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 .
112 issues
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1,2 and 5-7 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 states, starting line 3 through line 5, “having a structure in which a part derived from……..from the diol are repeated,”. This language is considered indefinite since, it cannot be understood what it is giving to the claim or how it limits the claim to what is already there. The specification was consulted to try to determine what it means, but to no avail. Therefore, the meets and bounds of the claim is unclear.
Further, in claim 1, the meets and bounds of the claim are unclear with respect to the term “or a derivative thereof”, since it is unclear what is desired or embraced by the limitation. The specification, page 3 , has a section of “dicarboxylic acid or a derivative thereof”, which discloses dicarboxylic acids, but fails to describe what the extent or applicants’ consider “a derivative thereof”.
Double patenting Issues
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1,2,5 and 6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1,6,7 and 12 of copending Application No. 18/248336. Although the claims at issue are not identical, they are not patentably distinct from each other because, the method claims of the copending teach all of the claimed limitations minus the claimed color value. Such as color value would be expected to be inherent to the claimed polyester of the copending application since it discloses the making of the same polyester copolymer as is claimed.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1,2 and 5-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1,2 and 10-12 of copending Application No. 18/568372. Although the claims at issue are not identical, they are not patentably distinct from each other because, the polyester claims of the copending teach all of the claimed limitations minus the claimed ratio of ethylene glycol to dicarboxylic acid or derivative thereof. Such a molar is believe to be embraced, since 1) the instant claimed molar ratio is large range which encompasses a 1:1 ratio which would the first option to one skilled in the art, and 2) would be expected to be embraced since all of the properties, haze, color value and viscosity are almost exactly the same.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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) 1,2 and 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Donelson et al- 2009/0017320 in view of Matsumoto et al 2013/0253165 and JP 2006290996-Nobuhachi.
Donelson et al. disclose copolyesters comprising repeating units of diacid residues and diol residues wherein at least 80 mole percent of the diacid residues are terephthalic acid residues and up to 20 mole percent of one or more of one or more other dicarboxylic acid residues such as bis(2- hydroxyethyl)terephthalate (BHET) [0046]. Donelson et al. disclose the diol component of the copolyester comprises from 98 to 1 mole percent ethylene glycol residues and 2 to 99 mole percent 1,3- cyclohexanedimethanol and/or 1,4-cyclohexanedimethanol residues [0047]. Donelson et al. disclose in one embodiment that the mole ratio of ethylene glycol and 1,4-cyclohexanedimethanol residues is about 5:95 to 95:5, and more preferably about 50:50 to about 77:23 [0047] meeting the instant limitation of 0.07:1 to 20:1.
Donelson et al. do not disclose that 1) the molar ratio of a diol and a dicarboxylic acid or a derivative thereof is 0.2:1 to 1.35:1 and 2) that the BHET is from recycled products.
Matsumoto et al. disclose a polyester composition comprising a dicarboxylic acid component preferably terephthalic acid from the standpoint of mechanical properties, heat resistance, and polymerizability [0015] and various diols such as ethylene glycol and cyclohexanedimethanol [0016]. Matsumoto et al. disclose the molar ratio of diol component to dicarboxylic acid component is 1.05 to 1.30 [0022, 0053; Example 1] with the benefit of the time cycle can be shortened because the esterification reaction proceeds efficiently and the heat resistance is maintained due to reduced by-product formation of dimers of the diol component [0019]. One of ordinary skill in the art would find obvious to use the benefits of the molar ratio of diol to dicarboxylic acid of Matsumoto et al. being within the range of the instant claim with the polyester composition of Donelson et al. to shortened the time cycle, reduce by-product formation, and maintain mechanical properties and heat resistance.
In regards to claim 2, Donelson et al. disclose cyclohexanedimethanol [0047-0048]. In regards to claim 5, Donelson et al. disclose the polyesters comprise an inherent viscosity (IV) of about 0.5 to about 1.2 dL/g [0067; Claim 1]. In regards to claim 6, Matsumoto et al. disclose unreacted diol is distilled out of the reaction system, thereby suppressing the by-product formation of dimers of the diol component [0027]. In regards to claim 7, Donelson et al. in view of Matsumoto et al. disclose a polyester composition of the instant claim 1, therefore would possess the haze properties of the instant claim. With respect to the amended claim 1, and the new limitation of color value, one skilled in the art would expect the modified copolyester of Donelson to possess the claim color value, since the ratios and amounts of each monomer/component in the least overlap with the claimed. The burden is shifted to applicants to prove otherwise.
Nobuhachi discloses the making of polyesters, specifically PET, using BHET. The reference teaches recycling PET, which results in the formation of BHET (i.e. recycled BHET) which is then used to make additional polyesters. Nobuhachi teaches that them obviously, recycling polyesters is good for the environment but also that when using the recycled BHET to make the polyesters, one achieves good hue.
Therefore, it would have been obvious one skilled in the art to have used the modified polyester of Donelson and Matsumoto, and to further have replaced the virgin BHET of Donelson with a recycled BHET for improved environmental effects and to also to achieved improved hue, as taught by Nobuhachi.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RANDY P GULAKOWSKI whose telephone number is (571)272-1302. The examiner can normally be reached M-F 7:30-4pm.
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, Randy P Gulakowski can be reached at 571-272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766
Prosecution Insights