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 .
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.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 January 6, 2026 has been entered.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-3, 5, 9, and 11-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jamison (U.S. 3,725,461).
Jamsion exemplifies reaction of BHET (glycol adduct with terephthalic acid) and maleic anhydride at 110 oC to 115 oC for 30 minutes. This anticipates Claim 1, Claim 2, Claim 3 and Claim 9. No solvent is used for the polyester reaction step which anticipates Claim 5. Claim 12 includes 0 wt% of inhibitor and, therefore, Jamison still anticipates this claim.
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.
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 1-5 and 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Hiramatsu (JPH072995; reference made to English machine translation) in view of Maehata (U.S. 20060110674).
Hiramatsu exemplifies exemplifies fumaric acid reacted with propylene oxide and bisphenol F adducted to make an unsaturated polyester.
The fumaric acid reads over the polycarboxylic acid of Claim 1 as it is 100% of the diacid component. It also reads over the double bond and X1, X2,- Y1, and Y2 as hydrogens, m, n = 0 of Claim 3 and the double bond reads over the unsaturated bond of Claim 2. Note that fumaric acid is trans-- maleic acid which is used as inventive in Applicant’s examples. See also Chemical Formula 7 of the as-filed specification.
PNG
media_image1.png
121
227
media_image1.png
Greyscale
The exemplified system is bisphenol F adduct with propylene oxide which is not listed as one of the aromatic polyols.
In ¶[0005] Hiramatsu teaches the bisphenol F adducts can be mixed with bisphenol A adduct to adjust the visocity.
It would have been obvious to a person having ordinary skill in the art to practice the invention of Hiramatsu such that the bisphenol adduct was a mixture of bisphenol F and bisphenol A adducts in order to adjust the viscosity as taught by Hiramatsu. One of ordinary skill in the art would have been motivated to use a bisphenol A adduct of proplyene oxide because the bisphenol F adduct is made with propylene oxide. Further, one of ordianry skill int the art would be motivated to start using mixtures of 50/50 bisphenol F / A adducts to begin routine experimentation in adusting the viscosity and adjust accordingling leading one to more bisphenol A then bisphenol F depending on the viscosity requirements.
Bisphenol A adduct with polypropylene oxide reads over the aromatic polyol component of Claim 1 and also A of Claim 3 as p = 1.
Hiramatsu does not teach the melt condensation in the recited range of temperatures of Claim 1.
Maehata, working the field of unsaturated polyester synthesis similar to Applicant and Hiramatsu, teaches the uses of scandium catalysts to lower the polymerization temperature of polyesters to be less than 100 oC comparted to the “current” polymerization of greater 150 oC. ¶[0006] Hiramatsu uses polymerization temperatures in the range of 180 oC to 230 oC. ¶[0009]. Maehata exemplifies scandium trifluoromethanesulfonate (Sc(OSO2CF3)3 as a catalyst in Example 6. This is a triflate catalyst comprising fluorine and sulphur.
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the invention of Hiramatsu by using a scandium compound as a catalyst in the polymerizations of Hiramatsu for the advantage of using a catalyst that lowers the polymerization temperatures to less than 100 oC as taught by Maehata. One of ordinary skill in the art is motivated to choose scandium trifluoromethanesulfonate (Sc(OSO2CF3)3 because Maehata exemplifies it for a substantially similar polymerization of the fumaric acid and bisphenol adduct of alkylene oxide exemplified by Hiramatsu.
The polycondensation in the melt (no solvents are used in Hiramatsu) at 100 oC or less overlaps the claimed range of polymerization temperatures of Claim 1 and Claim 11.
Hiramatsu exemplifies 0.01 parts of hydroquinone added as an inhibitor to the entire mass (100% of the product which is considered 100 parts) which meets the range of Claim 12. (See also ¶[0012] prepolymer = polymer as it simply a low molecular weight uncured aromatic polyester) Alternatively, Claim 12 includes 0 wt% of inhibitor and, therefore, would read over this claim if Applicant does not consider hydroquinone to read on the claimed inhibitor.
