2006,” “wherein the alcohol resistance is considered to be good when the transmittance determined according to ASTM D 1003, after testing with alcohol, is greater than or equal to 90%, and when the haze according to ASTM D 1003, after testing with alcohol, is less than 5%”.
Claim 1 recites the limitation “optical observation (transmittance and haze)” in line 32, which is indefinite because “transmittance and haze” is enclosed in parentheses, which makes it unclear if it is a limitation, a reference character, or an abbreviation. For further examination of the claims, this limitation is interpreted as “optical observation that is transmittance and haze”.
Claim 1 recites the limitation “stressing (plate attached to an elliptical mandrel imposing a deformation of up to 3%)” in lines 33-34, which is indefinite because “plate attached to an elliptical mandrel imposing a deformation of up to 3%” is enclosed in parentheses, which makes it unclear if it is a limitation, a reference character, or an abbreviation. For further examination of the claims, this limitation is interpreted as “stressing with a plate attached to an elliptical mandrel imposing a deformation of up to 3%”.
Claim 1 recites the limitation “a predetermined environment (ESC)” in line 34, which is indefinite because “ESC” is enclosed in parentheses, which makes it unclear if it is a limitation, a reference character, or an abbreviation. Also, “ESC” is commonly used in the art of materials science and engineering as an abbreviation for Environmental Stress Cracking, which further makes it unclear if “ESC” is a limitation, a reference character, or an abbreviation. For further examination of the claims, this limitation is interpreted as “a predetermined environment that is ESC”.
Claim 5 recites the limitation “Frequency: 5 Hz (no self-heating is observed at this frequency)” in line 8, which is indefinite because “no self-heating is observed at this frequency” is enclosed in parentheses, which makes it unclear if it is a limitation, a reference character, or an abbreviation. For further examination of the claims, this limitation is interpreted as “Frequency: 5 Hz, wherein no self-heating is observed at this frequency,”.
Claim 8 recites the limitation “Y is a C8 to C19 aliphatic dicarboxylic acid, preferably C9 to C16” in line 2, which is indefinite because the term “preferably” makes it unclear if “C9 to C16” is required. For further examination of the claims, this limitation is interpreted as “Y is a C8 to C19 aliphatic dicarboxylic acid”.
Claim 9 recites the limitation “Y is a C10 or C12 aliphatic dicarboxylic acid, preferably C12” in line 2, which is indefinite because the term “preferably” makes it unclear if “C12” is required. For further examination of the claims, this limitation is interpreted as “Y is a C10 or C12 aliphatic dicarboxylic acid”.
Claim 11 recites the limitation “at least one C6 to C19 amino acid, preferentially C8 to C12, more preferentially C10 to C12” in lines 3-4, which is indefinite because the terms “preferentially” and “more preferentially” make it unclear if “C8 to C12” and “C10 to C12” are required. For further examination of the claims, this limitation is interpreted as “at least one C6 to C19 amino acid”.
Claim 11 recites the limitation “at least one C6 to C18 lactam, preferentially C8 to C12, more preferentially C10 to C12” in lines 4-5, which is indefinite because the terms “preferentially” and “more preferentially” make it unclear if “C8 to C12” and “C10 to C12” are required. For further examination of the claims, this limitation is interpreted as “at least one C6 to C18 lactam”.
Claim 11 recites the limitation “at least one C4-C36 aliphatic diamine X, preferentially C6-C18, preferentially C6-C12, more preferentially C10-C12” in lines 6-7, which is indefinite because the terms “preferentially” and “more preferentially” make it unclear if “C6-C18”, “C6-C12”, and “C10-C12” are required. For further examination of the claims, this limitation is interpreted as “at least one C4-C36 aliphatic diamine X”.
Claim 11 recites the limitation “at least one C4-C36 aliphatic dicarboxylic acid Y1, preferentially C6-C18, preferentially C6-C12, more preferentially C8-C12” in lines 7-8, which is indefinite because the terms “preferentially” and “more preferentially” make it unclear if “C6-C18”, “C6-C12”, and “C8-C12” are required. For further examination of the claims, this limitation is interpreted as “at least one C4-C36 aliphatic dicarboxylic acid Y1”.
Claim 12 recites the limitation “at least one C6 to C18 amino acid, preferentially C8 to C12, more preferentially C10 to C12” in lines 2-3, which is indefinite because the terms “preferentially” and “more preferentially” make it unclear if “C8 to C12” and “C10 to C12” are required. For further examination of the claims, this limitation is interpreted as “at least one C6 to C18 amino acid”.
