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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/24/2025 has been entered.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3, 6-16, 18, and 21-23 are rejected under 35 U.S.C. 103 as being unpatentable over Aoshima et al. (JP 2006328375) in view of Mori et al. (JP 2018145221) and Okochi et al. (JP 2009299031) as evidenced by Wax-Emulsions. It is noted that the disclosures of Aoshima et al. and Mori et al. are based on a machine translation of the references included in the IDS filed 02/12/25 while the disclosure of Okochi et al. is based on a machine translation of the reference included in the action mailed 7/30/2025.
Regarding claims 1-3, 14-16, 18, and 23, Aoshima et al. discloses method for producing polyester comprising reacting dicarboxylic acid units with diol units where the dicarboxylic acid units include aliphatic dicarboxylic acid and aromatic dicarboxylic acid and the diol includes aliphatic diol (see paragraphs 0010-0011). The aliphatic dicarboxylic acid, aromatic dicarboxylic acid, and aliphatic diol are subject to esterification and/or transesterification followed by polycondensation (see paragraph 0054). A catalyst is added to the raw materials (i.e. aliphatic dicarboxylic acid, aromatic dicarboxylic acid, and aliphatic diol) and therefore would be present during both esterification and/or transesterification and polycondensation (see paragraph 0067). Further, given that the polyester is made from aliphatic dicarboxylic acid, aromatic dicarboxylic acid, and aliphatic diol, it is necessarily an aliphatic-aromatic polyester.
Aoshima et al. do not disclose the ratio of aliphatic dicarboxylic acid to aromatic dicarboxylic acid, a nucleating agent, or that formula (1) as claimed is met.
Mori et al. discloses method for producing an aliphatic-aromatic polyester comprising subjecting an aliphatic diol component, an aliphatic dicarboxylic acid, and an aromatic dicarboxylic acid to an esterification reaction and/or transesterification reaction followed by a polycondensation reaction (see paragraphs 0011, 0041, and 0048). Both the esterification reaction and polycondensation are performed in the presence of a catalyst (see paragraph 0056). The ratio of aliphatic dicarboxylic acid to aromatic dicarboxylic acid is 30:70 to 70:30 to produce a polyester with good heat resistance, biodegradability, mechanical properties and moldability (see paragraph 0036).
In light of the motivation for using ratio of aliphatic dicarboxylic acid to aromatic dicarboxylic acid disclosed by Mori et al. as described above, it would have been obvious to one of ordinary skill in the art to use such ratio of aliphatic dicarboxylic acid to aromatic dicarboxylic acid, including that presently claimed, in the method of producing polyester in Aoshima et al. in order to produce a polyester with good heat resistance, biodegradability, mechanical properties and moldability.
Aoshima et al. in view of Mori et al. do not disclose a nucleating agent or that formula (1) as claimed is met.
Okochi et al. disclose polyester resin (see paragraph 0010) made from aromatic dicarboxylic acid (terephthalic acid), aliphatic dicarboxylic acid such as succinic acid, aliphatic diol, i.e. 1.6-hexanediol (see paragraphs 0011 and 0015-0017) as well as 0.01-5 wt.%, i.e. 100-50,000 ppm, nucleating agent (see paragraph 0020). Okochi et al. disclose nucleating agents including polyolefin (see paragraphs 0023 and 0026) such as polyethylene wax (see paragraph 0074). Okochi et al. disclose that the nucleating agent can be added during esterification or during polycondensation (see paragraph 0070). The nucleating agent produces a crystalline polymer that has good chipping operability and where crystallization rate during cooling is improved (see paragraphs 0022 and 0080).
In light of the motivation for using polyethylene wax nucleating agent disclosed by Okochi et al. as set forth above, it would have been obvious to one of ordinary skill in the art to use a polyethylene wax nucleating agent during esterification or during polycondensation in the method of producing polyester in Aoshima et al. in view of Mori et al. in order to produce a crystalline polyester with good chipping operability.
The polyester of Aoshima et al. has melting point Tm2 of 50-140 C (see paragraph 0049). As evidenced by Wax-Emulsion, polyethylene wax has melting point Tm1 of 90-140 C (see page 1, under Properties). Therefore, Tm1 - Tm2 is 0-40 C.
Regarding claim 6, Aoshima et al. disclose that the aliphatic dicarboxylic acid is succinic acid (see paragraph 0011).
Regarding claims 7 and 21, Aoshima et al. disclose that the aromatic dicarboxylic acid is terephthalic acid (see paragraph 0011).
Regarding claims 8-9, Aoshima et al. disclose that the at least one of the aliphatic dicarboxylic acid and the aliphatic diol is derived from a biomass resource (see paragraph 0010).
Regarding claims 10-13, Aoshima et al. disclose the diol units only require aliphatic diol, i.e. 100 mol% (see paragraph 0031).
Regarding claim 22, Aoshima et al. disclose that the aliphatic diol includes 1,4-butanediol which can be used alone (see paragraphs 0032-0033). Given that the 1,4-butanediolcan be used alone, the 1,4-butanediol is present in an amount of 100 mol% relative to all diol components.
