DETAILED ACTION
Claim Rejections - 35 USC § 112
Claims 27, 32 and 36 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.
In claim 27, it is unclear what weight to give the groups in parenthesis. That is
it is not clear if this limits the heteroatom to such groups or not.
In claim 32, it appears that the type of amine component is missing. This claim
narrows the range of “the amine component” but it is not clear what this is.
In claim 36 it is unclear if the composition has a tensile strength as claimed or if it results in one, i.e. it can form something with this tensile strength or it results in this property at all times. In other words, in this claim the use of the term “results” renders it indefinite. Note that “has” and “exhibits” in claims 35 and 47 do not raise this issue.
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 21 to 40 are rejected under 35 U.S.C. 103 as being unpatentable over Kopannia et al. 2013/0150490.
Kopannia et al. teach a polyamide that is prepared from 30 to 70 mol% dimer
fatty acids and 70 to 30 mol% aliphatic dicarboxylic acid. This corresponds to the claimed fatty acid dimer and aliphatic diacids in amounts which overlap with the 30 to 50 mol% ranges in claim 21. The polyamide is also prepared from 98 to 70 mol% aliphatic diamines and up to 25 mol% cycloaliphatic diamine. This corresponds to the claimed cycloaliphatic diamine and aliphatic diamine in amounts which overlap with the 10 to 40 mol% and 50 to 80 mol% ranges in claim 21.
In view of the fact that each of the claimed reactants in the claims are disclosed by Kopannia et al. and can be used in amounts as claimed, one having ordinary skill in the art would have found the a polyamide having units in the amounts as claimed to have been obvious.
Note that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In fact, generally differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical.
Regarding the requirement of the aliphatic diamine having from 3 to 12 carbon atoms, see paragraph 23 which teaches aliphatic groups of from 2 to 20 C atoms, with many of the preferred groups falling within the claimed 3 to 12 range.
Regarding the claimed viscosity requirement, see the end of paragraph 31 which teaches a viscosity as low as 1 Pa.s at 225oC. While this is not measured at 185oC, Kopannia et al. is concerned with viscosity in the production of molded objects such that the skilled artisan would have found it obvious to adjust the reactants in an effort to optimize this property, particularly for the intended use, and thus would have found a value within the claimed range to have been obvious.
Finally, for the claimed softening point requirement, see paragraph 32 which teaches a range of below 200oC, preferably from 170 to 200oC such that this also over-laps with the claimed range.
Thus, while there are various ranges that overlap with those claimed, Kopannia et al. teach the reactants and amounts necessary to arrive at the claimed properties such that one having ordinary skill in the art would have found the polyamide composi-tion of claim 21 to have been obvious.
The normal desire of scientists and artisans to improve upon what is already known provides motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages. Where the prior art reasonably suggests obtaining a particular property, merely testing to determine relative degrees of perform-ance to find a particular species having a higher or lower degree of performance, is not unexpected since obviousness does not require absolute predictability.
To this point, see paragraph 15 which teaches adjusting the average number of C atoms in the dicarboxylic acid to achieve a lower melting point. See also paragraph 32 which teaches the detrimental effects of a viscosity that is too high.
For claims 22 and 23, note that such limitations are addressed supra, as these are embraced by the general teachings in Kopannia et al. and would have been within routine experimentation of the teachings therein.
For claim 24, see paragraph 14 which teaches dimerization of fatty acid to prepare the dimers.
For claims 25 and 26, see paragraph 15 which teaches these diacids.
For claim 27, note that a chain limiter is not a required component such that this limitation need not be taught by the prior art.
For claims 28 and 29, see paragraphs 19 and 23 which teach a particularly preferred range of C2 to C8 diamines which fall almost entirely within the claimed range. This also specifically names many diamines meeting this requirement, including hexa-methylene diamine.
For claim 30 see paragraph 20 which teaches many of these diamines.
For claim 31, while ethylene diamine is embraced by Kopannia et al. it is not a required component such that the skilled artisan would have found the absence thereof to have been obvious.
For claim 32, as noted above, it is unclear what this limits but in an effort to address this claim the Examiner notes that the cycloaliphatic diamine is present in from 1 to 25 mol% (paragraph 20) and the polyoxyalkylene diamine is present in an amount of from 1 to 20 mol%.
For claim 33 note that amounts within these ranges are also within the preferred ranges found in the prior art and noted above..
For claim 34, note that the polyamide produced in Kopannia et al. is 100 wt% polyamide, meeting this requirement.
For claim 35, see the range in paragraph 33 which overlaps with that claimed such that one having ordinary skill in the art would have a polyamide within the claimed range to have been obvious and within routine skill for the average artisan having knowledge of the teachings in Kopannia et al.
For claim 36, while this does not specifically teach a tensile strength the skilled artisan would have been motivated to adjust this property in an effort to optimize the tensile strength of the final product. Note for instance that Polymer 1, paragraphs 64 to 70, has a tensile strength of 14 MPa (as there is a 1:1 conversion for MPa and N/mm2). From this it follows that Kopannia et al. desires a tensile strength much higher than 3 MPa and from this the skilled artisan would have found one within this range to have been within routine experimentation and optimization.
For claim 37 note that this appears to be a property that is necessarily associated with the claimed polyamide composition such that the polyamide rendered obvious by the teachings in Kopannia et al. would be expected to possess this physical limitation.
