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 .
Response to Amendment
The response filed 25 January 2024 has been entered. Claims 1-2 and 4-24 are currently pending in the application. Claims 13-24 are withdrawn. The rejections of record from the office action dated 25 July 2023 not repeated herein have been withdrawn.
Claim Rejections - 35 USC § 103
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.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-2 and 4-12 are rejected under 35 U.S.C. 103 as being unpatentable over Huang et al. (US 2017/0121453 A1) and Shimizu et al. (US 2017/0205549 A1).
Regarding claims 1-2 and 4-12, Huang discloses a polyester that may be formed from furandicarboxylic acid, a C2-C14 polyol and a spiro-diol, wherein the polyester may be used to form a parison for forming a container in a blow molding process (i.e. a preform made of polyester for producing a plastic container in a blow molding process comprising a tube-like preform body closed at its one longitudinal end and at its other longitudinal end has a neck section provided with an opening for pouring, wherein the polyester is based substantially on furandicarboxylic acid and diols, and wherein the diols are derived partly from at least one spiro compound of a group of spiro compounds and partly from at least one conventional diol of a group of conventional diols)(abstract, [0020]). It would have been obvious to use any of the materials listed for forming the polyester including the furandicarboxylic acid, C2-C14 polyol and spiro diol because they are disclosed as components that may be used to form the polyester and would amount to nothing more than using a known material in a known environment to accomplish an entirely expected result.
Huang does not specifically disclose that the spiro compound is at least 1 percent by weight based on a total weight of the preform or that the spiro compound is between 1 and 35 percent by weight of the total weight of the preform.
Shimizu discloses using 5% and 15% spiro glycol in a polyester resin (i.e. overlapping at least 1 percent, between 1 and 35 percent)([0263], [0290]).
Huang and Shimizu are analogous art because they both teach about polyester resin. It would have been obvious to one of ordinary skill in the art to use the amount of spiro glycol disclosed by Shimizu to make the polyester of the preform of Huang because it is a known amount for use in making polyester resin and doing so would amount to nothing more than using a known amount of a known material in a known environment to accomplish an entirely expected result.
Given that the preform of modified Huang is identical in structure to the instantly claimed preform, it is the examiner’s position that the spiro compound will intrinsically increase mobility or flexibility of connections between polyester molecules and the at least one spiro compound thereby increasing environmental stress cracking resistance of the preform body and protecting ester bonds against nucleophilic attack.
Regarding claims 2 and 6, Huang discloses that the C2-C14 polyol may comprise ethylene glycol, propylene glycol or butylene glycol (i.e. conventional diol comprises monoethylene glycol, propylene glycol or butylene glycol; wherein the polyester is a copolyester based on PEF, PPF or PBF) ([0013]).
Regarding claim 5, Huang discloses a specific embodiment using 3,9-bis(1,1-dimethyl-2-hydroxyethyl)2,4,8,10-tetraoxaspiro[5.5]undecane ([0026]). It is the examiner’s position that it would have been obvious to use this spiro glycol to make the polyester of Huang because it is used in one exemplary embodiment and would amount to nothing more than using a known material in a known environment to accomplish an entirely expected result.
Regarding claim 7, while there is no specific disclosure of the wall thickness of the preform, given that the wall thickness will affect the strength and cost of the container, it is the examiner’s position that it would have been obvious to one of ordinary skill in the art to make the wall thickness within the claimed range in order to balance strength vs. cost of the container depending on the desired end use of the container.
Regarding claims 8-12, the recitation in the claims that the preform is “formed to form a reusable container”, “formed into a polyester container, and wherein said container has spiro compound and withstands more than 30 min in a standard ISBT stress cracking test with a 0.2% alkali”, “formed in such a way that it is suitable for refilling or as a reusable bottle”, “formed in such a way that it withstands an internal pressure after filling of up to 3 bar and thereby is suitable for the filling of carbonated beverages or aerosols”, “formed in such a way that it withstands temperatures between -19 °C and 96 °C and thereby is suitable for a filling process of container contents with a temperature between -19 °C and 96 °C” are merely intended uses. Applicant’s attention is drawn to MPEP 2106(II)(C) which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended uses. Given that Huang discloses a preform as presently claimed, it is clear that the preform of Huang would be capable of performing the intended uses, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
Response to Arguments
Applicant's arguments filed 25 January 2024 have been fully considered but they are not persuasive.
Applicant argues that the combination of references is based on hindsight.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Applicant argues that nothing in Huang suggests that the polyester will be suitable for a preform or that it will “increase mobility or flexibility of connections between polyester molecules and the at least one spiro compound thereby increasing environmental stress cracking resistance of the preform body and protecting ester bonds against nucleophilic attacks”.
Applicant’s argument is unpersuasive given that Huang discloses that the polyester may be used to form a parison (i.e. preform) for forming a container in a blow molding process ([0020]).
As set forth above, given that the preform of modified Huang is identical in structure to the instantly claimed preform, it is the examiner’s position that the spiro compound will intrinsically increase mobility or flexibility of connections between polyester molecules and the at least one spiro compound thereby increasing environmental stress cracking resistance of the preform body and protecting ester bonds against nucleophilic attack.
Applicant argues that Shimizu is not suitable for the preform for forming a blow molded container.
However, note that while Shimizu does not disclose all the features of the present claimed invention, Shimizu is used as teaching reference, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, namely using 5% and 15% spiro glycol in a polyester resin (i.e. overlapping at least 1 percent, between 1 and 35 percent)([0263], [0290]), and in combination with the primary reference, discloses the presently claimed invention.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES C YAGER whose telephone number is (571)270-3880. The examiner can normally be reached 9-6 EST M-F.
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, Aaron Austin can be reached on (571) 272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMES C YAGER/ Primary Examiner, Art Unit 1782
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