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 .
Election/Restrictions
Applicant’s election without traverse of Group I (Claims 110-122) in the reply filed on 4/22/2026 is acknowledged.
Specification
The disclosure is objected to because of the following informalities: on page 5, lines 9-12, the sulfonate group SO3H and SO3M appear to have the letter “O” replaced with a “0”. On page 28, line 5 there is an extra comma. On page 33, line 2 the applicant uses the word moist when it appears that the word moisture should be used.
Appropriate correction is required.
Claim Interpretation
The examiner notes that language of claim 110 does not preclude the use of a sulfonating agent such as 5-sulfoisophthalic acid as both the sulfonating agent and the amine-end group terminating agent, as this compound would serve to both add additional sulfur content as well as to react with the amine groups at the terminals of the polymer, thus terminating the end group with a group other than an amine.
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 110-115, 118 and 121-122 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 110,
The applicant states that the obtained polymer must contain at least 20% less amine-end group content, however does not state whether this is based upon a molar ratio, weight ratio, or other unit, rendering the claim indefinite. For the purposes of examination, either molar or weight ratio can be used.
Regarding Claim 111,
The applicant states that the resulting polymer must have sulfur content of at least 10% more than the base polymer, however does not state whether this is based upon a molar ratio, weight ratio, or other unit, rendering the claim indefinite. For the purposes of examination, either molar or weight ratio can be used.
Regarding Claims 110-115, 118, and 121-122,
Claims 110-115, 118, and 121-122 contain the trademark/trade name nylon. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe a polyamide and, accordingly, the identification/description is indefinite.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 119 and 120 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Regarding Claim 119,
The applicant states that “the first additive comprises an acid substantially free of sulfur”. However, Claim 119 is dependent on claim 111 which requires that the sulfur content of the polymer following use of the applicant’s method must be at least 10% greater than the base material. As the additive required does not contain any sulfur, it is not possible for the additives listed in the instant claim to accomplish this and as such, the claim does not include all of the limitations of the claims upon which it depends.
Regarding Claim 120,
The applicant states that “the first additive comprises sodium 3-sulfobenzoate”, however this additive is not listed among the options presented in claim 119 upon which claim 120 depends. Further, as the applicant does not state that this compound be present in addition to those present in claim 119, the language of the instant claim would appear to indicate that the sodium 3-sulfobenzoate is replacing the compounds listed in claim 119. As such, claim 120 would not include all of the limitations of the claims upon which it depends.
Claims 121 and 122 are rejected based upon their dependence upon Claim 119.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
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 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.
Claims 110-122 are rejected under 35 U.S.C. 103 as being unpatentable over Hoyt (US 5,545,363) as evidenced by Studholme (US 6,861,480).
Regarding Claims 110 and 111,
Hoyt teaches the synthesis of a polyamide that incorporates sulfonate groups and in which chemical blocking of the amine functional groups is performed (Column 4, Lines 26-34). Hoyt further teaches that the polymer prior to chemical blocking contains sulfonated compounds such as 5-sulfoisophthalic acid (Column 4, Lines 40-45) and that the level of incorporation in the polymer is between 10 and 160 sulfur equivalents per 1,000,000 grams (Column 4, Lines 54-60) where approximately 10 equivalents would correspond to 322 ppm and a preferred value of 31 equivalents would equal 992 ppm according to the applicant’s measurement technique and meeting the requirement of the instant claim. Hoyt further teaches that the blocking groups are “a compound which chemically interacts with the free amino end groups” (Column 5, Lines 5-8) and cites acid-derived compounds as examples (Column 5, Lines 12-18) where aromatic groups may be used (Column 5, Lines 23-26). While Hoyt does not specify that this group contains a sulfur, such compounds have been used for this purpose as evidenced by Studholme, who notes the use of reagents that contain groups that contain a sulfonyl group (Column 3, Lines 40-46) and that react with the amine end group (Column 3, Lines 59-61) and that reagents such as 5-sulfoisophthalic acid and 3-sulfobenzoic acid and their related salts are exemplary (Column 4, Lines 17-25).
