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(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 1 – 15 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.
Claims 1, 3, 4 contains the trademark/trade name polyamide 6, polyamide 66, PA8, PA9 etc. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is/are used to identify/describe polyamide compounds/materials and, accordingly, the identification/description is indefinite.
Claim 1 recites various ingredients and combinations which is ambiguous as it is unclear if the combinations are drawn to polyamide 66 and aromatic polyamide alone or to every listed ingredient.
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, claim 3 recites the broad recitation polyamide with 8 to 20 carbon atoms, and the claim also recites individual polyamides such as PA8, PA9, PA10 etc., which is/are the narrower statement of the range/limitation. 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.
All other claims relying on the same limitation are rejected accordingly.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1 – 14 are rejected under 35 U.S.C. 103 as being unpatentable over Sato et al. (EP 3 604 446 A1)
In regards to claim 1, Sato teaches resin composition having excellent barrier properties and a molded article, wherein the composition comprises 20 to 80% of a polyamide resin A and 20 to 80% of a polyamide resin B, wherein resin B is derived from dicarboxylic acid such as isophthalic acid (i.e., aromatic acid) and thus can provide the aromatic polyamide of the claim [abstract, 0120 & Table 4]. Polyamide A can be one or more of polyamide 6 (i.e., PA6), polyamide 66 (PA 66), PA 610, PA612) etc. [0023]. Polyamide A may also optionally comprise aromatic polyamide [0026]. One or two or more of each of polyamides A and polyamide B can be used [0054]. Other polyamide may also be used such as PA11, PA12 (i.e., long chain polyamides of the claims) at amounts of preferably 3% or less by weight [0055, 0056]. The composition can comprise one or more additional ingredients such as impact modifiers, fillers, stabilizers, lubricants, flame retardents, colorants etc. [0057].
In regards to claim 2, Sato teaches the composition having the same polymer which would be expected to have similar relative viscosity.
In regards to claims 3 – 5, Sato teaches the composition having the claimed limitations as previously stated.
In regards to claim 6, 11 – 13, Sato teaches the composition comprising the claimed polyamides in the claimed amounts and further comprising impact modifiers as optional additives but does not particularly recite the specific compounds or their amounts. Stoppelmann et al. (EP 1 780 241 A1) similarly recites similar polyamide compositions for automobile parts having impact modifiers such as ethylene-propylene rubbers and which are present in amounts of 0 to 25% which overlaps the claimed range. Thus, it would have been obvious for persons of ordinary skill in the art at the time the claims were filed to have used the impact modifiers of Stoppelmann in the composition of Sato, as Stoppelmann recites suitable modifiers and amounts for use in polyamide compositions for automobile parts.
In regards to claim 7, Sato teach the composition. The presence of PA66 is optional and not required. Sato also optionally recites PA66 and it appears that similar relative viscosity will be provided.
In regards to claim 8, Sato teaches the composition. The claim does not require the presence of the aromatic polyamide and only recites the melting point of the aromatic amide when present. Since Sato can comprise PA66, the claimed limitation is provided.
In regards to claims 9, 10, Sato teaches the composition having the claimed ingredients in the claimed amounts as previously stated.
In regards to claim 14, Sato teaches the molded article having the composition as previously discussed.
Claims 1 – 8, 14, 15 are rejected under 35 U.S.C. 103 as being unpatentable over Dullaert et al. (CN103261325A)
In regards to claim 1, Dullaert recites storage gas tank liner comprising polyamide composition having an impact modifier at an amount of at least 1% and a nucleating agent at amount of at least 0.01% (abstract). The polyamide can include one or more such as PA6, PA66, PA12, aromatic polyamide etc. [0017]. The impact modifier includes ethylene-propylene copolymer and can be present at amounts of up to 60% [0033 – 0035]. The composition is useful for providing molded linings [0039, 0040].
In regards to claims 2 – 4, 6 – 8, 14, Dullaert teaches the composition hand the claimed ingredients. The polyamides would be expected to provide similar properties such as relative viscosity and glass transmission temperature of the claims.
In regards to claim 15, Dullaert teaches the composition for a tank liner as previously stated. It appears that the tank liner would be suitable for providing the intended use as hydrogen tank liner.
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 – 15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 10 of copending Application No. 18/259,415. Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application recites polyamide composition comprising one or more of a first polyamide and one or more of a second polyamide which encompasses the claimed polyamides, impact resistant material such as polyolefin copolymer, antioxidant and release agent, and wherein the composition provides a product used as a hydrogen tank liner. Gas tank liners are typically molded articles which makes the molded article of the claims obvious. Where combinations of polyamides of each of the first and/or second type are used, it would be obvious to use them in similar proportions. Since the same polyamides are recited similar relative viscosities would be expected. While the copending application does not particularly recite that the polyolefin impact material is ethylene-propylene, such materials are known in view of CN 103261325 A, which would have made the claimed limitation obvious.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAIWO OLADAPO whose telephone number is (571)270-3723. The examiner can normally be reached 8-5pm.
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/TAIWO OLADAPO/Primary Examiner, Art Unit 1771
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