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 .
This application is a national stage entry under 35 U.S.C. §371 of International Application No. PCT/FR2022/050827 filed 4/29/2022.
Acknowledgment is made of applicant's claim for foreign priority under 35 U.S.C. §119(a)-(d) by Application No. FR 2104728 filed 5/5/2021, which papers have been placed of record in the file.
Claims 1-18 are pending.
Election/Restrictions
Applicant's election with traverse of Group II in the reply filed on 7/31/2026 is acknowledged. The traversal is on the ground(s) that the common technical feature requires a molding composition comprising among other features a long chain polyamide having an inherent viscosity in solution of no greater than 1.3 and 40-75% by weight short glass fibers or circular cross section. Durand does not disclose its glass fibers having the claimed circular cross section. Nor does Durand provide a reason to arrive at the claimed invention. The rejection identifies no teaching that would lead one skilled in the art to select a long chain aliphatic polyamide having the claimed low inherent viscosity and combine with 40-75% by weight short glass fibers of circular cross section. The present invention demonstrates the claimed inherent viscosity limitation is not arbitrary. Table 2 demonstrate improved creep strength and stress at break particularly after immersion in hot drinking water.
This is not found persuasive because the technical feature is taught in claim 1 as discussed in the rejection below. Specifically, Durand discloses glass fibers having a maximum length of 450 μm, and a diameter d50 of 4-40 μm [0122] indicating they are short glass fibers and have a circular cross section. Further, Cassiano Gaspar teaches circular glass fibers limit warping in polyamide composition. Therefore, since the common technical features of claims belonging to groups I and II do not define a contribution over Durand and Cassiano Gaspar they do not constitute a special technical feature and hence there is lack of unity between the cited groups.
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.
Claims 10-12 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.
Claims 10-12 recites …compared to an article the inherent viscosity in solution of which is greater than 1.3… it would not be clear what article is being compared. For instance, it would not be clear if any article made from a composition with an inherent viscosity of greater than 1.3 is compared, or a polyamide composition of claim 1 having an inherent viscosity of 1.3. Further, it would not be clear how an article can have an inherent viscosity in solution.
Appropriate correction and/or clarification is required.
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 8-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8-9, 13 of copending Application No. 18558856 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claims 8-13, while copending 856 doesn’t exclude amorphous polyamide and a microcrystalline polyamide, the claims of copending 856 do not require an amorphous polyamide and a microcrystalline polyamide and therefore it would be obvious to one skilled in the art to select a composition which is free of amorphous polyamide and a microcrystalline polyamide. Claims 10-12 are arrived at by claims 8-9, 13 since the properties are inherent.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claims 8-13 are rejected under 35 U.S.C. 103 as being unpatentable over Durand et al. (US 2020/0255660) in view of Cassiano Gaspar et al. (US 2020/0262987).
Regarding claim 8: Durand is directed to a method for manufacturing an article for the field of automobile, nautical, aeronautical, aerospace, medical (prostheses, hearing systems, cell tissues, and the like), textiles, clothing, fashion, decoration,
housings for electronics, telephony, home automation, computers, lighting, the method comprising manufacturing the article from the composition of claim 1.
The composition comprises, by weight, a polyamide, 5-70 wt% glass fibers having a maximum length of 450 μm, and a diameter d50 of 4-40 μm [0122] indicating they are short glass fibers and have a circular cross section, and 0.05-5 wt% of an additive. It follows the composition can comprise 25-95% wt% of the polyamide. The sum of the components being equal to 100%.
The molding composition is free of an amorphous polyamide and a microcrystalline polyamide. Specifically, polyamides include PA11, 12, 1010, 11/1010 and therefore are long chain aliphatic polyamides having a number of carbon atoms per nitrogen atom of greater than 9. Example 6 comprises PA11 (a semi-crystalline polyamide) with a relative viscosity of 1.2 at a temperature of 20 ˚C, and therefore an inherent viscosity of less than 1.3 can be calculated, since μinh = ln(μrel)/c, wherein c=0.5% by weight ([0156] Durand).
While Durand discloses the glass fibers have a diameter d50 of 4-40 μm [0122] indicating they are short glass fibers and have a circular cross section, Durand lists glass fiber fillers among a list of options, i.e. glass fiber, elongated glass powder or bead or powder, glass flakes, ground fiber ([0120] Durand).
Cassiano Gaspar is directed to a polyamide composition comprising glass fibers having a circular cross section. The glass fibers include those of the same kind in Durand and include those described by Frederick T. Wallenberger, James C. Watson and Hong Li,
PPG industries Inc. (ASM Handbook, Vol 21: composites (#06781G), 2001 ASM International), provided that said fiber has a circular cross-section ([0042] Cassiano Gaspar), which is also disclosed in Durand as suitable glass fibers ([0105] Durand).
One skilled in the art would have been motivated to have selected glass fibers having a circular cross section as the glass fibers of choice in Durand to limit warping as taught throughout Cassiano Gaspar. Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have selected glass fibers having a circular cross section as the glass fibers of choice in Durland to arrive at claim 8 of the present invention.
Regarding claim 9: Structural parts are disclosed ([0010]-[0014].
Regarding claims 10-12: Durand doesn't specifically recite the article has improved compared to an article the inherent viscosity in solution of which is greater than 1.3 determined at 23 ˚C (claim 10) or 60 ˚C (claim 11) in accordance with the standard ISO 527:2012 on a type 1A specimen, or improved creep strength compared to an article the inherent viscosity in solution of which is greater than 1.3 as determined in accordance with ISO 307:2007. However, the article produced in Durand is substantially identical to the article produced in the instant invention, as discussed previously.
Case law holds that the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I).
Hence, Durand suggests an article having mechanical properties within the scope of the claims. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant's position; and (2) it would be the Office's position that the application contains inadequate disclosure, since one skilled in the art would not understand how to obtain the claimed properties with only the claimed reactants, claimed amounts, and substantially similar process of making.
Regarding claim 13: The polyamides are used in injection molding ([0015]).
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT T BUTCHER whose telephone number is (571)270-3514. The examiner can normally be reached Telework M-F 9-5 Pacific Time Zone.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lanee Reuther can be reached at (571) 270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT T BUTCHER/Primary Examiner, Art Unit 1764
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