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 § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 13-15 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Oh, WO2020013507A1. (US 2021/0301081 is relied on as a translation).
Oh exemplifies (#6) melt polymerizing 0.9mol isosorbide (applicant’s “A”), 0.1mol of CHDM (1,4-cyclohexanedimethanol, applicant’s “B”), 0.1mol DPCD and 0.9mol diphenyl carbonate (applicant’s diaryl carbonate) in the presence of a catalyst. The DPCD is a diester of cyclohexane dicarboxylic acid (paragraph 83).
Although applicant’s process utilizes the diacid instead of the diester, the same final product results (see structure of paragraph 16).
The dihydroxy compound mixture comprises 90 mol% of isosorbide and 10 mol% of CHDM, meeting the claimed requirement.
Oh teaches that the polyester carbonate is molded into articles such as eyeglass frames (paragraphs 78 and 81).
Claims 13-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Oh US2016/0152767.
Oh exemplifies (#C1, para [0072]) melt polymerization, corresponding to step (i), where the polymerization mixture comprises 0.63mol isosorbide (applicant’s “A”), 0.07mol of CHDM (1,4-cyclohexanedimethanol, applicant’s “B”), 0.3mol DPCD and 0.4mol diphenyl carbonate (applicant’s diaryl carbonate) and a catalyst. The DPCD is a diester of cyclohexane 1,4-dicarboxylic acid (paragraph 7).
Although applicant’s process utilizes the diacid instead of the diester, the same final product results (see structure of paragraph 47).
The dihydroxy compound mixture comprises 90 mol% of isosorbide and 10 mol% of CHDM, meeting the claimed requirement.
Oh teaches that polyester carbonates is molded into sheets for testing (paragraph 77). Various articles can be made of the polyestercarbonate (paragraph 82).
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 1-19 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
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.
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 catalyst may be DBN, DBU (col 8 line 65-67), hydroxides of metals (col 8
line 56) and mixtures (col 9 line 11) in amounts of 5-1000ppm (col 9 line 30) which
meets applicant’s claims 3,10,11,12 and 16.
The diol may be a tetraspiro diol (col 7 line 33) – meeting applicant’s claim 17.
Response to Arguments
Applicant's arguments filed on 9/10/2025 have been fully considered but they are not persuasive.
The foreign priority translation removes WO2020/126806 as prior art under 102(a)(1). The reference remains available under 102(a)(2) as its filing date and priority dates are before that of applicant’s priority date of 6/19/20.
Applicant argues that example 13 somehow illustrates that applicant’s process using a diacid results in a product different containing oligomers which is different from Oh’s products using a diester. Applicant fails to identify what in example 13 should be compared against to support this argument.
Oh’s cited examples have a ratio of dihydroxy to DCPD of (0.63 + 0.07):0.3 and (0.9 + 0.1):0.1 which are within applicant’s range. The final polymer would also be created via initial oligomer formation as intermediates before formation of the final polyester carbonate. Note that Oh’s DCPD diester provides exactly the same unit as applicant’s cyclohexane dicarboxylic acid as shown by Oh 2016/0152767’s formula 1.
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269
777
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Greyscale
When the secondary diol CHDM is included, the repeating units would be expected to be:
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195
910
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Greyscale
The relative amounts of each repeat unit are of course dependent on the molar ratios of each starting monomer. Since Oh’s final polyester carbonate structure derived from a diester cannot be distinguished from the applicant’s polyester carbonate derived from a diacid, both references Oh (US 081 and US 767) continue to provide the foundation for maintaining rejection of claims 13-15.
The terminal disclaimer overcomes the obviousness double patenting rejections.
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
/DAVID J BUTTNER/Primary Examiner, Art Unit 1765 10/28/25