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 .
Election/Restrictions
Applicant’s election of Group I in the reply filed on December 12, 2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 11-14 and 20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on December 12, 2025.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1, 2, 7-10, 15 and 19 are rejected under 35 U.S.C. 101 the claimed invention is directed to non-statutory subject matter. The claims do not fall within at least one of the four categories of patent eligible subject matter because the independent method claims fail to recite a specific method step of “using”.
Claim Rejections - 35 USC § 112
Claims 1-10 and 15-19 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.
Method claims 1, 7 and 9 are indefinite in that no active steps are set forth which delimit the “using” limitation. MPEP 2173.05(q).
In claims , 3, 7 and 9, the metes and bounds of the recited “lactam” are indeterminate in scope. Confusion arises because Applicants’ disclosure that the expression “lactams” refers to “cyclic amides” (P8:31-22) conflicts with the disclosure that lactams include 9-aminopelargonic acid and 11-aminoundecanoic acid (P5:17-20), which are the amino carboxylic acids and not cyclic amides. Specifically, amino carboxylic acids have a linear open chained structure and not a cyclic one. Accordingly, clarification is requested as to whether the recited “lactam” includes cyclic amides as well as amino carboxylic acids.
In claim 7, it is unclear how the monomeric aqueous lactam solution gives rise to a blend comprising a polymer (polyamide) and lignin. Notably, there is no express antecedent basis for lignin.
In claim 15, clarification is requested as to whether the lignin is defining the cross-linked phenolic polymer per claim 1.
In claim 18, clarification is requested as to whether the lignin is defining the cross-linked phenolic polymer per claim 4.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 1 is rejected under 35 U.S.C. 102(a1) and (a2) as being anticipated by US 4848470 (Korpics).
Korpics discloses contacting a particulate material containing a cured phenolic resin (meets Applicants’ cross-linked phenolic polymer) with a solvent system (meets Applicants’ aqueous lactam solution) comprising N-methyl-2-pyrrolidone (NMP) (meets Applicants’ lactam) and water (meets Applicants’ aqueous component), wherein the solvent system comprises about 1 to 40% water and (implicitly) about 60 to 99 wt.% NMP (overlaps Applicants’ lactam content) (e.g., abstract, C2:26-30, Example 1, Table 1, claims).
As to claim 1, Korpics expressly discloses (Table 1) using aqueous compositions comprising 75 wt.% or 50 wt.% NMP (meets Applicants’ aqueous lactam solution and lactam content thereof) as a solvent composition for a cured phenolic resin-containing material (meets Applicants’ method of using aqueous lactam solution as a solvent for a cross-linked phenolic polymer).
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, 15 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over US 2005/0038094 (Warrington).
Warrington discloses a solution comprising a pesticide (not precluded from present claims) and lignin (meets Applicants’ cross-linked phenolic polymer) dissolved in a solvent comprising a water miscible polar solvent such as N-methyl pyrrolidone (NMP) (meets Applicants’ lactam) and water (meets Applicants’ aqueous component) (e.g., abstract, [0005], [0010-0011], [0013-0019], examples, claims). Notably, inasmuch as the NMP is miscible with water (abstract), such would necessarily form a solution with the water (meets Applicants’ aqueous lactam solution).
Specifically, Warrington sets forth solution embodiments [0043] comprising:
(a) a pesticide;
(b) 1, 2 or 5% w/v lignin (meets Applicants’ cross-linked phenolic polymer);
(c) NMP (meets Applicants’ lactam); and
(d) water (meets Applicants’ aqueous component), wherein the
NMP/water solvent system is used to dissolve the lignin (meets Applicants’ method of using aqueous lactam solution as a solvent for a cross-linked phenolic polymer).
In essence, Warrington differs from claim 1 in not expressly disclosing the content of NMP, with respect to total weight of water and NMP. Inasmuch as the water is added to further dilute the solution [0019], it would have been within the purview of one having ordinary skill in the art to use at least 50 wt.% of NMP with respect to total water and NMP with the reasonable expectation of success in accordance with the degree of dilution desired. Accordingly, absent evidence of unusual or unexpected results for the presently claimed lactam content of 50 to 95 wt.%, no patentability can be seen in the presently claimed subject matter.
As to claim 3, Warrington’s above-described embodiments would necessarily contain the lignin in amounts falling within the scope of the present claims (1, 2 or 5% w/v lignin).
As to claims 15 and 16, Warrington discloses lignin.
Claims 1-10 and 15-19 are rejected under 35 U.S.C. 103 as being unpatentable over US 3882077 (Takita).
Takita discloses a method for producing carbon fiber-reinforced polyamide resins comprising polymerizing monomers capable of forming the polyamide in the presence of carbon fibers, wherein the monomers include lactams (C2:1-3) (meets Applicants’ lactam) and the carbon fibers include lignin fibers (C2:0) (meets Applicants’ cross-linked phenolic polymer) and are present in an amount of about 3 to 60 wt.% based on total monomers and fibers (C3:7-9) (e.g., abstract, C1:45-C2:10, C3:7-9, examples, claims). Specifically, the fibers are added to a mixture (solution) of lactam and water (C3:52-55), as demonstrated in the various working examples. Illustratively, in Example 1 Takita discloses an aqueous solution comprising 91 wt.% caprolactam (2700/2970 g), based on total water and caprolactam (meets Applicants’ lactam amount) and pitch precursor fibers. Inasmuch as a dispersion results (C4:57-60), said aqueous caprolactam solution functions as a solvent for the fibers (meets Applicants’ method of using aqueous lactam solution as a solvent for a cross-linked phenolic polymer).
In essence, Takita’s working examples differ from claims 1 and 2 in that lignin is not used as the carbon fiber. Inasmuch as Takita clearly teaches lignin fibers (meets Applicants’ cross-linked phenolic polymer) as functional alternatives to the exemplified pitch precursor fibers (C2:8-14), it would have been obvious to one having ordinary skill in the art to use the former in place of the latter as the carbon fibers in the working examples with the reasonable expectation of success.
As to claims 3-6 and 18, Takita’s above-modified embodiment would contain an aqueous caprolactam solution comprising 91 wt.% caprolactam (2700/2790 g), based on total water and caprolactam (meets Applicants’ lactam amount), and 11 wt.% lignin fibers (300/2700 g), based on caprolactam pitch precursor fibers (meets Applicants’ cross-linked phenolic polymer amount).
As to claim 7, Takita uses the aqueous caprolactam solution with lignin fibers to produce a polyamide/lignin product. To the extent the polyamide and fibers exhibit good compatibility (C4:17-20), such meets the presently claimed “homogeneous” limitation.
As to claims 8 and 10, polyamide 6 is produced from caprolactam.
As to claim 9, Takita discloses the water is released as vapor (C4:62-65), thus meeting the presently claimed water removal process step.
As to claims 15, 16 and 19, Takita discloses lignin (meets Applicants’ cross-linked phenolic polymer).
As to claim 17, it would have been within the purview of one having ordinary skill in the art to use a lower amount of caprolactam (inclusive of that presently claimed) in accordance with the desired fluidity, absent evidence of unusual or unexpected results.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ana L Woodward whose telephone number is (571)272-1082. The examiner can normally be reached M-F 8am-5pm.
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/ANA L. WOODWARD/Primary Examiner, Art Unit 1765