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 .
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 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.
Election/Restrictions
Claims 14, 15, and 17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 9/10/26.
Applicant's election with traverse of Group I, claims 1-3, 5-13 and 16 in the reply filed on 9/10/26 is acknowledged. The traversal is on the ground(s) that Mitsuki teaches a concentration of amino-function concentration on the claimed range. This is not found persuasive because while Mitsuki teaches an amino concentration of 0.048 mmol/g (or 0.048 meq/g), Mitsuki additionally teaches that the concentration of NH2 functional groups is on the range of from 10 to 300 mmol/kg (see, e.g., p. 9, 13-14; equivalent to 0.01 to 0.3 mmol/g, which for a group having a single reactive site such as an amino group, would yield a similar concentration of 0.01 to 0.3 meq/g .
The requirement is still deemed proper and is therefore made FINAL.
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 5 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.
Claim 5 includes the term “tensile modulus” but does not include a specific method of testing or definition of this value. While the terms “tensile modulus” and “Young’s modulus” are frequently used interchangeably they are not always used so. For the purposes of examination this term will be given its broadest reasonable interpretation, including being equivalent to a Young’s modulus for the material.
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.
Claim(s) 1, 2, 6-8, 10-13 and 16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mitsuki et al. (JP 4527461, “Mitsuki” a machine translation of which is of record and used as the citation copy).
Regarding claims 1, 2, and 16, Mitsuki teaches a composition and an article made therefrom (pp. 20-21) comprising at least one thermoplastic polyurethane (p. 5) and a polyamide having amine chain ends (e.g., polyamine 6, polyamine 11, and generally pp. 5-9) and wherein the polyamide may be the reaction product of, for example, an aliphatic diamine and a dicarboxylic acid (e.g., pp. 5-6). Mitsuki additionally teaches that the concentration of NH2 functional groups is on the range of from 10 to 300 mmol/kg (see, e.g., p. 9, 13-14; equivalent to 0.01 to 0.3 mmol/g, which for a group having a single reactive site such as an amino group, would yield a similar concentration of 0.01 to 0.3 meq/g). Mitsuki additionally teaches that the copolymer may have a polyamide in amounts of from 1 to 30 parts by weight (e.g., p. 16), and may have a polyurethane in an amount reading on from 10 to 99% by weight (p. 19, wherein the urethane can make up from 5 to 95% by weight). The Examiner notes that the term “meq/g” is being interpreted to mean “milliequivalents per gram” and which is further being interpreted to be equivalent to millimoles per gram of NH2 functional groups. The Examiner notes 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Please see MPEP 2144.05. It should be noted that claim 2 includes product-by-process limitations. "[E]ven 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). Please see MPEP 2113.
Regarding claim 6, Mitsuki additionally teaches to include a copolymer containing polyamide blocks and polyether blocks (pp. 7-8).
Regarding claims 7 and 8, Mitsuki additionally teaches that the copolymer may have a polyamide in amounts of from 1 to 30 parts by weight (e.g., p. 16), and may have a polyurethane in an amount reading on from 10 to 99% by weight (p. 19, wherein the urethane can make up from 5 to 95% by weight).
Regarding claim 10, Mitsuki additionally teaches that the polyamide may have a molecular weight reading on from 1000 to 60,000 g/mol (e.g., p. 13).
Regarding claim 11, Mitsuki additionally teaches that the polyurethane may contain rigid and flexible blocks and the flexible blocks may comprise polyethers (e.g., p. 18), and the rigid blocks may be, e.g., hexamethylene-1,6-diisocyanate (p. 18).
Regarding claim 12, Mitsuki additionally teaches the polyamide having amine chain ends may be a polyamide 11 (e.g., pp. 5, 17).
Regarding claim 13, Mitsuki additionally teaches that the concentration of COOH functional groups is on the range of from 0.1 to 200 mmol/kg (p. 17, equivalent to 0.0001 to 0.2 mmol/g, which for a group having a single reactive site such as a carboxyl group, would yield a similar concentration of 0.0001 to 0.2 meq/g).
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.
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.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mitsuki as applied to claim 1, above, and further in view of Zoromski et al. (US 2007/0149743, “Zoromski”).
Regarding claim 3, the combination remains as applied to claim 1, above, however Mitsuki fails to specifically teach that the polyamide has a portion bonded to the polyurethane via urea functionality. However, such bonding is known in the prior art. For example, in the same field of endeavor of polymeric materials including polyamides and polyurethanes ([0009], [0026]), Zoromski teaches that polyurethan and polyamide may be bonded via a urea and that such linkage moieties are well known and suitable for forming a polymer composite (e.g., [0049]). It therefore would have been obvious to the person of ordinary skill in the art at the time of filing to have bonded the polyurethane and polyamide via urea linkage as it is well known and conventional in the art to do so and would result in a suitable polymeric composition (see, e.g., Zoromski [0049], [0050], [0035], [0036], [0038]). Further, the simple substitution of one known element or compound for another (for example, in this case the use of a urea linkage to bond the polyurethane and polyamide) that would have provided predictable results would have been obvious to the person of ordinary skill in the art at the time of filing. Please see MPEP 2143.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mitsuki as applied to claim 1, above, and further in view of Crabb et al. (US 2016/0046102, “Crabb”).
Regarding claim 5, Mitsuki fails to specifically teach the tensile modulus of the composition. However, in the same field of endeavor of polymeric compositions (e.g., [0002], [0032] – [0035]), Crabb teaches that it is known to adjust the tensile modulus of a material based on the application for which the composition is to be used (e.g., [0032] – [0035]) and that for adhesive components, for example, a tensile modulus of greater than 50 MPa may be suitable (e.g., [0032]). Therefore, it would have been obvious to have adjusted the tensile modulus of the composition of Mitsuki to within an appropriate range depending on the desired use of the composition and including the range of greater than 50 MPa and up to 1000 MPa in order to use the composition for, e.g., an adhesive (Crabb, [0032] – [0035]).
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mitsuki as applied to claim 1, above, and further in view of Oddon (US 2021/0362548, “Oddon”)
Regarding claim 9, Mitsuki fails to specifically teach the claimed tan delta value. However, in the same field of endeavor of polyamide compositions (e.g., [0054] – [0056]) Odden teaches a low tan delta is suitable for making a polymeric composition having good mechanical properties, low hysteresis upon application of a force, and may improve production cycles for use in various articles and therefore the adoption of such a low tan delta value would have been obvious to the person of ordinary skill in the art at the time of filing (e.g., [0129], Table 2).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTHONY J FROST whose telephone number is (571)270-5618. The examiner can normally be reached on Monday to Friday, 8:00am to 4:00pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Aaron Austin, can be reached on 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ANTHONY J FROST/Primary Examiner, Art Unit 1782
Prosecution Insights