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 .
Claims 1-20 are pending as amended on 12/7/2023.
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-5, 11, 16 and 17, and species wherein the polyamide is a polyamide 5/6 homopolymer, in the reply filed on 7/21/2026 is acknowledged. The traversal is on the ground(s) that the polyamide disclosed by Sun is not subjected to water washing and therefore Sun’s polyamide differs from the presently recited polyamide. This is not found persuasive because instant claim 1 does not recite any step of water washing. The requirement is still deemed proper and is therefore made FINAL.
Claims 6-10, 12-15 and 18-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.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(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 2-5, 16 and 17 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claims 2, 3 and 5 recite broad ranges, as well as narrower (preferable) statements of ranges/limitations. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Applicant should amend the claims to remove all instances of the word preferably and recitations of broad ranges together with narrow ranges in the same claim.
The claims further contain several instances of improper/confusing Markush group language. For example, claim 2 recites “the diamine structural units of the polyamide resin further comprise one or more structural units derived from butanediamine, hexanediamine, decanediamine and dodecanediamine;” (emphasis added). As written (due to the word “and”), it is not clear whether the limitation requires a structural unit derived from ALL FOUR of the recited diamines, or whether a selection is to be made from the recited list. Applicant should refer to MPEP 2173.05(h)(I) for guidance about reciting a list of alternatives from which a selection is to be made, including wording suggestions to ensure that the recited list is a closed group of alternatives. For example, Applicant could amend the claim language copied above to insert “a diamine selected from the group consisting of” after “derived from”
The same confusion exists in claim 2 in the last paragraph on p 3 of the claims (i.e., starting “the diacid structural units…”), as well as in claim 4.
Claim 16 is confusing because it further limits how “the content of the water-extractable substance” is determined and calculated, but also recites a percentage of “the mass of the components that can be extracted into water…”
In claim 1, the polyamide resin is required to contain “a water-extractable substance in a content of 0.7 wt% or less.” In claim 1, “a water-extractable substance” is singular, and therefore claim 1 does not recite a maximum total content of water-extractable substances. For example, claim 1 encompasses a polyamide wherein the content of a water-extractable substance (e.g., substance X) is 10 wt%, as long as the polyamide also contains a water-extractable substance (e.g., substance Y) in a content of 0.7 wt% or less.
Like in claim 1, “the water-extractable substance” recited in line 2 of claim 16 is singular. However, in line 3 of claim 16, “the components” in “the components that can be extracted into water” is plural. Because of this inconsistency in pluralization, it is not clear whether claim 16 further limits claim 1 to require a total amount of all water-extractable substances/components to be below 0.7 wt% or less, or, whether claim 16 can be met by a polyamide resin where the content of some type of water-extractable substance is greater than 0.7 wt%, as long the content of at least one type of water-extractable substance is 0.7 wt% or less. Claim 17 is unclear for the same reason.
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.
Claim(s) 1-5 and 11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kurb et al (WO 2015076233-A1; included machine translation cited herein).
As to claim 1, Kurb discloses a polyamide resin produced by the polycondensation of 1,5-pentanediamine and dicarboxylic acid (abstract), wherein the dicarboxylic acid is adipic acid (p 3, middle). See also Example 1 on p 10 of a polyamide wherein 100 mol% of the diacid units are derived from adipic acid and 100 mol% of diamine units are derived from 1,5-pentanediamine. Kurb discloses purifying the pentanediamine monomer to reduce the content of acetamide to 70 ppm or less (see abstract and p 3).
Acetamide is highly soluble in water, and is therefore a “water-extractable substance” as presently recited. Given that the content of acetamide in Kurb’s pentanediamine monomer is 70 ppm or less, the content thereof in the ultimately obtained polyamide must be below 70 ppm (i.e., 0.007 wt%), which falls within the presently claimed range of 0.7 wt% or less (and 0.6 wt% or less as recited in claim 2).
Instant claims 2 and 3 are also met for at least the reasons that Kurb exemplifies a polyamide 56 wherein 100 mol% of diamine units are derived from 1,5-pentanediamine, and wherein the polyamide 56 content is 100 wt% of the polyamide (see Example 1 on p 10).
