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 .
This office action is in response to the amendment filed on 10/3/2025.
Claims 9-13 were added. Claims 1-13 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 Claims 5-8 were previously withdrawn due to a restriction requirement.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 1-4 and 9-13 are rejected under 35 U.S.C. 103 as being unpatentable over Al-Munif et al. (US 2012/0161358 A1).
Regarding claim 1, 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]. 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 15 or less per 5g of polyester resin would be met.
In regards to claim 2, Al-Munif et al. disclose zinc catalyst and the polyester of PET formed from terephthalic acid and ethylene glycol, therefore any residual Zn catalyst would form a salt with the terephthalic acid to form the foreign bodies.
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, 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. Al-Munif et al. teach the same copolyester resin as required by the instant claim as set forth above. Al-Munif et al. teach the same process of making the copolyester resin as set forth in the instant specification via the catalyst present during the esterification step. Al-Munif are silent regarding “zinc salts” which are given as an example of the foreign bodies in the instant specification. 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. 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 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 1-4 and 9-13 are rejected under 35 U.S.C. 103 as being unpatentable over Yau et al. (US 5,385,773).
Regarding claim 1, 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]. 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 15 or less per 5g of polyester resin would be met.
In regards to claim 2, Yau et al. disclose zinc catalyst is preferably a salt such as zinc acetate, zinc citrate, zinc lactate, and zinc glycolate [Col. 3, lines 44-47], therefore any residual Zn catalyst would be in the form a salt to form the foreign bodies.
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. teach the same copolyester resin as required by the instant claim as set forth above. Yau et al. teach the same process of making the copolyester resin as set forth in the instant specification via the catalyst present during 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. 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 10/3/2025 have been fully considered but they are not persuasive. Regarding the 103 rejections over Al-Munif and Yau, Applicant states “the zinc catalyst is apt for forming a salt with an unreacted polycarboxylic acid, and foreign bodies containing a zinc salt of the polycarboxylic acid is apt to be generated. However, the generation of foreign bodies can be suppressed by adding a predetermined amount of zinc catalyst in the polycondensation step.”
In response, attention is drawn to the claim 1, wherein the claim 1 reads “a number of foreign bodies contained in the polyester resin is 15 or less per 5 g of the polyester resin.” There is no explicit definition that the zinc salts are the foreign bodies. There is no specific definition of “foreign bodies” present in the application. Absent a specific definition of “foreign bodies” in the instant specification, the term “foreign bodies” is given its broadest reasonable interpretation which includes many other components other than zinc salts.
In further response, attention is directed to the disclosure of Al-Munif et al., wherein Al-Munif et al. teach “In addition to Sb-, Zn- and Ti-compounds there may be also other metal components present in the process according to the invention, which could act as a catalyst, but then at such low concentrations that their influence is hardly noticeable” [0036]. This teaching implies that other metal components (which read on “foreign bodies”) are at low concentrations. Al-Munif et al. are silent on the presence of zinc salts as well.
Since the polyester resin compositions of Al-Munif and Yau contain the same amounts of zinc and titanium catalysts as recited in the claims, and the polyester resins are produced in substantially similar methods, the presence of the broadly claimed “foreign bodies” in the polyester resins of Al-Munif and Yau are considered to be the same. Because the PTO does not have proper means to conduct experiments (such as detection of foreign bodies), the burden of proof is now shifted to Applicant to show otherwise. (See In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977); In re Fitzgerald, 205 USPQ594 (CCPA 1980).)
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 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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