DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/26/2025has been entered.
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 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over Linemann et al. (US 2007/0106034). The rejection set forth in paragraphs 7-13 of the Office Action mailed on 6/21/2024 is incorporated herein by reference.
Claims 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over Linemann et al. (US 2007/0106034) and further in view of Honjo et al. (US 2016/0039973). The rejection set forth in paragraphs 14-20 of the Office Action mailed on 6/21/2024 is incorporated herein by reference.
Response to Arguments
As an initial note, Applicants did not discover or invent how to increase the molecular weight of a copolymer, which appears to be what Applicants are contending. It is well known in the art how to predictably change the molecular weight of copolymers.
Applicant's arguments filed 12/26/2025 have been fully considered but they are not persuasive.
It is noted that the Declaration contains no factually supported objective evidence. It is noted that the only “data” included in the Declaration, filed with the arguments on 12/26/2025, is the following:
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It is unclear what either of those scenarios has to do with the instantly claimed invention or with the teachings of the applied Linemann et al. (US 2007/0106034) reference. Neither of those situations addresses the rejection or the applied reference. Applicant discusses that the reference is “inconsistent with known, non-linear behavior of polymerization chemistry,” as stated in item 9 of the Declaration filed on 12/26/2025, and then discusses the height of growing children and predicting car speed, which have nothing to do with chemistry let alone polymerization. Where is this evidence of what is consistent with known polymerization and how it is non-linear? Applicant gives completely unrelated information regarding the growth of human children and car speeds, and then arrives the conclusion that is how polymerization reactions occur. It is not clear how that leap was made. There is no correlation between the “data” (which is not data but discussing hypothetical situations of height of human children and car speeds) discussed in item 9 of the Declaration, and what is known regarding polymerization. There is absolutely nothing linking the growth rate of height of children or predictable car speeds, with the use of pentaerythritol to increase the weight of a copolymer. The facts given in Linemann et al. reference, establish that using pentaerythritol increases the molecular weight of the formed copolymer, as does the express disclosure in paragraph 21 that the inventive copolymers, formed using the disclosed polyols, have increased molecular weight. The reference specifically states this.
Applicant asserts that “one skilled in the art is given no teaching that varying the amount of polyol will have any meaningful effect on molecular weight,” discussing the applied Linemann reference.
This is erroneous.
This completely contradicts the explicit teaching the applied reference, that the copolymers formed therein, using the disclosed polyols of which pentaerythritol is a named compound used in examples, increases the molecular weight of the polymer produced in Linemann. See paragraph 21 of Linemann. Additionally, Applicants have provided no evidence showing what a “meaningful” effect on molecular weight would be let alone that the polyols of Linemann have no “meaningful” effect on molecular weight. The fact remains, that Linemann specifically discloses that the copolymers of the invention, formed using the disclosed polyols of which pentaerythritol is used in examples, have a higher molecular weight. The Examples explicitly demonstrate this increase in molecular weight. Even if the reference also happens to disclose that the multifunctionality of the polyol is used for kinetics, this does not negate the previous teaching which specifically states that the copolymers formed in the invention, which are formed using the disclosed polyols, have an increased molecular weight. This teaching cannot be merely ignored and then “supported” using a hypothetical situation regarding heights of children or speeds of cars. That does not amount to factually supported objective evidence.
Additionally, it is noted that ‘kinetics’ relates to the rate of reaction. In the field of polymerization, increasing the rate of reaction (polymerization) can either give a same sized polymer in less time or a larger polymer in the same amount of time. Thus, adding a component for kinetic reasons is relevant to molecular weight.
Furthermore, given Applicant’s “analogy” of growth rate, the instantly claimed invention is potentially not enabled. There is no upper end of the range of weight average molar mass recited in instant claim 1. The claimed copolymer has a weight average molar mass of greater than or equal to 80,000 g/mol. Is Applicant stating that, given their interpretation of the prior art, that the Applicants of the instant invention are capable of producing a copolymer having the same molecular weight as, for example, the Earth? The sun? Furthermore, there is an actual end point, 5wt%, to the amount of pentaerythritol utilized to make the copolymers of Linemann, which has absolutely nothing to do with the growth rate of human children or the speed of cars. The comparison makes no sense.