Claim 12 recites the limitation “at least one C6 to C18 lactam, preferentially C8 to C12, more preferentially C10 to C12” in lines 4-5, which is indefinite because the terms “preferentially” and “more preferentially” make it unclear if “C8 to C12” and “C10 to C12” are required. For further examination of the claims, this limitation is interpreted as “at least one C6 to C18 lactam”.
Claim 13 recites the limitation “a unit obtained from a C11 amino acid or a unit obtained from a C12 lactam, preferentially a unit obtained from a C11 amino acid” in lines 2-4, which is indefinite because the term “preferentially” makes it unclear if “a unit obtained from a C11 amino acid” is required. For further examination of the claims, this limitation is interpreted as “a unit obtained from a C11 amino acid or a unit obtained from a C12 lactam”.
Claim 14 recites the limitation “at least one C6 to C18 amino acid, preferentially C8 to C12, more preferentially C10 to C12” in lines 2-3, which is indefinite because the terms “preferentially” and “more preferentially” makes it unclear if “C8 to C12” and “C10 to C12” are required. For further examination of the claims, this limitation is interpreted as “at least one C6 to C18 amino acid”.
Claim 14 recites the limitation “at least on C6 to C18 lactam, preferentially C8 to C12, more preferentially C10 to C12” in line 4, which is indefinite because the terms “preferentially” and “more preferentially” makes it unclear if “C8 to C12” and “C10 to C12” are required. For further examination of the claims, this limitation is interpreted as “at least on C6 to C18 lactam.
Claim 15 recites the limitation “a unit obtained from a C11 amino acid or a unit obtained from a C12 lactam, preferentially a unit obtained from a C11 amino acid” in lines 2-3, which is indefinite because the term “preferentially” makes it unclear if “a unit obtained from a C11 amino acid” is required. For further examination of the claims, this limitation is interpreted as “a unit obtained from a C11 amino acid or a unit obtained from a C12 lactam.
Claim 17 recites the limitation “said composition has good overmolding capability with transparent polyamides, as determined by a wedge cleavage test, carried out according to ISO 10354:1992” in lines 2-4, which is indefinite because “ISO 10354:1992” does not define what “overmolding capability” is “good”, and the specification of the instant application does not define what “overmolding capability” is “good”. Based on the specification of the instant application [0146], for further examination of the claims, this limitation is interpreted as “said composition has good overmolding capability with transparent polyamides, as determined by a wedge cleavage test, carried out according to ISO 10354:1992, wherein good overmolding capability is characterized by little or no delamination after overmolding the composition with a rigid matrix as determined by a wedge cleavage test which is performed according to ISO 10354:1992”.
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 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Buhler et al. (US 2009/0163634 A1)
Regarding claims 1, 10, and 14-16, Buhler teaches a transparent polyamide molding compound containing [0014] 0 to 49.99 parts by weight of a transparent polyamide based on PACM and dicarboxylic acids with at least 9 C-atoms [0019] with the proviso that the sum of the ingredients of the transparent polyamide molding compound produces 100 parts by weight [0022], wherein PACM is bis-(4-amino-cyclohexyl)methane [0016]. Since the isomer of bis(4-aminocyclohexyl)methane with the highest yield is the trans-trans isomer, Buhler’s bis-(4-amino-cyclohexyl)methane would comprise at least 30 mol% of trans,trans-bis-(4-amino-cyclohexyl)methane. Buhler’s teachings therefore read on a transparent molding composition, comprising by weight (a) from 0 to 49.99% of at least one (co)polyamide of formula PACM/Z, wherein: PACM is bis(4-aminocyclohexyl)methane consisting of at least 30 mol% of trans,trans-bis(4-aminocyclohexyl)methane with respect to the sum of all the isomers of the PACM, Y is at least one dicarboxylic acid that is optionally aliphatic, Z is a repeating unit chosen from a unit obtained from at least one amino acid or a unit obtained from at least one lactam, or a unit XY1 obtained from the polycondensation of at least one aliphatic diamine X and at least one aliphatic dicarboxylic acid Y1, Z being comprised 0% by weight in the PACMY/Z (co)polyamide, with respect to the sum of the constituents of the (co)polyamide, the sum of the proportions of each constituent of said composition being equal to 100%, wherein the weight content of Z in the PACMY/Z copolyamide is 