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 .
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,320,038 in view of Aepli (US Patent No. 9,644,081 B2).
Regarding claims 1-4, claim 1 of the reference document requires a polyamide resin formed from a diamine and dicarboxylic acid, wherein the diamine may be entirely formed from xylylene-based diamines, and wherein the dicarboxylic acid is 70 mol% of dodecanedioic acid and the remaining may be chosen from a series of α,ω-dicarboxylic acids having the claimed range of carbon atoms.
The claims of the reference document are silent with regard to the claimed UV absorber, the claimed absorbance at 290 nm, and the claimed compositional amount of said UV absorber. However, in the same field of endeavor, Aepli teaches a polyamide molding composition (Abstract), comprising a polyamide and at least two UV absorbers (Abstract). The UV absorbers comprise at least one hydroxyphenyltriazine (col. 2, lines 11-12), which reads on the claimed “triazine-based ultraviolet absorber.” The polyamide may be formed from xylylene diamines (col. 4, 27-28) and dodecanedioic acid, inter alia (col. 4, lines 38-43).
Aepli exemplifies the usage of 2-(4,6-diphenyl-1,3,5-triazin-2yl)-5-hexyloxyphenol (c.f. col. 10, Table 2) as a suitable UV absorber. The instant Specification states that this compound, indicated as “Tinuvin 1577ED” likewise to Aepli (c.f. instant Specification on p. 22, “UVA-2” and Aepli at col. 10, Table 2, UV Stabiliser B2) has an absorbance value of 0.75 (Table on p. 27, “UVA-2” used in Example 2), which falls within the claimed range of “0.50 or more,” establishing a prima facie case of obviousness.
Finally, regarding the claimed range of triazine-based ultraviolet absorber content, Aepli teaches that the polyamide molding composition preferably contains 0.01 to 1.2 wt% of the at least one hydroxyphenyltriazine UV stabilizer (col. 6, lines 33-36), which overlaps the claimed range of “0.5 mass% or more,” establishing a prima facie case of obviousness.
It is prima facie obvious to select a known material based on its art-recognized suitability for its intended purpose (see MPEP 2144.07). Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to incorporate the UV absorber of Aepli, in the compositional amounts taught by Aepli, into the composition claimed by the reference document, as Aepli teaches said UV absorber and the accompanying compositional amount as suitable for substantially identical polyamide molding compositions.
Regarding claims 5, 12, 15, 18, and 20, as described above, Aepli teaches that the preferred hydroxyphenyltriazine-based ultraviolet absorber includes, inter alia, 2-(4,6-diphenyl-1,3,5-triazin-2yl)-5-hexyloxyphenol (c.f. col. 10, Table 2), which reads on the structure of claimed “Formula (1)” because it is identical to “Formula (1)” wherein two of the “n” are zero, the remaining “n” is 2, and the “R” groups corresponding to said “n” of 2 includes a single hydroxyl group and a single, hexyloxy- group.
Regarding claims 6, 13, 16, and 19, the claims of the reference document require that the polyamide resin be derived from a xylylene-based diamine. Therefore, the polyamide therein comprises 100 mass % of the total polyamide resin, which falls within the claimed range of “90.0 mass% or more,” establishing a prima facie case of obviousness.
Regarding claims 7, 8, 9 11, 14, and 17, claim 1 of the reference document teaches that the composition is in the form of a filament, which reads on the claimed use for extrusion molding, molded article, extrusion molded article, and fiber.
Regarding claim 10, the claims of the reference document are silent with regard to a film article. However, Aepli teaches that similar formulations may be formed into films (Abstract). It is prima facie obvious to select a known material based on its art recognized suitability for its intended use (See MPEP 2144.07). Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to have formed the composition of the reference document into a film, as Aepli teaches that substantially identical/overlapping compositions are suitable therefor.
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.
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 1-10 and 12-20 are rejected under 35 U.S.C. 103 as being unpatentable over Aepli (US Patent No. 9,644,081 B2).
