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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 February 25, 2026 has been entered.
Claims 1-4 and 7-9 are pending as amended on February 2, 2026. Support for amended claim 1 is found in original claims 5 and 6. Claims 5 and 6 are canceled.
Any objections and/or rejections made in the previous Office action and not repeated below are hereby withdrawn. The text of those sections of Title 35, U.S. Code not included in the action can be found in a prior Office action.
Response to Arguments
Applicant’s arguments filed February 2, 2026 have been fully considered.
Applicant’s arguments, see page 5, with respect to the rejection(s) of claims 1-4 and 9 under 35 U.S.C. 103 over Ko (US 2012/0259058 A1) in view of Hayashi (EP 0738579) have been fully considered and are persuasive. Ko in view of Hayashi does not fairly suggest the yellowness index differences of modified amended claim 1. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Suzuki (US 8,642,165 B2) in view of Kato (US 2018/0307052 A1).
Of Applicant’s arguments regarding the rejection under 35 U.S.C. 103 over Lens (US 2018/0187084 A1) in view of Kato, Application’s arguments with respect to Kato are relevant to the current rejection over Suzuki in view of Kato.
Applicant argues (page 6, paragraph 5) that Kato does not specify an actual amount of sulfate used relative to a polyphosphonate resin and convers an extremely large number of distinct possibilities, thereby obviating a conclusion of obviousness. Applicants may rebut a prima facie case of obviousness based on optimization of a variable disclosed in a range in the prior art by showing that the claimed variable was not recognized in the prior art to be a result-effective variable. E.I. Dupont de Nemours & Company v. Synvina C.V., 904 F.3d 996, 1008, 128 USPQ2d 1193, 1202 (Fed. Cir. 2018). See MPEP 2144.05.III.C. In this case, Kato shows that the amount of sulfonate compound is a result effective variable for balancing heat resistance and unfavorable coloring with catalyst deactivation (Kato, [0117]). Kato teaches that increasing the amount of deactivator (sulfonate compound) can have the unfavorable effects of reducing the heat resistance of the resin and causing the molded body to be easily colored. Kato also teaches that decreasing the amount of deactivator too much can cause the deactivation effected to become insufficient. Based on the teaching of Kato, one of ordinary skill would have understood that increasing the amount of deactivator enables deactivation, but including too much deactivator has negative impacts on resin heat resistance and coloring. One would have been motivated to optimize the amount of sulfonate compound in order to balance catalyst deactivation with heat resistance and discoloration. In addition, Suzuki in view of Kato teaches a sulfonate content that encompasses the claimed range, as laid out in the rejection below. Applicant’s argument is not persuasive because Applicant has not shown that the amount of sulfonate compound was not recognized in the prior art to be a result-effective variable.
Claim Rejections - 35 USC § 103
Claims 1-4 and 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Suzuki (US 8,642,165 B2) in view of Kato (US 2018/0307052 A1, cited with 6/16/2025 Office action).
Regarding claims 1, 3-4, and 7, Suzuki teaches a polyphosphonate resin with the chemical formula shown below (P-5, Suzuki, col. 13, line 40 and col. 52, lines 21-40):
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154
393
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The polyphosphonate of Suzuki reads on a polyphosphonate resin comprising a repeat unit represented by formula 1,
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111
345
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where Ar is an unsubstituted C6 aryl group. Suzuki’s polyphosphonate only comprises repeating units represented by formula 1 and end groups, reading on the polyphosphonate resin comprises about 100 mol% of the repeat unit represented by Formula 1 based on 100 mol% of all repeat units (claim 3).
Suzuki further teaches a weight average molecular weight (Mw) measured by GPC (Suzuki, col. 51, lines 25-33) of 40,100 g/mol (Suzuki, col. 52, lines 39-40). A Mw of 40,100 falls within the claimed range about 20,000 to about 100,000 g/mol (claim 4).
Suzuki does not teach about 0.01 to about 0.05 parts by weight of a sulfonate compound represented by Formula 2.