0. Buhler teaches that the transparent polyamide molding compound further contain [0014] 50 to 99.99 parts by weight of a copolyamide constructed from [0015] 15 to 45% by mol bis-(4-amino-3-methyl-cyclohexyl)methane (MACM), which can be replaced up to 50% by mol by bis-4-amino-cyclohexyl)methane (PACM) [0016], 15 to 45% by mol isophthalic acid, which can be replaced up to 50% by mol by terephthalic acid, and [0017] 10 to 70% by mol laurinlactam (LC 12) [0018], with the proviso that the sum of the ingredients of the transparent polyamide molding compound produces 100 parts by weight [0022], wherein the transparent polyamide is amorphous or microcrystalline [0001], which reads on the transparent molding composition, further comprising by weight: (b) 50 to 99.99% by weight of least one copolyamide of formula A/WS that is optionally semi-crystalline, A being as defined for Z, W being chosen from 3,3’-dimethyl-4,4’-diamino-dicyclohexylmethane (MACM) and PACM as defined hereinbefore, S being an aromatic dicarboxylic acid, wherein Z is a repeating unit that is a unit obtained from at least one lactam, Z being comprised greater than 0% by weight and less than 100% by weight in the A/WS copolyamide, with respect to the sum of the constituents of the copolyamide, the sum of the proportions of each constituent of said composition being equal to 100%, wherein A is a repeating unit chosen from a unit obtained from at least one C12 lactam, wherein A is a repeating unit chosen from a unit obtained from a C12 lactam. Buhler teaches that the transparent polyamide molding compound further contains [0014] 0 to 29.99 parts by weight of an aliphatic polyamide [0020], 0.01 to 5 parts by weight of at least one lubricant [0021], and 0 to 3 parts by weight of further additives, with the proviso that the sum of the ingredients of the transparent polyamide molding compound produces 100 parts by weight [0022], which reads on a specific embodiment wherein Buhler’s transparent polyamide molding compound does not contain Buhler’s aliphatic polyamide and Buhler’s further additives, and which therefore reads on the transparent molding composition, further comprising by weight: (c) 0% least one impact modifier chosen from the polyether block amides (PEBA) and the core-shell polymers, (d) from 0.01 to 5% by weight of at least one additive, and (e) 0% by weight of a prepolymer, the sum of the proportions of each constituent of said composition being equal to 100%, wherein said at least one additive is chosen from lubricants.
Buhler does not teach with sufficient specificity that the transparent molding composition comprises by weight: (a) from 30 to 90% of the at least one (co)polyamide of formula PACMY/Z, and does not teach a specific embodiment wherein Y is at least one aliphatic dicarboxylic acid, the sum of the proportions of each constituent of said composition being equal to 100%. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select the parts by weight of Buhler’s transparent polyamide based on PACM and dicarboxylic acids with at least 9 C-atoms to be from 30 to 49.99 parts by weight, and to select Buhler’s dicarboxylic acids with at least 9 C-atoms to be aliphatic. The proposed modification would read on the transparent molding composition comprising by weight: (a) from 30 to 49.99% of the at least one (co)polyamide of formula PACMY/Z, wherein Y is at least one aliphatic dicarboxylic acid, the sum of the proportions of each constituent of said composition being equal to 100% as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for a providing a parts by weight of Buhler’s transparent polyamide based on PACM and dicarboxylic acids with at least 9 C-atoms that is suitable for Buhler’s transparent molding compound, because it would have been beneficial for modifying scratch resistance of Buhler’s transparent molding compound, and because it would have been obvious to try with a reasonable expectation of success because Buhler teaches that the transparent polyamide molding compound contains [0014] 0 to 49.99 parts by weight of a transparent polyamide based on PACM and dicarboxylic acids with at least 9 C-atoms [0019], and that polyamides can be influenced in scratch resistance by the choice of monomers according to the invention [0023], which encompasses from 30 to 49.99 parts by weight, and which suggests dicarboxylic acids with at least 9 C-atoms that are aliphatic because the only possibilities are those that are aliphatic and those that are aromatic. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 244.05(I)). Examples of rationales that may support a conclusion of obviousness include "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success (MPEP 2143(I)(E)).
