DETAILED ACTION
This office action follows a reply filed on June 24, 2026. Claims 3-4, 6-7, 9 and 12 have been amended. Claims 1-14 are currently pending and under examination.
The 101 rejection, the 112 rejections and the 102 rejection are all overcome by the amendments. However, the obviousness rejections, as set forth in the previous office action, are deemed proper and are therefore maintained.
The texts of those sections of Title 35 U.S. Code are not included in this section and can be found in a prior Office action.
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 § 103
Claims 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over FR 2938845 in view of Oguro (US 2014/0342145).
FR ‘845 teaches a composition which is useful for insulating and protecting electrical cables and fibers, the composition comprising the following:
(A) 35-65 wt% of at least one polyamide, where PA11 and PA12 preferable polyamides (p. 5);
(B) 2-20 wt% at least one functionalized polyolefin, which may be crosslinked (p. 7); and
(C) 18-50 wt% of a metal salt of phosphinic acid, a metal salt of diphosphinic acid or a polymer thereof (p. 3 and p. 8).
FR ‘845 briefly mentions the possibility of the inclusion of arylaromatic based polyamides, where the arylaromatic monomer is xylylene diamine and is copolymerized with sebacic acid as a suitable diacid (p. 4), teaching that polyamide blends can be used (p. 5); however, does not teach or suggest the claimed combination of 30-65 wt% semi-crystalline aliphatic polyamide and 15-40 wt% semi-aromatic polyamide, as claimed.
Oguro teaches that aliphatic polyamides have the disadvantage of high water absorption and low chemical resistance, as well as low dimensional stability/warpage (p. 1, [0002]-[0005]), teaching that by adding a polyamide derived from xylylenediamine and sebacic acid to an aliphatic polyamide, a polyamide composition having low water absorption, high chemical resistance, and high crystallinity index can be obtained (p. , [0013]). Oguro teaches that the polyamide composition can be used for electrical/electronic parts, and can be in the form of a tube (p.
Oguro teaches the aliphatic polyamide to include PA11 and PA12, as in FR ‘845 and teaches the semi-aromatic polyamide (or that based on xylylenediamine and sebacic acid) in an amount of 1-50 wt%, preferably 20-35 wt%, based on the total content of both the aliphatic and semi-aromatic polyamides (p. 4, [0050]). Oguro teaches that when the amount of the semi-aromatic polyamide is greater than 50 wt%, flexibility decreases.
FR ‘845 is similarly interested in preparing a polyamide composition with low water absorption and flexibility/bending, as would be inherently necessary for cable insulation.
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have used a blend of the aliphatic polyamide of FR ‘845 and the semi-aromatic polyamide of Oguro, as Oguro teaches that the inclusion of such provides reduced water absorption and dimensional stability, as well as chemical resistance.
Based on the teachings of FR ‘845 in view of Oguro, a composition comprising 65 wt% polyamide as suggested in FR ‘845, can be modified to include 15-42 wt% aliphatic polyamide and 13-23 wt% semi-aromatic polyamide.
The ranges suggested by the combination of FR ‘845 in view of Oguro overlap with the claimed ranges, and it has been held that overlapping ranges are sufficient to establish prima facie obviousness. See MPEP 2144.05.
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the range taught by the reference because overlapping ranges have been held to establish prima facie obviousness.
FR ‘845 in view of Oguro is prima facie obvious over instant claims 1-8.
As to claim 9, FR ‘845 teaches the inclusion of melamine based compounds, which are known flame retardant synergists, and antioxidants, as additives (p. 10).
As to claim 10, PEBA is not disclosed in the compositions of FR ‘845.
As to claim 11, reinforcing fiber is optional.
Claims 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over FR 2938845 in view of Oguro (US 2014/0342145), as applied above to claims 1-11, and further in view of JP 2017-048382. For convenience, the machine translation of JP ‘145 will be cited below.
FR ‘845 in view of Oguro teaches a polyamide composition comprising an aliphatic polyamide, a xylylenediamine based semi-aromatic polyamide, and a phosphinate flame retardant, which is suitable for use as an insulating composition in tube form for covering electric/electronic components.
FR ‘845 nor Oguro suggest the use of such for coating an electric battery busbar, as claimed in instant claims 12-14.
JP ‘382 teaches an in-vehicle bus bar, which connects a battery, where JP ‘382 teaches injection molding a polyamide 12 resin material as a coating layer on the bus bar, teaching that the coating layer has high electrical insulation and bending workability (p. 3).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have used the insulating and flame retardant composition of FR ‘845 in view of Oguro as a coating for a battery bus bar, as JP ‘382 teaches that polyamide 12 compositions having insulation properties, and flexibility is suitable for use as such.
Response to Arguments
Applicants’ arguments filed June 24, 2026 have been fully considered but they are not persuasive.
Applicants argue that the office has not articulated a reason to arrive at the claimed formulation “as a whole”.
The primary reference, FR ‘845, teaches the composition as comprising a polyamide which may be prepared from aliphatic diamines, cycloaliphatic diamines, or aromatic diamines, copolymerized with aliphatic diacids, cycloaliphatic diacids or aromatic diacids. FR ‘845 teaches preferred polyamides to include PA6, PA11, or PA12, and also teaches that polyamide blends can be used. Therefore, choosing a blend of an aliphatic polyamide with an aromatic or semi-aromatic polyamide is prima facie obvious within the teachings of FR ‘845.
