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 .
Response to Amendment
The new grounds of rejection set forth below are necessitated by applicant’s amendment filed on May 11, 2026. In particular, claim 1 has been amended to further limit step d) and also elucidate the fine particle size. Also, claims 15 and 16 are newly presented. This combination of limitations was not present at the time of the previous office action. Thus, the following action is properly made final.
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 in which the polyester is dissolved to recover the polymeric particles ([0021])
recovering the particles in which the particle size ranges from 0.5-500 microns ([0015])
optionally drying the particles
optionally sieving the particles (pages 4-5)
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]).
Allowable Subject Matter
Claims 15-16 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The prior art fails to teaches the content of the residual polyester.
Response to Arguments
The claim objections set forth in paragraph 3 and the 35 USC 112 rejections set forth in paragraph 5 of the office action mailed on February 10, 2026 have been withdrawn in light of applicant’s amendment filed on May 11, 2026
Applicant's arguments filed May 11, 2026 have been fully considered but they are not persuasive for the reasons set forth below:
Applicant’s argument: It would not have been obvious to look to Baker because Baker is non analogous art.
Examiner’s response: While Baker is drawn to a method for fabricating an undercoated chip electrically interconnected to a substrate which is certainly in a different category than the process for preparing particles as discussed by Joel, however, the teaching that is drawn from Baker for the above rejection is not specific to the fabrication of the undercoated. The teaching that Baker is used for is the teaching that poly(aryl ether ketones), polyphenylene and liquid crystal polyester are all considered high temperature thermoplastic materials (col. 3, lines 35-40). As such, the teaching that Baker provides the evidence that these three polymers belong to the same class of polymers and, therefore, behave the same way in the process steps elucidated by the Joel reference. As such, the art is appropriate and analogous as the information provided is about similar polymer resins.
Applicant’s argument: It would not have been obvious to look at Baker because one of ordinary skill would have no reasonable expectation of success. As one of ordinary skill would have known that the melt blending of the at least one aromatic copolyester and the at least on polyester polymer would very likely lead to irreversible intermixing of the polymer chains.
Examiner’s response: There is no teaching away or suggestion in either reference that there would have been no reasonable expectation of success. Applicant’s argument of irreversible intermixing is mere conjecture and has no evidence in the prior art references to support this argument.
Applicant’s argument: The examiner appears to use hindsight reconstruction.
Examiner’s response: The only teachings used in the above prior art rejection is gleaned from the prior art references themselves. No teachings from applicant’s specification for each limitation of the claim nor for the motivation to combine have been used in constructing the rejection and because of this, no hindsight reconstruction has been used.
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.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther can be reached at 571-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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DORIS L. LEE
Primary Examiner
Art Unit 1764
/DORIS L LEE/Primary Examiner, Art Unit 1764
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