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
Claims 1-27 are objected to because of the following informalities:
Regarding claim 1, in line 15, a comma should be inserted after form and the word “and” deleted.
Regarding claim 9, in line 5, the number 2 in both -NH2 and -CO2H should be a subscript; and line 6 should end with the word “and.”
Regarding claim 10, in line 2, the number 2 in -NH2 should be a subscript; and “an oxazinone, an oxazolinone and an epoxy” in lines 4 and 5 should be deleted as it is a repeat.
Regarding claim 11, in line 2, “wherein it comprises” should be replaced with “comprising” in order to clarify the meaning of “it”; in lines 2 and 9, the number 2 in -NH2 should be a subscript.
Regarding claim 15, in line 2, the number 2 in CO2H should be a subscript.
Regarding claim 16, in line 2, the number 2 in CO2H should be a subscript.
Regarding claim 19, in line 3, “wherein it comprises” should be replaced with “comprising” in order to clarify the meaning of “it.”
Regarding claim 20, in lines 1 and 2, “wherein it comprises” should be replaced with “comprising” in order to clarify the meaning of “it”; and the word “and” should be added at the end of line 7.
Regarding claim 21, in lines 1 and 2, “wherein it comprises” should be replaced with “comprising” in order to clarify the meaning of “it.”
Regarding claims 23-27, in line 2 of each claim, “wherein it is” should be replaced with “comprising” in order to clarify the meaning of “it.”
Regarding claims 2-8, 12-14, 17, 18, and 22, these claims depend from an objected to claim and include all of the limitations thereof. Therefore, they are also subject to the objection.
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.
Claims 1-27 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.
Regarding claim 1, claim 1 recites the limitation "the content of end functions" in line 5. There is insufficient antecedent basis for this limitation in the claim. For the purpose of further examination, this phrase will be interpreted as “a content of end functions.”
Claim 1 recites the limitation "reactive prepolymers" in lines 10 and 11. There is insufficient antecedent basis for this limitation in the claim. For the purpose of further examination and clarity, this phrase will be interpreted as “the reactive semicrystalline polyamide prepolymers.”
Claim 1 recites the limitation "the final nonreactive semicrystalline polyamide polymer" in lines 12 and 13. There is insufficient antecedent basis for this limitation in the claim. For the purpose of further examination, this phrase will be interpreted as “a nonreactive semicrystalline polyamide polymer.”
Claim 1 recites the limitation "the thermoplastic matrix" in line 13. There is insufficient antecedent basis for this limitation in the claim. For the purpose of further examination, this phrase will be interpreted as “the thermoplastic composite material.”
Claim 1 recites the limitation "the implementation temperature" in lines 19 and 21. There is insufficient antecedent basis for this limitation in the claim. For the purpose of further examination, this phrase will be interpreted as “an implementation temperature.”
In lines 24 and 25, the claim recites the optional inclusion of at least one meltable or non-meltable additive with a volume-mean diameter D50 of from 1 to 50 µm. It is not clear if the volume-mean diameter applies to both the meltable and non-meltable additive or only the non-meltable additive. For the purpose of further examination, this limitation will be interpreted as the additive being selected from at least one of a meltable additive or a non-meltable additive with a volume-mean diameter D50 of from 1 to 50 µm.
Claim 1 recites the limitation "said semicrystalline polyamide prepolymer" in lines 27 and 28. There is insufficient antecedent basis for this limitation in the claim. For the purpose of further examination, this phrase will be interpreted as “said reactive semicrystalline polyamide prepolymer.”
Claim 1 recites the limitation "said composition" in line 27. There is insufficient antecedent basis for this limitation in the claim. For the purpose of further examination, this phrase will be interpreted as “said reactive composition.”
In lines 27-33, the claim recites method steps for how the reactive composition is obtained and these steps include melting the meltable components with the prepolymer and milling the melted mixture into powder form. However, the flame retardant and optional additive can be non-meltable and already have a volume-mean diameter that is smaller than what is claimed in lines 31-32. Therefore, it is not clear how these method steps are performed when non-meltable components are selected. For the purpose of further examination, since these limitations are product-by-process limitations and the patentability of a product does not depend on its method of production, these limitations will be given little patentable weight because if the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, in line 4 claim 1 recites the broad recitation an average molecular mass of less than or equal to 8000 g/mol, and the claim also recites in lines 27 and 28 an average molecular mass of less than or equal to 5000 g/mol, which is the narrower statement of the range/limitation. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For the purpose of further examination, this limitation will be given its broadest reasonable interpretation of an average molecular mass of less than or equal to 8000 g/mol.
