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 .
DETAILED ACTION
Note new Examiner due to a reassignment of the application.
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.
Claim(s) 1, 4-5 and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (US 2011/0224369 A1).
Rejection is maintained for reasons of the record (i.e., the previous office is not repeated here).
RESPONSE TO ARGUMENTS
Applicant asserts that Kim et al. teach an intrinsic viscosity of 0.6-0.9 dl/g as opposed to the instantly recited intrinsic viscosity of 0.60 dl/g or more and less than 0.70 dl/g of claim 1.
Applicant assert that Kim et al. do not provide any teaching or motivation to use a copolymerized polyester raw material having the instantly recited intrinsic viscosity of 0.60 dl/g or more and less than 0.70 dl/g of claim 1. The existence of overlapping or encompassing ranges shifts the burden to the applicant to show that his invention would have not been obvious. In re Peterson, 315 F.3d at 1330 (Fed. Cir. 2003). MPEP 2144.05.
Applicant further asserts that a comparison of the instant examples and a comparative example 3 utilizing a polyester raw material F having a Tg of 67oC and an intrinsic viscosity of 0.85 dl/g would show unexpected results and the examiner sees such results.
The examiner notices that both the inventive raw material C and raw material F have a Tg of 67oC which are obtained from the same reactants and mol % thereof with a different intrinsic viscosity (i.e., 0.65 dl/g vs. 0.85 dl/g).
The instant specification does not teach how to obtain the raw material C and raw material F having a different intrinsic viscosity despite of utilizing the same reactants and mol % thereof yielding the same Tg. Thus, the showing would not be sufficient/convincing.
Further, the applicant has not established that the evidence in the applicants’ specification provides a comparison with the closest prior art. See In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) MPEP 2145.
Applicant failed to show that the Resin 14 taught in Table 1 of Kim et al. does not meet the instantly recited intrinsic viscosity of 0.60 dl/g or more and less than 0.70 dl/g of claim 1. Whether the rejection is based on “inherency” under 35 U.S.C. 102, or “prima facie obviousness” under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same. In re Fitzgerald, 619 F.2d 67, 70 (CCPA 1980) (quoting) In re Best, 562 F.2d 1252, 1255 (CCPA 1977). MPEP 2183.
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 TAE H YOON whose telephone number is (571)272-1128. The examiner can normally be reached Mon-Fri.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached at (571)270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TAE H YOON/Primary Examiner, Art Unit 1762
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