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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 7/14/2026 has been entered.
Claim 14 was added and claim 2 was canceled. Claims 1 and 3-14 are now pending. Claims 5-8 were previously withdrawn due to a restriction requirement.
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.
Claims 1, 3-4 and 9-14 are rejected under 35 U.S.C. 103 as being unpatentable over Al-Munif et al. (US 2012/0161358 A1) in view of Jernigan (US PG Pub 2008/0188602 A1).
Regarding claims 1 and 14, Al-Munif et al. disclose a polyester resin comprising titanium in the amount of 0.5 to 20 ppm of metal and zinc in the amount of 20 to 70 ppm of metal based on the PET and the intrinsic viscosity of the polyester resin is at least 0.7 dL/g [Claims 1-8; Examples 1-2; 0028-0030, 0038-0040, 0051-0075]. Al-Munif et al. teach the polyester resin is prepared by esterifying ethylene glycol with terephthalic acid (as required by instant claim 14), using a mixed metal catalyst system containing a zinc catalyst (Abstract, [0017]) to form diethylene glycol terephthalate and polycondensation to form polyethylene terephthalate and ethylene glycol. Al-Munif et al. teach the PET is obtained with low content of metal catalyst components [0018] having high purity and superior color and high optical clarity. Thereby the “low content” of remaining metal catalysts in Al-Munif reads on the foreign bodies of 15 or less per 5 g of the polyester resin as required by the instant claim.
Al-Munif et al. do not particularly teach the zinc catalyst is added during the polycondensation step and after esterification.
However, Al-Munif et al. recognize that addition of the catalyst after esterification will result in improved optical properties [0032]. Therefore, the addition of the zinc catalyst can be optimized to reach the desired optical properties via a routine optimization. The case law has held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Thus, it would have been obvious to one having ordinary skill in the art at the time of the invention was made to adjust the timing of the addition of the zinc catalyst to occur after esterification via a routine optimization, thereby obtaining the present invention.
Further, Jernigan teaches, in the same field of endeavor, methods of forming polyester resins [0001] comprising using polycondensation zinc catalysts added after the esterification zone [0089]. Jernigan offers the motivation of particularly adding the zinc catalysts after esterification due to their ability to reduce the formation of the insoluble salt with dicarboxylic acids (thereby corresponding to the ‘foreign bodies’ of the instant claim). In light of these benefits, it would have been obvious to add the zinc catalyst after the esterification step in the method of Al-Munif et al. thereby arriving at the claimed invention.
In regards to claim 3, Al-Munif et al. disclose an intrinsic viscosity of 0.63 dL/g in Examples 1 and 2, and have similar polycondensation times to the comparative examples, therefore one of ordinary skill in the art would find obvious that they would have similar COOH amounts which correspond to acid values.
In regards to claim 4, Al-Munif et al. do not disclose trimellitic anhydride therefore one of ordinary skill in the art would find obvious that the content would be less than 1,000 ppm by mass.
In regards to claim 9, Al-Munif et al. teach in some examples there is no antimony (Table 1, CE A-c, A-d, A-e, etc.) thereby reading on the claimed range of 1 ppm or less.
In regards to claim 10-11 and 13, Al-Munif et al. teach the copolyester resin as set forth above. Regarding claim 13, Al-Munif et al. teach the intrinsic viscosity of the polyester resin is at least resin is at least 0.756 dL/g [Claim 1; Examples 1, 2, 7, and 9; Col. 4, lines 12-14] thereby reading on the claimed range of 0.10 dl/g or more.
Regarding claim 10, Al-Munif does not teach a method of measuring the number of foreign bodies. Regarding claim 11, Al-Munif does not teach the major axis of the foreign bodies. Regarding claim 13, Al-Munif does not teach the acid value.
The number of foreign bodies determined by the claimed method, the axis of the foreign bodies and the acid value of the composition are functions of the copolyester resin and the method of making the copolyester resin composition. Al-Munif et al. in view of Jernigan teach the same copolyester resin as required by the instant claim as set forth above. Al-Munif et al. in view of Jernigan teach the same process of making the copolyester resin via the catalyst added after the esterification step. Therefore, the number of foreign bodies determined by the claimed method, the axis of the foreign bodies and the acid value of the composition of Al-Munif et al. in view of Jernigan is expected to be the same as required by the instant claims. Case law has held that claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). The courts have stated that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position. In the alternative that the above disclosure is insufficient to anticipate the above listed claims, it would have nonetheless been obvious to the skilled artisan to produce the claimed composition, as the reference teaches each of the claimed ingredients within the claimed proportions for the same utility.
Regarding claim 12, Al-Munif et al. teach zinc in the amount of 20 to 70 ppm of metal based on the PET and since the polyester resin overlaps the limitations of the instant claim 1 for titanium and zinc content, it would be obvious to one of ordinary skill in the art that the limitation of the number of foreign bodies of 12 or less per 5g of polyester resin would be met.
Claims 1, 3-4 and 9-14 are rejected under 35 U.S.C. 103 as being unpatentable over Yau et al. (US 5,385,773) in view of Jernigan (US PG Pub 2008/0188602 A1).