Claim 1 recites the limitation "said composition" in line 31. There is insufficient antecedent basis for this limitation in the claim. For the purpose of further examination, this phrase will be interpreted as “said reactive composition.”
Claim 1 recites the limitation "said reactive polyamide prepolymer" in line 34. There is insufficient antecedent basis for this limitation in the claim. For the purpose of further examination, this phrase will be interpreted as “said reactive semicrystalline polyamide prepolymer.”
Line 40 recites where X is a linear aliphatic C4 to C18, but it does not state what type of group X is. For the purpose of further examination, this limitation will be interpreted as X is a linear aliphatic C4 to C18 diamine. This interpretation is taken from the deleted part of the claim.
Claim 1 recites the limitation "the crystallization temperature" in line 53. There is insufficient antecedent basis for this limitation in the claim. For the purpose of further examination, this phrase will be interpreted as “a crystallization temperature of the reactive semicrystalline polyamide prepolymer.”
Regarding claim 3, claim 3 recites the limitation "the heat of crystallization" in line 2. The claim also recites the limitation “the semicrystalline polyamide polymer” in line 2. There is insufficient antecedent basis for these limitations in the claim. For the purpose of further examination, these limitations will be interpreted as “wherein a heat of crystallization of the final nonreactive semicrystalline polyamide polymer.”
Regarding claim 9, claim 9 recites the limitation "said thermoplastic polyamide polymer" in line 4. There is insufficient antecedent basis for this limitation in the claim. For the purpose of further examination, this phrase will be interpreted as “said final nonreactive semicrystalline polyamide polymer.”
Regarding claim 11, in line 2, “bearing -NH2” is enclosed in parentheses. It is unclear if this is meant to be part of the claim. For the purpose of further examination, it will be interpreted as being part of the claim. However, correction is required.
Claim 11 recites the limitation "said semicrystalline polyamide polymer" in lines 2 and 3. There is insufficient antecedent basis for this limitation in the claim. For the purpose of further examination, this phrase will be interpreted as “said final nonreactive semicrystalline polyamide polymer.”
Claim 11 recites the limitation "the thermoplastic matrix" in line 3. There is insufficient antecedent basis for this limitation in the claim. For the purpose of further examination, this phrase will be interpreted as “the thermoplastic composite material.”
Claim 11 recites the limitation "said carboxylic anhydride group" in lines 7 and 8. There is insufficient antecedent basis for this limitation in the claim. For the purpose of further examination, this phrase will be interpreted as “said cyclic carboxylic anhydride group.”
In line 8, the claim recites that the cyclic carboxylic anhydride group is “possibly” in acid, ester, amide, or imide form. The use of the word “possibly” makes this limitation unclear as one does not know if the group must be in one of those forms or if it is simply a suggestion. For the purpose of further examination, the limitation will be given its broadest reasonable interpretation and that is that the group is not required to be in one of those functional forms.
Claim 11 recites the limitations "said thermoplastic polymer of the matrix is the product of the polymerization reaction by extension of said prepolymer a1) by said extender a2)" in lines 11-13. There is insufficient antecedent basis for these limitations in the claim. For the purpose of further examination, this phrase will be interpreted as “said final nonreactive semicrystalline polyamide polymer of the thermoplastic composite material is a product of a polymerization reaction by extension of said amino prepolymer a1) by said chain extender a2).”
Regarding claim 12, claim 12 recites the limitation "said extender a2)" in line 2. There is insufficient antecedent basis for this limitation in the claim. For the purpose of further examination, this limitation will be interpreted as “said chain extender a2).”
Regarding claim 13, claim 13 recites the limitation "said extender a2)" in line 2. There is insufficient antecedent basis for this limitation in the claim. For the purpose of further examination, this limitation will be interpreted as “said chain extender a2).”
