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 .
Claim Rejections - 35 USC § 112
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 4 and 17 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.
The claims depend on cancelled claim 4.
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.
Claims 1-3,5-11 and 16-20 rejected under 35 U.S.C. 103 as being unpatentable over Meyer WO2020/126806.
Meyer 12,173,150 is relied on as a translation.
Meyer claims (#1) a method of polymerizing aliphatic diol(s), cycloaliphatic diacid and diaryl carbonate in the same two step manner as applicant. The aliphatic diol may be isosorbide, cyclohexane dimethanol etc (claim #2). The patent’s “at least one” language in describing the diol suggests simultaneous use of isosorbide and a second diol such as cyclohexane dimethanol.
The first step is carried out in the presence of inorganic catalyst and/or organic catalyst. This catalyst(s) remain present during the second step according to Meyer’s examples.
The catalyst may be DBN, DBU (col 8 line 65-67) which qualify as applicant’s 1st catalyst. The catalyst may also be compounds of metals such as sodium, lithium, potassium, calcium or magnesium (col 8 line 56-59). Mixtures of catalysts (col 9 line 11) may be used. A combination of DBN or DBU with one of these metal compounds would have been obvious.
The amount of catalyst is 5-1000ppm (col 9 line 30). The “based on 1 mol of dicarboxylic acid” appears to be in error as ppm is already a weight ratio. Meyer’s example shows the ppm of catalyst is a weight ratio of catalyst/monomers. The 5-1000ppm would be 0.0005 to 0.10%. Given the metal is only a fraction of the entire catalyst’s weight, the wt% would be somewhat lower. It is clear Meyer’s wt% of metal overlaps applicant’s claimed range.
In regards to applicant’s dependent claims:
Meyer’s preferred cycloaliphatic diacid is 1,4 cyclohexane dicarboxylic acid – meeting applicant’s claims 6,7,18 and 20.
The diol may be a tetraspiro diol (col 7 line 33) – meeting applicant’s claim 16.
Claims 1-3,5-11 and 16-20 rejected under 35 U.S.C. 103 as being unpatentable over Meyer WO2020/126806 in view of Oh 2021/0301081.
Meyer applies as explained above.
Meyer suggests using a combination of isosorbide with CHDM as the polyestercarbonate’s diols, but gives no reason for doing so.
Oh exemplifies (#6) such a combination in forming polyestercarbonates. The inclusion of the CHDM alters Tg etc.
It would have been obvious to use a combination of isosorbide and CHDM in forming Meyer’s polyestercarbonate to adjust its physical properties.
Applicant's arguments filed 3/6/26 have been fully considered but they are not persuasive.
Applicant argues that Meyer does not disclose mixtures of catalysts and prefers amines instead of inorganic salts.
This is not convincing. Meyer does suggests using mixtures of catalysts (col 9 line 11). While Meyer may prefer amines, Meyer (col 8 line 54-59) clearly does suggest hydroxides, halides, carbonates of metals such as sodium, potassium, magnesium etc as catalysts.
Simply choosing to claim less preferred embodiments of the prior art is no reason patentability (MPEP2123 II.). There is no reason to believe applicant’s claimed process that includes metal salts does not suffer the negative effects predicted by Meyer.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID J BUTTNER whose telephone number is (571)272-1084. The examiner can normally be reached M-F 9-3pm.
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/DAVID J BUTTNER/Primary Examiner, Art Unit 1765 3/24/26