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 . Per amendment dated 11/21/25, claims 28, 30, 35-53 are currently pending in the application.
It is noted that a provisional election was made of Group I invention (claims 28-46), without traverse, on 5/16/25. Additionally, Examiner had responded to the traversal arguments in paragraph 2 of the office action dated 11/21/25. Given that claims 47 and 49 recite the limitation "formed by the process of claim 28", the claims are directed to a film and to a film composition, respectively, and are product-by-process claims. Product-by-process claims are not limited to the manipulations of the recited steps, but only to the structure implied by the steps. See MPEP 2113(I). Although Examiner inadvertently missed indicating the restriction is made Final, the traversal arguments presented previously and in the response dated 11/21/25 are not deemed persuasive.
The requirement is still deemed proper and is therefore made FINAL. Claim 47-49 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 112
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.
Claim 39 is 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.
Claim 39 recites the following formula:
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wherein d = 5-6, 8-14, or 16. With the recitation d=5, i.e., corresponding to pentamethylene diamine, the claim does not limit the scope of claim 1 because the Markush listing for the second diamine on claim 1 does not include pentamethylene diamine as a species.
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
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.
Claims 28, 30, 33, 35, 36, 40-44, 50 and 52 are rejected under 35 U.S.C. 103 as being unpatentable over Schwinn et al. (US 6,605,694 B2).
Regarding claims 28, 30, 33, 35, 36, 43, Schwinn teaches a process for solid phase polymerizing polyamide flake suitable for use in making the filaments having a relative viscosity of at least about 140, preferably 140 to 190, as measured by ASTM D789 (Ab., col. 2, lines 20-23, col. 5-6, bridging paragraph, Examples, ref. claims).
Disclosed polyamides include poly(hexamethylenediamine adipamide) (Nylon 6,6), poly(e-caproamide) (nylon 6) and copolymers thereof, and nylon 12, nylon 4,6, nylon 6,10, nylon 6,12, nylon 12,12, and their copolymers, i.e., for e.g., copolyamides obtainable from monomers - hexamethylene diamine, adipic acid, and any of caprolactam, laurolactam, hexamethylene diamine and 1,12-diaminododecane (col. 4-5, bridging paragraph).
Schwinn teaches preparing polymer flakes by feeding a polyamide salt mixture/solution into a storage vessel for polymerization under heat and pressure, extruding the molten polymer, feeding the extruded strands into a pelletizer, which cuts, casts or granulates, to provide for flakes/pellets, and solid state polymerizing the pellets in an oxygen free inert gas at a temperature of 120o to 200oC (col. 6, line 55-col.1, line 55). It is noted that the instant disclosure [0030], Nylon6,6 is prepared from an aqueous salt of adipic acid and hexamethylene diamine.
Schwinn is silent on a copolyamide as claimed in one single embodiment as in the claimed invention.
At the outset, it is noted that 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). See MPEP § 2144.05.
Given the teaching that the polyamide polymers may be copolymers of the disclosed polyamides and a method comprising stapes as in the claimed invention, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to prepare statistical copolyamides within the scope of Schwinn, including those from hexamethylene diamine, adipic acid, and any of caprolactam, laurolactam, hexamethylene diamine and 1,12-diaminododecane, by a process comprising claimed steps.
Additionally, Schwinn teaches a relative viscosity (RV) measurement by ASTM D789 with a solution of polymer (8.4 wt.%) in a formic acid containing 10% water (col. 13, lines 55-60). Noting that according to the instant disclosure (PGBUB-[0123]), the relative viscosities are performed according to ASTM D789 (9.34) at a concentration of 10 wt. % in formic acid, i.e., a higher amount of polymer, a skilled artisan would reasonably expect Schwinn’s copolyamides to have a lower limit of RV even higher than 140, absent a negative impact of Schwinn’s water content. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons herewith.” In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
Regarding claims 40, 41, 50 and 52, although Schwinn does not explicitly teach an amount of the amide units as in the claimed invention, absent a clear teaching away, a skilled artisan would infer Schwinn’s copolyamides to be open to any amount of the claimed amide units, including those of the claimed invention which would inherently have the claimed melting point, absent evidence of criticality for the claimed range.
Regarding claim 42, a skilled artisan would reasonably expect copolymers of overlapping scope and prepared by Schwinn’s process to have the claimed features, absent evidence to the contrary.
Regarding claim 44, Schwinn is open to filaments including additives, such as plasticizers, antistatic agents, antioxidants, light stabilizers etc., in the melt extruder (col. 5, lines 52-57, col. 12, lines 24-25).
Claim 37, 38, 51 and 53 are rejected under 35 U.S.C. 103 as being unpatentable over Schwinn et al. (US 6,605,694 B2), in view of Besso (US 4,939,237), alone, or further in view of Sheetz (US 5,461,141).