Regarding claim 14, claim 14 recites the limitation "said extender a2)" in line 2. There is insufficient antecedent basis for this limitation in the claim. For the purpose of further examination, this limitation will be interpreted as “said chain extender a2).”
Regarding claim 15, 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). For the purpose of further examination, the limitation following the phrase will not be treated as being part of the claim.
Regarding claim 17, this claim is directed to the use of a reactive composition for the preparation of a flame-retardant composite fibrous material. However, this claim is indefinite because it merely recites a use without any active, positive steps delimiting how this use is actually practiced. Ex parte Erlich, 3 USPQ2d 1011 (Bd. Pat. App. & Inter. 1986). MPEP 2173.05(q).
Claim 17 recites the limitation "said fibrous material" in lines 2 and 3. There is insufficient antecedent basis for this limitation in the claim. For the purpose of further examination, this phrase will be interpreted as “said flame-retardant composite fibrous material.”
Claim 17 recites the limitation "said composition" in lines 3 and 4. There is insufficient antecedent basis for this limitation in the claim. For the purpose of further examination, this phrase will be interpreted as “said reactive composition.”
Regarding claim 18, this claim is directed to the use of a reactive composition for the preparation of a flame-retardant composite fibrous material. However, this claim is indefinite because it merely recites a use without any active, positive steps delimiting how this use is actually practiced. Ex parte Erlich, 3 USPQ2d 1011 (Bd. Pat. App. & Inter. 1986). MPEP 2173.05(q).
Regarding claim 19, claim 19 recites the limitation "at least one composition as defined in claim 1" in lines 3 and 4. There is insufficient antecedent basis for this limitation in the claim. For the purpose of further examination, this phrase will be interpreted as “at least one reactive composition as defined in claim 1” as the preamble of claim 1 states the claim is directed to a reactive composition.
Regarding claim 20, claim 20 recites the limitation "the at least one composition" in lines 3 and 4. There is insufficient antecedent basis for this limitation in the claim. For the purpose of further examination, this limitation will be interpreted as “the at least one reactive composition.”
Claim 20 recites the limitation "the composition" in line 5. There is insufficient antecedent basis for this limitation in the claim. For the purpose of further examination, this limitation will be interpreted as “the reactive composition.”
In line 6, claim 20 recites the phrase “as the case may be” and this phrase makes the claim indefinite. It is not clear if the polymerization reaction must proceed by polycondensation or polyaddition reaction; or if those are simply examples of how the reaction could go forward. For the purpose of further examination, this phrase should be removed and the polymerization reaction must be one of a polycondensation reaction or a polyaddition reaction.
Regarding claim 22, this claim is unclear as it claims a mechanical or structural part of a thermoplastic composite material, but it is also based on a thermoplastic composite material as defined in claim 21. Are these composite materials the same material? For the purpose of further examination, claim 22 will be interpreted as “A mechanical or structural part comprising the thermoplastic composite material as defined in claim 21.”
Regarding claims 2, 4-8, 10, 16, 21, and 23-27, these claims depend from a rejected claim and include all of the limitations thereof. Therefore, they are also rejected.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 17 and 18 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claims do not fall within at least one of the four categories of patent eligible subject matter because the claims are directed to the use of a composition.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-19, 21-23, and 25-27 are rejected under 35 U.S.C. 103 as being unpatentable over Capelot et al. (US 2018/0251601) in view of Sakai et al. (WO 2019/220968). For convenience, the citations below for Sakai et al. are taken from English language equivalent, US 2021/0253856.