However, Kato teaches that sulfonate compounds reading on Formula 2 are useful for quenching transesterification catalysts in order to produce resins with heat and hydrolytic stability. Kato teaches a method for producing thermoplastic resins (Kato, Title). Like Suzuki, Kato teaches transesterification catalysts including potassium hydroxide (Kato, [0108-0109]; Suzuki, col. 52, line 24). Kato further teaches that in order to retain heat and hydrolytic stability, the catalyst may be removed or deactivated after completion of the polymerization reaction and that a known method for deactivating a catalyst is by adding an acidic substance, such as butyl p-toluenesulfonate (Kato, [0117]). Kato teaches that the deactivator is used in a molar amount that is 0.01 to 50 times higher than the amount of the catalyst (Kato, [0117]). Below this range deactivation effects unfavorably become insufficient while above this range, the heat resistance of the resin is reduced and the obtained molded body is unfavorably easily colored (Kato, [0117]). Kato teaches that the deactivator may be kneaded immediately after completion of the polymerization reaction or after the resin has been pelletized (Kato, [0118]).
Given the disclosure of Kato, one of ordinary skill would have recognized that residual catalyst can negatively impact the heat resistance and coloring of thermoplastic resins. One would have also understood that inclusion of an acidic substance such as butyl p-toluenesulfonate would be useful for deactivating residual potassium hydroxide in the polymer.
Suzuki utilizes a large amount of potassium hydroxide catalysts during the polymerization process. Example P-5 uses 0.1 mol of potassium hydroxide (100 mL of 1 mol/L potassium hydroxide solution) for the polymerization of approximately 0.1 mol of monomers (50 mmol bisphenol A, 1 mmol benzyl chloride triphenyl phosphoium, and 50 mmol phenylphosphobic dichloride) (Suzuki, col. 52, lines 22-26). After the polymerization reaction, Suzuki teaches decanting and removing the aqueous phase, and rinsing the organic phase with water several times. The organic phase is then diluted with methylene chloride and poured into methanol followed by filtering and recovering the polymer (Suzuki, col. 52, lines 31-36). One of ordinary skill would expect a substantial portion of the potassium hydroxide to be removed in this process because the potassium hydroxide is originally provided in an aqueous solution. However, because a large amount of potassium hydroxide is used in the polymerization process, it is likely that some residual potassium hydroxide would remain in the resin.
Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have combined the polyphosphonate resin of Suzuki with the deactivator of Kato in order to deactivate residual potassium hydroxide. One would have been motivated to make this combination in order to produce a resin with improved heat and hydrolytic stability.
Including butyl p-toluenesulfonate in the polyphosphonate of Suzuki reads on a polyphosphonate resin composition comprising a polyphosphonate resin and a sulfonate compound represented by Formula 2:
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105
210
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where R1 is a C4 alkyl group and n is an integer of 0.
With respect to the weight ratio between the polyphosphonate resin and the sulfonate compound, Kato teaches that the deactivator is used in a molar amount that is 0.01 to 50 times higher than the amount of the catalyst (Kato, [0117]). In example P-5 of Suzuki, 16.2 g of the polymer is obtained (Suzuki, col. 52, line 37). Based on the disclosure of Suzuki, the final polyphosphonate resin comprises no more than 0.1 mol of potassium hydroxide because this is the amount of potassium hydroxide used in the process, but one would expect the composition to contain far less potassium hydroxide as a result of the washing steps. Suzuki therefore suggests a broad range of deactivator contents based on 100 parts by weight resin. If no catalyst is removed, Suzuki in view of Kato teaches adding 0.22-1142 g of deactivator (0.1*0.01*228.31=0.228 and 0.1*50*228.31=1141.55), corresponding 0.01-70.5 parts by weight based on 16.2 g polymer. If 99.98% of the catalyst is removed, Suzuki in view of Kato suggests up to 0.014 parts by weight deactivator. These ranges suggest that Suzuki in view of Kato teaches sulfonate compound contents that overlap with the claimed range in situations where up to 99.98% of the catalyst is removed. Modified Suzuki does not, however, specify the narrower range of 0.01 to about 0.05 parts by weight of the sulfonate compound based on 100 parts by weight of a polyphosphonate resin.
