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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/27/2026 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.
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 filed on 03/27/2026 have been fully considered but they are not persuasive.
Applicant argues that Myer does not discloses mixtures of catalyst 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 for 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.
Applicant argues that reference Oh teaches diester of dicarboxylic acid and not the dicarboxylic acid. Applicant adds that Oh does not teach the required tertiary nitrogen base as catalyst.
Applicant’s arguments against Oh are not convincing, since reference Oh is utilized as a secondary reference to teach the required amount of CHDM corresponding to applicant’s aliphatic dihydroxy compound (B), with the appropriate motivation of altering the Tg of the polymer. The required cycloaliphatic diacid and the amine catalyst are taught by the primary reference Meyer, as discussed above. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
References Meyer and Oh continue to provide the support for maintaining the rejection.
Conclusion
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/S.M.D./
Examiner
Art Unit 1765
/DAVID J BUTTNER/Primary Examiner, Art Unit 1765 4/22/26
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