Regarding claims 1 and 14, Yau et al. disclose a copolyester resin comprising titanium in the amount of 5 to 20 ppm of metal and zinc in the amount of 50 to 150 ppm of metal based on the PET and the intrinsic viscosity of the polyester resin is at least 0.756 dL/g [Claim 1; Examples 1, 2, 7, and 9; Col. 4, lines 12-14]. Yau et al. disclose the method of making the polyester resin comprising producing copolyesters having repeat units from a dicarboxylic acid comprising terephthalic acid and a glycol component and reacting the dicarboxylic acid component and glycol component to effect esterification followed by polycondensation in the presence of a catalyst (col. 1 lines 9-11) wherein the zinc catalyst is preferably a salt such as zinc acetate, zinc citrate, zinc lactate, and zinc glycolate [Col. 3, lines 44-47].
Yau et al. do not particularly teach the zinc catalyst is added during the polycondensation step and after esterification and are further silent on the amount of foreign bodies per gram of resin.
However, Jernigan teaches, in the same field of endeavor, methods of forming polyester resins [0001] comprising using polycondensation zinc catalysts added after the esterification zone [0089]. Jernigan offers the motivation of particularly adding the zinc catalysts after esterification due to their ability to reduce the formation of the insoluble salt with dicarboxylic acids (thereby corresponding to the ‘foreign bodies’ of the instant claim). In light of these benefits, it would have been obvious to add the zinc catalyst after the esterification step in the method of Yau et al. thereby arriving at the claimed invention and further meeting the less than 15 g or less of foreign bodies per 5 gram of resin as required by the instant claim as Jernigan teaches the reduction of the formation of insoluble salts with dicarboxylic acids.
In regards to claim 3, Yau et al. disclose an inherent viscosity of 0.756 dL/g in Examples 1 and 2, therefore one of ordinary skill in the art would find obvious that they would have similar COOH amounts which correspond to acid values.
In regards to claim 4, Yau et al. do not disclose trimellitic anhydride therefore one of ordinary skill in the art would find obvious that the content would be less than 1,000 ppm by mass.
In regards to claim 9, Yau et al. teach in some examples there is no antimony (Examples 4-9, col. 4 line 65) thereby reading on the claimed range of 1 ppm or less.
In regards to claim 10-11 and 13, Yau et al. teach the copolyester resin as set forth above. Regarding claim 13, Yau et al. teach the intrinsic viscosity of the polyester resin is at least resin is at least 0.756 dL/g [Claim 1; Examples 1, 2, 7, and 9; Col. 4, lines 12-14] thereby reading on the claimed range of 0.10 dl/g or more.
Regarding claim 10, Yau does not teach a method of measuring the foreign bodies. Regarding claim 11, Yau does not teach the major axis of the foreign bodies. Regarding claim 13, Yau does not teach the acid value.
The number of foreign bodies determined by the claimed method, the axis of the foreign bodies and the acid value of the composition are functions of the copolyester resin and the method of making the copolyester resin composition. Yau et al. in view of Jernigan teach the same copolyester resin as required by the instant claim as set forth above. Yau et al. in view of Jernigan teach the same process of making the copolyester resin via the catalyst added after the esterification step. Therefore, the number of foreign bodies determined by the claimed method, the axis of the foreign bodies and the acid value of the composition of Yau et al. in view of Jernigan is expected to be the same as required by the instant claims. Case law has held that claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). The courts have stated that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position. In the alternative that the above disclosure is insufficient to anticipate the above listed claims, it would have nonetheless been obvious to the skilled artisan to produce the claimed composition, as the reference teaches each of the claimed ingredients within the claimed proportions for the same utility.
Regarding claim 12, Yau et al. teach a copolyester resin comprising zinc in the amount of 50 to 150 ppm of metal based as set forth above for claim 1. Since the polyester resin meets the limitations of the instant claim 1 for titanium and zinc content, it would be obvious to one of ordinary skill in the art that the limitation of the number of foreign bodies of 12 or less per 5g of polyester resin would be met.
Response to Arguments
Applicant's arguments filed 7/14/2026 have been fully considered but they are not persuasive. Regarding the 103 rejections over Al-Munif and Yau, Applicant states “the Examiner has not responded to Applicant’s arguments..which relate to the order of adding a zinc catalyst when preparing a polyester resin.”
In response, attention is drawn to the rejection as set forth above, wherein Al-Munif recognizes the addition of the catalyst after esterification will result in improved optical properties [0032]. Further, Jernigan teaches methods of forming polyester resins [0001] comprising using polycondensation zinc catalysts added after the esterification zone [0089]. Jernigan offers the motivation of particularly adding the zinc catalysts after esterification due to their ability to reduce the formation of the insoluble salt with dicarboxylic acids (thereby corresponding to the ‘foreign bodies’ of the instant claim).
Applicant further states Example 1 versus Comparative Example 6 shows that when a zinc catalyst is added after the esterification reaction the number of foreign bodies is “15 or less per 5 g of the polyester resin”. On the other hand, when the zinc catalyst is added before the esterification reaction, then the number of foreign bodies is too large. In response, attention is drawn to the teaching of Jernigan as set forth above, wherein it is known in the art that addition of the catalysts after esterification will reduce the formation of insoluble salts with the carboxylic acids. It would have been obvious to one of ordinary skill in the art to add the zinc catalyst after esterification as taught by Jernigan, in the processes of Al-Muif and Yau, thereby arriving at the claimed invention.
It is for these reasons that Applicant’s arguments are not found to be persuasive.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LANEE REUTHER whose telephone number is (571)270-7026. The examiner can normally be reached M-F 7:30-3:30.
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/ARRIE L REUTHER/Supervisory Primary Examiner, Art Unit 1764
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