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 .
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 1-2, 4-11 and 16-21 are rejected under 35 U.S.C. 103 as being unpatentable over Meyer WO2020/126806 (present on IDS) in view of Oh US 2021/0301081. Meyer US12,173,150 is relied on as a translation.
Meyer claims (#1) a method of polymerizing aliphatic diol(s), cycloaliphatic diacid where the molar ratio of all aliphatic diols to all cycloaliphatic diacid is 1:0.6 to 1:0.05, and diaryl carbonate in the same 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.
Meyer suggests using a combination of isosorbide with CHDM as the polyestercarbonate’s diols, but gives no reason for doing so.
Analogous art Oh exemplifies (#6) such a combination in forming polyestercarbonates, where the dihydroxy compound mixture comprises 90 mol% of isosorbide and 10 mol% of CHDM, meeting the claimed requirement. The inclusion of the CHDM alters Tg etc. (paragraph 103).
It would have been obvious to use a combination of isosorbide and CHDM in forming Meyer’s polyestercarbonate to adjust its physical properties.
The diol may be a tetraspiro diol (Meyer col 7 line 33) – meeting applicant’s claim 17.
Meyer notes that the optimal molar ratio of diols to diacids can be selected to be 1:0.8 to 1:1.2 or 1.0.9 to 1:1.1 depending on the purity of feedstock (col 11, lines 17-20), which read on the requirements of claims 20 and 21.
Response to Arguments
Applicant's arguments and Declaration of Dr. Alexander Meyer under 37 C.F.R § 1.132 filed on 07/21/2026 have been fully considered.
Applicant submits that the catalyst mixture is critical for the formation of a polyestercarbonate in a direct synthesis, according to the claimed process. Applicant provides an Expert Declaration from co-inventor Dr. Alexander Meyer that illustrates the criticality of the catalyst mixture of a tertiary nitrogen base and said salts of alkali/alkaline earth metals in step (ii) and also illustrates that Applicant's claimed process that includes metal salts does not suffer the negative effects predicted by Meyer as expected in the Office Action.
In the declaration Dr. Meyer has presented additional experimental results where in Inv. 1, which incorporates a mixture of catalyst (100 ppm DMAP + 30 ppm Li) shows improved relative viscosity vs the comparative examples where either 100 ppm DMAP (C1) or 30 ppm Li (C2) are utilized.
While the examiner acknowledges applicant’s experimental data to demonstrate the criticality of catalyst mixture for step (ii), the new data is found to be unpersuasive. Since inventive Inv. 1 utilizes a total of 130ppm catalyst amount while the C1 and C2 utilize significantly lower levels of catalyst, and thus it is difficult to assess that the relative viscosity differences stem from the difference in catalyst concentration or due to presence of catalyst mixture.
Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In the instant case lower catalyst concentration resulting in lower polymer viscosity would be an expected behavior, and expected beneficial results are evidence of obviousness. Applicant has not established a nexus between the submitted evidence and the claimed invention. With respect to formation of a colorless polycarbonate, since a colorless polycarbonate is not a required feature of the instant specification (Summary of invention), therefore color of the polycarbonate is not given any patentable weight.
Applicant’s arguments and the new data as provided in the declaration are found to be unconvincing and references Meyer and Oh continue to provide the support for utilizing a catalyst mixture and thus maintaining the rejection.
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.
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/S.M.D./
Examiner
Art Unit 1765
/JOHN M COONEY/Primary Examiner, Art Unit 1765
