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 .
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.
Election/Restrictions
The restriction requirement mailed October 3, 2026 is withdrawn. Claims 1-14 are pending and under examination.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
The claimed invention is directed to non-statutory subject matter. Claim 12 does not fall within at least one of the four categories of patent eligible subject matter because it is an improper definition of a process 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 12 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 pre-AIA the applicant regards as the invention.
The claims are indefinite because they merely recite a use without any active, positive steps determining how this use is actually practiced.
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 3-4, 6-7 and 9 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 3 claims a group of possible long-chain polyamides.
Claim 4 claims a group of possible semi-crystalline aliphatic polyamides.
Claim 6 claims a group of possible semi-aromatic polyamides.
Claim 7 claims a group of possible phosphinate flame retardants.
Claim 9 claims a group of additives.
Each of these groups represent a Markush group, as they all belong to a recognized chemical class; however, they are not listed as a closed group of alternatives. Therefore, it is unclear as to whether the groups are limited to the species listed or if others can be included.
Markush groups should be claimed using proper Markush language, and may be recited as, “wherein R is a material selected from the group consisting of A, B,C, and D,” or “wherein R is (selected from) A, B, C, or D." See MPEP 2173.05(h).
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-11 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Pace (US 2023/0391953).
The applied reference has a common assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement
Pace discloses a composition comprising the following:
(a) 35-100 wt% of at least one semicrystalline aliphatic polyamide and/or one polyamide of the formula MXDZ, exemplifying a blend of about 60 wt% PA11 and 18 wt% MXD10 (Table 1, EX3);
(b) 0-25 wt% polyolefin, described as being functionalized (p. 13, [0736]) and can also be c4rosslinked (p. 14, [0745]);
(c) 0-60 wt% glass fibers, suggesting the glass fibers as optional;
(d) 0-2 wt% additive, where the flame retardants are described as including a nitrogen or phosphorus synergist (p. 15, [0776]); and
(e) 15-25 wt% flame retardant, specifically listed to include a metal salt of phosphinic acid, a metal salt of diphosphinic acid, or a polymer thereof (p. 14, [0776]).
Pace does not require the presence of PEBA.
Pace discloses the composition as suitable for use as an electrically insulating layer. 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 claimed by the instant invention, for covering electric battery busbars, does not result in a structural difference between the claimed composition and the prior art; therefore, the composition of the prior art is inherently capable of being used for covering electric battery busbars, as claimed.
Pace anticipates instant claims 1-11.
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 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 (p. 4); 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.
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.
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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