Regarding claim 1, Aepli teaches a polyamide molding composition (Abstract), comprising a polyamide and at least two UV absorbers (Abstract). The UV absorbers comprise at least one hydroxyphenyltriazine (col. 2, lines 11-12), which reads on the claimed “triazine-based ultraviolet absorber.”
The polyamide is aromatic and is produced by polycondensation (e.g., col. 1, lines 66-67) of a mixture comprising:
an aromatic dicarboxylic acid (col. 2, line 1);
optionally at least one aliphatic dicarboxylic acid having 6 to 44 carbon atoms (col. 2, lines 2-3), the most especially preferred of which is dodecanedioic acid (col. 4, lines 38-43). This component reads on the claimed “α,ω-linear aliphatic dicarboxylic acid having from 6 to 14 carbons;”
and at least one aliphatic and/or cycloaliphatic diamine (col. 2, lines 4-5), which is specifically indicated as also including diamines which comprise aromatic structural units in which the amino groups are crosslinked with an aliphatic carbon atom (col. 4, lines 23-26), the preferred examples of which are meta- and para- xylylenediamine (col. 4, 27-28). This component reads on the claimed “diamine-derived structural unit being derived from a xylylenediamine;”
optional lactam(s) and/or α,ω-amino acids (col. 2, lines 6-8)
Regarding the claimed compositional limitations, Aepli teaches that, of the 50 mol% of the monomer mixture which consists of diacids (col. 7, lines 13-18), 0 to 40 mol% may be the aliphatic dicarboxylic acid (col. 6, lines 53-56). This corresponds to a range of 0 to 80 mol% of the dicarboxylic acid-derived structural units therein, which overlaps the claimed range of “70 mol% or more,” establishing a prima facie case of obviousness.
Aepli further teaches that, of the 50 mol% of the monomer mixture which consists of diamines (col. 7, lines 13-18), 0 to 50 mol% may be the aliphatic diamine (col.6, lines 64-67). Importantly, as described above, the aliphatic diamine is specifically indicated as also including diamines which comprise aromatic structural units in which the amino groups are crosslinked with an aliphatic carbon atom (col. 4, lines 23-26), the preferred examples of which are meta- and para- xylylenediamine (col. 4, 27-28). The range of 0 to 50 mol% corresponds to a range of 0 to 100 mol% of the diamine-derived structural units therein, which overlaps the claimed range of “70 mol% or more,” establishing a prima facie case of obviousness.
Regarding the limitations on the claimed “triazine-based ultraviolet absorber,” Aepli teaches that the hydroxyphenyltriazine UV absorber particularly preferably includes compositions of the following formula V:
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344
545
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Preferred hydroxyphenyltriazines of Formula V of Aepli (US 9,644,081 B2)
Wherein R14 is a linear or branched alkoxy radical with, most preferably, 2 to 6 carbon atoms (col. 3, lines 45-65). Aepli further exemplifies the specific usage of 2-(4,6-diphenyl-1,3,5-triazin-2yl)-5-hexyloxyphenol (c.f. col. 10, Table 2). The instant Specification states that this compound, indicated as “Tinuvin 1577ED” likewise to Aepli (c.f. instant Specification on p. 22, “UVA-2” and Aepli at col. 10, Table 2, UV Stabiliser B2) has an absorbance value of 0.75 (Table on p. 27, “UVA-2” used in Example 2), which falls within the claimed range of “0.50 or more,” establishing a prima facie case of obviousness.
Finally, regarding the claimed range of triazine-based ultraviolet absorber content, Aepli teaches that the polyamide molding composition preferably contains 0.01 to 1.2 wt% of the at least one hydroxyphenyltriazine UV stabilizer (col. 6, lines 33-36), which overlaps the claimed range of “0.5 mass% or more,” establishing a prima facie case of obviousness.
Regarding claims 2-4, as described above, Aepli teaches that the most especially preferred aliphatic dicarboxylic acid component is dodecanedioic acid (col. 4, lines 38-43), which is an α,ω-linear aliphatic dicarboxylic acid having 12 carbons. Aepli also prefers sebacic acid (col. 4, line 34), inter alia.