As stated in the previous rejection, which is maintained, the Table at ¶59 of Linemann shows that using no pentaerythritol gives a product with a lower Mw. This is clear evidence that using more polyol (0.5% more pentaerythritol) increases the molecular weight. This is the only inference that can be made between the 2 examples that differ only in the use of the pentaerythritol, versus the absence. See paragraph 59, wherein the only difference is use of the pentaerythritol versus using 0wt% pentaerythritol.
Applicant argues that Linemann does not teach a 10x increase would result in an increase of 500%. This is not persuasive because given the two data points provided by Linemann (0% and 0.5%), one of ordinary skill in the art would be able to extrapolate to other amounts, including 5%, which is expressly disclosed in Linemann. Use of 5% of the polyol is explicitly taught by Linemann at ¶46. In the absence of other data provided by Linemann, the rationale provided in the rejection is the most predictable result. Applicant has provided no factually supported objective evidence which demonstrates the contrary, nor have they provided any evidence demonstrating that using 10 times the amount of polyol would not produce a copolymer with a molecular weight which meets the instant claims. The prediction of human growth and prediction of car speed have nothing to do with polymerization or the Linemann et al. reference and therefore cannot and do not negate the teachings of the reference or the rejection. The basis for the linear extrapolation, is based on what is known in the art of polymer chemistry, the data points given in the reference, and the express teaching in paragraph 21 that the inventive copolymers (produced using the disclosed polyols) have increased molecular weight, and the express teaching in paragraph 46 of up to 5wt% pentaerythritol. The totality of evidence supports the rejection, and Applicants have provided no factually supported objective evidence demonstrating the contrary.
Applicant’s discussion with respect to the different kinetic models of chemical reactions (first order reaction, zero order reaction, second order reaction) are not persuasive because no evidence has been provided establishing the kinetic model of the reaction in Linemann et al. Again, this is argument deals with hypothetical scenarios and assumptions rather than actual, factual data.
If adding 5wt% pentaerythritol to produce the copolymers of Linemann et al. does not produce a molecular weight which meets the instant claims, the burden is on Applicant to prove it. Proof does not lie in comparisons with hypothetical growth of human children and hypothetical car speed scenarios. Proof would be producing the example disclosed in Linemann but increasing the amount of pentaerythritol to 5wt% as explicitly disclosed in paragraph 41, and showing this example does not have a molecular weight which meets the instant claims. The rejection does not state that the copolymers of Linemann may have a molecular weight which overlaps the instant claims. The rejection establishes that given the totality of evidence in Linemann, i.e. (1) that the molecular weight is increased as explicitly stated in paragraph 21; (2) increasing the amount of pentaerythritol causes an increase in molecular weight as shown in the example which only differs by the increase of (addition of) the pentaerythritol; and (3) the range of the amount of pentaerythritol being between 0.01 and 5% by weight of the copolymer, the molecular weight of the copolymers of Linemann can and will overlap the range of the instant claims. Applicants have yet to provide any evidence proving the contrary.
There is no evidence to support the opinions being stated in the Declaration. Applicant states that using more polyol would be expected to lower molecular weight, is not supported by any data or factually supported objective evidence. Each of the statements amounts to opinion and is not persuasive because of the lack of any data or factually supported objective evidence in support thereof. Stating something as fact, does not make it fact. The fact is that using a lower amount of polyol, as shown by the example with 0wt%, has a lower molecular weight than when the amount of polyol is increased to 0.5wt%. This means that item 16 of the Declaration is disproved by the applied reference, which shows that increasing the amount of polyol, from 0 to 0.5wt% increase the molecular weight of the copolymer formed. This is fact. Thus, given the teachings of the reference, one of ordinary skill in the art would expect the complete opposite of item 16 of the Declaration, because the evidence in the reference shows the contrary.
