DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Specification-Objections
2. The disclosure is objected to because of the following informalities:
At paragraphs [0001], [0009], [0012]-[0013], [0137]-[0138], [0141]-[0142] and [0155] of the present specification, the applicants are advised to replace the disclosed “g/cm3”with “g/cm3”.
Appropriate corrections are required.
Claim Objections
3. Claims 1-13, 19-22 and 24 are objected to because of the following informalities:
As to Claim 1: The applicants are advised to replace the claimed “1.12 g/cm3” with “1.12 g/cm3”.
The applicants are also advised to delete the phrase “by weight” after the claimed “(E) 0 to 2%” since “by weight” is already mentioned in the first line of claim 1.
Moreover, the applicants are advised to replace the claimed phrase “at least one impact modifier chosen from” with the new phrase “at least one impact modifier selected from the group consisting of” to be consistent with proper Markush group language set forth in MPEP section 2173.05 (h).
As to Claims 2-5 and 7-10: The applicants are advised to replace the claimed phrase “wherein it comprises” with the new phrase “wherein the composition comprises”.
The applicants are also advised to delete the phrase “by weight” after the claimed “(E) 0 to 2%” since “by weight” is already mentioned earlier in the claims.
Moreover, as to claims 3, 5, and 8-10, the applicants are advised to delete the claimed phrase “at least one”.
As to Claims 6 and 11: The applicants are advised to replace the claimed phrase “density greater than or equal to 1g/cm3” with the new phrase “density from 1g/cm3 to less than 1.12 g/cm3” as supported at paragraph [0329] of applicants’ published application, i.e., US PG PUB 2024/0101820.
As to Claim 12: The applicants are advised to replace the claimed phrase “a density greater than or equal to 1” with the new phrase “a density greater than or equal to 1 g/cm3”
as supported at paragraph [0270] of applicants’ published application, i.e., US PG PUB 2024/0101820.
As to Claims 13, 19, and 21: The applicants are advised to replace the claimed phrase “chosen from” with the new phrase “selected from the group consisting of” to be consistent with proper Markush group language set forth in MPEP section 2173.05 (h).
As to Claim 20: The applicants are advised to replace the claimed phrase “chosen from PA11 and PA12 with the new phrase “is PA11 or PA12”.
As to Claims 22: The applicants are advised to replace the claimed “a composition as defined in claim 1” with the new phrase “the composition as defined in claim 1”.
As to Claim 24: The applicants are advised to replace the claimed “with a composition as defined in claim 1” with the new phrase “with the composition as defined in claim 1”.
Appropriate corrections are 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.
4. Claims 13 and 22-23 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.
As to Claim 13: There is no proper antecedent basis for “the functionalized polyolefin” and “the maleic anhydride, carboxylic acid, carboxylic anhydride and epoxide functions” recited in claim 13 and thus, it is not clear what “the functionalized polyolefin” and the particular functions are referring to as there is only mention of a polyolefin in claim 1, on which claim 13 depends from.
As to Claim 22: Claim 22 does not provide any active method steps. Thus, the method is indefinite because it is unclear what steps are being taken to manufacture the article.
It is noted that since claim 23 is dependent on claim 22, it is rejected along with claim 22 because it incorporates all the limitations of claim 22, including those that are indefinite for the reasons provided above.
Accordingly, the scope of these claims is deemed indefinite.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
5. Claims 1-11 and 13-24 are rejected under 35 U.S.C. 103 as being unpatentable over Sutterlin et al. (US 2017/00581231) in view of English Translation of EP 24127572 (hereinafter referred to as “EP ‘757”) and Deyrail et al. (WO 2017/051105; utilized US 2018/0291202 as its English equivalent).
It is noted that Deyrail et al. (WO 2017/051105) is used for date purposes only, and all paragraph numbers cited below refer to its English equivalent, namely, US 2018/0291202 since WO 2017/051105 is in French.
The claims are directed to a molding composition, comprising particular amounts (by weight) of at least one semi-crystalline aliphatic polyamide, hollow glass beads, solid glass fibers, at least one impact modifier chosen from a polyolefin, a polyether block amide (PEBA-1) and a mixture thereof, and optionally, at least one additive.