Regarding claim 1, Capelot et al. teaches a thermoplastic matrix comprising from 50% to 100% by weight of a semi-crystalline polyamide polymer and from 0% to 50% by weight of at least one additive (¶27). The semi-crystalline polyamide polymer being a reactive composition comprising at least one reactive polyamide prepolymer which is a precursor of said semi-crystalline polyamide polymer (¶29-30). The reactive polyamide prepolymer comprises at least one BACT/XT copolyamide in which BACT is a unit comprising an amide unit present at a molar content ranging from 20% to 70% wherein BAC is 1,3-bis(aminomethyl)cyclohexyl (1,3-BAC), and T is terephthalic acid (¶32-33). XT is a unit comprising an amide unit present at a molar content ranging from 30% to 80% wherein X is a C9 to C18 aliphatic diamine, and wherein T is terephthalic acid (¶34). Capelot et al. also teaches that in the copolyamide, no more than 30 mol % relative to the total amount of monomers, can be formed by lactams or aminocarboxylic acids (corresponds to unit Z of the Z/BACT/XT copolyimide). The semi-crystalline polyamide polymer has a melting point Mp < 290° C (¶120), a glass transition temperature Tg > 120° C (¶121), and a difference between the melting point and the crystallization temperature Mp−Tc < 40° C (¶123). The reactive prepolymers have a number-average molecular weight Mn ranging from 500 to 10,000 (¶185). The semi-crystalline polyamide prepolymer undergoes polymerization by polycondensation with the removal of condensation products, or by polyaddition reaction with a chain extender (¶214). Further, the at least one additive may be a flame retardant such as a metal salt of a phosphinic acid (¶72). Additionally, the at least one meltable or non-meltable additive is not a required component of the claimed composition because it can be present in 0% by weight.
Capelot et al. does not teach that the thermoplastic matrix comprises from 5% to 35% by weight of at least one flame retardant chosen from an at least partially meltable flame retardant in powder form and a non-meltable flame retardant in premilled powder form with a volume-mean diameter D50 of from 1 to 50 microns. However, Sakai et al. teaches a resin composition comprising from 0.1 to 20% by mass of a phosphinic acid metal salt-based flame retardant (¶113, 133). The phosphinic acid metal salt is preferably in powder form and has a particle size of 40 microns or less (¶128). Therefore, regardless if the flame retardant is partially meltable or non-meltable, all of the claim limitations for either situation are met. Capelot et al. and Sakai et al. are analogous art because they are from the same field of endeavor as that of the instant invention, namely resin compositions containing flame retardants that are used for molded articles which are excellent in mechanical properties and heat resistance. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to add from 0.1 to 20% by mass of a phosphinic acid metal salt flame retardant, as taught by Sakai et al., to the composition, as taught by Capelot et al., and would have been motivated to do so because Sakai et al. teaches that using this amount of this type of flame retardant in a resin composition has an effect of improving flame resistance as well as maintaining good appearance (¶133).
As for the limitations regarding how the composition is obtained, these are product-by-process limitations. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). In this case, there is no evidence on the record that the method of production produces a composition that is not the same as or obvious from the product of the prior art.
However, the limitation regarding the particle size of the milled composition into powder form is a structural limitation of the composition. Capelot et al. does not teach that the particle diameter of the composition after milling is from 10 to 300 microns. However, Capelot et al. does teach granulating the formed composition (¶253) and the size of the particles will depend on how the composition is to be used. Therefore, the particle size is a result-effective variable. It is well known in the art to optimize result effective variables, such as particle size. MPEP §2144.05. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05 II.A. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to optimize the particle size of the composition to 10 to 300 microns, and would have been motivated to do so in order to provide ease of molding.
Regarding claim 2, the instant specification teaches that the term “fluidizable” means that which may be fluidized or which may fluidize (¶24, PG-PUB). Depending on the temperature and/or pressure, many compositions can be fluidized. In this case, since the prior art teaches a composition comprising the same components as those claimed, the Office finds that the composition of the prior art is “fluidizable.”
Regarding claim 3, Capelot et al. teaches that the heat of crystallization of the semi-crystalline polyamide polymer, measured by differential scanning calorimetry (DSC) according to the standard ISO 11357-3:2013, is greater than 40 J/g (¶124).
Regarding claims 4 and 5, Capelot et al. teaches that XT is a unit wherein X is a C10 or C12 linear aliphatic diamine, and T is terephthalic acid (¶34), wherein the C10 linear aliphatic diamine is 1,10-decanediamine (¶139) and the C12 linear aliphatic diamine is 1,12-dodecanediamine (¶102). These compounds are the same as 1,10-decamethylenediamine and 1,12-dodecamethylenediamine, respectively.
Regarding claim 6, Capelot et al. teaches a copolymer of 10T/BACT/11, wherein 11 is derived from 11-aminoundeanoic acid (a C11 amino acid) (Examples 18 and 19, Table IV).