Buhler does not teach with sufficient specificity that the transparent molding composition further comprises by weight: (b) from 10 to 70% by weight of the at least one semi-crystalline copolyamide of formula A/WS, does not teach a specific embodiment wherein the at least one copolyamide of formula A/WS is semi-crystalline, and does not teach with sufficient specificity that A is as defined for Z, Z being comprised from 0 to 15% by weight in the copolyamide, with respect to the sum of the constituents of the copolyamide, the sum of the proportions of each constituent of said composition being equal to 100%, wherein A is a repeating unit chose from a unit obtained from at least one C6 to C18 amino acid, preferentially C8 to C12, more preferentially C10 to C12, or a unit obtained from at least on C6 to C18 lactam, preferentially C8 to C12, more preferentially C10 to C12, wherein A is a repeating unit chosen from a unit obtained from a C11 amino acid or a unit obtained from a C12 lactam, preferentially a unit obtained from a C11 amino acid. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select the parts by weight of Buhler’s copolyamide to be from 50 to 70 parts by weight, to select Buhler’s copolyamide to be microcrystalline, and to select the % by weight of Buhler’s laurinlactam (LC 12) in Buhler’s copolyamide to be from 10 to 15% by weight. The proposed modification would read on the transparent molding composition further comprising by weight: (b) from 50 to 70% by weight of the at least one semi-crystalline copolyamide of formula A/WS, wherein the at least one copolyamide of formula A/WS is semi-crystalline, A being as defined for Z, Z being comprised from 10 to 15% by weight in the A/WS copolyamide, with respect to the sum of the constituents of the copolyamide as claimed, the sum of the proportions of each constituent of said composition being equal to 100% as claimed, wherein A is a repeating unit chosen from a unit obtained from at least one C12 lactam as claimed, wherein A is a repeating unit chosen from a unit obtained from a C12 lactam as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for providing a parts by weight of Buhler’s copolyamide that is suitable for Buhler’s transparent polyamide molding compound and for providing Buhler’s transparent polyamide molding compound with a crystalline structure, which would have been beneficial for modifying mechanical properties of Buhler’s transparent polyamide molding compound due to the rigidity of a microcrystalline structure compared to an amorphous structure, and because it would have been obvious to try with a reasonable expectation of success because Buhler teaches that the transparent polyamide molding compound further contain [0014] 50 to 99.99 parts by weight of a copolyamide constructed from [0015] 10 to 70% by mol laurinlactam (LC 12) [0018], and that the transparent polyamide is amorphous or microcrystalline [0001], which encompasses from 50 to 70 parts by weight of Buhler’s copolyamide, and which encompasses or overlaps with greater than 0% by weight and less than or equal to 15% by weight of Buhler’s laurinlactam (LC 12) in Buhler’s copolyamide. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 244.05(I)). Examples of rationales that may support a conclusion of obviousness include "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success (MPEP 2143(I)(E)).
The Office recognizes that all of the claimed physical properties are not positively taught by Buhler, namely that said semi-crystalline copolyamide has a crystallization enthalpy measured during the cooling step at a rate of 20 K/min by DSC according to ISO standard11357-3 of 2013 greater than 25 J/g. However, Buhler renders obvious all of the claimed ingredients, amounts, process steps, and process conditions of said semi-crystalline copolyamide as explained above. Furthermore, the specification of the instant application recites that a semi-crystalline copolyamide, within the meaning of the invention, denotes a copolyamide that has a melting temperature (Tm) measured according to ISO standard 11357-3:2013 by DSC, and a crystallization enthalpy measured during the cooling step at a rate of 20 K/min by DSC according to ISO standard 11357-3 of 2013 greater than 25 J/g, preferably greater than 40 J/g [0048]. Therefore, the claimed physical properties would naturally arise from the semi-crystalline copolyamide that is rendered obvious by Buhler. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01(I)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). If it is the applicant’s position that this would not be the case: (1) evidence would need to be presented to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients, amounts, process steps, and process conditions.
Buhler does not teach with sufficient specificity that the transparent molding composition further comprises by weight: (d) from 0 to 2% by weight, preferably 0.1 to 1% by weight of at least one additive, the sum of the proportions of each constituent of said composition being equal to 100%. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select the parts by weight of Buhler’s at least one lubricant to be from 0.01 to 2 parts by weight. The proposed modification would read on the transparent molding composition further comprising by weight: (d) from 0.01 to 2% by weight, the sum of the proportions of each constituent of said composition being equal to 100% as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for optimizing scratch resistance and transparency of Buhler’s transparent polyamide molding compound because Buhler teaches that the transparent polyamide molding compound further contains [0014] 0.01 to 5 parts by weight of at least one lubricant [0021], that it is preferred if the at least one lubricant is contained with a proportion of 0.1 to 3% by weight, further preferred 0.2 to 2% by weight, particularly preferred 0.5 to 1.5% by weight, and very particularly preferred 0.8 to 1.2% by weight [0029], and that the scratch resistance can be increased even further by the selection and also the content according to the invention of lubricants and the excellent transparency is thereby maintained at the same time [0024], which means that the parts by weight of Buhler’s at least one lubricant would have affected scratch resistance and transparency of Buhler’s transparent polyamide molding compound.