While Hoyt is silent on the reduction in the amine-end group content, Hoyt teaches that the method of reacting the blocking agent with the polymer results in an amine end group content of less than 25 equivalents down to 2 equivalents (Column 6, Lines 51-57). Further, the amount of the reduction of amine end groups on the polyamide would be dependent upon the reaction conditions used to generate the polyamide (i.e. whether the polyamide is formed from a lactam or from a diamine-diacid reaction) and by the amount of end capping reagent used, with Hoyt teaching that the amounts of blocking agent added vary depending upon the desired results and the polyamide prepared (Column 6, Lines 31-34) and further noting nylon 6 as requiring more blocking agent than nylon 66. Similarly, the amount of sulfonation of the polymer would also be varied based upon the factors listed and the amount of the increase would also depend on the amount of amine end groups as well as the amount of blocking group used. As such, it would have been obvious prior to the effective filing date of the instant application to have used the method in manner to obtain any level of reduction in the amine end group amounts and increase in the sulfonation.
Regarding Claims 112 and 113,
Hoyt teaches a composition that meets the requirements of method as claimed in in claim 111 as described above. Because Hoyt teaches a method resulting in a polymer substantially similar to that of the instant claims, it would logically follow that polymer would have properties that meet the requirements of the instant claims. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01.II.
Regarding Claims 114-115,
Hoyt teaches that the method of introducing the blocking group are known in the art and that various methods can be used (Column 6, Lines 65-67), but does not provide specific conditions. However, using reduced pressure and inert atmosphere for such reactions is common, as evidenced by Studholme, who uses vacuum pressures of below 25 inches of mercury (Column 5, Lines 26-34) and inert atmosphere (Column 5, Lines 43-44) for the purposes of water removal.
Regarding Claims 116-118,
Hoyt teaches 5-sulfoisophthalic acid for introducing sulfur groups into the polyamide Column 4, Lines 40-45) which has been used as a blocking group as evidenced by Studholme as noted in regard to claim 110 and that the amount of blocking agent added is between 0.2 and 3% by weight but preferred to be between 0.5 to 2% by weight (Column 6, Lines 39-50) which overlaps with the range of the instant claims. Hoyt further teaches that amounts below 0.2% are not sufficient to appreciably block amine groups and above 3% does not further reduce amine end group content (Column 6, Lines 39-47), providing one of ordinary skill in the art the motivation to stay within this range. As such, it would have been obvious prior to the effective filing date of the instant application to have selected the overlapping portion of the ranges because the selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
Regarding Claim 119,
Hoyt teaches the use of derivatives of acetic and benzoic acid as blocking groups (Column 5, Lines 13-19). While Hoyt uses anhydrides of these acids, the anhydrides would possess similar reactivity and would result in the identical product and it would have been obvious prior to the effective filing date of the instant application to have substituted the acid form for the anhydride form due to the formation of the identical product.
Regarding Claim 120,
Hoyt teaches the use of metal salts of aromatic sulfonyl compounds (Column 4, Lines 40-43) as exemplary, which would include sodium 3-sulfobenzoate, as evidenced by Studholme (Column 4, Lines 17-25) which also notes the compound as exemplary.
Regarding Claim 121,
Hoyt teaches the use of any normally used additives, including lubricants and mold release agents, which read upon a wax specifically (Column 7, Lines 14-19), meeting the requirements of the instant claim.
Regarding Claim 122,
Hoyt teaches that the blocked polyamide is used as a chip (Column 7, Lines 7-9), which reads upon a pellet. While Hoyt does not provide specific conditions, it is known in the art that reducing the water in the polymer is beneficial to improving stain resistance the of the material as evidenced by Studholme (Column 6, Lines 41-46) which also notes moisture levels below 500 ppm are preferred. As such, the ordinarily skilled artisan would be motivated to reduce the moisture content to any level that afforded the desired stain resistance and it would have been obvious prior to the effective filing date of the instant application to have set the moisture level to any amount to achieve this goal. While Hoyt does not specify that the drying occur under vacuum, the ordinarily skilled artisan would recognize that use of vacuum is a common technique for removal of volatile compounds, including water as evidenced by Studholme (Column 5, Lines 27-33) and it would therefore have been obvious to have used a vacuum of any pressure to remove volatiles, including water, from the material for any length of time required.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM J BERRO whose telephone number is (703)756-1283. The examiner can normally be reached M-F 8:30-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.J.B./Examiner, Art Unit 1765 /HEIDI R KELLEY/Supervisory Patent Examiner, Art Unit 1765
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