Regarding claim 7, Capelot et al. teaches that the reactive semicrystalline polyamide prepolymer comprises at least one reactive prepolymer carrying, on the same chain, two end functions X′ and Y′ which are respectively coreactive with one another by condensation, with X′ and Y′ being amine and carboxyl or carboxyl and amine, respectively (¶147).
Regarding claim 8, Capelot et al. teaches that the reactive semicrystalline polyamide prepolymer comprises at least two polyamide prepolymers which are reactive with one another and which each respectively carry two identical end functions X’ or Y′, said function X′ of a prepolymer being able to react only with said function Y′ of the other prepolymer (¶151).
Regarding claim 9, Capelot et al. teaches that the reactive semicrystalline polyamide prepolymer comprises a1) at least one prepolymer of said thermoplastic polyamide polymer, carrying n end reactive functions X′, chosen from: —NH2, —CO2H and —OH, and/or a2) at least one chain extender Y-A′-Y, with A′ being a hydrocarbon biradical of nonpolymeric structure, carrying two identical end reactive functions Y, which are reactive by polyaddition with at least one function X′ of said prepolymer a1) (¶155, 156).
Regarding claim 10, Capelot et al. teaches that wherein X’ is NH2 or OH, and Y is chosen from a maleimide, an optionally blocked isocyanate, an oxazinone, an oxazolinone and an epoxy (¶158, 160).
Regarding claim 11, Capelot et al. teaches a reactive composition comprising a1) at least one amino prepolymer, bearing —NH2, of said semicrystalline polyamide polymer of the thermoplastic matrix, and a2) at least one non-polymeric chain extender bearing a cyclic carboxylic anhydride group, having as substituent a group comprising an ethylenic or acetylenic unsaturation, said carboxylic anhydride group possibly being in acid, ester, amide or imide form with said extender a2) being present in a content corresponding to an a2)/(—NH2) molar ratio of less than 0.36, and wherein said thermoplastic polymer of the matrix is the product of the polymerization reaction by extension of said prepolymer a1) by said extender a2) (¶196).
Regarding claim 12, Capelot et al. teaches that said extender a2) is chosen from aromatic anhydride compounds, substituted, in position 4 of the aromatic ring, by a substituent defined by a group R—C═C—(R′)x- with R being a C1-C2 alkyl or H or aryl, or R is the residue of an aromatic carboxylic anhydride bonded to the acetylenic triple bond via the carbon in position 4 of the aromatic ring and x being equal to 0 or to 1, and when x is equal to 1, R′ is a carbonyl group (¶203).
Regarding claim 13, Capelot et al. teaches that said extender a2) is chosen from o-phthalic aromatic anhydride compounds bearing, in position 4, a substituent group chosen from methyl ethynyl, phenyl ethynyl, 4-(o-phthaloyl)ethynyl or phenyl ethynyl ketone, also called (phenylethynyl) trimellitic anhydride. (¶204).
Regarding claim 14, Capelot et al. teaches that said extender a2) has a molecular weight of less than or equal to 500 g/mol (¶205).
Regarding claim 15, Capelot et al. teaches that when X’ is CO2H, Y is chosen from an epoxy, an oxazoline, an oxazine, an imidazoline, or an aziridine (¶167, 169).
Regarding claim 16, Capelot et al. teaches that when X’ is CO2H, Y is a phenylenebisoxazoline (¶167, 176).
Regarding claims 17 and 21, Capelot et al. teaches a composition for a thermoplastic composite material comprising 30 to 60% by volume of the thermoplastic matrix comprising the reactive composition, and 40 to 70% by volume of long reinforcing fibers (¶26-28).
Regarding claim 18, Capelot et al. teaches that the long reinforcing fibers have a circular cross-section with an L/D of greater than 1000 (¶207, 208).
Regarding claim 19, Capelot et al. teaches a process for manufacturing a thermoplastic composite material comprising at least one step of polymerization of at least one reactive composition (¶211).
Regarding claim 22, Capelot et al. teaches a mechanical or structural part based on the composite material (¶219).
Regarding claim 23, Capelot et al. teaches a mechanical or structural part based on the composite material that is a motor vehicle part post-treated by cataphoresis (¶228).