The Office recognizes that all of the claimed physical properties are not positively taught by Buhler, namely that said composition has good alcohol resistance as determined by an ethanol resistance test, determined by optical observation (transmittance and haze) on injected plates in a mirror-polished mold of 100 × 100 × 1 mm3 after stressing (plate attached to an elliptical mandrel imposing a deformation of up to 3%) in a predetermined environment (ESC), that is placed in ethanol for 24 hours, according to ISO 22088:2006, the measurement of transmittance and the measurement of haze on the injected plates, in a mirror-polished mold, of 1 mm thickness having a width and a length of 100 mm*100 mm being determined according to ASTM D 1003, before and after testing with alcohol, from said composition. However, Buhler renders obvious all of the claimed ingredients, amounts, process steps, and process conditions of said composition as explained above. Furthermore, the specification of the instant application recites that a mixture of at least one (co)polyamide PACMY/Z with at least one particular semi-crystalline copolyamide made it possible to obtain a composition having not only good ethanol resistance [0014]. Therefore, the claimed physical properties would naturally arise from said composition that is rendered obvious by Buhler. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01(I)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). If it is the applicant’s position that this would not be the case: (1) evidence would need to be presented to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients, amounts, process steps, and process conditions.
Regarding claim 2, the Office recognizes that all of the claimed physical properties are not positively taught by Buhler, namely that the transparent composition according to claim 1 has a transmittance at 560 nm on a plate of 1 mm thickness greater than 91% determined according to ISO standard 13468-2:2006 before said ethanol resistance test. However, Buhler renders obvious all of the claimed ingredients, amounts, process steps, and process conditions of the transparent composition according to claim 1 as explained above. Furthermore, the specification of the instant application recites that a mixture of at least one (co)polyamide PACMY/Z with at least one particular semi-crystalline copolyamide made it possible to obtain a composition having not only good ethanol resistance, low haze [0014], and that the ethanol resistance is advantageously considered to be good when the transmittance determined according to ASTM D 1003, after testing with alcohol, is greater than or equal to 90% [0011, 0013, 0158, 0160]. Therefore, the claimed physical properties would naturally arise from the transparent composition that is rendered obvious by Buhler. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01(I)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). If it is the applicant’s position that this would not be the case: (1) evidence would need to be presented to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients, amounts, process steps, and process conditions.
Regarding claim 3, the Office recognizes that all of the claimed physical properties are not positively taught by Buhler, namely that the transparent composition according to claim 1 has a transmittance at 560 nm on a plate of 1 mm thickness greater than 90% determined according to ISO standard 13468-2:2006 after said ethanol resistance test. However, Buhler renders obvious all of the claimed ingredients, amounts, process steps, and process conditions of the transparent composition according to claim 1 as explained above. Furthermore, the specification of the instant application recites that a mixture of at least one (co)polyamide PACMY/Z with at least one particular semi-crystalline copolyamide made it possible to obtain a composition having not only good ethanol resistance, low haze [0014], and that the ethanol resistance is advantageously considered to be good when the transmittance determined according to ASTM D 1003, after testing with alcohol, is greater than or equal to 90% [0011, 0013, 0158, 0160]. Therefore, the claimed physical properties would naturally arise from the transparent composition that is rendered obvious by Buhler. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01(I)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). If it is the applicant’s position that this would not be the case: (1) evidence would need to be presented to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients, amounts, process steps, and process conditions.