Claims 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Aoshima et al. (JP 2006328375) in view of Mori et al. (JP 2018145221) and Okochi et al. (JP 2009299031) as evidenced by Wax-Emulsions as applied to claim 1 above, and further in view of Hrach et al. (US 3,660,358).
Regarding claims 4-5, Aoshima et al. in view of Mori et al. and Okochi et al. disclose method of making polyester as described above. Aoshima et al. disclose adding 10-130 ppm catalyst before polycondensation including when raw materials are charged (see paragraph 0073) where the catalyst includes inorganic compounds that include antimony and tin (see paragraph 0068).
Aoshima et al. in view of Mori et al. and Okochi et al. do not disclose basic inorganic compound as claimed.
Hrach et al. disclose method of making polyester that includes catalyst that comprises antimony, tin, and alkali metal (col.1, lines 15-22) where alkali metals include potassium and sodium (col.2, lines 57 and 63). The catalysts are in the form of compounds including hydroxides (col.2, line 20), i.e. sodium hydroxide or potassium hydroxide. The catalyst includes 3-78 wt.% (5/165 – 70/90) of the sodium hydroxide or potassium hydroxide (col.2, lines 33-42). The catalyst accelerates both the polycondensation reaction and the esterification reaction (col.2, lines 10-13).
In light of the motivation for using catalyst including sodium hydroxide or potassium hydroxide when making polyester disclosed by Hrach et al. as described above, it would have been obvious to one of ordinary skill in the art to use sodium hydroxide or potassium hydroxide as part of the catalyst in the method of producing polyester in Aoshima et al. in view of Mori et al. and Okochi et al. in order to accelerate both the polycondensation reaction and the esterification reaction.
Given that Aoshima et al. disclose the use of 10-130 ppm catalyst and given that Hrach et al. disclose catalyst comprising 3-78% sodium hydroxide or potassium hydroxide, it is calculated that there is 3-101 ppm sodium hydroxide or potassium hydroxide in Aoshima et al. in view of Mori et al., Okochi et al., and Hrach et al.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Aoshima et al. (JP 2006328375) in view of Mori et al. (JP 2018145221) and Okochi et al. (JP 2009299031) as evidenced by Wax-Emulsions as applied to claim 1 above, and further in view of Uchida et al. (JP 2011202156). It is noted that the disclosure of Uchida et al. is based on a machine translation of the reference in the action mailed 7/30/2025.
Regarding claim 19, Aoshima et al. in view of Mori et al. and Okochi et al. disclose method of making polyester as described above.
Aoshima et al. in view of Mori et al. and Okochi et al. do not disclose nucleating agent as presently claimed.
Uchida et al. disclose the use of nucleating agent during the process of making polyester (see paragraph 0038) where the nucleating agent includes aliphatic monocarboxylic acid amide (see paragraph 0029). The nucleating agent controls the crystallinity of the polyester (see paragraph 0026).
In light of the motivation for using aliphatic amide nucleating agent when making polyester disclosed by Uchida et al. as described above, it would have been obvious to one of ordinary skill in the art to use aliphatic amide nucleating agent in the method of producing polyester in Aoshima et al. in view of Mori et al. and Okochi et al. in order to produce polyester with desired crystallinity.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Aoshima et al. (JP 2006328375) in view of Mori et al. (JP 2018145221) and Okochi et al. (JP 2009299031) as evidenced by Wax-Emulsions as applied to claim 1 above, and further in view of Morimoto et al. (JP 2010195934). It is noted that the disclosure of Morimoto et al. is based on a machine translation of the reference in the action mailed 7/30/2025.
Regarding claim 20, Aoshima et al. in view of Mori et al. and Okochi et al. disclose method of making polyester as described above. Aoshima et al. disclose using titanium catalyst during polycondensation (see paragraphs 0067-0070).
Aoshima et al. in view of Mori et al. and Okochi et al. do not disclose nucleating agent as presently claimed.
Morimoto et al. disclose adding phosphorus compound with titanium catalyst when making polyester (see paragraph 0007). The phosphorus compounds including metal salts of phosphate, i.e. phosphoric acid ester metal salt (see page 30, lines 15-16). The phosphorus compound provides a polyester that has improved hue and thermal stability (see paragraph 0006). Although there is no disclosure that the phosphorus compound is a nucleating agent, given that the phosphorus compound is a phosphoric acid ester metal salt identical to that claimed, it is clear it would necessarily function as a nucleating agent.
In light of the motivation for using phosphoric acid ester metal salt when making polyester disclosed by Morimoto et al. as described above, it would have been obvious to one of ordinary skill in the art to use phosphoric acid ester metal salt in the method of producing polyester in Aoshima et al. in view of Mori et al. and Okochi et al. in order to produce polyester with improved hue and thermal stability.
Response to Arguments
Applicant’s amendment overcomes the claim objections, 35 USC 112(a), and 35 USC 112(b) rejections of record.