Applicant argues that the Office has ignored significant processing differences between the reference sample and the sample with pentaerythritol. This is not persuasive. Applicant previously pointed to the torque used for the sample. However, this is the “final torque”, indicating it is a measurement of the product, not a processing condition. Applicant previously indicated that the PET sample was longer, but there is no evidence of this and Applicant has not explained the condition of “final torque” with a processing time, or how they at all correlate with one another.
Applicant previously stated that the Mw is higher than it would be if the reaction were stopped at 40 Nm like it was for the reference sample. Applicant provides no evidence for this, indicating it is known in the art that a longer reaction time necessarily results in a higher molecular weight. As stated in MPEP 2145, “arguments presented by applicant cannot take the place of factually supported objective evidence. See, e.g., In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984).” The burden is shifted to Applicant to provide factually supported evidence in support of the contentions being made in the Remarks. Absent real, factually supported objective evidence, the arguments cannot be and are not persuasive.
Furthermore, it is noted that the reference sample of Linemann was reacted for 16:30 hours, while the pentaerythritol sample was reacted for 4:30 hours (as per the table at ¶59). Thus, the polyol example gives a higher molecular weight in a fraction of the time, which contradicts the argument previously made by the Applicants.
Applicant argues that the addition of more polyol would be expected to lower the Mw of the copolymer by increasing the solution viscosity, indicating the reaction has completed. This is not persuasive. Applicant has provided no evidence to support this position. Again, as stated in MPEP 2145, “arguments presented by applicant cannot take the place of factually supported objective evidence. See, e.g., In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984).” The burden is shifted to Applicant to provide factually supported evidence in support of the contentions being made in the Remarks. Absent evidence, the arguments cannot be and are not persuasive. Additionally, Applicant assumes that an operator is determining reaction completion through viscosity. However, as noted in the Table in Linemann, the products have different viscosities, indicating that the reaction is not stopped at a given viscosity, which again, contradicts the positions being taken by the Applicant.
Additionally, in a condensation reaction between a polyol having at least 3 OH groups and carboxylic acid chain ends, an esterification reaction occurs. Thus, the polyol acts as a chain extender and branching agent. While viscosity can be correlated to molecular weight with linear polymers, viscosity and molecular weight do not have a clear correlation when branching is present because the polymer is no longer linear. Applicant’s assertion with regards to viscosity fails to take this into account, which is another reason why the Applicant’s arguments are not persuasive.
Assuming that the Applicant is correct in that a 10 fold increase (0.5% to 5%) would give a lower Mw, it is noted that Linemann teaches a range of 0.01-5%. Thus, if a 10 fold increase were to give a lower Mw, then a 50 fold decrease (0.5% to 0.1%) would be expected to give a much higher Mw, based on Applicant’s logic, in which case, the reference still teaches the instantly claimed invention. So either the MW increases with increase in polyol, as indicated in the rejection, or the MW increases with a decrease in polyol, the molecular weight of Linemann still meets the instant claims (which the Examiner is not stating is occurring, but IF it was, Linemann still teaches the instantly claimed invention). Applicant has not addressed this position, which was made in the Final Rejection mailed on 1/7/2025.
Regarding Applicant’s argument that the Mw depends on other factors such as mass of the polyamide blocks, polydispersity, conversion rate, and reaction conditions, this is not persuasive. Linemann provides an example where the only difference between the reference example and the polyol example is the addition of 5% pentaerythritol. Changing that single variable modified the Mw such that one of ordinary skill in the art would expect the full range of Linemann to overlap the claimed Mw. Other factors may affect the Mw, but these are not considered by Linemann and it is improper to import teachings or inferences into Linemann which are not present in Linemann, especially given that Applicants have provided no evidence in support of any of the contentions being made in the Remarks or Declaration filed on 12/26/2025.
