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 .
Status of Application
Claims 1-15 are pending and presented for examination.
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.
1. Claims 1-5 and 7-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 and 7-10 of copending Application No. 18/692835 in view of Smith et al. (U.S. PGPUB No. 2016/0251479).
Claims 1-5 and 7-10 of Application 18/692835 claim identical polyamide resin, processes and compositions except for utilizing 1,5-pentanediamine instead of 1,10-decanediamine. However, Smith teaches similar compositions wherein the amine can be selected from either 1,5-pentanediamine or 1,10-decanediamine (0040-0042). Therefore, it would have been obvious to substitute 1,10-decanediamine for 1,5-pentanediamine to arrive at the pending claims as one could have substituted one diamine for another with a reasonable expectation of success, as Smith teaches they are interchangeable for forming a polyamide, and a predictable result.
This is a provisional nonstatutory double patenting rejection.
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.
2. 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.
Claim 1 recites the resin derived from repeating units including A, B and C. However, it is impossible for these units to actually be present as repeating units in the polyamide as there is no free units for bonding. Additionally, claim 1 recites an amount based on a total molar percentage of diacid units. However, as noted above, there will be no diacid units present in the actual polyamide resin. Therefore, claim 1 is indefinite. Claims 2-15 depend from claim 1 and are indefinite for the same reasons. It appears Applicant intends to claim that the resin includes repeating units that are derived from the monomers A, B and C and that based on a total molar percentage of repeating units derived from diacids that (A) accounts for 5-45 mol% of the repeating units derived from diacids. The claim will be interpreted this way for examination purposes.
Claims 7 and 11-15 recite “adding benzoic acid, sodium hypophosphite and deionized water”. However, the claims do not recite what these compounds are actually added to. The claims also recite the amount of sodium hypophosphite based on a weight of “other materials”. There is no antecedent basis for “other materials” and it is unclear what “other materials” are being referred to. The claims also recite the amount of water based on a weight of total materials, but it is unclear what “total materials” are being referred to. Additionally, the claim recites heating a reaction mixture. However, it is unclear as to what compounds are in the reaction mixture and how this reaction mixture correlates with the earlier recited reaction materials, benzoic acid, sodium hypophosphite and water. Finally, the claims recite drying “a prepolymer”. However, it is unclear what this prepolymer constitutes as the reaction mixture for generating it is undefined and the claims do not actually recite that this prepolymer is derived from heating the reaction mixture. Therefore, claims 7 and 11-15 are indefinite. As it is unclear as to how all the components are related and what is reacted in the process, it is impossible to search the claims with respect to prior art.
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.
3. Claim(s) 1-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Smith et al. (U.S. PGPUB No. 2016/0251479).
I. Regarding claims 1-3, Smith teaches a furan diacid-based polyamide resin (abstract) derived from monomers requiring 2,5-furandicarboxylic acid (abstract), an aliphatic diamine (abstract), which is selected from a group including 1,10-decanediamine (0042), and optionally aliphatic dicarboxylic acids, which is selected from a group including 1,4-cyclohexandicarboxylic acid (0035). Smith also teaches the 2,5-furandicarboxylic acid present in 15 mol%-80 mol% with respect to the total content of dicarboxylic acids (0032). Smith fails to teach an example including all of 2,5-furandicarboxylic acid with 1,10-decanediamine and 1,4-cyclohexandicarboxylic acid, and wherein the content of 2,5-furandicarboxylic acid units is 5-15 mol%.
First, Smith teaches the content of the furan monomer being in the range of 15-80 mol% with respect to the total dicarboxylic acid content (0032) which overlaps with the claimed range. Furthermore, overlapping ranges are prima facie evidence of obviousness.
Second, Smith fails to explicitly teach an example using the combination of monomers as claimed. However, Smith does teach that 2,5-furandicarboxylic acid is required. Additionally, Smith teaches that both 1,10-decanediamine and 1,4-cyclohexanedicarboxylic acid can be used in combination with the 2,5-furandicarboxylic acid to generate the polyamide resin. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute these particular monomers for the ones used in Smith’s exemplary polyamide resin. One could have made this substitution with a reasonable expectation of success (particularly given that Smith teaches that these monomers may be selected and used together to generate a polyamide resin), and the predictable result of providing a polyamide resin.
II. Regarding claims 4-6, Smith teaches an essentially identical furan based polyamide with overlapping content based on the 2,5-furandicarboxylic acid monomer (see above). As the claimed polyamide and Smith’s polyamide are essentially identical then inherently the properties of both polyamides will be identical. Therefore, Smith’s polyamide will be expected to have the claimed viscosity, melting point, water absorption rate and a lateral/longitudinal shrinkage rate as claimed in claims 4-6.
4. Claim(s) 8-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Smith in view of Long et al. (U.S. PGUB No. 2017/0044353).
Regarding claims 8-10, Smith makes obvious the polyamide resin of claim 1 (see above). Smith further teaches a polyamide molding composition comprising the polyamide resin (0079) and a reinforcing filler (0089), preferably glass fibers (0092). Smith fails to explicitly teach the composition including a halogen-free flame retardant or the amounts of the components as claimed.
However, Long teaches a polyamide based molding composition comprising: 35-71 parts polyamide resin (abstract); 0-50 parts inorganic reinforcing filler (abstract), preferably glass fibers (0029); and 10-35 parts of a halogen-free flame retardant (abstract), wherein the flame retardant is selected from a group including aluminum dimethylphosphinate (Figure 1 and 0025-0027). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Smith’s composition by including a flame retardant as disclosed by Long and combining the components in the amounts as disclosed by Long. One would have been motivated to make this modification as Long teaches this combination of polyamide with filler and halogen-free flame retardant in the amounts as claimed yields compositions with improved heat stability, only releases a small amount of gas during production, and is less prone to forming mold dirt and can realize continuous production (see Long at 0032).
Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Zhang et al. (U.S. PGPUB No. 2019/0002639) is cited for teaching what appears to be a similar process to the indefinite process claims for forming the polyamide resin (see 0128).
Conclusion
Claims 1-15 are pending.
Claims 1-15 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT S WALTERS JR whose telephone number is (571)270-5351. The examiner can normally be reached Monday-Friday 8-5.
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/ROBERT S WALTERS JR/
July 18, 2026Primary Examiner, Art Unit 1717
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