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 .
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-11) in the reply filed on December 16, 2025 is acknowledged. Claims 12-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Objections
Claims 4-5 are objected to because of the following informalities: please remove the parentheses around the phrase “based on the total number of moles in the PE”. Appropriate correction is required.
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 1-11 are 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.
Regarding claim 1, the term “fine” in is a relative term which renders the claim indefinite. The term “fine” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Regarding claims 3-10, these claims recite “the polyester (PE)” or “the aromatic copolyester (P)” and should be amended to read “the at least one polyester (PE)” or “the at least one aromatic copolyester (P)” for proper antecedent basis.
Claims 2-11 are rejected for being dependent upon a previously rejected claim.
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.
Claim(s) 1-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jeol et al (WO 2018/224246) in view of Baker et al (US 5,579,573) with evidence provided by Baleno (US 2013/0112409) and Haider et al (US 5,216,073).
Regarding claims 1 and 6-10, Jeol teaches a process for preparing fine resin particles ([0015]). The process comprises:
Melt blending ([0014]):
a polymer (P) in an amount from 30-40 % by weight (Table 1)
and a polyester polymer (PE) in an amount from 60-70 % by weight (Table 1) comprising units derived from
at least one dicarboxylic acid component
at least one diol component wherein at least 2 mol % of the diol component is a poly(alkylene glycol) with the recited formula
processing the mixture into pellets or strands
optionally cooling the pellet or strands at a temperature below 80C
contacting said pellets of strands with water
recovering the particles
optionally drying the particles
optionally sieving the particles
However, Jeol teaches that the polymer (P) are aromatic polymers such as polyphenylenes and poly(aryl ether ketones) ([0014]) and not the recited aromatic copolyester (P).
Baker teaches that poly(aryl ether ketones), polyphenylenes and liquid crystal polyesters are all considered high temperature thermoplastic materials (col. 3, lines 35-40). Baker teaches that the liquid crystal polyester is sold under the Xydar brand (col. 3, lines 35-40) - which as evidenced by Baleno is an aromatic liquid crystal polyester made from 4-hydroxybenzoic acid, 4,4'-dihydroxy-1,1'-biphenyl, and terephthalic acid; modified with as isophthalic acid (Baleno [0066]) or the Vectra brand (col. 3, lines 35-40) – which as evidenced by Haider is a liquid crystal polyester made from 4-hydroxybenzoic acid, 6-hydroxy-2-naphthoic acid, terephthalic acid and biphenol (Haider, col. 3, lines 50-60)
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to use the aromatic polyester of Baker in place of the aromatic polymer of Jeol. One would have been motivated to do so because they are in the same class of high temperature thermoplastic materials, and therefore, would behave well in similar processes. It would have been nothing more that using known polymers in a typical manner to achieve predictable results. KSR v. Teleflex, 550 U.S. _, 82 USPQ2d 1385 (2007).
Regarding claim 2, Jeol teaches that the polyester is water-soluble ([0012]).
Regarding claim 3, Jeol teaches that the polyester further comprises recurring units from a difunctional monomer containing at least one SO3M group attached to an aromatic nucleus, wherein the functional groups are carboxy and wherein M is H or a metal ion selected from sodium, lithium and/or potassium ([00107]).
Regarding claim 4, Jeol teaches that the polyester unit comprises: ([00109])
At least one aromatic dicarboxylic acid component
At least one diol component
At least 1 mole % of poly(alkylene glycol) has the recited formula (I)
And at least one aromatic dicarboxylic acid containing at least one SO3M group attached to an aromatic nucleus, where M is H or a metal ion such as sodium, lithium and/or potassium
Regarding claim 5, Jeol teaches wherein the polyester comprises and isophthalic acid, a diol consisting of ethylene glycol, etc. and at least one aromatic dicarboxylic acid containing at least one SO3M group attached to an aromatic nucleus, where M is H or a metal ion such as sodium, lithium and/or potassium ([00110]).
Regarding claim 11, Jeol teaches that the melt-blending step takes place at a temperature above 250 C ([0017]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DORIS L LEE whose telephone number is (571)270-3872. The examiner can normally be reached M-F 8 am - 5 pm.
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DORIS L. LEE
Primary Examiner
Art Unit 1764
/DORIS L LEE/Primary Examiner, Art Unit 1764