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 .
Election/Restrictions
Applicant's election with traverse of Group I, in the reply filed on December 18, 2025, is acknowledged. The traversal is on the grounds that the Examiner has not demonstrated a serious search and/or examination burden. This is not found persuasive because, although a serious search and/or examination burden does not appear necessary for restriction under 35 U.S.C. 121 and 372, as shown in the Restriction Requirement of November 10, 2025, the claims do not share the same or corresponding special technical feature. Additionally, although Applicants argue that claim 4 comprises steps that are specific to manufacturing the product of Group I, for the reasons set forth below, the elected product claims are rendered obvious over the teachings of the prior art. Therefore, the claims lack unity of invention.
The requirement is still deemed proper and is therefore made FINAL. Claim 4 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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.
Claim 2 is 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.
Regarding claim 2, the claim recites the yarn according to claim 1 further comprising 20% recycled nylon 6.6. Claim 1 recites the yarn comprising at least 10% recycled nylon 6.6 pellet. It is unclear if claim 2 is requiring an additional recycled nylon in addition to the recycled nylon 6.6 pellet, or if the claim is requiring the recycled nylon 6.6 pellet in claim 1 to comprise 20% recycled nylon. For purposes of examination, the claim is interpreted as further requiring additional recycled nylon.
Claim Rejections - 35 USC § 102/103
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 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.
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.
Claim(s) 1-3 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over USPN 5,077,124 to Clark.
Regarding claims 1-3, Clark teaches a high tenacity polyamide filament yarn which is at least 85% by weight poly(hexamethylene adipamide) and which has a tenacity of at least about 9.5 g/d (Clark, Abstract, column 1 lines 8-11, Examples 1-11). Note that poly(hexamethylene adipamide is often referred to as 66 nylon (Id., column 2 lines 54-62). Clark teaches that high tenacity polyamide yarns are known and used for a variety of purposes including cords for tires (Id., column 1 lines 12-18). Clark teaches that the preferred elongation to break is at least about 18%, resulting in preferred toughness ranges of greater than about 200 g/d % (Id., column 2 line 63 to column 3 line 8). Clark teaches that the denier of the yarns is typically on the order of 100-4000 denier, depending on the intended use (Id., column 3 lines 9-16).
Clark does not appear to teach the claimed recycled pellet. However, Applicants’ specification neither defines “recycled nylon” nor recites any specific properties which necessarily distinguishes “recycled nylon” from “non-recycled” or “virgin” nylon. Therefore, the limitation “recycled” is interpreted as only directed to the source of the nylon and as a product by process limitation. Absent a showing to the contrary, it is Examiner’s position that the article of the applied prior art is identical to or only slightly different than the claimed article. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). The burden has been shifted to Applicants to show unobvious differences between the claimed product and the prior art product. In re Marosi, 218 USPQ 289 (Fed. Cir. 1983). The applied prior art either anticipated or strongly suggested the claimed subject matter. It is noted that if Applicants intend to rely on Examples in the specification or in a submitted declaration to show unobviousness, Applicants should clearly state how the Examples of the present invention are commensurate in scope with the claims and how the Comparative Examples are commensurate in scope with the applied prior art.
Regarding claim 3, Clark teaches that the preferred elongation to break is at least about 18%, resulting in preferred toughness ranges of greater than about 200 g/d %. Such a value appears substantially similar to the claimed SASE according to ASTM-D-885.
Note that although Clark does not specifically teach that the tenacity and SASE are measured according to ASTM-D 885, since Clark is directed to a similar nylon filament having similar properties and used for a similar purpose, it is reasonable for one of ordinary skill to expect that the properties would be similar if measured according to the claimed standard.
Alternatively, it is reasonable for one of ordinary skill to expect that the filament yarn of Clark necessarily comprises the claimed property, as Clark teaches a substantially similar structure and composition as claimed. Products of identical structure cannot have mutually exclusive properties. The burden is on Applicants to prove otherwise.
Claim Rejections - 35 USC § 103
Claims 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Clark in view of CH 688448 to Lachmann.
Regarding claims 1-3, Clark does not appear to teach the use of recycled nylon. However, in the event it is shown that recycled nylon is necessarily distinguished from the nylon of Clark, Lachmann teaches monofilaments for industrial purposes using 100% recycled polyamide-6,6 polymer (Lachmann, Abstract). Lachmann teaches an Example wherein the monofilaments from PA6.6 granules meet specifications for further processing, such as a strength of 66 ± 3.566 cN/dtex, and are suited for monofilaments used in the production of tires (Id., pages 1-2). Lachmann teaches that recycled polymer is especially from thread remnants, wherein the disposal and reuse of polymer residues poses a problem in the context of environmental protection (Id., page 1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the filaments of Clark, and using recycled polyamide-6,6, as taught by Lachmann, motivated by the desire of forming a conventional polyamide-6,6 filament suitable for use in tire applications which reduce waste and reuse remnants from previous uses (Lachmann, page 1).
Regarding the claimed properties, Clark establishes that the claimed properties were known in the art as being predictably suitable for tire and tire cord applications. Lachmann teaches a similar nylon filament having similar properties for use in tire applications. Additionally, Clark teaches at column 3 line 9 to column 7 line 18, in addition to Examples 1-11 how to predictably modify the properties of the filament, such as by modifying the drawing steps, draw ratios and heating patterns (Clark, column 2 lines 3-20). Therefore, it is reasonable for one of ordinary skill to expect that the claimed properties naturally flow from the filament yarn of the prior art, as the prior art teaches a substantially similar structure and composition as claimed. Products of identical structure cannot have mutually exclusive properties. The burden is on Applicants to prove otherwise.
Alternatively, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the filaments of the prior art combination, wherein the filaments comprise the claimed properties which are adjusted and varied as taught by Clark, motivated by the desire of forming a conventional polyamide-6,6 filament having the desired tenacity and strength properties suitable for use in tire applications.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER Y CHOI whose telephone number is (571)272-6730. The examiner can normally be reached M-F 9:00 AM - 3:00 PM.
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/PETER Y CHOI/Primary Examiner, Art Unit 1786