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 § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 4-7, 9, and 14-19 are rejected under 35 U.S.C. 103 as being unpatentable over Hayes (US 2002/0115817 – Hayes17) in view of Hayes et al ( US 2003/0212244 – Hayes44).
Regarding Applicant’s Claims 1,4-7, 9, and 19, Hayes17 disclosed AACP ( aromatic -aliphatic copolyester) comprising ( see Abstract, [0029]) one or more aromatic dicarboxylic acid or ester; one or more aliphatic dicarboxylic acid or ester and Isosorbide, and pointing out that “ the polyesters are useful to form articles of increased biodegradability). Hayes17 further disclosed that aromatic acid can be present in range from 20 to 98 mole% based on all acids ; aliphatic acid can be present in range from 2 to 80 mole% based on all acids and Isosorbide can be present in range from 1 to 100 mol% based on all glycols/diols and more preferably from 50 to 2 mole% or from about 25 to 5 mol% in the copolyester ( see Hayes17, claims 1-2).
Note that aliphatic dicarboxylic acid can be selected from several acids including ” adipic acid, dimethyl adipate..” – see Claim 8 and also used in the Examples 13 and 15 – therefore, Hayes17 disclosed use of same aliphatic acid(s) and specifically adipic acid elected by Applicant. Same is related to aliphatic diol, specifically to 1,4-Butanediol ( BDO) other than Isosorbide; use of BDO exemplified in Example 15 along with isosorbide , dimethyl adipate and dimethyl terephthalate. Note that aliphatic diol, including BDO (other diol than Isosorbide) can be used in range from about 50 mol% to about 98 mole% ( see Hayes17, [0029]).
Regarding aromatic acids Hayes17 disclosed ( see Claim 7) that : “ aromatic dicarboxylic acid or ester (a) is selected from the group consisting of terephthalic acid, dimethyl terephthalate, isophthalic acid, dimethyl isophthalate, 2,6-naphthalene dicarboxylic acid, dimethyl-2,6-naphthalate, and mixtures of two or more thereof.” Note that Terephthalic acid ( first choice of aromatic acid) - can be used in amount from 80 to about 50 mol% ( see [0029]).
Therefore, Hayes17 disclosed same basic copolyester as claimed by Applicant wherein all monomers including terephthalic acid, Adipic acid, BDO and Isosorbide can be present in same overlapping ranges but silent regarding use of “anhydrosugar alcohol-alkylene glycol”.
However, Hayes44 teaches that it is well known that use of bis(2-hydroxyethyl)isosorbide (which is anhydrosugar alcohol-alkylene glycol and specificly isosorbide ethylene glycol adduct as elected by Applicant) will lead to higher efficiency of incorporation of isosorbide to polyester ( see [0003], [0008], [0170]).
Therefore, it would be obvious to one of ordinary skill in the art to at least partially substitute isosorbide by bis(2-hydroxyethyl)isosorbide by teachings provided by
Hayes 44 in copolyester disclosed by Hayes 17 in order to improve efficiency of incorporation of isosorbide to polyester.
Regarding claim 14, as described above, Hayes17 teaches the incorporation of one or more aromatic dicarboxylic acid or ester; one or more aliphatic dicarboxylic acid or ester and Isosorbide (Abstract, [0029]). Hayes17 specifically cites dimethyl terephthalate, isosorbide, and butanediol ([0018], [0022], and [0020]). As described above, Hayes44 teaches the incorporation of bis(2-hydroxyethyl)isosorbide ([0026]), which reads on the claimed “isosorbide-ethylene glycol.” Regarding claims 15-18, as described above, Hayes17 teaches that the aromatic acid can be present in range from 20 to 98 mole% based on all acids and the aliphatic acid can be present in range from 2 to 80 mole% based on all acids (p. 15, claim 2). These ranges encompass their respectively claimed ranges, establishing prima facie cases of obviousness.
