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 .
This application is a national stage entry under 35 U.S.C. §371 of International Application No. PCT/KR2021/019248 filed 12/17/2021.
Acknowledgment is made of applicant's claim for foreign priority under 35 U.S.C. §119(a)-(d) by Application No. KR 10-2020-0183538 filed 12/24/2020, which papers have been placed of record in the file.
Claims 1-21 are pending. Claims 12-21 are withdrawn. Accordingly, claims 1-11 are under examination.
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 3 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.
Regarding claim 3, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Appropriate correction and/or clarification is required.
Election/Restrictions
Applicant’s election without traverse of Group I claims 1-11 in the reply filed on 3/20/2026 is acknowledged.
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 1-2, 4, 6-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tamura et al. (US 3,620,904).
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). 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.
Regarding claim 2: Dicarboxylic acids include glutaric acid, adipic acid, pimelic acid, suberic acid, sebacic acid, terephthalic acid, isophthalic acid (col. 2 ll. 44-55).
Regarding claim 3: Diamines include hexamethylene-diamine (equivalent to 1,6-diaminohexane), nonamethylenediamine (equivalent to 1,9-diaminononane), undecamethylenediamine, dodecamethylenediamine (equivalent to 1,12-Diaminododecane), and aromatic diamines including xylylenediamine (col. 3 ll. 9-15).
Regarding claim 4: Example 8 comprises a method of utilizing sebacic acid and m-xylylenediamine.
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).
Claim Rejections - 35 USC § 102/103
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.
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.
Claim 6 is rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Tamura et al.
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.
Claims 5, 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Tamura 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.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Tamura as applied to claim 1 above, and further in view of Ieda et al. (EP 3 081 598).
Regarding claim 11: Tamura doesn’t mention step (2) temperature and pressure.
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.
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
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