As to Claims 1-11 and 13-24: Sutterlin et al. disclose a moulding (molding) composition comprising, (a) 25-90% by weight of a partially crystalline polyamide having an average number of carbon atoms relative to the nitrogen atom greater than or equal to 8, which is produced from polycondensation of at least one C6-C18 amino acids and lactams, and may be selected from PA11 and PA12 (which according to present claims 1 and 17-20 correspond to the claimed at least one semi-crystalline aliphatic polyamide and overlaps with its amounts, i.e., 38-87% by weight, 53-80% by weight, and 48-78% by weight), 5-30% by weight of hollow glass balls (beads) (which overlaps with the claimed amounts of 3-25% by weight, 10-20% by weight and 5-25% by weight), 5-30% by weight of an impact modifier including a polyolefin that is functionalized with maleic anhydride, and 0-15% by weight of further additives (which overlaps with the claimed 0-2% by weight), wherein the components mentioned above add up to 100% by weight and the composition has a density of at most 0.970 g/cm3 (which is encompassed by the claimed composition’s density of being less than 1.12 g/cm3) (Paragraphs [0008]-[0013], [0015]-[0016], [0027]-[0029] and [0050]-[0058]). Sutterlin et al. also disclose that the hollow glass balls (beads) have an average volumetric diameter d50 of 10-80 µm, as measured by means of laser diffraction according to ASTM B 822, a real density of 0.10-0.65 g/cm3, and a pressure resistance of at least 100 MPa (encompassed by the claimed compressive strength of at least 50 MPa) (Paragraphs [0102] and [0105]). Sutterlin et al. further disclose that the additives may be selected from, among other things, stabilisers (stabilizers) and antioxidants, and pigments (Paragraph [0108]). Moreover, Sutterlin et al. disclose that its composition has a density of at most 0.970 g/cm3 (Paragraph [0008]), which is close to the claimed densities of greater than or equal to 1 g/cm3 (interpreted as “1-1.12 g/cm3” in light of paragraph [0329] of applicants’ published application, i.e., US PG PUB 2024/0101820) and 1-1.12 g/cm33. Additionally, Sutterlin et al. disclose an article prepared from injection moulding (molding) of the composition described above to prepare moulded (molded) articles and a method for using the composition to manufacture moulded (molded) articles (Paragraphs [0005], [0110] and [0120]).
However, Sutterlin et al. do not specifically mention the addition of solid glass fibers and its particular amount as required by the claims of the present application.
Nevertheless, EP 757 teaches the use of 15-45 wt% of a reinforcing agent such as solid glass fibers (which overlaps with the presently claimed 5-30%, 5-10% and 12-30% by weights of glass fibers) to provide advantageous reinforcing properties to polyamide based molding compositions for molded articles (Paragraphs [0001]-[0002] and [0023]-[0026]). Thus, it would have been obvious to one of ordinary skill in the art to add the claimed amount of solid glass fibers taught by EP ‘757 to the polyamide-based molding composition discussed in Sutterlin et al., with a reasonable expectation of successfully providing the same with desired reinforcing properties for molded articles.
Additionally, Sutterlin et al. do not specify their impact modifier as including polyolefin and polyether block amide (PEBA-1) having a particular flexural modulus as required by the claims of the present application. Nevertheless, Deyrail et al. disclose the addition of impact modifiers having a flexural modulus of less than 100 MPa (which is encompassed by the claimed flexural modulus of less than 200 MPa) including a polyolefin or a polyolefin coupled with a polyether block amide (PEBA) to polyamide-based molding compositions to provide the same with advantageous mechanical properties useful for manufacturing articles (Paragraphs [0002], [0004], [0028], [0058], [0060], [0078] and [0123]). Thus, it would have been obvious to one of ordinary skill in the art to use the impact modifiers including polyolefin and polyether block amide (PEBA-1) having the claimed flexural modulus taught by Deyrail et al. in the polyamide-based molding composition of Sutterlin et al., with a reasonable expectation of successfully obtaining advantageous mechanical properties useful for manufacturing articles.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
6. Claims 1-24 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-5, 8-14, 16-18, and 20 of co-pending U.S. Application No. 18/001,138 (hereinafter referred to as “US Appl. ‘138”; corresponding to US PG PUB 2023/0212393) in view of English Translation of EP 24127574 (hereinafter referred to as “EP ‘757”).