Allowable Subject Matter
Claim 20 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
As argued by the Applicant in the response filed December 30, 2025, the subject matter of claim 20 concerns a polymer which possesses unexpectedly improved heat resistance characteristics when compared to compositions falling outside of the scope of claim 20.
Response to Arguments
Applicant's arguments filed December 30, 2025 have been fully considered:
Applicant argues that the applied references Hayes17 and Hayes44 collectively fail to teach polyesters containing both an anhydrosugar alcohol and an anhydrosugar alcohol-alkylene glycol. However, Hayes17 specifically states that the inventive polyesters can be formed from aromatic and aliphatic acid components alongside isosorbide and another glycol component ([0020], [0026]). Hayes17 states that any glycol can be used as said other glycol, as a dihydric alcohol ([0020]). The isosorbide-alkylene glycol component of Hayes44, as a dihydric alcohol, fits within this category of optional other glycols, and is taught as specifically being useful for increasing the amount of isosorbide incorporated into polymer systems ([0008]). Therefore, as described above, it would have been obvious to one of ordinary skill in the art to incorporate the anhydrosugar alcohol-alkylene glycol adduct of Hayes44 into the polymer of Hayes17 for the purpose of increasing the isosorbide content thereof. Doing so would form a polymer having both an anhydrosugar alcohol and said anhydrosugar alcohol-alkylene glycol adduct, which reads on the claimed polymer resin.
Applicant’s remaining arguments are directed towards allegations of unexpected results. Applicant points to Tables 1 and 2 of the instant Specification, in addition to additional data provided in the declaration filed December 30, 2025. Importantly, as described in previous Office Actions, the present application is currently subject to an election/restriction requirement. The Applicant previously elected a single disclosed specie of a polyester resin comprising 50 mol% of terephthalic acid residue, 50 mol% of adipic acid residue, 92 mol% of 1,4 butanediol residue, and 4 mol% each of isosorbide and isosorbide-ethylene glycol residues (equivalent subject matter as newly-added claim 20), whereas the entirety of claim 1 is directed towards polyesters comprising virtually any diol component containing 0.5 to 19 mol % of virtually any anhydrosugar alcohol, 4 to 28 mol% of virtually any anhydrosugar alcohol-alkylene glycol addict, and 53 to 95 mol% of virtually any additional aliphatic diol, 30-70 mol% of adipic acid or an ester thereof, and 30-70 mol% of virtually any aromatic dicarboxylic acid component, as long as the total content of the anhydrosugar alcohol and the anhydrosugar alcohol-alkylene glycol adduct is 5 to 47 mol% w.r.t. the entire diol component. While the Applicant’s supplied data pertains to the whole of claim 1, only Example 1 appears relevant to the claimed specie.
With respect to the elected subject matter, Applicant’s arguments assert that the data of Comparative Examples 1-12, in comparison to Example 1, provide evidence of nonobviousness of the heat-resistance properties of the claimed polyester.
Applicant states that the raw data and discussion, provided in the declaration by Min Sun Lee, explains why the results for the present invention are unexpected and commensurate with the claim scope. These arguments are found persuasive; therefore, the subject matter of claim 20 (equivalent to the aforementioned species election) has been objected to as depending on a rejected claim, but would be allowable if re-written in independent form.
Regarding the full scope of claim 1, the provided data contains information pertaining to only a single aromatic dicarboxylic acid (dimethyl terephthalate), a single anhydrosugar alcohol (isosorbide), and a single diol (1,4 butanediol) despite being open to virtually any member of these categories, as described above.
Applicant therefore asserts that allegations of unexpected results for a narrow portion of the claimed composition would be sufficient to rebut a prima facie determination of obviousness. Applicant need not provide data for every possible composition as claimed, however the data provided is not commensurate in scope with the subject matter of claim 1 to sufficiently rebut a prima facie determination of obviousness.
Conclusion
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 JOSHUA CALEB BLEDSOE whose telephone number is (703)756-5376. The examiner can normally be reached Monday-Friday 8:00 a.m. - 5:00 p.m. EST.
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/JOSHUA CALEB BLEDSOE/Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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