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
Claim 6 is objected to because of the following informalities:
Claim 6, line 1 recites “according to claim 1”. The claim should instead read “The film according to claim 1”.
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.
Claim 9 is 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 9 recites “step (iii) is carried out in the melt, as a dry blend or by dissolution/precipitation” which causes confusion. Does the applicant intend to claim step (iii) is carried out in 3 different methods or only as the dry blend or dissolution/precipitation? The examiner invites the applicant to clarify.
Claim Analysis
Summary of Claim 1:
A film comprising:
(A) 70 - 99.9 wt.% of polyamide 6;
(B) 0.01- 30 wt.% of at least one long chain semi-crystalline polyamide; and
(C) 0 - 30 wt.% of one or more additives,
it being understood that (A), (B) and (C) add up to 100 wt.%.
Claim Interpretation
The term “long chain” is interpreted as “having, on average, 8 or more carbon atoms for each nitrogen atom” in view of instant specification page 3 line 29-31.
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.
Claims 1, 3, 5, 6, 8, 11, 16, 18, 19, and 21-22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Okamoto et al. (US 5612105).
Regarding claim 1 and 21, Okamoto et al. disclose in a film formed from a polyamide composition in Example 8 comprising 95 wt% of polyamide 6 and 5 wt% polyamide 11 (see Table 2), thereby reading on (A) and (B) wherein (B) is a semi-crystalline polyamide having 11 carbons and lying within the claimed ranges of (A), (B), and (C) as recited in the instant claims 1 and 21. (C) is interpreted as optional and therefore anticipated.
Regarding claim 3, 5, 16, 18, 19, and 22, Okamoto et al. disclose the polyamide film in Example 8 comprises 5 wt% of polyamide 11, thereby reading on the component (B) of claim 5, 16, 19, and 22 and lying within the claimed ranges of claim 3 and 18.
Regarding claim 6, Okamoto et al. is silent on the relative viscosity of the polyamide composition.
In view of the substantially identical polyamide composition of Okamoto et al., the polyamide composition of Okamoto et al. will possess the claimed property because relative viscosity is an inherent property. Because the PTO does not have proper means to conduct experiments, the burden of proof is now shifted to Applicant to show otherwise. (See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977); In re Fitzgerald, 205 USPQ 594 (CCPA 1980).)
Regarding claims 8 and 11, Okamoto et al. disclose the polyamide film of Example 8 was formed by mixing polyamide 6 and polyamide 11 and melt extruded to form a sheet ([col 9, line 60-67], [col 10, lines 30-52 and 65-67]), thereby anticipating step (i), (ii), and (iii) of instant claim 8 and 11.
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 4, 13, 15, 17, 20, and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Okamoto et al. (US 5612105).
The composition disclosed in claim 1 is incorporated herein by reference.
Regarding claim 4, Okamoto et al. disclose in a polyamide film in Example 8 comprising 5 wt% polyamide 11, thereby lying outside the claimed range.
However, Okamoto et al. broadly disclose the amount of the aliphatic polyamide resin other than polyamide 6 is 1 to 25 wt% (claim 1), thereby overlapping the claimed range. Therefore, it would have been obvious to one of ordinary skill in the art to select the range taught by Okamoto et al.
Regarding claim 13 and 15, Okamoto et al. teach the polyamide film is used to form packaging for food [col 1, line 5-15], thereby reading on the instant claims.
Regarding claims 17, 20, and 23, Okamoto et al. do not teach in Example 8 polyamide 12 is used.
However, Okamoto et al. broadly disclose polyamide 12 among other polyamides may be used ([col 2, lines 59-67], see also Example 9, wherein polyamide 12 was used instead of polyamide 11). Therefore, it would have been obvious to one of ordinary skill in the to add polyamide 12 as taught by Okamoto et al. since Okamoto et al. teach both polyamide 11 and 12 may be used as the secondary polyamide.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Okamoto et al. (US 5612105) in view of Mollison (US 4461808 as listed on IDs dated June 9, 2023).
The composition disclosed in claim 1 is incorporated herein by reference.
Regarding claim 9, Okamoto et al. do not teach if step (iii) is carried out in the melt as a dry blend or by dissolution/precipitation.
Mollison teaches a method of forming a film made from a blend of polyamides (abstract). Mollison teaches the polyamides may be dry blended together [col 2, line 64-68]. Okamoto et al. is also concerned with films made from a blend of polyamides [col 2, line 7-33]. Therefore, it would have been obvious to one of ordinary skill in the art to carry out step (iii) as a dry blend since it is well known in the polyamide film industry.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREA WU whose telephone number is (571)272-0342. The examiner can normally be reached M F 8 - 5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at (571) 272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREA WU/Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763