Regarding claim 4, the Office recognizes that all of the claimed physical properties are not positively taught by Buhler, namely that the transparent composition according to claim 1 has a haze determined according to ASTM D 1003, after testing with alcohol, of less than 5%. However, Buhler renders obvious all of the claimed ingredients, amounts, process steps, and process conditions of the transparent composition according to claim 1 as explained above. Furthermore, the specification of the instant application recites that a mixture of at least one (co)polyamide PACMY/Z with at least one particular semi-crystalline copolyamide made it possible to obtain a composition having not only good ethanol resistance, low haze [0014], and that the ethanol resistance is considered to be good when the haze determined according to ASTM D 1003, after testing with alcohol, is less than 5% [0012, 0013, 0159, 0160]. Therefore, the claimed physical properties would naturally arise from the transparent composition that is rendered obvious by Buhler. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01(I)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). If it is the applicant’s position that this would not be the case: (1) evidence would need to be presented to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients, amounts, process steps, and process conditions.
Regarding claim 5, the Office recognizes that all of the claimed physical properties are not positively taught by Buhler, namely that said composition has good fatigue strength as determined by a strength test in which the minimum number of cycles at 18 MPa is 350,000 cycles, said test being carried out on dry-conditioned bars according to the following operating conditions: Bars: 80*10*4 mm3, Gap between jaws: 40 mm, Frequency: 5 Hz (no self-heating is observed at this frequency), Test temperature: 23°C, Servo-hydraulic dynamometer MTS810#1, Load cell: 25 KN, V-notch – thickness under notch 3.7 mm. However, Buhler renders obvious all of the claimed ingredients, amounts, process steps, and process conditions of the transparent composition according to claim 1 as explained above. Furthermore, the specification of the instant application recites that a mixture of at least one (co)polyamide PACMY/Z with at least one particular semi-crystalline copolyamide made it possible to obtain a composition having not only good ethanol resistance, low haze, but also improved fatigue strength [0014], and that said composition as defined hereinbefore has good fatigue strength as determined by a strength test in which the minimum number of cycles at 18 MPa is 350,000 cycles [0139]. Therefore, the claimed physical properties would naturally arise from the transparent composition that is rendered obvious by Buhler. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01(I)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). If it is the applicant’s position that this would not be the case: (1) evidence would need to be presented to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients, amounts, process steps, and process conditions.
Regarding claim 6, Buhler satisfies the limitation wherein the polyether block amide (PEBA) has a flexural modulus of less than 200 MPa, as measured according to ISO standard 178:2010 at 23°C as claimed because claims 1 and 6 do not require the transparent molding composition to comprise the polyether block amide (PEBA) if the transparent molding composition comprises (c) 0% of at least one impact modifier chosen from the polyether block amides (PEBA) and the core-shell polymers, and Buhler’s teachings read on the transparent molding composition comprising (c) 0% of at least one impact modifier chosen from the polyether block amides (PEBA) and the core-shell polymers, as explained above for claim 1.
Regarding claim 7, Buhler satisfies the limitation wherein the PEBA has a density greater than or equal to 1, as determined according to ISO 1183-3:1999 as claimed because claims 1 and 7 do not require the transparent molding composition to comprise the PEBA if the transparent molding composition comprises (c) 0% of at least one impact modifier chosen from the polyether block amides (PEBA) and the core-shell polymers, and Buhler’s teachings read on the transparent molding composition comprising (c) 0% of at least one impact modifier chosen from the polyether block amides (PEBA) and the core-shell polymers, as explained above for claim 1.
Regarding claim 8, Buhler teaches a transparent polyamide molding compound containing [0014] 0 to 49.99 parts by weight of a transparent polyamide based on PACM and dicarboxylic acids with at least 9 C-atoms [0019], which reads on Y is a C9 or greater dicarboxylic acid that is optionally aliphatic.
Buhler does not teach a specific embodiment wherein Y is a C8 to C19 aliphatic dicarboxylic acid, preferably C9 to C16. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select Buhler’s dicarboxylic acids with at least 9 C-atoms to be aliphatic and to have 9 to 19 C-atoms. The proposed modification would read on wherein Y is a C9 to C19 aliphatic dicarboxylic acid as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for modifying scratch resistance of Buhler’s transparent molding compound, and because it would have been obvious to try with a reasonable expectation of success because Buhler teaches that the transparent polyamide molding compound contains [0014] 0 to 49.99 parts by weight of a transparent polyamide based on PACM and dicarboxylic acids with at least 9 C-atoms [0019], and that polyamides can be influenced in scratch resistance by the choice of monomers according to the invention [0023], which suggests dicarboxylic acids with at least 9 C-atoms that are aliphatic and that have 9 to 19 C-atoms because the only possibilities are those that are aliphatic and those that are aromatic, and because at least 9 encompasses 9 to 19. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 244.05(I)). Examples of rationales that may support a conclusion of obviousness include "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success (MPEP 2143(I)(E)).