Instant claims 2 and 4 are also met for at least the reason that Kurb exemplifies a polyamide resin which contains 0 wt% of an additive (see Example 1 on p 10), which falls within the ranges recited in claim 2. Note that while claim 4 further limits the type of “the additive” recited in claim 2, claim 4 does not further limit the range recited in claim 2 to require an additive in an amount greater than 0 wt%.
Instant claim 5 is met for at least the reason that Kurb exemplifies a polyamide having a relative viscosity of 2.70 (example 1, p 10), which falls within the claimed range. The amino terminal group content exemplified by Kurb (5.63x10-5 mol/g, i.e., 51 mol/ton) also falls within the claimed range.
As to claim 11, Kurb teaches that the polyamide resin can be blended with additives (p 7), resulting in a composition as presently recited.
Claim(s) 1-5, 11, 16 and 17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sun et al (WO 2021088250; cited by Applicant on the IDS filed on 5/1/2025; the English equivalent US 2022/0389620 is cited herein).
As to claims 1 and 16, Sun discloses a polyamide 56 [0005, 0008, 0018], exemplifying a polyamide 56 wherein all (100 mol%) of the diacid units are derived from adipic acid and all (100 mol%) of the diamine units are derived from 1,5-pentanediamine [0108-110]. The resin has an oligomer content of 0.6 wt% [0110], which is determined by extracting the polyamide resin in refluxing water for 36 hours and calculating weight loss [0090]. Therefore, Sun exemplifies a polyamide 56 resin which has an oligomer content (i.e., water-extractable substance content) within the presently claimed range of 0.7 wt% or less, wherein the oligomer content (water-extractable substance content) is calculated by determining the mass of dried resin before and after water extraction [0090] (as recited in instant claim 16).
Alternatively, as discussed above, Sun discloses/exemplifies a polyamide which is obtained after refluxing in water for 36 hours and dried (as described in [0090]). There is reasonable basis to conclude that after extraction in refluxing (100 C) water for 36 hours, the content of a substance remaining in Sun’s extracted polyamide which could still be extracted with water must be negligible/lower than 0.6 wt%, i.e., within the presently claimed range.
As to claim 2, the molecular weight and water extractable substance (oligomer) content taught by Sun in [0110] fall within the corresponding ranges recited in claim 2.
As to claims 3 and 5, the moisture content in the polyamide 56 resin exemplified by Sun in [0110] is 450 ppm (which falls within the range recited in claim 5) and the oligomer (water extractable substance) content is 0.6 wt%, and therefore, the remaining content (i.e., the polyamide 56 content) of the polyamide 56 resin must be greater than 99 wt%.
As to claims 2, 4 and 11, Sun teaches additives in [0039] which correspond to those recited in claim 4, in an amount of 0-5 wt%, which falls within the range recited in claim 2. A composition as recited in claim 11 is at least met by a polyamide resin containing additives, as taught by Sun.
As to claim 17, Sun discloses an extraction treatment [0090] in refluxing water (water boils at 100 C, and therefore the temperature of the water used to carry out Sun’s extraction treatment must be within or substantially the same as the presently claimed range of 97-100 C). The mass ratio of polyamide resin to water is 8:400 (i.e., 1:50). Sun teaches an extraction treatment for 36 hours, which is longer than the presently recited 24 hours. However, there is reasonable basis to conclude that the content of water extractable substances removed from a polyamide resin after 36 hours of water extraction must be the same as, or higher than, the content of substances removed after a shorter 24 hour extraction. As set forth above, Sun discloses a polyamide having a content of water-extractable substances which falls within the claimed range when determined after a 36 hour extraction treatment. There is reasonable basis to conclude, therefore, that the polyamide disclosed by Sun has a water extractable substance content which, when determined after 24 hours of water extraction, also falls within the presently claimed range.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RACHEL KAHN whose telephone number is (571)270-7346. The examiner can normally be reached Monday to Friday, 8-5.
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/RACHEL KAHN/Primary Examiner, Art Unit 1766
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