Regarding claims 5, 12, 15, 18, and 20, as described above, Aepli teaches that the preferred hydroxyphenyltriazine-based ultraviolet absorber includes, inter alia, 2-(4,6-diphenyl-1,3,5-triazin-2yl)-5-hexyloxyphenol (c.f. col. 10, Table 2), which reads on the structure of claimed “Formula (1)” because it is identical to “Formula (1)” wherein two of the “n” are zero, the remaining “n” is 2, and the “R” groups corresponding to said “n” of 2 includes a single hydroxyl group and a single, hexyloxy- group.
Regarding claims 6, 13, 16, and 19, as described above, Aepli teaches xylylenediamine-based polyamides. Furthermore, Aepli teaches that the polyamide molding composition comprises “at least one partially aromatic, amorphous polyamide” (col. 6, lines 27-28). The formulation of Aepli may therefore contain only one polyamide.
The compositions of Aepli containing only a single polyamide formed using xylylenediamine therefore contain 100 mass% of a xylylenediamine-based polyamide resin in relation to the total mass of the polyamide resin, which falls within the claimed range of “90.0 mass% or more,” establishing a prima facie case of obviousness.
Regarding claims 7, 14, and 17, Aepli teaches that the composition is a molding composition, and teaches that the inventive composition may be mixed in extruders (col. 8, lines 35-39). The extruded molding composition of Aepli therefore reads on the claimed use for extrusion molding.
Regarding claim 8, Aepli teaches molded articles formed from the inventive composition (col. 8, lines 5-7).
Regarding claim 9, as described above, Aepli teaches that the inventive composition may be mixed in extruders (col. 8, lines 35-39). The material produced from by mixing in an extruder would be shaped thereby, and therefore the articles of Aepli read on the claimed “extrusion molded article.”
Regarding claim 10, Aepli teaches that the inventive composition may be used in mono- or multilayer films (abstract).
Claims 11 is rejected under 35 U.S.C. 103 as being unpatentable over Aepli (US Patent No. 9,644,081 B2) in view of Tsuda (US Patent No. 3,652,509).
Regarding claim 11, Aepli teaches all of the limitations of claim 8, as described above. Aepli teaches the formation of molded articles (Abstract), but differs from claim 11 because it is silent with regard to the particular formation of a fiber.
In the same field of endeavor, Tsuda teaches fibers formed from polyamides consisting of paraxylylene and mixed α,ω-dicarboxylic acids (Abstract). Tsuda teaches that polyamides formed therefrom are uniquely enabled for fiber spinning, as their isomorphous nature circumvents degradation issues which occur in high melting point polyamides during melt spinning processes (col. 1, lines 35-50 and col. 2, lines 9-29). Tsuda specifically states that a combination of sebacic acid and dodecanedioic acid are suitable (col. 2, line 61). As described above, Aepli specifically teaches the preferred usage of both dodecanedioic and sebacic acids (col. 4, lines 11-20). Additionally, Aepli specifically states that mixtures of aliphatic dicarboxylic acids may also be used (col. 4, lines 19-20). It is prima facie obvious to select a material based on its art-recognized suitability for its intended use (See MPEP 2144.07). Therefore, it would have been obvious to one having ordinary skill in the art at the time of filing to utilize the polyamide compositions of Aepli which comprise polyamides formed from meta- and/or para- xylylenediamine and a combination of sebacic and dodecanedioic acids, to form fibers, as Tsuda teaches them as suitable for doing so given their particular isomorphous nature.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSHUA CALEB BLEDSOE whose telephone number is (703)756-5376. The examiner can normally be reached Monday-Friday 8:00 a.m. - 5:00 p.m. EST.
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/JOSHUA CALEB BLEDSOE/ Examiner, Art Unit 1762
/ROBERT S JONES JR/ Supervisory Patent Examiner, Art Unit 1762
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