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 .
Any new grounds of rejection set forth below are necessitated by Applicant’s amendment.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
Claims 1, 5-10, 12-21 are pending. Claims 12-21 are withdrawn. Accordingly, claims 1, 5-10 are under examination.
Claim Rejections - 35 USC § 103
Claims 1, 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Tamura et al. (US 3,620,904) and Ieda et al. (EP 3 081 598).
Regarding claim 1: Tamura et al. is directed to a copolyamide comprising a polyamide salt prepared by condensation polymerization of diamine and dicarboxylic acid; and (2) copolymerizing the polyamide salt with a polycapramide of caprolactam or aminocaproic acid (equivalent to an α,ω-aminocarboxylic acid).
Example 8 comprises a method of utilizing sebacic acid and m-xylylenediamine.
The amount of caprolactam or aminocaproic acid is 75-95 percent by weight based on the total weight of the polyamide salts and caprolactam or aminocaproic acid (col. 3 ll. 25-35), which at least overlaps the claimed molar ratio of lactam or α,ω-aminocarboxylic acid to polyamide salt of 96:4 to 50:50.
A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art. In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
A salt formed comprises a 1:1 ratio of diamine to dicarboxylic acid.
Example 1 comprises a method comprising a prepared polyamide salts of diamines and dicarboxylic acids in a 1:1 ratio including 9 parts by weight of hexamethylenediamine isophthalic acid salt (MW 282, 0.032 mol) and 1 part 1,11-diamino-6-undecanol terephthalic acid salt (MW 368, 0.003 mol) copolymerized with 85 parts by weight of ɛ-caprolactam (MW 113, 0.75 mol) and 5 parts by weight ɛ-aminocaprolactam (MW 128, 0.039 mol), resulting in a molar ratio of 96:4 to 50:50, or about 96:4.
Tamura doesn’t mention temperature and pressure of step (2).
Ieda is directed to a polyamide composition wherein the polyamide comprises a diamine, dicarboxylic acid, and a lactam unit and/or aminocarboxylic acid unit ([0022]-[0091] Idea) wherein a first step of reacting the dicarboxylic acid and diamine, followed by a second step of 200-270 ˚C to provide a concentrated solution, and a second copolymerization which is performed at a pressure less than atmospheric, or less than 1 bar ([0119]-[0121] Ieda). The working examples include a pressurized step for 1-3 hours and a second depressurized step of 0.1-12 hours. One skilled in the art would have been motivated to have selected the temperature and pressure and time conditions in the method of Tamura to produce a polyamide for improved color and reduced tensile elongation due to thermal degradation ([0108] Idea). Therefore, it would have been obvious to one skilled in the art to have selected the temperature and pressure and time conditions in the method of Tamura to arrive at claim 11 of the present invention.
Regarding claim 6: Tamura doesn't specifically recite step (1) relative viscosity. However, the polyamide produced in step (1) is substantially identical to the polyamide produced in step (1) of the instant invention.
Case law holds that the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I).
Hence, Tamura anticipates or suggests a polyamide having a relative viscosity in step (1) within the scope of the claims. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
A rejection under 102/103 is proper when the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP §§ 2112 - 2112.02.
Regarding claim 7: Lactams include caprolactam (col. 3 ll. 25-28)
Regarding claim 8: α,ω-aminocarboxylic acids include aminocaproic acid is disclosed (col. 3 ll. 25-28).
Claims 5, 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Tamura and Ieda as applied to claim 1 above, and further in view of Yagi et al. (US 2022/0064443).
Regarding claim 5: Tamura doesn’t mention a temperature or time of step (1).
Yagi is directed to a process of making a polyamide comprising reacting a dicarboxylic and a diamine to form a salt. The diamine and dicarboxylic acid are polymerized at 180-270 ˚C for 0.5-10 hours ([0048] Yagi). One skilled in the art would have been motivated to have selected the temperature and reaction time in Tamura to polymerize the dicarboxylic acid and diamine. Therefore, it would have been obvious to one skilled in the art to have selected the temperature and reaction time in Tamura to arrive at claim 5 of the present invention.
Regarding claims 9-10: Tamura doesn’t mention a phosphorus based compound as a thermal stabilizer and catalyst.
Yagi discloses a phosphorus based catalyst of phosphorous acid,
hypophosphorous acid, and salts thereof, which are defined by the present invention as a thermal stabilizer and a catalyst. Case law holds that a product and its properties are inseparable. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). In re Papesch, 315 F.2d 381, 391, 137 USPQ 43, 51 (CCPA 1963).
One skilled in the art would have been motivated to have include a catalyst of phosphorous acid, hypophosphorous acid, and salts thereof in the method of Tamura to prevent discoloration and increase the degree of polymerization ([0049] Yagi). Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have included a phosphorus based catalyst in Tamura.
Response to Arguments
Applicant's arguments filed 7/22/2026 (herein “Remarks) have been fully considered but they are not persuasive.
Applicant argues (p. 8 Remarks) according to Ieda at [0119]-[0121] all monomers of the polyamide composition are introduced into the reaction system and subjected to polymerization, followed by discharge through a flasher and depressurization. This, Ieda describes a continuous aqueous solution polymerization process in which all monomers are dissolved in water and polymerization proceeds while water is evaporated. By contrast, Tamura describes a multistage process. The pressurization/depressurization profile of Ieda is specifically designed to remove water and concentrate a monomer containing aqueous solution which had comprised a large amount of water. Accordingly, one skilled in the art would not be motivated to incorporate the process of Ieda into the process of Tamura which instead involves melt polymerization of an already dehydrated polyamide salt. Tamura is directed to a specific polyamide salt composition derived from diamines having functional groups such as C=O and CHOH.
This argument is not found persuasive. Ieda specifically teaches the process is a continuous type hot melt polymerization method at [0118]. Further, both Tamura and Ieda are directed to a process in which a step (1) comprises preparing the polyamide salt and subsequently the polyamide salt is combined with a lactam or aminocarboxylic acid. This condensation reaction produces water as understood by one skilled in the art. Hence, pressurization/depressurization to remove water in step (2) which also includes copolymerization as taught by Ieda is well within the scope of Tamura, as well as within the skill level of one skilled in the art.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT T BUTCHER whose telephone number is (571)270-3514. The examiner can normally be reached Telework M-F 9-5 Pacific Time Zone.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, 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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/ROBERT T BUTCHER/Primary Examiner, Art Unit 1764
