DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-16 are pending as amended on 9/3/2026. Claims 9, 10, 15 and 16 stand withdrawn from consideration.
No new grounds of rejection are set forth. Therefore, this action is properly made final.
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
Claim Rejections - 35 USC § 102
Claim(s) 1, 2 and 4-8 stand rejected under 35 U.S.C. 102(a)(1) as being anticipated by Coquard et al (US 4343743). The reasons are the same as previously made of record in the action mailed on 5/6/2026.
Claim Rejections - 35 USC § 103
Claim(s) 1-8 and 11-14 stand rejected under 35 U.S.C. 103 as being unpatentable over Coquard et al (US 4343743). The reasons are the same as previously made of record in the action mailed on 5/6/2026.
Claim(s) 1-8 and 11-14 stand rejected under 35 U.S.C. 103 as being unpatentable over Coquard et al (US 4343743) in view of Manuel et al (Segmented block copolymers based on poly(butylene terephthalate) and telechelic polyesters and polyamides of dimerized fatty acids, Polymer, Volume 34, Issue 20, October 1993, Pages 4325-4329). The reasons are the same as previously made of record in the action mailed on 5/6/2026.
Response to Arguments
Applicant's arguments filed 9/3/2026 have been fully considered.
Applicant argues (p 6) that in Example 2 of Coquard, the prepolyamide product is immediately used to synthesize a polyesteramide, that Coquard does not characterize the intermediate as a standalone, stable product, and that an unisolated, transient reaction mixture is not a teaching of the claimed telechelic polyamide composition.
Applicant similarly argues (pp 7-8) that Coquard provides no motivation or teaching “to stop the reaction, isolate the intermediate prepolymer, or produce an independent telechelic polyamide product…”
However, the prepolyamide of Coquard’s example 2 is obtained from a first reaction, cooled “to ambient temperature” (col 6, lines 25-27), subjected to end group determination, and then combined with further reactants in a second reaction to produce a higher molecular weight polymer (col 6, lines 30-50). Coquard’s intermediate polyamide product in Example 2 is therefore not “transient,” and, must have sufficient stability to determine its end groups (see process in col 5, lines 35-44) and characterize its molecular weight. Coquard provides another example (example 3) wherein the prepolyamide intermediate is ground, dried and characterized (col 7, lines 1-15) prior to being used in a reaction to form a higher molecular weight polymer (col 7, lines 17-20).
As evidenced by the fact that Coquard’s Example 2 polyamide product was cooled and subjected to analysis to determine its end groups, and as further evidenced by other examples in Coquard (e.g., example 3 wherein polyamide intermediate is dried and ground), there is no reaction in Coquard which needs to be stopped in order to obtain a prepolyamide intermediate which meets the instant claims. Rather, Coquard synthesizes a stable polyamide prepolymer to be used in substantially the same manner as taught in the instant specification (i.e., as an intermediate for making a higher molecular weight polymer, including by reacting the polyamide intermediate with co-reactants that form chemical bonds with the reactive groups on the polyamide, see, e.g., [0031] and [0078] in the instant specification). Applicant’s argument is therefore not persuasive for at least the reason that Coquard’s teaching to utilize a prepolyamide in a subsequent reaction to form a higher molecular weight polymer does not establish that the prepolyamide is a “transient” or unstable intermediate.
Applicant argues (pp 6 and 8) that Coquard does not confirm that the unisolated intermediate in Example 2 meets the difunctionality requirement of claim 1. However, as set forth in the rejection of record, it was known in the art that, when forming a polyamide from diamine and dicarboxylic monomers, using a molar excess of one of the monomers results in a polymer having end groups derived from the excess monomer (e.g., COOH end groups when using excess dicarboxylic acid monomer). [Applicant’s remarks (p 10) acknowledge that “the intermediate prepolyamide of Coquard relies on an excess of diacid to produce carboxylic acid-terminated blocks for reaction with diols.”] Coquard discloses methods of determination of end groups in col 5, lines 35-45, and characterizes the prepolyamide of example 2 as “containing COOH end groups.” Coquard does not teach that the prepolyamide of example 2 contains amine end groups. Considering Coquard’s use of a molar excess of dicarboxylic acid monomer, as well as Coquard’s characterization of the prepolymer as “containing COOH end groups” and the absence of any disclosure in Coquard’s example 2 of amine end groups, the examiner maintains that Example 2 of Coquard contains a disclosure of a telechelic polyamide having substantially all carboxylic end groups which meets the instant claims, as set forth in the rejection of record.