Scandium trifluoromethanesulfonate (Sc(OSO2CF3)3 as a catalyst is a triflate catalyst comprising fluorine and sulphur. Every example in the as-filed specification has well in excess of the recited amount of fluorine and sulfur when using scandium trifluoromethanesulfonate (Sc(OSO2CF3)3 as a catalytic compound including in catalytic amount which is the same reason Applicant is using scandium trifluoromethanesulfonate (Sc(OSO2CF3)3. Therefore, when tested appropriately, one of ordinary skill in the art is reasonably suggested the fluorine and sulfur amounts in Example 6 of Maehata must be in the recited range of Claim 4 for the above reason.
The reliance upon the specification by the Office to establish inherent properties has been supported by the Federal Circuit. In re Kao, 98 USPQ2d 1799, 1809 (Fed. Cir. 2011).
No solvent is used by Hiramatsu which reads over Claim 5.
Hiramatsu does not explictly state the time of reaction however the reaction must occur for a certain amount of time.
Maehata exemplifies polymerization using the triflate catalyst to make polyester at 100 oC for 12 hours. (¶[0090].
It would have been obvious to a person having ordianry skill in the art at the time the invention was filed to practice the invention of Hiramatsu using Maehata’s triflate catalyst for a polymerization time of 12 hours because Maehata exemplifies using this catalyst for 12 hours in the polymerization. This reads over the range of Claim 13.
Note that Hiramatsu does not teach or limit the polymeriation time, a process parameter.
Alternatively, It would have been obvious to one having ordinary skill in the art to have determined the optimum values of the relevant process parameters, polymerization time, through routine experimentation in the absence of a showing of criticality. In re Aller, USPQ 233 (CCPA 1955).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Hiramatsu (JPH072995; reference made to English machine translation) and Maehata (U.S. 20060110674) in view of Robitschek (U.S. 3,340,083).
Hiramatsu and Maehata are applied under §103.
Hiramatsu and Maehata are silent on the number average molecular weight of the unsaturated polyester. The unsaturated polyester of Hiramatsu must have a number average molecular weight.
Robitschek, working in the field of glass fiber reinforced mats with unsaturated polyester, teaches it is desirable to have the unsaturated polyester to have a number average molecular weight of 3000 to about 5000 and implies this molecular weight range provides for an unsaturated polyester that can be heated sufficiently to bond with the glass without causing deterioration. (Column 3 lines 1-10 and 20-25 see footnote 3).
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the invention of Hiramatsu such that the number average molecular weight of the unsaturated polyester of Hiramatsu is 3000 to 5000 for the advantage of providing a molecular weight is absent explicit disclosure in Hiramatsu but must be present that provides for an unsaturated polyester that can be heated sufficiently to bond with the glass without causing deterioration as taught by Robitschek.
Claim 4 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Jamison (U.S. 3,725,461) in view of Maehata (U.S. 20060110674).
Jamsion is applied under §102 above.
Jamieson does not teach the fluorine or sulfur in range recited by Claim 4.
Maehata, working the field of unsaturated polyester synthesis similar to Applicant and Jamieson, teaches the uses of scandium catalysts to lower the polymerization temperature of polyesters to be less than 100 oC compared to the “current” polymerization of greater 150 oC. ¶[0006] This is a triflate catalyst comprising fluorine and sulphur. Jamison does not exemplify the use of a catalyst but does melt polymerize at temperatures slightly above 100 oC.
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the invention of Jamison, in particular that of example 1, by using a scandium compound as a catalyst in the polymerizations of Jamison for the advantage of using a catalyst that lowers the polymerization temperatures to less than 100 oC as taught by Maehata. One of ordinary skill in the art is motivated to choose scandium trifluoromethanesulfonate (Sc(OSO2CF3)3 because Maehata exemplifies it for a substantially similar polymerization of the maleic acid and bisphenol adduct of Jamison.
Scandium trifluoromethanesulfonate (Sc(OSO2CF3)3 as a catalyst is a triflate catalyst comprising fluorine and sulphur. Every example in the as-filed specification has well in excess of the recited amount of fluorine and sulfur when using scandium trifluoromethanesulfonate (Sc(OSO2CF3)3 as a catalytic compound including in catalytic amount which is the same reason Applicant is using scandium trifluoromethanesulfonate (Sc(OSO2CF3)3. Therefore, when tested appropriately, one of ordinary skill in the art is reasonably suggested the fluorine and sulfur amounts in Example 6 of Maehata must be in the recited range of Claim 4 for the above reason.
