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 38-40, 44, and 52 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 38 recites the limitation "the total amount of said hexamethylenediamine" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim.
Claim 39 recites the limitation "the total amount of diamine" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 40 recites the limitation "the maximum temperature" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 44 recites the limitation "the total amount of said comonomers" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 52 recites the limitation "the total Relative Viscosity" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 52 recites the limitation "the amine end group" in line 5. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 102
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 51-52 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Pub. No. 2017/0283556 to Ebata et al. (Cited on IDS).
It is noted that claims 51-52 claim a copolyamide, all elected claims are recited in the product-by-process format by use of the language, “A copolyimide made according to the process…” Case law holds that: 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. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
To the extent that the process limitations in a product-by-process claim do not carry weight absent a showing of criticality, the reference discloses the claimed product in the sense that the prior art product structure is seen to be no different from that indicated by the claims.
Ebata discloses a copolyamide comprising 50 mass% of terephthalic acid, 35 mass% of isophthalic acid, 15% by mass of adipic acid, 1,6-hexanediamine, and 21 mmol/kg terminal amino groups provided by benzoic acid (0180-0185). Ebata does not teach the relative viscosity according to ASTM D789. However, the composition in Ebata is substantially identical to the claimed composition that comprises same the monomer units and that is amino terminated with a chain terminating acid. When the composition recited in the reference is substantially identical to that of the claims, the claimed properties or function are presumed inherent. MPEP 2112.01. Because the prior art exemplifies Applicant’s claimed composition the claimed physical properties are inherently present in the prior art. Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the 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.
Claims 33-37, 39-44, and 49-51 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent No. 4,238,603 to Chapman et al. in view of U.S. Patent Pub. No. 2017/0283556 to Ebata et al. (Cited on IDS).
As to claims 33-37, 42-44, and 49-51, Chapman discloses a batch polymerization process for copolyamides comprising monomeric units from terephthalic acid and 1,6-hexanediamine (6TA), isophthalic acid and 1,6-hexanediamine (6IA), and adipic acid and 1,6-hexanediamine (6RA, 2:30-43), and water wherein the content of 6TA is 45 to 68%, 6IA is 30 to 40%, and 6RA is 2 to 15% by mass (2:44-48). Chapman discloses a process wherein the polymers are prepared in a batch autoclave and extruded therefrom without cleaning the autoclave between successive runs (Abstract, Example 6), wherein 150 grams of polymer are left in the autoclave as a shell on the walls and agitator.
Chapman does not expressly disclose the addition of the end-capping agent.
However, Ebata discloses a copolyamide comprising 50 mass% of terephthalic acid, 35 mass% of isophthalic acid, 15% by mass of adipic acid, 1,6-hexanediamine, and 21 mmol/kg terminal amino groups provided by benzoic acid (0180-0185).
At the time of filing it would have been obvious to a person of ordinary skill in the art to add the end-capping agent to improve melting stability, heat resistance, and hydrolysis resistance of the copolyimide. This is supported by Ebata (0080).
As to claim 38, Chapman discloses salts of the above monomeric units wherein at least about 2 mol% of the salt mixture consists of 6RA (3:20-22).
As to claims 40-41, Chapman discloses an autoclave pressure of 200 psig and a temperature of 300°C (See Example 6).
As to claim 51, with regard to the relative viscosity, the Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients. Therefore, the claimed effects and physical properties, i.e. viscosity values would implicitly be achieved by a composite with all the claimed ingredients. If it is the applicants’ position that this would not be the case: (1) evidence would need to be provided to support the applicants’ position; and (2) it would the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Claims 33-52 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Pub. No. 2020/0317866 to Thierry et al. in view of U.S. Patent Pub. No. 2017/0283556 to Ebata et al. (Cited on IDS).
As to claims 33-34, 36-37, 42-44, and 49-51, Thierry discloses methods of making a polyamide copolymer in an autoclave using water (0013) that does not need cleaning and can be used for subsequent preparations of the copolyamides (0029), wherein the copolyamides comprise monomeric units of adipic acid, terephathlic acid, and hexamethylene diamine (0013). Thierry teaches the addition of chain-limiting agents in concentrations of 50 to 100 mmol/kg (0019).
Thierry does not expressly teach the addition of comonomer.
However, within the same field of endeavor Ebata discloses a copolyamide comprising terephthalic acid, isophthalic acid, mass of adipic acid, 1,6-hexanediamine, and 21 mmol/kg terminal amino groups provided by benzoic acid (0180-0185), wherein the content of isophthalic acid ranges from 0 to 40 mol% (0075)..
At the time of filing it would have been obvious to include a comonomer such as isophthalic acid to the polyamide of Thierry as taught in Ebata to increase melt tension (0075).
As to claim 35, Thierry does not expressly disclose a value of remaining polyamide. However, Thierry teaches that during the whole duration of the 12-batch series production campaign, no contamination of the molten polymer by any material resulting from polymer accumulation and degradation in the equipment was observed (0042). Accordingly, a prima facie case of obviousness exists over the amount of remaining “heel” because the remaining amount does not affect the resulting successive polymer.
As to claim 38, Thierry discloses salts of the monomeric units are used (Abstract).
As to claim 39, Thierry discloses wherein a molar excess of diamine may be used (0.9 to 1.1) in relation to the dicarboxylic acid monomeric units (0014).
As to claims 40-41, Thierry teaches pressures of 0.10 MPa and temperatures of less than 294°C used in certain process steps of the invention (Example 1).
As to claims 45-48, Thierry discloses a process for the manufacture of copolyamides comprising less than 50 mol% units of hexamethylene terephthalamide (6T) and more than 50% of hexamethylene adipamide (66, 0012). These values overlap the claimed range. Accordingly, it would have been obvious to a person of ordinary skill in the art to work within the claimed ranges as taught in Thierry to provide a copolyimide with excellent properties (0012).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL L LEONARD whose telephone number is (571)270-7450. The examiner can normally be reached M - F 7:00-4:00.
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/MICHAEL L LEONARD/Primary Examiner, Art Unit 1763
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