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 .
Response to Arguments
Applicant's arguments filed 07/22/2026 have been fully considered but they are not persuasive. Applicant argues that since Marino covers a large number of species, one of ordinary skill in the art would not “at once envisage” the claimed combination. However, when the species is clearly named, the species claim is anticipated no matter how many other species are additionally named. See Ex parte A, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990). Marino names a species of tube with outer layer of plasticized nylon 612 (paragraphs 0031 and 0032, Marino), and inner layer of unplasticized nylon 612, nylon 6, or nylon 66 (paragraphs 0026 and 0028, Marino).
Applicant argues that since paragraph 0031 of Marino states outer layer “24 may be formed of a thermoplastic polymeric material which may be formulated the same as or similar to the material of first layer 22”, one or ordinary skill in the art would not select a plasticized material for a layer and an unplasticized material for another layer. However, while plasticized unplasticized nylon are not the same material, they are similar materials, thus Marino does not teach away from using different varieties of nylon for its tube.
Applicant argues that different versions of the same material such as unplasticized PA612 can have different properties. While this is technically possible because of the different additives and mixtures, the claims do not disclose the mixture ratio of PA6 to PA12 or what additives are used to achieve the claimed material properties, thus prior art that disclosed the claimed material in the claimed structure is understood to also disclose material properties such as hoop and tensile strength; MPEP 2112.01-II, "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 4-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Martino (US 20130011595 A1), hereafter known as Martino.
Regarding claim 1, Marino discloses an air brake tube (title, abstract, Martino) comprising:
a multilayer structure (fig 1, tube 20 has two layers, Martino),
wherein a hoop stress at 125°C is more than 9.72 MPa and a tensile modulus at 23°C is less than 650 MPa (paragraphs 0031 and 0032, outer layer 24 can be made of plasticized nylon 612; paragraphs 0026 and 0028, the inner layer 10 or 22 can be made from unplasticized nylon 612, nylon 6, or nylon 66. Therefore Martino matches the structure and material of Example I 1-4 in table 1 and Example II 1-4 in the specification. MPEP 2112.01-II, "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. Considering the air brake tubes of Martino match both the structure and material of the claimed invention, they should also disclose the hoop stress and tensile stress limitations).
the multilayer structure includes an inner layer made of an unplasticized polyamide- based resin (paragraphs 0026 and 0028, the inner layer 10 or 22 can be made from unplasticized nylon 612, nylon 6, or nylon 66, which are thermoplastic resins, Martino) and an outer layer made of a plasticized polyamide-based resin provided on an outer side of the inner layer (fig 1, outer layer 24 is on the outside of inner layer 22, and paragraphs 0031 and 0032, outer layer 24 can be made of plasticized nylon 612, which is a thermoplastic resin, Martino),
a proportion of a wall thickness of the inner layer to a total wall thickness of the inner layer and the outer layer is 5% or more and 40% or less (paragraph 0037, Martino, the wall thickness of inner layer 22 can be from about 35-75% of the overall wall thickness. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).),
the unplasticized polyamide-based resin has a hoop stress at 125°C of more than 9.72 MPa and 25 MPa or less when made into a single-layer tube, the plasticized polyamide-based resin has a hoop stress at 125°C of 9.72 MPa or less when made into a single-layer tube, and the unplasticized polyamide-based resin and the plasticized polyamide-based resin have a melting point of 190°C or higher or a deflection temperature under load when a bending stress of 1.80 MPa is applied in accordance with ISO 75 of 50°C or higher (paragraphs 0031 and 0032, outer layer 24 can be made of plasticized nylon 612; paragraphs 0026 and 0028, the inner layer 10 or 22 can be made from unplasticized nylon 612, nylon 6, or nylon 66. Together with the fact that is inner layer can be from about 35-75% of the overall wall thickness, Martino matches the structure and material of Example I 1-4 in table 1 and Example II 1-4 in the specification. MPEP 2112.01-II, "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. Considering the air brake tubes of Martino match both the structure and material of the claimed invention, they should also disclose the hoop stress and tensile stress limitations).
Regarding claim 4, Marino discloses the air brake tube according to claim 1, wherein the unplasticized polyamide based resin is an unplasticized polyamide 612 resin, an unplasticized polyamide 66 resin, or an unplasticized polyamide 6 resin (paragraphs 0026 and 0028, the inner layer 10 or 22 can be made from unplasticized nylon 612, nylon 6, or nylon 66), and the plasticized polyamide-based resin is a plasticized polyamide 612 resin (paragraphs 0031 and 0032, outer layer 24 can be made of plasticized nylon 612).
Regarding claim 5, Marino discloses the air brake tube according to claim 1, wherein the unplasticized polyamide-based resin is an unplasticized polyamide 612 resin (paragraphs 0026 and 0028, the inner layer 10 or 22 can be made from unplasticized nylon 612), and the plasticized polyamide-based resin is a plasticized polyamide 612 resin (paragraphs 0031 and 0032, outer layer 24 can be made of plasticized nylon 612).
Regarding claim 6, Marino discloses the air brake tube according to claim 1, wherein the unplasticized polyamide-based resin is an unplasticized polyamide 66 resin (paragraphs 0026 and 0028, the inner layer 10 or 22 can be made from unplasticized nylon 66), and the plasticized polyamide-based resin is a plasticized polyamide 612 resin (paragraphs 0031 and 0032, outer layer 24 can be made of plasticized nylon 612).
Regarding claim 7, Marino discloses the air brake tube according to claim 1, wherein the unplasticized polyamide-based resin is an unplasticized polyamide 6 resin (paragraphs 0026 and 0028, the inner layer 10 or 22 can be made from unplasticized nylon 6), and the plasticized polyamide-based resin is a plasticized polyamide 612 resin (paragraphs 0031 and 0032, outer layer 24 can be made of plasticized nylon 612).
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.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Marino in view of Nakayama (US 20120298247 A1), hereafter known as Nakayama.
Regarding claim 3, Marino discloses the air brake tube according to claim 1, but does not disclose wherein the proportion of the wall thickness of the inner layer to the total wall thickness of the inner layer and the outer layer is 5% or more and 25% or less.
However, Nakayama teaches a tube with inner wall layer with a thickness of 20% of the total wall thickness of the inner layer and the outer layer (para 0037, the inner wall 3-1 has thickness of 0.2mm, and total wall thickness is 1 mm, Nakayama). Nakayama describes a two layer polyamide tube, a field closely related to Marino and the claimed invention. Therefore it would have been obvious to one of ordinary skill in the art before time of file to have incorporated the teachings of Nakayama into Marino and make the outer wall thicker such that the inner wall is 20% of the total wall thickness. A thicker outer wall increases durability, and can be used situations where more protection against external elements is needed. Additionally, it would have been an obvious matter of design choice to adjust the relative thicknesses of the inner and outer layers, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
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 HAOTIAN LU whose telephone number is (571)272-0444. The examiner can normally be reached Monday-Friday 9:00 am-5:00 pm EST.
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/H.L./ Examiner, Art Unit 3753
/KENNETH RINEHART/ Supervisory Patent Examiner, Art Unit 3753