Applicant’s arguments have been fully considered but they are not persuasive.
Applicant argues that in contrast to the claims, none of Aoshima, Mori, Okochi, Hrach, Uchida or Morimoto disclose or suggest that the remarkable effects achieved in the present invention are achieved by selecting a nucleating agent that satisfies the limited condition of formula (1) as claimed.
It is agreed that neither Aoshima et al. or Mori et al. disclose nucleating agent or condition of formula (1) as claimed. In order to meet the nucleating agent, Okochi is used which discloses nucleating agents including polyolefin (see paragraphs 0023 and 0026) such as polyethylene wax (see paragraph 0074). Okochi et al. disclose that the nucleating agent can be added during esterification or during polycondensation (see paragraph 0070). The nucleating agent produces a crystalline polymer that has good chipping operability and where crystallization rate during cooling is improved (see paragraphs 0022 and 0080). Given that the polyester of Aoshima et al. has melting point Tm2 of 50-140 C (see paragraph 0049) and as evidenced by Wax-Emulsion, polyethylene wax as disclosed by Okochi et al. has melting point Tm1 of 90-140 C (see page 1, under Properties), Aoshima et al. in view of Mori et al. and Okochi et al. do satisfy the condition of formula, i.e. Tm1 - Tm2 is greater than 0 C to 40 C. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). While none of the references explicitly discloses selecting the nucleating agent to meet the claimed condition of formula (1), the fact remains that the prior art does meet this limitation and therefore all the limitations of claim 1.
Regarding Hrach et al., Uchida et al., and Morimoto et al., note that while each of these references do not disclose all the features of the present claimed invention, Hrach et al., Uchida et al., and Morimoto et al are each used as a teaching reference, and therefore, it is not necessary for these secondary references to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather each reference teaches a certain concept, and in combination with the primary reference, discloses the presently claimed invention.
Applicant argues that Okochi’s paragraphs 0020-0027 do not disclose selecting the nucleating agent to meet the claimed condition of formula (1). Further, applicant argues that Okochi describes several nucleating agents with no motivation to particularly select polyethylene wax or other nucleating agent with a melting point to achieve formula (1).
It is agreed that Okochi et al. does not disclose selecting a nucleating agent to meet the claimed condition of formula (1). However, Okochi does provide proper motivation to combine with Aoshima et al. It is noted that “obviousness under 103 is not negated because the motivation to arrive at the claimed invention as disclosed by the prior art does not agree with appellant' s motivation”, In re Dillon, 16 USPQ2d 1897 (Fed. Cir. 1990), In re Tomlinson, 150 USPQ 623 (CCPA 1966).
Further, while Okochi et al. may disclose nucleating agents other than polyethylene wax that may not meet formula (1), the fact remains that Okochi et al. does explicitly disclose the use of polyethylene wax which does have melting point that, in combination with Aoshima et al., meets formula (1). Given that the nucleating agents disclosed by Okochi et al. include polyethylene wax identical to that presently claimed, it would have been obvious to one of ordinary skill in the art to choose any nucleating agent in Okochi et al. including the claimed nucleating agent absent some evidence to the contrary. One of ordinary skill in the art would consider all the nucleating agents disclosed by Okochi et al. to be equivalent and interchangeable and equally suitable absent a showing of criticality by applicant of the claimed nucleating agent. In MPEP 2141, III, one of the rationales set forth as to “why” the claimed invention would be obvious is choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success. Therefore, given that Okochi et al. discloses a finite number of nucleating agents and given that the reference discloses all the nucleating agents being equally applicable, there would be a reasonable expectation of success when using polyethylene wax as set forth by the examiner. It is further noted the fact that “..the [prior art] patent discloses a multitude of effective combinations does not render any particular formulation less obvious.….”; See, e.g., Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) See also In re Corkill, 771 F.2d 1496, 1500 (Fed. Cir. 1985) (affirming obviousness rejection of claims in light of prior art teaching that “hydrated zeolites will work” in detergent formulations, even though “the inventors selected the zeolites of the claims from among ‘thousands’ of compounds”).
Applicant argues that the choice of Mori appears to substantially be based on hindsight gained from the claims of the present application since there is a wide variety of disclosures in the art of aliphatic or aromatic ratios in polyester and the breadth of possibilities common in the art should also discount the obviousness of the number of selections required to recreate the claims from the art without any guidance on the result-effective variables.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). In the present case, the combination of Aoshima et al. is not based on hindsight given that the motivation to combine is found in Mori et al. itself. Given that Aoshima et al. and Mori et al. are both drawn to methods of making aliphatic-aromatic polyester from aromatic dicarboxylic acid, aliphatic dicarboxylic acid, and aliphatic diol and given that Mori et al. provides proper motivation for combining the references, namely, to produce a polyester with good heat resistance, biodegradability, mechanical properties and moldability, the combination of Aoshima et al. with Mori et al. is proper.
Conclusion
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/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787