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 § 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 1-13 and 16-20 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.
Claim 1’s “R1 is a carboxyl end group or a hydroxyl end group” appears to be chemically impossible as this would result in a terminal group of:
O
II
HOC-OCH2CH2O- or HO-OCH2CH2- at the end of the polymer chain.
It is not seen how such groups could possibly be present based on applicant’s reactants.
Claim 1’s “R2 is a carboxyl end group” appears to be chemically impossible as this would result in a terminal group of:
O O
II II
-PhCCOH at the end of the polymer chain.
It is not seen how such a group could possibly be present based on applicant’s reactants.
It is unclear what qualifies as an under-esterified PTA oligomer in claim 1. An oligomer from ethylene glycol and TPA in mole ratio of below 1:1? Below 2:1? Applicant’s arguments (page 10 of 12/23/25 arguments) indicate adding PTA (ie terephthalic acid) and ethylene glycol somehow qualifies as the “under-esterified” oligomer that is added. In fact, neither PTA nor ethylene glycol are oligomers. Neither are esters. This further renders the term “under-esterified PTA oligomer” indefinite.
It is unclear what “an esterifier” is in claims 9,10 and 20 and where this esterifier is present in relation to steps i) and ii) in claim 1. Is this esterifier the “reaction zone” of claim 1?
Claims 9,10 and 20 requires under-esterified PTA oligomer + PTA + ethylene glycol be added to the rBHET. This appears to be inconsistent with the specification as rBHET is either added to PTA + EG (fig 1B) or added to the oligomer (fig 1A). Note that the examiner will not enter any amendment to claim this alternative process of employing PTA + EG instead of claim 1’s PTA oligomer.
Applicant's arguments filed 12/23/25 have been fully considered but they are not persuasive.
Applicant argues that “carboxyl” and “hydroxyl” are well known terms in chemistry. Applicant apparently agrees that the “exotic” structures depicted by the Examiner would not be chemically possible. However, these exotic structures are exactly what applicant’s claims require. Claim 1’s calls for the oligomer
PNG
media_image1.png
364
715
media_image1.png
Greyscale
When replacing R1 with carboxyl, the structure becomes:
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media_image2.png
220
636
media_image2.png
Greyscale
When replacing R1 with hydroxyl, the structure becomes:
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media_image3.png
220
636
media_image3.png
Greyscale
When replacing R2 with carboxyl, the structure becomes:
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media_image4.png
207
345
media_image4.png
Greyscale
O
II
As readily seen, when R1 is carboxyl, an improbable HOC-O- at the end
of the oligomer chain is required. When R1 is hydroxyl, an improbable HO-O- is required.
While R2 being hydroxyl is certainly plausible, R2 being carboxyl results in the unlikely
--Ph-C-COH
II II
O O
Applicant is precluded from arguing these are obvious errors with obvious corrections given applicant did not recognize these errors in the response to first office action. Any changes to the definitions of R1 and R2 without explicit support in the original specification will be considered new matter.
Applicant argues paragraph 81 of the specification explicitly defines under-esterification as feeding rBHET with PTA and ethylene glycol into a smaller esterifier to reduce residence time and limit the extent of PTA esterification reaction.
This doesn’t explain to what extent limited. Is any oligomer having some amount of -COOH groups considered under-esterified?
Simply stating example 1’s oligomer having 815meq/g does not qualify and oligomers of 1240-4220meq/g do qualify as “under-esterified” does not provide the metes and bounds of “under-esterified”. Does such an oligomer of 900meq/g -COOH qualify? Secondly, such limitations are not read into the claims – especially when the specification never provides an unequivocal definition of “under-esterified”. Even more confusingly, applicant’s paragraph 81 appears to consider a -COOH content 868meq/g for the oligomer to be within the scope of the invention.
Applicant failed to amend claim 9 to clarify the intent of the claim. The claim does not identify where the “esterifier” is located in relation to the elements of claim 1. Given an “”esterifier” (ie a reactor for conducting esterification) is a reaction zone, it is unclear whether the “esterifier” and “reaction zone” are referring to the same element.
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 DAVID J BUTTNER whose telephone number is (571)272-1084. The examiner can normally be reached M-F 9-3pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID J BUTTNER/Primary Examiner, Art Unit 1765 1/22/26