As to the rejection over Coquard in view of Manuel:
Applicant argues (p 9) that Manuel does not teach using mixed primary/secondary diamine systems to yield a polyamide having less than 25% tertiary amide linkages. However, as discussed in the rejection of record, the explanation in Manuel regarding how a tertiary amide group structure affects polyamide properties (see paragraphs 37-38 of the previous action) is sufficient to have suggested to one skilled in the art to select any appropriate content of tertiary amide groups in order to achieve any desired degree of the effect (reduction in hydrogen bonding and therefore reduction in Tg) disclosed by Manuel. Therefore, Applicant’s argument that the rejection is based on hindsight is not persuasive, as the rejection relied solely on teachings and guidance within the cited prior art references, and not on any information gleaned solely from Applicant’s disclosure.
Applicant argues that (p 10) that Manuel’s conclusion regarding the order of Tg decrease in SBC contradicts the assertion that one would look to Manuel to lower the Tg of Coquard’s prepolymer. However, Applicant has not explained how Manuel’s conclusion contradicts the statements in the rejection of record. Rather, the trend taught in Manuel’s conclusion is consistent with the findings in the rejection of record that the Tg of a copolymer formed from a tertiary polyamide is lower than the Tg of a copolymer formed from a secondary polyamide.
Applicant argues (p 10) that, based on Manuel’s disclosed trend, one would have used a telechelic polyester, rather than a telechelic polyamide, in order to synthesize a copolymer with a low Tg. However, primary reference Coquard is drawn to the formation of copolyesteramides. As set forth in the rejection of record, Manuel discloses the relationship between structure (type of amide group) and properties (hydrogen bonding, Tg), and therefore, suggests a way to modify Coquard to lower Tg and improve pliability (i.e., by including an appropriate content of tertiary amide groups in Coquard’s prepolyamide intermediate). The fact that using yet another type of prepolymer suitable for applications requiring even lower Tg values may have been disclosed in, or obvious in view of, the prior art fails to establish that the cited prior art does not suggest a polyamide encompassed by the instant claims (for the reasons set forth in the rejection of record). Manuel’s teaching that telechelic polyesters are “preferred as soft building blocks” to synthesize SBCs with low Tg values is not a teaching away from selecting one of the other types of prepolymers (including a polyamide prepolymer having an appropriate content of tertiary amide groups) in order to achieve a desired reduction in hydrogen bonding and lowering of Tg as required for a given application.
Applicant argues (p 10) that Manuel’s telechelic polyamides are prepared using a diamine excess to yield amine-terminated telechelics, while Coquard relies on an excess of diacid to produce carboxylic acid-terminated telechelics. Applicant argues that the rejection does not explain how one would use Manuel’s amine excess system with Coquard’s acid excess system.
However, the rejection of record does not rely on the bodily incorporation of Manuel’s telechelic into Coquard’s disclosure. That is, the rejection does not establish the obviousness of replacing Coquard’s telechelic with Manuel’s telechelic. Rather, as explained in the rejection of record, Manuel uses hexamethylenediamine (i.e., the same diamine monomer used in Coquard) to form polyamide having secondary amide groups with no methyl substitution, and dimethylhexamethylenediamine (i.e., hexamethylenediamine containing a methyl substituent on each amine group) to form polyamide having tertiary amide groups. The rejection of record explains (paragraph 38) that one would provide an appropriate content of tertiary amide groups in Coquard’s telechelic by substituting an appropriate proportion of Coquard’s hexamethylenediamine monomer for Manuel’s N,N’-dimethylhexamethylenediamine monomer. Therefore, Applicant’s argument is unpersuasive because it fails to acknowledge the explanation given in paragraph 38, and, because the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RACHEL KAHN whose telephone number is (571)270-7346. The examiner can normally be reached Monday to Friday, 8-5.
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/RACHEL KAHN/ Primary Examiner, Art Unit 1766