The claims of US Appl. ‘138 and the present application are directed to a molding composition. The claims of US Appl. ‘138 also recite that the molding composition comprises by weight, 38 to 79.5 % of at least semi-crystalline aliphatic polyamide (which overlaps with the presently claimed 38-87%, 53-80%, and 48-78% of at least one semi-crystalline aliphatic polyamide), 10 to 20% of hollow glass beads (which overlaps with the presently claimed 3-25% of hollow glass beads), 5.5-20 % of at least one impact modifier having a flexural modulus of less than 200 MPa, as measured according to standard ISO 178:2010 at 23°C (which overlaps with the presently claimed 5-15% of impact modifier), and 0.1-1% of at least one additive (encompassed by the presently claimed 0-2% of at least one additive), the sum of the proportions of each constituents (A)-(E) of the composition being equal to 100%, wherein the impact modifier is selected from polyether block amide (PEBA), a polyolefin, and mixtures thereof.. The claims of US Appl. ‘138 recite that the semi-crystalline is obtained by the polycondensation of at least one C6-C18 amino acid, of at least one C6-C18 lactam, or of at least one C4-C36 aliphatic diamine with at least one C4-C36 aliphatic dicarboxylic acid, or mixtures thereof, and selected from PA11 and PA12, which according to present claims 17-20 correspond to the presently claimed semi-crystalline aliphatic polyamide having an average number of carbon atoms relative to the nitrogen atom greater than or equal to 8. The claims of the present application and US Appl. ‘138 also recite that the PEBA has a density greater than or equal 1, determined according to ISO 1183-3:1999. The claims of the present application and the US Appl. ‘138 further recite that the hollow glass beads have a mean volume diameter d50 of 10-80 µm, as measured by laser diffraction according to ASTM B 822-17, have a real density of 0.10-0.65 g/cm3, measured according to ASTM D 2840-59 with a gas pycnometer and helium as the measuring gas, and have a compression resistance of at least 50 MPa, as measured according to ASTM D 3102-72 in glycerol. Moreover, the claims of the present application and US Appl. ‘138 recite that the polyolefin is functionalized with a function selected from maleic anhydride, and additives selected from fillers, dyes, stabilizers, plasticizer, whitening agents, antioxidants, lubricants, natural waxes, impact modifiers, and mixtures thereof. Additionally, the claims of the present application and US Appl. ‘138 recite an article obtained by injection molding the composition above, and a method of using the composition above for the manufacture of an article via injection molding.
However, the claims of US Appl. ‘138 do not specifically mention the addition of solid glass fibers and its particular amount as required by the claims of the present application.
Nevertheless, EP ‘757 teaches the use of 15-45 wt% of a reinforcing agent such as solid glass fibers (which overlaps with the presently claimed 5-30% and 5-10% by weight of glass fibers) to provide advantageous reinforcing properties to polyamide based molding composition for molded articles (Paragraphs [0001]-[0002] and [0023]-[0026]).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to add the presently claimed amount of solid glass fibers taught by EP ‘757 to the polyamide-based molding composition recited in the claims of US Appl. ‘138, with a reasonable expectation of successfully providing the same with advantageous reinforcing properties for molded articles.
Finally, the claims of US Appl. ‘138 do not specify the composition as having a particular density as required by claims 1, 6 and 11 of the present application. Since the claims of US Appl. ‘138 and EP ‘757 collectively suggest the presently claimed molding composition for the reasons set forth above, the presently claimed particular density property would have naturally followed. See MPEP section 2145, II (“The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious”). See also MPEP section 2113.01 “Products of identical chemical composition cannot have mutually exclusive properties. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present.”
This is a provisional nonstatutory double patenting rejection.
7. For record purposes only, it is noted that there are no prior art rejections of present claim 12 at this time.
Correspondence
8. Any inquiry concerning this communication or earlier communications from the examiner should be directed to HANNAH J PAK whose telephone number is (571)270-5456. The examiner can normally be reached 8-5 PM; M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther, can be reached at (571)-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HANNAH J PAK/Primary Examiner, Art Unit 1764
1 Cited in the IDS submitted by applicants on 09/23/2025.
2 Cited in the IDS submitted by applicants on 06/11/2023.
3 A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (MPEP 2144.05)
4 Cited in the IDS submitted by applicants on 06/11/2023.