Regarding claim 9, Buhler teaches a transparent polyamide molding compound containing [0014] 0 to 49.99 parts by weight of a transparent polyamide based on PACM and dicarboxylic acids with at least 9 C-atoms [0019], which reads on Y is a C9 or greater dicarboxylic acid that is optionally aliphatic.
Buhler does not teach a specific embodiment wherein Y is a C10 or C12 aliphatic dicarboxylic acid, preferably C12. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select Buhler’s dicarboxylic acids with at least 9 C-atoms to be aliphatic and to have 10 or 12 C-atoms. The proposed modification would read on wherein Y is a C10 or C12 aliphatic dicarboxylic acid as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for modifying scratch resistance of Buhler’s transparent molding compound, and because it would have been obvious to try with a reasonable expectation of success because Buhler teaches that the transparent polyamide molding compound contains [0014] 0 to 49.99 parts by weight of a transparent polyamide based on PACM and dicarboxylic acids with at least 9 C-atoms [0019], and that polyamides can be influenced in scratch resistance by the choice of monomers according to the invention [0023], which suggests dicarboxylic acids with at least 9 C-atoms that are aliphatic and that have 10 to 12 C-atoms because the only possibilities are those that are aliphatic and those that are aromatic, and because at least 9 encompasses 10 or 12. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 244.05(I)). Examples of rationales that may support a conclusion of obviousness include "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success (MPEP 2143(I)(E)).
Regarding claim 11, Buhler teaches a transparent polyamide molding compound containing [0014] 0 to 49.99 parts by weight of a transparent polyamide based on MACM and PACM and dicarboxylic acids with at least 9 C-atoms [0019] with the proviso that the sum of the ingredients of the transparent polyamide molding compound produces 100 parts by weight [0022], wherein MACM is bis-(4-amino-3-methyl-cyclohexyl)methane, and PACM is bis-(4-amino-cyclohexyl)methane [0016], which reads on wherein the weight content of Z in the PACMY/Z copolyamide is greater than 0 and Z is a repeating unit chosen from a unit XY1 obtained from the polycondensation of at least one C15 aliphatic diamine X with at least one C9 or greater dicarboxylic acid Y1 that is optionally aliphatic.
Buhler does not teach a specific embodiment wherein the weight content of Z in the PACMY/Z copolyamide is greater than 0 and Z is a repeating unit chose from a unit obtained from at least one C6 to C18 amino acid, preferentially C8 to C12, more preferentially C10 to C12, or a unit obtained from at least one C6 to C18 lactam, preferentially C8 to C12, more preferentially C10 to C12, or a unit XY1 obtained from the polycondensation of at least one C4-C36 aliphatic diamine X, preferentially C6-C18, preferentially C6-C12, more preferentially C10-C12, with at least one C4-C36 aliphatic dicarboxylic acid Y1, preferentially C6-C18, preferentially C6-C12, more preferentially C8-C12, or a mixture thereof. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select the parts by weight of Buhler’s transparent polyamide based on MACM and PACM and dicarboxylic acids with at least 9 C-atoms to be from 30 to 49.99 parts by weight, to select Buhler’s dicarboxylic acids with at least 9 C-atoms to have 9 to 36 C-atoms and to be aliphatic, and to select the amount of Buhler’s MACM and Buhler’s dicarboxylic acids bonded to Buhler’s MACM in Buhler’s transparent polyamide to be greater than 0% by weight and less than or equal to 15% by weight. The proposed modification would read on wherein the weight content of Z in the PACMY/Z copolyamide is greater than 0 and less than or equal to 15%, and Z is a repeating unit chosen from a unit XY1 obtained from the polycondensation of at least one C15 aliphatic diamine X with at least one C9-C36 aliphatic dicarboxylic acid Y1 as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for a providing a parts by weight of Buhler’s transparent polyamide based on MACM and PACM and dicarboxylic acids with at least 9 C-atoms that is suitable for Buhler’s transparent molding compound, because it would have been beneficial for modifying scratch resistance of Buhler’s transparent molding compound, and because it would have been obvious to try with a reasonable expectation of success because Buhler teaches that the transparent polyamide molding compound contains [0014] 0 to 49.99 parts by weight of a transparent polyamide based on MACM and PACM and dicarboxylic acids with at least 9 C-atoms [0019], and that polyamides can be influenced in scratch resistance by the choice of monomers according to the invention [0023], which encompasses from 30 to 49.99 parts by weight, which suggests dicarboxylic acids with at least 9 C-atoms that are aliphatic because the only possibilities are those that are aliphatic and those that are aromatic, and which suggests modifying the amount of Buhler’s MACM and Buhler’s dicarboxylic acids bonded to Buhler’s MACM in Buhler’s transparent polyamide. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 244.05(I)). Examples of rationales that may support a conclusion of obviousness include "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success (MPEP 2143(I)(E)).
