DETAILED ACTION
This Office Action is responsive to the amendment filed on 7/11/2025.
The objections and rejections not addressed below are deemed withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action 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 .
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.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 11/25/2025 has been entered.
Claim Rejections - 35 USC § 103
Claims 12 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Reuschel et al, WO93/22359.
Reuschel discloses a process of making a polyoxymethylene copolymer comprising the steps of 1) copolymerizing trioxane with a cyclic ether or cyclic formal comonomer to form a polyoxymethylene copolymer using an acid catalyst, corresponding to claimed step (a1); and 2) deactivating the catalyst by adding by adding a combination of alkali metal fluoride and triisopropanolamine, corresponding to claimed step (b) (Reuschel claim 6; page 5: line 19 to page 6: line 10). The prior art polyoxymethylene copolymer is used in the production of moldings (for claims 12, 14) (page 9: lines 4-5).
Reuschel teaches that the prior part polymerization is performed using 0.2 to 10% comonomer and (deduced) 90 to 99.8% trioxane, corresponding to the claimed cyclic formal. Said comonomer may have the structure shown below wherein R1 to R4 may all be hydrogen, R5 is a methylene group (-CH2-) and p is an integer from 0 to 3 (page 5: lines 1-6 and 14-16), corresponding to claimed formula (II).
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Polymerization of these monomers will yield a polymer comprising 90 to 99.8% -CH2O- repeating units and 0.2 to 10% units -O-C(R1)(R2)-C(R3)(R4)-R5p-.
Reuschel does not particularly point to a polymer made by the process used to define the claimed invention.
[E]ven 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, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (MPEP § 2113).
Reuschel renders obvious a polyoxymethylene copolymer in which the catalyst is deactivated using a reagent that comprises the same compound-triisopropanolamine-as used in the claimed product-by-process limitations. As the prior art process 1) uses the same catalyst to prepare the polyoxymethlyene copolymer and 2) deactivates said catalyst using a reagent comprising the same compound used in the instant invention, it is reasonably expected that the prior art polyoxymethylene copolymer will comprise a complex of catalyst and triisopropanolamine. As the product rendered obvious by Reuschel appears to be the same as the claimed invention, the burden is shifted to applicant to provide evidence demonstrating that the claimed process steps result in an unobvious difference between the claimed invention and the prior art.
Response to Arguments
Applicant's arguments filed 11/25/2025 have been fully considered but they are not persuasive.
Applicant argues that Reuschel does not teach or suggest every element in sufficient manner to support the rejection. Specifically, applicant argues that the prior art is silent with regard to the formation of a complex of the acid catalyst and triisopropanolamine and the claimed ratio of triisopropanolamine to acid catalyst.
Regarding the formation of a complex of the acid catalyst and triisopropanolamine: “[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency under 35 U.S.C. 102, on prima facie obviousness under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same…" as that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (MPEP § 2112). As discussed above and the in the previous Actions, Reuschel discloses a process of making a polyoxymethylene copolymer using an acid catalyst, wherein the process comprises a step of deactivating the catalyst by adding a combination of alkali metal fluoride and triisopropanolamine. The prior art deactivation step therefore brings the acid catalyst into contact with triisopropanolamine.
Further note that the claims as written do not require that said complex is present in a specific amount. So long as any amount of complex forms, the claimed limitation of forming a complex of the acid catalyst and triisopropanolamine is met. Given that the prior art process deactivates the acid catalyst using a reagent comprising triisopropanolamine, it is reasonably expected that the same interactions will take place in the prior art process as in the claimed process, resulting in the formation of at least a fraction of the acid catalyst becoming complexed with triisopropanolamine. Applicant has not provided any evidence that such a complexation does not occur in the prior art process. As such, applicant’s argument that Reuschel is silent with regards to this limitation are not persuasive; see In re Fitzgerald cited above.
With regards to the ratio of triisopropanolamine to acid catalyst: As noted earlier in this Action, claim 12 is written in product-by-process format. [E]ven 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, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (MPEP § 2113). Contrary to applicant’s argument, the patentability of the invention of claim 12 and its dependent claim is not based on the process used to make the invention; rather, it is based on the product that would be obtained from the recited process steps.
As written, the process steps used to define the invention of claim 12 imply a product which is a composition comprising a polyoxymethylene copolymer and a complex of an acid catalyst and triisopropanolamine. As discussed above, the process of Reuschel is reasonably expected to form a product which is a polyoxymethylene copolymer and an acid catalyst/triisopropanolamine complex. As the product taught by the prior art appears to be identical to the product implied by the recited process steps, the burden is shifted to applicant to provide evidence demonstrating that the process steps used to define the claimed product would result in an unobvious difference between the claimed invention and the prior art.
Applicant argues that the claimed process results in unexpected improvements in the final polymer, citing the examples provided in the specification.
It is well settled that a demonstration of unexpected results must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness; see In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979) (MPEP § 716.02(e)).
As reported in applicant’s specification (see Tables 1, 2, 5), the examples in the specification compare the use of triisopropanolamine to triethanolamine in the deactivation step of the catalyst. However, as discussed earlier in this Action, Reuschel teaches that the deactivation step may be performed via addition of a composition comprising triisopropanolamine. The difference between the claimed invention and the prior art therefore is not the use of triisopropanolamine in the deactivation step; rather, the difference between the claimed invention and the prior art lies in the ratio of triisopropanolamine to catalyst. The cited examples therefore do not compare the claimed invention to the closest prior art as required. Applicant therefore has not demonstrated that the ratio of triisopropanolamine to acid catalyst results in an unobvious difference from the prior art as alleged in applicant’s remarks. The rejection is therefore maintained.
Allowable Subject Matter
Claims 1-6, 8, 9, and 11 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art of record is Reuschel et al, WO93/22359.
Reuschel discloses a process of making a polyoxymethylene copolymer comprising the steps of 1) copolymerizing trioxane with a cyclic ether or cyclic formal comonomer to form a polyoxymethylene copolymer using an acid catalyst, corresponding to claimed step (a); and 2) deactivating the catalyst by adding by adding a combination of alkali metal fluoride and a basic substance such as triisopropanolamine, corresponding to claimed step (b). Deactivation is performed using an aqueous solution of the alkali metal fluoride and basic substance.
Reuschel does not disclose a broad range for the amount of basic substance added in the deactivation step. The inventive examples of Reuschel which employ the use of a basic substance teach that it is used in an amount of at most 50 mol% relative to the amount of catalyst (see Table 1: examples 8-10)-i.e., the molar ratio is 0.5 :1; note that this value is half the minimum value of 1:1 recited in the claims. Reuschel therefore does not teach or suggest the claimed process wherein the molar ratio of triisopropanolamine to acid catalyst is in the range of 1:1 to 25:1.
Furthermore, no reference has been found that would provide a motivation for one of ordinary skill in the art to use the basic compound in a molar ratio to catalyst of 1:1 to 25:1. The prior art of record therefore does not teach nor does it fairly suggest the process as recited in the instant claims
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFFREY S LENIHAN whose telephone number is (571)270-5452. The examiner can normally be reached Mon.-Fri. 5:30-2:00PM.
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/JEFFREY S LENIHAN/Primary Examiner, Art Unit 1765