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 .
Preliminary amendment filed 2/29/2024 is made of record. Claim 10 is cancelled, and claims 1-9 and 11 are currently pending in the application.
Election/Restriction
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1-7 and 11, drawn to toughened polyamide composition. It is noted that claim 11 drawn to an article manufactured from toughened polyamide composition is kept with the toughened polyamide composition since no materially significant limitations are recited in claim 11 that would patentably distinguish it from toughened polyamide composition of claims 1-7.
Group II, claim(s) 8-9, drawn to process for preparing toughened polyamide composition.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons: Groups I and II lack unity of invention because even though the inventions of these groups require the technical feature of a toughened polyamide composition comprising a blend of: (A) at least one polyamide; (B) at least one impact modifier; and (C) at least one organic amine; wherein the concentration of the at least one organic amine, component (C), is from 0.01 percent by weight to 10 percent by weight, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Yang et al (CN 110437611 A). It is noted that CN 110437611 A is in Chinese. A copy of the machine translation into English is provided with this Office action. All line/paragraph citations below are to the English translation unless explicitly stated. Specifically, Yang et al teach toughened nylon composite comprising nylon resin and toughening agent. The toughening agent is a mixture of amino-terminated polydimethylsiloxane, epoxy-terminated polydimethylsiloxane and an organosilicone elastomer toughening agent (abstract) (i.e., an impact modifier). See example 1, wherein the composition comprises 60 parts by mass of nylon 66, 6 parts by weight of nylon 6 (i.e., both are polyamides), and 8 parts by weight of toughened system (amino-terminated polydimethylsiloxane (i.e., organic amine), epoxy-terminated polydimethylsiloxane and acrylate silicone copolymer (i.e., impact modifier) in a ratio of 2:2:6) (paragraph 054).
During a telephone conversation with Cheney Huang on 7/7/2026 a provisional election was made WITHOUT traverse to prosecute the invention of group I, claims 1-7 and 11. Affirmation of this election must be made by applicant in replying to this Office action. Claims 8-9 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Claim Objections
Claim 3 is objected to because of the following informalities: Claim 3 recites “the at least one impact modifier composition, component (B)” and should be rephrased as “the at least one impact modifier, component (B)” for proper antecedent basis. Appropriate correction and/or clarification are required.
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, 3 and 5 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.
Claim 2 recites the limitation "the functionality" in lines 2-3. There is insufficient antecedent basis for this limitation in the claim. Examiner interprets the functionality to be “amine”.
Claim 2 recites the limitation "the proviso" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 3 recites the limitation “the at least one impact modifier composition” in lines 3-4. There is insufficient antecedent basis for this limitation in the claim.
Claim 5 recites “each separately is an alkyl group, an aryl group, an allyl group or an alkoxy group having a carbon number of from 2 to 30”. It is not clear if the” carbon number of 2 to 30” is to be associated with “alkoxy group” or any one of “alkyl group, an aryl group, an allyl group or an alkoxy group”. If it is the latter, it is not clear how an aryl group can have 2 carbon atoms. Hence, metes and bounds of present claim cannot be ascertained by one of ordinary skill in art prior to the filing of present application.
Claim Rejections - 35 USC § 102
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 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.
Claims 1-3, 7, and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yang et al (CN 110437611 A).
It is noted that CN 110437611 A is in Chinese. A copy of the machine translation into English is provided with this Office action. All line/paragraph citations in the body of rejection below are to the English translation unless explicitly stated.
Regarding claim 1, Yang et al teach toughened nylon composite comprising nylon resin and toughening agent. The toughening agent is a mixture of amino-terminated polydimethylsiloxane, epoxy-terminated polydimethylsiloxane and an organosilicone elastomer toughening agent (abstract). See example 1, wherein the composition comprises 60 parts by mass of nylon 66, 6 parts by weight of nylon 6 (i.e., both read on polyamide in present claim 1), and 8 parts by weight of toughened system (amino-terminated polydimethylsiloxane (i.e., reads on organic amine in present claim 1), epoxy-terminated polydimethylsiloxane and acrylate silicone copolymer (see paragraph 047 and reads on impact modifier in present claim 1) in a ratio of 2:2:6) (paragraph 054). The amount of amino-terminated polydimethylsiloxane in the composition, of example 1, is calculated to be about 1.6 wt% (i.e., reads on the concentration of organic amine in present claim 1).
Regarding claims 2 and 7, the amino-terminated polydimethylsiloxane is represented by the formula:
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116
486
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(paragraph 018 of original CN 110437611 A and paragraph 019 of machine translation) which reads on amine functionality in organic amine is below 4 in present claim 2 and polydimethylsiloxane with at least one primary amine group at least at the end of polydimethylsiloxane in present claim 7.