However, Kato shows that the amount of sulfonate compound is a result effective variable for balancing heat resistance and unfavorable coloring with catalyst deactivation (Kato, [0117]). Kato teaches that increasing the amount of deactivator can have the unfavorable effects of reducing the heat resistance of the resin and causing the molded body to be easily colored. Kato also teaches that decreasing the amount of deactivator too much can cause the deactivation effected to become insufficient. Based on the teaching of Kato, one of ordinary skill would have understood that increasing the amount of deactivator enables deactivation, but including too much deactivator has negative impacts on resin heat resistance and coloring. Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have optimized the amount of the sulfonate compound into the claimed range of about 0.01 to about 0.05 parts by weight relative to 100 parts by weight of the polyphosphonate resin. One would have been motivated to optimize the amount of sulfonate compound in order to balance catalyst deactivation with heat resistance and discoloration. The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.).
Suzuki is silent to the claimed yellowness index difference (ΔYI) as calculated by Equation 1, ΔYI as calculated by Equation 2, and flame retardancy. Suzuki exemplifies a transmission ratio of 88% (Suzuki, Table 3, Comparative example 1) for a sample of P-5 with a thickness of 1.0 mm (Suzuki, col. 51, lines 1-3), but the thickness of the sample is less than the instantly claimed 2.5 mm.
However, modified Suzuki teaches a substantially similar composition prepared in a substantially similar manner to the instant examples. Modified Suzuki teaches a composition comprising 100 parts by weight of a bisphenol-A polyphosphonate with a Mw of 40,100 g/mol and 0.01 to 0.05 parts by weight of butyl p-toluene sulfonate. Instant examples 1-3 utilize 100 parts by weight of a bisphenol-A polyphosphonate with a Mw of 25,200 g/mol and 0.02 to 0.04 parts by weight of butyl p-toluene sulfonate (instant Table 1). Both examples are prepared by molding at 200 °C (Suzuki, col. 54, lines 59-61; instant specification [79]). Therefore, it would be reasonable to expect the properties of the prior art composition to be similar to those of instant examples 1-3 (instant Table 1) including a ΔYI as calculated by Equation 1 of 2.6-3.6, ΔYI as calculated by Equation 2 of 4.3-5.7 (claim 1), a flame retardancy of V-0 (claim 7), and a light transmittance of about 88% (claim 8). Regarding composition claims, if the composition is the same, it must have the same properties (see MPEP § 2112.01, II.).
Regarding claim 2, modified Suzuki teaches the polyphosphonate composition according to claim 1. Suzuki derives the polyphosphonate resin from monomers comprising bisphenol-A and phenyl phosphonic dichloride (Suzuki, col. 52, lines 21-26). While not derived from a diarylaryl phosphonate, the structure of the resulting polyphosphonate reads on claim 2 because the polyphosphonate structure is the same as a polymer of bisphenol-A and a diarylaryl phosphonate. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
To the extent that the process limitations in a product-by-process claim do not carry weight absent a showing of criticality, the reference discloses the claimed product in the sense that the prior art product structure is seen to be no different from that indicated by the claims. The prior art teaches the same product as the instant claims, regardless of the process by which the prior art product has been produced. The burden is shifted to Applicant to provide factually supported evidence which demonstrates the contrary.
Regarding claim 9, modified Suzuki teaches the polyphosphonate composition according to claim 1. Suzuki further teaches that the resins were molded into lenses (Suzuki, col. 53, lines 40-49), reading on a molded article manufactured from the polyphosphonate resin composition according to claim 1.
Conclusion
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/AUDRA J DESTEFANO/Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766