Applicant previously argued that the copolymer of Example 1 is much lower than the claimed Mw. This is not persuasive as discussed by the rejection itself which provides a rationale as to how Linemann reads on the instantly claimed Mw. If the molecular weight of Example 1 of Linemann met the instant claims, the rejection would be anticipatory and not obvious. However, the rejection is obvious in that it provides an express, reasonable, rationale stating how and why one of ordinary skill in the art could predictably produce an copolymer meeting the instant claims, including having the instantly claimed molecular weight, given the teachings of Linemann.
Applicant argues that Linemann teaches a chain stopper is a critical component. This is not persuasive as Applicant has not discussed how this relates to the claims. A chain stopper is not excluded from the instantly claimed invention.
Applicant argues that there is no motivation to combine the teachings of Linemann and Honjo.
This is not persuasive.
Applicant argues Honjo individually, and the rejection is based on Linemann in view of Honjo and not Honjo alone. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
As stated in the previous Office Action, incorporated into this action by reference, both Linemann et al. and Honjo et al. relate to the field of copolymers comprising polyamide hard segments and polyether (such as polyethylene glycol or polypropylene glycol) soft segments. It would have been obvious to one of ordinary skill in the art at the time the instant invention was made to produce a copolymer as disclosed in Linemann et al. having the weight average molecular weight disclosed in Honjo et al. because when the weight average molecular weight is greater than 10,000 stiffness of a resin in which the copolymer is used is increased, resulting in improvements of pressure resistance of articles including the copolymer and when the weight average molecular weight is less than 300,000, excessive stiffness of a resin including the copolymer is prevented, providing a composition which is easier to injection mold into articles. See ¶67 of Honjo et al. This is an express rationale to combine the teachings of Linemann and Honjo. Thus, Applicant’s argument is not persuasive.
Applicant asserts that combining Honjo and Linemann would “change the principle operation of Linemann.” This is not persuasive, however, because Applicants have provided neither discussion nor evidence explaining how or why producing a copolymer of the molecular weights disclosed in Honjo in the invention of Linemann would “change the principle operation of Linemann.” Stating that a chain stopper is present, is not evidence or explanation as to how combining the references in the manner suggested by the rejection would “destroy the principle operation of Linemann.” Both references relate to copolymers comprising polyamide hard segments and polyether (such as polyethylene glycol or polypropylene glycol) soft segments. Producing a copolymer of the molecular weight disclosed in Honjo in the invention of Linemann, would not alter this function and thus would not destroy the principle operation of Linemann, nor has Applicant explained or how why this is the case, let alone provided evidence to support such a contention. On the contrary, it would have been obvious to one of ordinary skill in the art at the time the instant invention was made to produce a copolymer as disclosed in Linemann et al. having the weight average molecular weight disclosed in Honjo et al. because when the weight average molecular weight is greater than 10,000 stiffness of a resin in which the copolymer is used is increased, resulting in improvements of pressure resistance of articles including the copolymer and when the weight average molecular weight is less than 300,000, excessive stiffness of a resin including the copolymer is prevented, providing a composition which is easier to injection mold into articles. See ¶67 of Honjo et al. This is not “irrelevant,” nor has Applicant provided any explanation as to how such an express rationale is “irrelevant.” Therefore, Applicant’s arguments regarding Honjo are not persuasive.
It appears Applicant is contending, that teachings of two references must be identical in order for those references to be combinable. This is not the case. If there was such a requirement, combinations of references would be impossible. On the contrary, the rejection establishes that the references are from the same field of endeavor and provides a clear rationale for using the teachings of the secondary reference in the primary reference. Thus, the rejection is proper and is maintained.
For the reasons provided above, Applicant’s arguments filed on 12/26/2025 are not persuasive. The burden remains with Applicants to provide factually supported objective evidence in support the arguments, which has not been provided by Applicants.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to K. B BOYLE whose telephone number is (571)270-7338. The examiner can normally be reached 8:30 am to 5pm, Monday - Friday.
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/K. BOYLE/Primary Examiner, Art Unit 1766