DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 43 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 43 is dependent on cancelled claim 14.
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.
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.
Claims 1, 9, 11-12, 16, 18-19, 21, 26, 29, 31-32, 38, 42-43 and 45 are rejected under 35 U.S.C. 103 as being unpatentable over Oda et al. JP2015-017177A.
Regarding claims 1, 9, 11-12, 18 and 19, Oda teaches (reference claim 1) a polyamide resin which is generated by polycondensing a polyamide oligomer containing a diamine unit which can be selected to be an alicyclic diamine unit represented by the following general formula (I-2) and a dicarboxylic acid unit selected from a linear aliphatic dicarboxylic acid unit represented by the following general formula (II-1) and an aromatic dicarboxylic acid unit represented by the following general formula (II-2), to adjust the crystallinity and moldability of the polyamide (para [0019]).
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Oda discloses that alicyclic diamine unit represented by General Formula (I-2) include 1,3-bis(aminomethyl)cyclohexane, which can be used alone (para [0014]).
Oda notes that the aliphatic dicarboxylic acid unit can be selected to be adipic acid (para [0021]) and that terephthalic acid is a preferred aromatic dicarboxylic acid (para [0024]).
Oda adds that the dicarboxylic acid unit in the polyamide, the content ratio of the linear aliphatic dicarboxylic acid unit and the aromatic dicarboxylic acid unit (linear aliphatic dicarboxylic acid unit / aromatic dicarboxylic acid unit) is appropriately determined depending on the application. For the purpose of tuning the glass-transition temperature (Tg) of the polyamide resins and to decrease the crystallinity of the polyamide resins, the molar ratio of the linear aliphatic dicarboxylic unit / the aromatic dicarboxylic unit is preferably 0/100-30/70 (para [0026]).
Oda provides two embodiments Production Example 3 (para [0079]), which is generated by monomers 1,3-bis(aminomethyl)cyclohexane and adipic acid; and Production Example 5 which is created by condensation of 1,3-bis(aminomethyl)cyclohexane and terephthalic acid (para [0081]).
It would have been obvious to one of ordinary skilled in the art before the effective filing date of the invention to have substituted small amount 5 mol% of terephthalic acid in Oda’s Production Example 5 with adipic acid (where 5 mol% adipic acid lies within Oda’s recommended mol% of aliphatic dicarboxylic acid), while maintaining the same molecular weight (Mn, see Table 2, Ex 5), for the same application of creating a polyamide with decreased crystallinity. Such an obvious composition satisfies the claimed repeat units of 95 mol% RPA1 and 5 mol% RPA3.
Since Oda discloses the same monomers as the instant inventive examples and the obvious embodiment of Oda is similar to inventive E5, the Tm would necessarily follow. Applicant’s attention is directed to: Where 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). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01.
Regarding claim 16, Oda teaches that aromatic dicarboxylic terephthalic acid and isophthalic acid can be used together in a combination of two (paras [0024] and [0025]) and recommends smaller fraction of isophthalic acid when combined with terephthalic acid such that the ratio of (isophthalic acid unit / terephthalic acid unit) is in the range 0/100-30/70. Since the incorporation of isophthalic acid is known to decrease the crystallinity of a polyester due to its asymmetric structure, it would have been obvious to one of ordinary skilled in the art before the effective filing date of the invention to have incorporated 1 mol% of isophthalic acid (along with 5 mol% adipic acid) in obvious composition of Oda as discussed, when addressing claim 1, to tailor the crystallinity and thus flexibility of the final polyester. Such an obvious composition satisfies the claimed repeat units of 94 mol% RPA1, 1 mol% RPA2 and 5 mol% RPA3.
Regarding claims 21, 26, 29 and 31, Oda discusses managing Tg and crystallinity of the polyamide by tailoring the proportions of the dicarboxylic acids (para [0026]). As discussed, when addressing claim 1, Oda teaches the same monomers, the required repeat units and renders the repeat unit proportions obvious, and also provides the molecular weight Mn value (24,550 g/mol, Example 5, Table 2) which is within the recommended range of the instant specification (specification, para [0030]). Obvious composition of Oda with the required repeat units, proportions and molecular weight Mn consistent with the specification would be expected to satisfy the thermal properties.
Regarding claim 32, Oda’s production example 5 (para [0081]) 1,3-bisaminomethylcyclohexane having a cis/trans ratio of 70/30, meeting the claimed requirement.
Regarding claims 38 and 45, Oda teaches antioxidant sodium hypophosphite for preventing coloration of the polyamide (para [0033]). Oda further discloses molded articles such as connector parts of automobiles, derived from the polyamide (para [0042]), meeting the claimed requirements.
Regarding claims 42 and 43, Oda discloses molded articles such as connector parts of automobiles, derived from the polyamide (para [0042]), meeting the claimed requirements.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Surbhi M Du whose telephone number is (571)272-9960. The examiner can normally be reached M-F 9:00 am to 5:00pm.
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/S.M.D./
Examiner
Art Unit 1765
/JOHN M COONEY/Primary Examiner, Art Unit 1765
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