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 .
Claim Rejections - 35 USC § 112
Claims 1-9, 11, 13 and 14 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.
In claim 1, feature (b), it is unclear whether the recitation “bonded directly to one of said amide groups” means that just one of the antecedently recited amide groups (ii) has the bonded ester groups.
In claims 4, 6, 11, 13 and 14, the membership of the recited Markush groups is indefinite in that it is unclear what is meant by the “chemical analogs thereof” species.
Claim Rejections - 35 USC § 102
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.
(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 1-8 are rejected under 35 U.S.C. 102(a1) as being anticipated by CN 105367785 (Qian) abstract and machine translation.
Qian discloses a prepolymer obtained by reacting a branched alkyl diamine with an oxalic acid diester. Illustratively, Qian sets forth exemplary prepolymers (e.g., Examples 1 and 2) obtained by reacting (2,2,4- and 2,4,4-) trimethyl hexamethylene diamine (meets Applicants’ branched aliphatic hydrocarbon reactant per claim 4) and oxalic acid dibutyl ester (meets Applicants’ dialkyl oxalate reactant per claim 6).
As to claim 1, inasmuch as Qian’s exemplary prepolymers are produced from the same reactants used to prepare the presently claimed polyoxalamide prepolymer, it would be expected that the former would inherently possess the latter’s structural segments (a) and end groups (b) having -N-C(=O)-C(=O)-O- sequences. Where the claimed and prior products are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness is proper, In re Best 195 USPQ 430. Specifically, Qian’s reaction of a trimethyl hexamethylene diamine and oxalic acid dibutyl ester is equivalent to Applicants’ reaction scheme per Fig. 1 below, but wherein the Priamine 1074 diamine is replaced with trimethyl hexamethylene diamine
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That is, Qian's resulting prepolymer would comprise bracketed segments (defined by x) containing units derived from trimethyl hexamethylene diamine/dibutyl oxalate with amide groups at the ends (meets Applicants’ segments (a)) and end groups containing ester groups bonded directly to the amide groups to form -N-C(=O)-C(=O)-O- sequences (meets Applicants’ end groups (b)).
As to claims 2-4, given that (2,2,4- and 2,4,4-) trimethyl hexamethylene diamines
are expressly listed in present claim 4, such would necessarily meet the presently
claimed features inclusive of branching degree and molecular weight.
As to claims 5 and 6, Qian discloses dibutyl oxalate.
As to claim 7, Qian’s prepolymer obtained by reacting trimethyl hexamethylene diamine and dibutyl oxalate would not contain ether bonds.
As to claim 8, Qian’s prepolymer obtained by reacting trimethyl hexamethylene diamine and dibutyl oxalate, as described hereinabove, would not contain additional ester bonds.
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 1-14 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2012020571 A (Nakamura) abstract and machine translation.
Nakamura discloses a multi-layered laminated tube comprising as layer (D) a polyoxamide obtained by reacting a dicarboxylic acid component containing ≥ 60 mol% oxalic acid ester and an aliphatic diamine component containing ≥ 60 mol% C9-13 aliphatic diamine inclusive of branched diamines such as 2,2,4-/2,4,4-trimethyl hexamethylene diamine, 2-methyl-1,8-octanediamine, etc. (e.g., abstract, pages 18, 20-24, 35, 36, examples). Nakamura expressly sets forth polyoxamide (d2-1) (page 35) produced by reacting dibutyl oxalate with a diamine mixture comprising unbranched 1,9-nonanediamine and branched 2-methyl-1,8-octanediamine, wherein the terminal group can be (ester) alkoxy groups.
As to claim 1, it is within the purview of Nakamura’s inventive disclosure, and obvious to one having ordinary skill in the art, to prepare a polyoxamide by reacting an oxalic acid ester such as dibutyl oxalate solely with a branched diamine as the diamine component. Specifically, said reaction would be equivalent to Applicants’ per Fig. 1 as below, but wherein the Priamine 1074 diamine is replaced with a branched diamine such as 2,2,4-/2,4,4-trimethyl hexamethylene diamine or 2-methyl-1,8-octanediamine
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That is, Nakamura’s resulting polyoxamide would comprise bracketed segments (defined by x) containing units derived from branched diamine/dibutyl oxalate with amide groups at the ends (meets Applicants’ segments (a)) and end groups containing ester groups bonded directly to the amide groups to form -N-C(=O)-C(=O)-O- sequences (meets Applicants’ end groups (b)).
As to claims 2-4, given that Nakamura clearly discloses the use of the same presently claimed branched trimethyl hexamethylene diamines (per claim 4), it would be expected that the resulting polyoxamide would necessarily comprise the same degree of branching and molecular weight.
As to claims 5 and 6, Nakamura expressly uses dibutyl oxalate in the production of polyoxamide (d2-1).
As to claim 7, Nakamura’s polyoxamide obtained by reacting a branched diamine and dibutyl oxalate would not contain ether bonds.
As to claim 8, Nakamura’s polyoxamide obtained by reacting a branched diamine and dibutyl oxalate would not contain additional ester bonds.
As to claim 9, Nakamura does not expressly set forth a working example further comprising a triamine or polyamine. Nakamura, however, clearly teaches that a polyamine having a functionality of 3 or more, e.g., triamines or tetraamines (pages 7 and 23), can be further added “after polymerization” of the polyoxamide. Notably, Nakamura discloses adjusting the terminal groups by “melt-kneading in the presence of amines after polymerization” and that “amines can be added at any stage…after polymerization”.
As to claim 10, Nakamura’s method of producing the polyoxamide comprises the same steps of reacting an oxalic acid ester with a branched diamine under polycondensation conditions, optionally in the presence of a solvent, to generate the polyoxamide and further reacting with a polyamine having a functionality of 3 or more, (e.g., pages 22-23).
As to claims 11, Nakamura clearly discloses the use of the same presently claimed trimethyl hexamethylene diamines.
As to claims 12 and 13, Nakamura expressly uses dibutyl oxalate in the production of polyoxamide (d2-1).
As to claim 14, Nakamura discloses, and renders obvious to one having ordinary skill in the art, the use of polyamines inclusive of tetraethylenepentamine (page 7).
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.
Claims 10-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 18-22 of U.S. Patent No. 12,091,544. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims are directed to a method comprising the same reactants and reaction steps (a)-(d) wherein a crosslinker is used in step (d).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ana L Woodward whose telephone number is (571)272-1082. The examiner can normally be reached M-F 8am-5pm.
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/ANA L. WOODWARD/Primary Examiner, Art Unit 1765