FR ‘845 is interested in providing polyamide compositions with flexibility, very low water absorption, and mechanical properties less sensitive to water absorption, in addition to flame retardancy.
Oguro teaches that aliphatic polyamides, like PA6, show high water absorption, low chemical resistance and low dimensional stability such that the molded products swell or deform when they absorb moisture. PA11 is a known hygroscopic material, meaning that it will absorb moisture from the air.
Oguro teaches that these disadvantages can be overcome by using a combination of an aliphatic polyamide and a polyamide resin derived from xylylene diamine and sebacic acid.
FR ‘845 specifically teaches that the polyamide can be derived from xylylene diamine as an arylaromatic monomer and sebacic acid as a suitable diacid.
Oguro teaches that a polyamide resin synthesized from xylylenediamine and sebacic acid is excellent in water absorption and chemical resistance, but sometimes poor in crystallinity.
Therefore, Oguro gives clear motivation as to why one of ordinary skill in the art would use a combination of PA11 and a semi-aromatic polyamide of xylylenediamine and sebacic acid.
As to the amounts, Oguro teaches the semi-aromatic polyamide (or that based on xylylenediamine and sebacic acid) in an amount of 1-50 wt%, preferably 20-35 wt%, based on the total content of both the aliphatic and semi-aromatic polyamides, teaching that when the amount of the semi-aromatic polyamide is greater than 50 wt%, flexibility decreases.
Flexibility is clearly desired in the composition of FR ‘845. Therefore, one of ordinary skill in the art would be motivated to use the proposed combination such that the semi-aromatic polyamide does not exceed 50 wt% based on the total content of both the aliphatic and semi-aromatic polyamides.
FR ‘845 suggests the use of aliphatic, aromatic or semi-aromatic polyamides, and blends thereof; therefore, using a combination of PA11 as an aliphatic polyamide and a semi-aromatic polyamide of xylylenediamine and sebacic acid would be expected to meet the desired properties of FR ‘845.
Applicants argue that FR ‘845 already achieves its stated objectives of providing flame-retardant polyamide compositions.
While FR ‘845 shows that water absorption is decreased by using the combination of components, there is still very low amount of water absorption present; therefore, a clear opportunity for an improvement is present, as no invention is perfect.
Applicants argue that the cited art does not recognize the technical problem solved by the present application.
Please consider the following:
MPEP 2144 (IV) Rationale Different From Applicant’s Is Permissible
The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) ("One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings."); In re Lintner, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991) (discussed below).
Applicants argue that the prior art references are directed generally to flame-retardant polyamide compositions, but neither concerns a polyamide composition for covering an electric battery interconnecting bar.
In claims 1-11, the limitation “for covering electric battery busbars” is a future intended use limitation.
During examination, statements reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the recited purpose or intended use results in a structural difference between the claimed invention and the prior art. See MPEP 2111.02 (II).
The intended use does not result in a structural difference between the claimed invention and the prior art; therefore, one of ordinary skill would expect the composition of FR ‘845 in view of Ogura to be suitable for use as a covering for an electric battery busbar.
Applicants argue that the claimed compositional range is critical, specifically pointing out that when the semi-aromatic is less than 15 wt%, the desired elongation is not met.
In order to show criticality, the showing must be commensurate in scope with the claimed invention. The claimed invention is directed to any semi-crystalline aliphatic polyamide, any semi-aromatic polyamide, any phosphinate flame retardant, and any functionalized polyolefin, whereas the showing is directed to one particular combination of components, which comprises about 41 wt% PA11, about 20 wt% MXD10, 5 wt% of a copolymer of ethylene, ethyl acrylate and maleic anhydride, 2.5 wt% copolymer of ethylene, methyl acrylate and glycidyl methacrylate, 2.5 wt% ethylene acrylic acid copolymer, 25 wt% aluminum diethylphosphinate.
Applicants argue that a comparison of EI12 with EC5 does not provide the “desired” elongation; however, EC5 has better elongation at the threshold and elongation at break than some of the other inventive examples; therefore, a desirable elongation is met.
Additionally, in order to show criticality, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. See MPEP 716.02(d)(II). Applicants have only compared the specific combination of components without the semi-aromatic polyamide, and when the semi-aromatic polyamide is present at 10 wt% and 20 wt%, where the claimed range is 15-40 wt%.
Applicants argue the examiner used the claimed invention as a template for the rejection.
Please consider MPEP 2145(X)(A) Impermissible Hindsight
Applicants may argue that the examiner’s conclusion of obviousness is based on improper hindsight reasoning. However, "[a]ny judgment on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper."
The examiner uses only knowledge which was within the level of ordinary skill in the art, as evidenced by Oguro who teaches that aliphatic polyamides have water absorption issues which can be improved by using a blend with a semi-aromatic polyamide.
Note that applicants do not argue the combination of FR ‘845 in view of JP ‘382 for obviousness of using the flame retardant composition of FR ‘845 for use as a coating for a battery bus bar.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIEANN R JOHNSTON whose telephone number is (571)270-7344. The examiner can normally be reached Monday-Friday, 8:00 AM - 4:00 PM EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at (571)272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Brieann R Johnston/Primary Examiner, Art Unit 1766
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