The reliance upon the specification by the Office to establish inherent properties has been supported by the Federal Circuit. In re Kao, 98 USPQ2d 1799, 1809 (Fed. Cir. 2011).
Jamison exmplifies 30 minute polymerization time but does not otherwise limit the polymerization time.
Maehata exemplifies polymerization using the triflate catalyst to make polyester at 100 oC for 12 hours. (¶[0090].
It would have been obvious to a person having ordianry skill in the art at the time the invention was filed to practice the invention of Jamison using Maehata’s triflate catalyst for a polymerization time of 12 hours because Maehata exemplifies using this catalyst for 12 hours in the polymerization. This reads over the range of Claim 13.
Note that Jamison does not teach or limit the polymeriation time, a process parameter.
Alternatively, It would have been obvious to one having ordinary skill in the art to have determined the optimum values of the relevant process parameters, polymerization time, through routine experimentation in the absence of a showing of criticality. In re Aller, USPQ 233 (CCPA 1955).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Jamison (U.S. 3,725,461) and Maehata (U.S. 20060110674) in view of Robitschek (U.S. 3,340,083).
Jamison and Maehata are applied under §103.
Jamison and Maehata are silent on the number average molecular weight of the unsaturated polyester. The unsaturated polyester of Jamison must have a number average molecular weight.
Robitschek, working in the field of glass fiber reinforced mats with unsaturated polyester, teaches it is desirable to have the unsaturated polyester to have a number average molecular weight of 3000 to about 5000 and implies this molecular weight range provides for an unsaturated polyester that can be heated sufficiently to bond with the glass without causing deterioration. (Column 3 lines 1-10 and 20-25 see footnote 3).
Jamison teaches the unsaturated polyesters are useful in reinforced plastics such as molded boat hulls and the link in Column 3 line 40-45 which reasonable suggests the teachings are relevant to fiber reinforced polyesters of Robitschek.
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the invention of Jamison such that the number average molecular weight of the unsaturated polyester of Jamison is 3000 to 5000 for the advantage of providing a molecular weight is absent explicit disclosure in Jamison but must be present that provides for an unsaturated polyester that can be heated sufficiently to bond with the glass without causing deterioration as taught by Robitschek.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Jamison (U.S. 3,725,461) and Meixmer (U.S. 4,921,883).
Jamison is applied under §102 as above.
Jamison does not explicitly teach reaction inhibitors.
Meximer, working in the field of curable unsaturated polyester resins similar to Applicant and Jamison, teaches the use of polymerization inhibitors (i.e. radical inhibitors) in similar unsaturated polyester systems to prevent premature polymerization (Column 2 lines 64-67) and these polymerization inhibitors are known in the field and used in amouts from 0.001 to 1 wt% and exemplifes 0.02% hydroquinone.
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the invention of Jamison by adding 0.001 to 1 wt% of polymerization inhibitor to the polyester in order to prevent premature polymerization as taught by Meixmer as discussed above. This reads over the range of Claim 12.
Response to Arguments
Applicant’s claim amendments and remarks filed January 6, 2026 on RCE have been fully considered but are not sufficient to move the application to allowance. The rejections of record have been updated to reflect the new limitations and new claims.
Applicant’s remarks filed January 6, 2026 have been fully considered but are not persuasive.
Applicant argues the claims are limited to only an aromatic polyol from the Markush list recited thereby excluding Hiramatsu. This argument is not persuasive. Claims are comprising which allows for other components such as an additional polyol to be present within the claim scope. Additionally, the polyol component only has to be 50 % of the Markush group aromatic polyol. If Applicant’s interpretation of Markush claiming is correct, how can other polyols be present for the other 50% that is open to that possibility as claimed? The rejection of record has been updated reflect how Hiramatsu arrives at the claimed process. Applicant is encouraged to focus on the use of the triflate catalyst and the amounts of residual fluorine and sulfur in resulting aromatic polyester of the recited process that provides the benefits of ¶[0057] and ¶[0058] (as-filed specification) and explore providing data to substantiate these benefits and amend the claims to positively require triflate catalyst in the amount to arrive at these benefits especially at the preferable levels in the as-filed specification.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER M RODD whose telephone number is (571)270-1299. The examiner can normally be reached 7 am - 3:30 pm (Pacific).
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 Gulakowski can be reached on (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.
/Christopher M Rodd/ Primary Examiner, Art Unit 1766