Regarding claim 25, Capelot et al. teaches a mechanical or structural part based on the composite material that is used in the wind power sector (¶229).
Regarding claim 26, Capelot et al. teaches a mechanical or structural part based on the composite material that is a part for the aeronautical industry (¶230).
Regarding claim 27, Capelot et al. teaches a mechanical or structural part based on the composite material that is a part for the railway sector (¶220).
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Capelot et al. (US 2018/0251601) in view of Sakai et al. (WO 2019/220968) as applied to claims 1 and 19 above, and further in view of Hochstetter et al. (WO 2018/234436). For convenience, the citations below for Sakai et al. and Hochstetter et al. are taken from English language equivalents US 2021/0253856 and US 2020/0139586, respectively.
Regarding claim 20, Capelot et al. teaches a process for manufacturing a thermoplastic composite material comprising impregnation of the long fibrous reinforcement with the thermoplastic matrix composition, polymerizing the composition by heating with chain extension, by polycondensation reaction, or by polyaddition reaction, and processing by molding (¶212-215).
Capelot et al. does not teach that the impregnation of the fibers is done through a dry solid-state process. However, Hochstetter et al. teaches using a similar polyamide prepolymer to perform preimpregnation of a fibrous material by use of a fluidized bed (a dry, solid-state process) (¶101, 113, Example 2). Capelot et al. and Hochstetter et al. are analogous art because they are from the same field of endeavor as that of the instant specification, namely that of composite materials comprising fibrous materials impregnated with polyamide polymers. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to use a dry, solid-state process, as taught by Hochstetter et al., for the impregnation of the fibrous material with polamide prepolymers, as taught by Capelot et al., and would have been motivated to do so because the prepolymers of Capelot et al. are in powder form and it is obvious to choose a known material or process based on its suitability for its intended use. MPEP 2144.07.
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Capelot et al. (US 2018/0251601) in view of Sakai et al. (WO 2019/220968) as applied to claims 1, 21, and 22 above, and further in view of Cauchois et al. (US 2015/0273772). For convenience, the citations below for Sakai et al. are taken from English language equivalent US 2021/0253856.
Regarding claim 24, Capelot et al. teaches a mechanical or structural part based on the composite material that is also a motor vehicle part post-treated by cataphoresis (¶228). Capelot et al. does not teach that it is a metal/composite hybrid part. However, Cauchois et al. teaches a composite part including a fibrous reinforcement and a thermoplastic polymer matrix (Abstract) made from a polyamide prepolymer (¶11) and wherein the part combines the composite and metal and undergoes treatment by cataphoresis (¶18). Capelot et al. and Cauchois et al. are analogous art because they are from the same field of endeavor as that of the instant invention, namely that of composites comprising a thermoplastic matrix and fibrous reinforcements for motor vehicle parts. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to have a part that is a composite/metal hybrid, as taught by Cauchois et al., for a motor vehicle which undergoes cataphoresis, as taught by Capelot et al., and would have been motivated to do so because Cauchois et al. teaches that parts which contain metal and composite are what undergo treatement by cataphoresis.
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.