The discussion on Schwinn as applied to claim 28 above is incorporated herein by reference.
Although Schwinn is silent on a process comprising the claimed method step of forming a film, Besso teaches a method of producing films from a polyamide with high relative viscosity, of at least 100, by using a flat die form a film in sheet form or an annular die in a blown film process. Besso teaches a blown film process, wherein molten resin is extruded through the annular die so that the resin is extruded in tubular form, expanded using a gas, quenched, collapsed and wound up into rolls (col. 3, lines 20-31). Thus, given the teaching in Schwinn on polyamides with high relative viscosity, and the teaching in Besso that such polyamides are suitable for producing cast and blown filma, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to prepare cast and/or blown films from Schwinn’s copolyamides depending on the end user requirement of the copolyamide, including those of the claimed invention. Additionally, a skilled artisan would reasonably expect copolyamides of overlapping scope to provide for the claimed properties, absent evidence to the contrary.
In the alternative, Sheetz teaches that melt film forming of nylons by extrusion, blowing, casting and spinning, having high molecular weights and relative viscosities in a range of about 140 to 200 or more, (col. 1-3), i.e., suitability of high relative viscosity for film forming and for spinning. Thus, given the teaching in Schwinn on high viscosity polyamides for filaments, and the teaching in Sheetz that high viscosity polyamides are suitable for films and spinning alike, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to prepare cast and/or blown films from Schwinn’s copolyamides depending on the end user requirement, from Schwinn’s copolyamides, including those of the claimed invention. Additionally, a skilled artisan would reasonably expect copolyamides of overlapping scope to provide for the claimed properties, absent evidence to the contrary. As stated in paragraph 8 above, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
Claim 45 is rejected under 35 U.S.C. 103 as being unpatentable over Schwinn et al. (US 6,605,694 B2), in view of Miyamoto et al. (US 2010/0206459 A1, of record).
The discussion on Schwinn as applied to claim 28 above is incorporated herein by reference.
Although Schwinn is silent on a process comprising the claimed additive, the secondary reference to Miyamoto teaches additives for polyamides, such as copper halides as antioxidants and/or heat stabilizers, and mold release agents and/or lubricants in order to enhance mold releasability [0051]-[0052], [0054]. It is the examiner's position that such additives in the composition is a result effective variable because changing it will clearly affect the type of product obtained. See MPEP § 2144.05 (B). Case law holds that discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art." In re Boesch, F.2d 272, 205 USPQ 215 (CCPA 1980). Thus, it would have been obvious to one of ordinary skill in the art, as of the effective filing date of the claimed invention, to an utilize appropriately effective amount of the additive, including one or more within the scope of the present claims so as to produce desired end results.
Claim 46 is rejected under 35 U.S.C. 103 as being unpatentable over Schwinn et al. (US 6,605,694 B2), in view of Mitadera et al. (US 9,163,117 B2).
The discussion on Schwinn as applied to claim 28 above is incorporated herein by reference.
Although Schwinn is silent on a polyamide having end groups in claimed amounts, the secondary reference to Mitadera teaches polyamide resins preferably have a terminal amino group concentration of less than 100 μeq/g, and a terminal carboxyl group concentration of less than 100 μeq/g, and that polyamides having a terminal amino group concentration and a terminal carboxyl group concentration in the ranges above tend to show stable viscosity during molding and improved processability (col. 7, lines 27-35).
Thus, it would have been obvious to one of ordinary skill in the art ordinary skill in the art, as of the effective filing date of the claimed invention, to provide for Schwinn’s copolyamides having end groups in amounts as taught by Mitadera, including in an amount as claimed so as to improve processability. As stated in paragraph 8 above, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
Response to Arguments
In view of the amendment dated 11/21/25, all rejections of record are withdrawn. Applicant’s arguments on Miyamoto and Ono references are moot in view of the withdrawal of the rejections. Additionally, Applicants arguments on the restriction requirement are not deemed persuasive, because claims 47-49 are drawn to films, comprising a statistical copolyamide of claim 28 that is formed from process of claim 28. Product-by-process claims are not limited to the manipulations of the recited steps, but only to the structure implied by the steps. See MPEP 2113(I).
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.
Any inquiry concerning this communication or earlier communications from the
examiner should be directed to Satya Sastri at (571) 272 1112. The examiner can be reached Monday-Friday, 9AM-5.30PM (EST). If attempts to reach the examiner by telephone
are unsuccessful, the examiner's supervisor, Mr. Robert Jones can be reached at (571)-270-
7733. The fax phone number for the organization where this application or proceeding is
assigned is (571) 273 8300.
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/Satya B Sastri/
Primary Examiner, Art Unit 1762