For claim 38 and 40, note that these claims are defined only by the presence of the polyamide such that the obvious polyamide composition in Kopannia et al. meets this requirement. Note that, given the softening point, this polyamide is a hot melt composition.
For claim 39, see paragraph51 which teaches that the molded artisan containing the polyamide can be joined to other parts, such that this “other part” meets the require-ment of an insert.
Claims 21 to 40 are rejected under 35 U.S.C. 103 as being unpatentable over Becker et al. 7,297,756
Becker et al. teach a polyamide that is preferably prepared from 30 to 95 mol%
dimer fatty acids and 5 to 70 mol% aliphatic dicarboxylic acid. See column 3, lines 60 to 65 and column 4, lines 25 to 30, the latter of which teaches specific aliphatic diacids. This corresponds to the claimed fatty acid dimer and aliphatic diacids in amounts which overlap with the 30 to 50 mol% ranges in claim 21. The polyamide is also prepared from 20 to 85 mol% aliphatic diamines and 0 to 70 mol% cycloaliphatic diamine. See column 3, lines 65 to 67. This corresponds to the claimed cycloaliphatic diamine and aliphatic diamine in amounts which overlap with the 10 to 40 mol% and 50 to 80 mol% ranges in claim 21.
In view of the fact that each of the claimed reactants in the claims are disclosed by Becker et al. and can be used in amounts as claimed, one having ordinary skill in the art would have found a polyamide having units in the amounts as claimed to have been obvious.
Note that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In fact, generally differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical.
Regarding the requirement of the aliphatic diamine having from 3 to 12 carbon atoms, see paragraph column 4, line 37, which teaches a preferred range of from 4 to 12 C atoms.
Regarding the claimed viscosity requirement, see column 4, lines 60 to 65, which teaches a viscosity of 100 to 4,000 mPa.s which corresponds to .1 to 4 Pa.s at 180oC. While this is not measured at 185oC, the skilled artisan would recognize that viscosity decreases as temperature rises such that the viscosity of these polyamides at 185oC will be within the claimed range.
Finally, for the claimed softening point requirement, the top of column 5 which teaches that, for a viscosity of 450 mPa.s, the softening point is typically about 185oC. While the Examiner recognizes that this is outside the claimed limit, note that this represents the a “typical” softening for that viscosity. As such it follows that adjusting the viscosity, as Becker et al. motivates the skilled artisan to do, would likewise adjust the softening point. In this manner obtaining a softening point within the claimed range would have been within the skill of the ordinary artisan during routine experimentation and optimization.
Note, for instance, that column 4, lines 55 to 59, provide an example of how one can adjust the viscosity and softening point “in a way that the hot-melt adhesive is suit-able for the use according to the present invention”.
Thus, while there are various ranges that overlap with those claimed, Becker et al. teach the reactants and amounts necessary to arrive at the claimed properties such that one having ordinary skill in the art would have found the polyamide composition of claim 21 to have been obvious.
The normal desire of scientists and artisans to improve upon what is already known provides motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages. Where the prior art reasonably suggests obtaining a particular property, testing to determine relative degrees of performance to find a particular species having a higher or lower degree of performance, is not unexpected since obviousness does not require absolute predictability.
For claims 22 and 23, note that such limitations are addressed supra, as these are embraced by the general teachings in Becker et al. and would have been within routine experimentation of the teachings therein.
For claim 24, column 4, line 6, which teaches dimerization of fatty acid.
For claims 25 and 26, see column 4, line 27, which teaches these diacids.
For claim 27, note that a chain limiter is not a required component such that this limitation need not be taught by the prior art.
On the other hand, see column 3, lines 62 and 63, which teach such monoacids.
For claims 28 and 29, see column 4, lines 31 and on, which teaches diamines having 4, 6, 8, 10 and 12 C atoms as preferred diamines. This embraces hexane.
For claim 30 see column 4, lines 39 to 44, which teaches many of the diamines.
For claim 31, ethylene diamine is not embraced by the preferred embodiment of Becker et al. such that the skilled artisan would have found the absence thereof to have been obvious.
For claim 32, as noted above, it is unclear what this claim limits but in an effort to address this claim the Examiner notes that the cycloaliphatic diamine is present in from 0 to 75 mol% and the polyoxyalkylene diamine is present in an amount of from 0 to 60 mol%. These amounts embraces the entirety of the claimed amounts such that one hav-ing ordinary skill in the art would have found an amount within the claimed range to have been obvious.
For claim 33 note that amounts within these ranges are also within the preferred ranges found in Becker et al., column 3, line 60, through column 4, line 3.
For claim 34, note that the polyamide produced in Kopannia et al. is 100 wt% polyamide, meeting this requirement.
For claims 35 to 37 note that these appear to be a property that is necessarily associated with the claimed polyamide composition such that the polyamide rendered obvious by the teachings in Kopannia et al. would be expected to possess these physical limitations.
For claim 38 and 40, see column 5 line 7 which teaches a hot melt adhesive.
For claim 39, see the teachings such as found on column 1, lines 27 and on, which refer to injecting the hot melt adhesive into a rock formation. The adhesive penetrates the fissures and pores of the material. In such an article, the rock can be considered an insert and the polyamide is
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