Claims 1 and 3-27 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-26 of copending Application No. 18/286,048 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claim 1, claim 1 of the reference application teaches a flame-retardant reactive composition for a flame-retardant thermoplastic composite material comprising:
from 65% to 95% by weight of at least one reactive semicrystalline polyamide prepolymer with an average molar mass Mn of less than 5000 g/mol, as determined by calculation from the content of end functions determined by potentiometric titration in solution and the functionality of said prepolymers or by NMR assay, and having a volume-mean diameter D50 of the reactive semicrystalline polyamide prepolymer powder particles of from 10 to 300 µm, the volume-mean diameter D50 being determined according to the standard ISO 9276:2014, said reactive semicrystalline polyamide prepolymer meaning that the molecular weight of said reactive semicrystalline polyamide prepolymer will change during its subsequent implementation by reaction of reactive semicrystalline polyamide prepolymers with each other by polycondensation with the release of water or by substitution or by reaction of reactive prepolymers with a chain extender by polyaddition and without elimination of volatile byproducts to subsequently lead, after implementation, to the final nonreactive semicrystalline
polyamide polymer of the thermoplastic matrix,
from 5% to 35% by weight of at least one flame retardant chosen from an at least partially meltable flame retardant in powder form and having a volume-mean diameter D50 of from 10 to 300 µm, and a non-meltable flame retardant in premilled powder form with a volume-mean diameter D50 of from 1 to 50 µm, an at least partially meltable flame retardant meaning that the flame retardant is at least partially molten at the implementation temperature of the composition, and
from 0% to 2% by weight of at least one additive and having a volume-mean diameter D50 of from 1 to 50 µm if it is non-meltable or from 10 to 300 µm if it is meltable,
said composition being obtained by dry blending of the various constituents a), b) and c), a non-meltable flame retardant meaning that the flame retardant does not even partially melt at the implementation temperature of the composition, and said reactive polyamide prepolymer comprising or consisting of at least one Z/BACT/XT copolyamide in which:
BACT is a unit bearing an amide unit present in a molar content ranging from 10% to 65%, where BAC is 1,3-bis(aminomethyl)cyclohex/l (1,3-BAC), and T is terephthalic acid,
XT is a unit bearing an amide unit present in a molar content ranging from 30% to 60%, where X is a linear aliphatic C4 to C18 diamine and where T is terephthalic acid, and
Z is a unit bearing an amide unit present in a molar content ranging from 5% to 30% and resulting from the condensation of at least one C6-C14 amino acid or lactam, or from the condensation of at least one diamine X1 and of at least one diacid Y, X1 and Y being of C4-C36,
the molar sum Z + BACT + XT being equal to 100%, and the sum of constituents a) + b) + c) being equal to 100% by weight,
said reactive semicrystalline polyamide prepolymer having a melting temperature Tf < 300°C, as determined according to the standard ISO 11357-3: 2013, a glass transition temperature Tg > 80°C, determined according to the standard ISO 11357-2: 2013 and a difference between the melting temperature and the crystallization temperature Tf -Tc < 70° C, determined according to the standard ISO 11357-3: 2013.
Regarding claim 3, claim 2 of the reference application teaches that the heat of crystallization of the semicrystalline polyamide polymer, measured by differential scanning calorimetry (DSC) according to the standard ISO 11357-3:2013, is greater than 25 J/g.
Regarding claim 4, claim 3 of the reference application teaches that XT is chosen from 5T, 6T, 10T and 12T, 5 corresponding to 1,5-pentamethylenediamine, 6 corresponding to 1,6-hexamethylenediamine, 10 corresponding to 1,10-decamethylenediamine, and 12 corresponding to 1,12-dodecamethylenediamine, and T corresponding to terephthalic acid.
Regarding claim 5, claim 4 of the reference application teaches that XT is 10T, 10 corresponding to 1,10-decamethylenediamine.
Regarding claim 6, claim 5 of the reference application teaches that Z results from the (poly)condensation of a C11 amino acid.
Regarding claim 7, claim 6 of the reference application teaches that the reactive semicrystalline polyamide prepolymer comprises or consists of at least one reactive prepolymer bearing, on the same chain, two end functions X' and Y', said functions being respectively coreactive with each other by condensation, with X' and Y' being amine and carboxyl or carboxyl and amine, respectively.
Regarding claim 8, claim 7 of the reference application teaches that said reactive semicrystalline polyamide prepolymer comprises at least two polyamide prepolymers which are reactive with each other and which each respectively bear two identical end functions X' or Y', said function X' of one prepolymer being able to react only with said function Y' of the other prepolymer.
Regarding claim 9, claim 8 of the reference application teaches that said reactive semicrystalline polyamide prepolymer comprises or consists of:
a1) at least one prepolymer of said thermoplastic polyamide polymer, bearing n end reactive functions X', chosen from: -NH2, -CO2H and -OH, with n being from 1 to 3, and
a2) at least one chain extender Y-A'-Y, with A' being a hydrocarbon-based biradical of nonpolymeric structure, bearing two identical end reactive functions Y, which are reactive by polyaddition with at least one function X' of said prepolymer a1).