Regarding claim 3, see example 1, of Yang et al, wherein the composition comprises 60 parts by mass of nylon 66, 6 parts by weight of nylon 6, and 8 parts by weight of toughened system (amino-terminated polydimethylsiloxane, epoxy-terminated polydimethylsiloxane and acrylate silicone copolymer in a ratio of 2:2:6) (paragraph 054). The amounts of polyamide (i.e., polyamide), acrylate silicone copolymer (i.e., impact modifier) and amino-terminated polydimethylsiloxane (i.e., organic amine) are calculated to be 66% by weight, 4.8% by weight and 1.6% by weight, respectively.
Regarding claim 11, Yang et al teach that obtained mixed resin is passed through a twin-screw extruder and composite is obtained as pellet (paragraph 054). The composite is applied in the preparation of high-speed rail fittings (abstract) which reads on the article in present claim 11.
Claims 1-3 and 5-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zheng et al (CN 105400187 A).
It is noted that CN 105400187 A is in Chinese. A copy of the machine translation into English is provided with this Office action. All line/paragraph citations in the body of rejection below are to the English translation unless explicitly stated.
Regarding claim 1, Zheng et al disclose a polyamide thermoplastic composition comprising polyamide and amido end capped polyether (abstract). See example 1, wherein the composition comprises polyamide (i.e., reads on at least one polyamide in present claim 1) and trimethylpropane tripropylene glycol ether (amine-terminated) viscosity reducer (paragraph 043) which reads on organic amine in present claim 1. In order to further improve the performance of composition, a toughening agent may be included (paragraph 034) which reads on the impact modifier in present claim 1. The content of amine terminated polyether is 0.1 to 3 mass% (paragraph 010) which reads on the concentration of organic amine in present claim 1.
Regarding claims 2, amine-terminated polyether is represented by formula: NH2CH(CH3)CH2-[OCH(CH3)CH2]x-[OCH2CH2]y-[OCH2CH(CH3)]z-NH2, wherein y = 9 and x+z = 3.6 (paragraph 041) which reads on organic amine wherein the amine functionality is below 4 in present claim 2.
Regarding claim 3, see example 5, of Zheng et al, wherein the composition comprises 5 Kg of polyamide (about 97.1% by weight and reads on amount of polyamide in present claim 3) and 150 g of trimethylpropane tripropylene glycol ether (amine-terminated) viscosity reducer (paragraph 051) which is equivalent to 2.9% by weight and reads on the amount of organic amine in present claim 5. The toughening agent is present in amounts of 5 to 15% by weight (paragraph 020) which reads on the amount of impact modifier in present claim 3. .
Regarding claim 5, Zheng et al teach that amine-terminated polyethers are mono-functional, difunctional or trifunctional and have a molecular weight of 200 to 5000 (028). It is the Office’s position that at low molecular weights, the amine-terminated polyether would inherently have carbon number falling within the range of 2 to 30 (i.e., reads on the carbon number in present claim 5). See example 1, wherein amine-terminated polyether is represented by formula: NH2CH(CH3)CH2-[OCH(CH3)CH2]x-[OCH2CH2]y-[OCH2CH(CH3)]z-NH2 (paragraph 041) which reads on organic amine NH2-R-NH2 wherein R is alkoxy in present claim 5.
Regarding claim 6, Zheng et al teach amine-terminated polyether (paragraph 010) which reads on the polyether amine in present claim 6.
Claim 4 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zheng et al (CN 105400187 A) in view of Dai (CN 109852043 A).
It is noted that CN 109852043 A is in Chinese. A copy of the machine translation into English is provided with this Office action. All line/paragraph citations in the body of rejection below are to the English translation unless explicitly stated.
The discussion with respect to Zheng et al in paragraph 17 above is incorporated by reference.
Zheng et al are silent with respect to species of impact modifier.
However, Dai in the same field of endeavor teaches a nylon material (i.e., polyamide) comprising polyamide and a toughening agent (abstract). Examples of toughening agents include POE-g-MAH (i.e., ethylene-octene copolymer grafted maleic anhydride) (paragraph 019). Case law holds that selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). Therefore, in light of the teachings in Dai and given that Zheng et al contemplate including a toughening agent in its composition, it would have been obvious to one skilled in art prior to the filing of present application to include toughening agent, of Dai, in the polyamide composition, of Zheng et al, absent evidence to the contrary.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KARUNA P REDDY whose telephone number is (571)272-6566. The examiner can normally be reached 8:30 AM to 5:00 PM M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie (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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/KARUNA P REDDY/Primary Examiner, Art Unit 1764
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