Regarding claim 12, Buhler satisfies the limitation wherein Z is a repeating unit chosen from a unit obtained from at least one C6 to C18 amino acid, preferentially C8 to C12, more preferentially C10 to C12, or a unit obtained from at least one C6 to C18 lactam, preferentially C8 to C12, more preferentially C10 to C12 as claimed because claims 1 and 12 do not require Z to be comprised greater than 0% by weight in the PACMY/Z (co)polyamide if Z is comprised 0% by weight in the PACMY/Z (co)polyamide, and Buhler’s teachings that are explained above for claim 1 read on Z being comprised 0% by weight in the PACMY/Z (co)polyamide. Also, as explained above for claim 1, before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select the parts by weight of Buhler’s copolyamide to be from 50 to 70 parts by weight, to select Buhler’s copolyamide to be microcrystalline, and to select the % by weight of Buhler’s laurinlactam (LC 12) in Buhler’s copolyamide to be from 10 to 15% by weight. Buhler therefore renders it obvious that A is being as defined for Z, wherein Z is a repeating unit chosen from a unit obtained from at least one C12 lactam as claimed.
Regarding claim 13, Buhler satisfies the limitation wherein Z is a repeating unit chose from a unit obtained from a C11 amino acid or a unit obtained from a C12 lactam, preferentially a unit obtained from a C11 amino acid as claimed because claims 1 and 13 do not require Z to be comprised greater than 0% by weight in the PACMY/Z (co)polyamide if Z is comprised 0% by weight in the PACMY/Z (co)polyamide, and Buhler’s teachings that are explained above for claim 1 read on Z being comprised 0% by weight in the PACMY/Z (co)polyamide. Also, as explained above for claim 1, before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select the parts by weight of Buhler’s copolyamide to be from 50 to 70 parts by weight, to select Buhler’s copolyamide to be microcrystalline, and to select the % by weight of Buhler’s laurinlactam (LC 12) in Buhler’s copolyamide to be from 10 to 15% by weight. Buhler therefore renders it obvious that A is being as defined for Z, wherein Z is a repeating unit chosen from a unit obtained from a C12 lactam as claimed.
Regarding claim 17, the Office recognizes that all of the claimed physical properties are not positively taught by Buhler, namely that said composition has good overmolding capability with transparent polyamides, as determined by a wedge cleavage test, carried out according to ISO 10354:1992. However, Buhler renders obvious all of the claimed ingredients, amounts, process steps, and process conditions of the composition according to claim 1 as explained above. Furthermore, the specification of the instant application recites that a mixture of at least one (co)polyamide PACMY/Z with at least one particular semi-crystalline copolyamide made it possible to obtain a composition having not only good ethanol resistance, low haze, but also improved fatigue strength, processability and overmolding capability [0014], and that the overmolding of the compositions of said invention, in particular on polyamide, is also improved with respect to the overmolding of P12 on the same polyamides [0018]. Therefore, the claimed physical properties would naturally arise from the composition that is rendered obvious by Buhler. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01(I)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). If it is the applicant’s position that this would not be the case: (1) evidence would need to be presented to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients, amounts, process steps, and process conditions.
Regarding claim 18, Buhler teaches a sheet, wherein the polyamide molding compound is in the form of a sheet [0040, 0041], and molded articles produced from the transparent polyamide molding compound [0044], which reads on an article manufactured from the composition as defined in claim 1 as claimed.
Regarding claims 19 and 20, Buhler teaches molded articles produced from the transparent polyamide molding compound [0044], wherein the processing or production methods for the molded articles made of the molding compounds are injection molding [0045], which reads on the article according to claim 18, wherein the article is manufactured by injection molding as claimed, and which reads on an object obtained by injection molding with a composition as defined in claim 1 as claimed.
Correspondence
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/DAVID T KARST/Primary Examiner, Art Unit 1767