Regarding claim 10, claim 9 of the reference application teaches that X' is NH2 or OH, and Y is chosen from an anhydride, a maleimide, an optionally blocked isocyanate, an oxazinone, an oxazolinone and an epoxy.
Regarding claim 11, claim 10 of the reference application teaches that a1) is at least one amino prepolymer of said semicrystalline polyamide polymer of the thermoplastic matrix, with at least 50% of the end groups of said prepolymer a1) being primary amine functions -NH2, and a2) is at least one non-polymeric chain extender bearing a cyclic carboxylic anhydride group, having as substituent a group comprising an ethylenic or acetylenic unsaturation, said carboxylic anhydride group being in acid, ester, amide or imide form with said extender, a2) being present in a content corresponding to an a2)/(-NH2) mole ratio of less than 0.36, and wherein said thermoplastic polymer of the matrix is the product of the polymerization reaction by extension of said prepolymer a1) by said extender a2).
Regarding claim 12, claim 11 of the reference application teaches that said extender a2) is chosen from aromatic anhydride compounds substituted, in position 4 of the aromatic ring, with a substituent defined by a group R-C=C-(R')x- with R being a C1-C2 alkyl, H, aryl, or the residue of an aromatic carboxylic anhydride bonded to the acetylenic triple bond via the carbon in position 4 of the aromatic ring; and x being equal to 0 or 1, and when x is equal to 1, R' is a carbonyl group.
Regarding claim 13, claim 12 of the reference application teaches that said extender a2) is chosen from o-phthalic aromatic anhydride compounds bearing, in position 4, a substituent group chosen from methyl ethynyl, phenyl ethynyl, 4-(o-phthaloyl) ethynyl or phenyl ethynyl ketone.
Regarding claim 14, claim 13 of the reference application teaches that said extender a2) has a molecular weight of less than or equal to 500 g/mol.
Regarding claim 15, claim 14 of the reference application teaches that X' is CO2H and Y is chosen from an epoxy, an oxazoline, an oxazine, an imidazoline, and an aziridine.
Regarding claim 16, claim 15 of the reference application teaches that X' is CO2H and Y-A'-Y is chosen from phenylenebisoxazolines.
Regarding claim 17, claim 16 of the reference application teaches a flame-retardant composite fibrous material, said fibrous material comprising from 30% to 60% by volume of said reactive composition and from 40% to 70% by volume of long and/or continuous reinforcing fibers.
Regarding claim 18, claim 17 of the reference application teaches that the long and/or continuous reinforcing fibers have a circular cross-section with L/D > 1000.
Regarding claim 19, claim 18 of the reference application teaches a process for manufacturing a flame-retardant thermoplastic composite material comprising at least one step of polymerizing at least one reactive composition.
Regarding claim 20, claim 19 of the reference application teaches the process for manufacturing a flame-retardant thermoplastic composite material comprising the following steps: a) dry solid-state preimpregnation of long and/or continuous reinforcing fibers with the at least one reactive composition, b) polymerization reaction of the reactive composition, by heating said reactive composition with chain extension, as the case may be, by polycondensation reaction or by polyaddition reaction, in the molten mass state, and c) optionally, processing by molding or another processing system, simultaneously with the polymerization step b).
Regarding claim 21, claim 20 of the reference application teaches a thermoplastic composite material comprising from 30% to 60% by volume of said reactive composition polymerized, and from 40% to 70% by volume of long and/or continuous reinforcing fibers.
Regarding claim 22, claim 21 of the reference application teaches a mechanical or structural part of a thermoplastic composite material, wherein it is based on the thermoplastic composite material.
Regarding claim 23, claim 22 of the reference application teaches that the mechanical or structural part is a motor vehicle part post-treated by cataphoresis.
Regarding claim 24, claim 23 of the reference application teaches that the mechanical or structural part is a motor vehicle metal/composite hybrid part.
Regarding claim 25, claim 24 of the reference application teaches that the mechanical or structural part is a part for the wind power sector.
Regarding claim 26, claim 25 of the reference application teaches that the mechanical or structural part is a part for the aeronautical sector.
Regarding claim 27, claim 26 of the reference application teaches that the mechanical or structural part is a part for the railway sector.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Correspondence
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/ANGELA C SCOTT/Primary Examiner, Art Unit 1767
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