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 .
Claims 1-4 and 7-9 are pending.
Any objections and/or rejections made in the previous Office action and not repeated below are hereby withdrawn.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.
Claim Rejections - 35 USC § 103
Claims 1-4 and 7-9 stand 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) as set forth in the prior Office action on April 6, 2026.
Response to Arguments
Applicant’s arguments filed July 3, 2026 have been fully considered.
Applicant argues (page 5) that the Kato (US 2018/0307052 A1) relates to polycarbonate or polyester carbonate resins, not polyphosphonate resins as claimed. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In this case, Kato was solely relied upon to suggest the use of butyl p-toluene sulfonate as a deactivator in the resin of Suzuki (US 8,642,165 B2) and is not required to teach further limitations of claim 1.
Applicant argues (page 6) that Suzuki and Kato have different processes and the skilled artisan would not be motivated to, nor expect to even be able to, modify Suzuki in view of Kato. Applicant argues that Suzuki uses a physical purification process whereas Kato uses a chemical deactivator because the catalyst cannot be physically washed away. The examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Kato teaches that deactivators such as butyl p-toluene sulfonate are useful for quenching transesterification catalysts in order to produce resins with heat and hydrolytic stability. Both Kato and Suzuki use sodium hydroxide as the catalyst. As laid out in the previous Office action, even if 99.98% of the catalyst was removed by Suzuki’s purification process, one would still arrive at a sulfonate compound (deactivator) content that overlaps with the claimed sulfonate compound content when modifying the resin of Suzuki according to the teachings of Kato. It is reasonable to expect that the process of Suzuki leaves behind at least 0.02% of the catalyst despite the different processes used by Suzuki and Kato. One would therefore be motivated to combine the polyphosphonate resin of Suzuki with the deactivator of Kato in order to deactivate the residual catalyst and improve the heat and hydrolytic stability of the resin.
Applicant argues (page 6) that the instant data demonstrate unexpected results. Applicants can rebut a prima facie case of obviousness by showing the criticality of the range. See MPEP 2144.05 III. Applicant points to Comparative Examples 3-6. These examples show that a butyl p-toluene sulfonate or dodecyl p-toluene sulfonate content above or below the claimed range leads to heat and light discoloration resistance values outside of the claimed ranges. MPEP 716.02(b) states that appellants have the burden of explaining the data in any declaration they proffer as evidence of non-obviousness. Applicant has not explained why the properties produced by the compositions with intermediate sulfonate compound contents (Examples 1-6) are unexpected. In addition, evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support. See MPEP 716.02(d). Examples 1-6 are not commensurate in scope with claim 1 at least because claim 1 encompasses a broader range of polyphosphonate resins and sulfonate compounds and is open to other ingredients. Examples 1-6 use a bisphenol-A polyphosphonate resin prepared from bisphenol A and diphenyl phenyl phosphonate with a weight average molecular weight of 25,200 g/mol whereas claim 1 encompasses polyphosphonate resins of any molecular weight that may have co-monomers and/or different “Ar” groups. Examples 1-6 use only a butyl p-toluene sulfonate or dodecyl p-toluene sulfonate as the sulfonate compound whereas claim 1 encompasses any sulfonate compound reading on formula 2. In addition, claim 1 encompasses a range of 0.01-0.05 parts sulfonate compound, but Examples 1-6 only encompasses 0.02-0.04 parts of the sulfonate compound. If Applicant wishes to overcome the present rejection by showing unexpected results, Applicant must provide sufficient evidence to show that unexpected results would be obtained for all species and the full breath of ranges encompassed by the claims.
Applicant argues (page 6) that the data in Comparative Examples 3-6 demonstrates that modified Suzuki’s compositions do not necessarily have the same properties as the claimed compositions. 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. See MPEP 2144.05 III. Comparative Examples 3-6 demonstrate increased yellowing when the sulfonate compound content is above or below the claimed range. This result is consistent with Kato’s disclosure. Kato teaches using a sulfonate compound (butyl p-toluenesulfonate or hexyl p-toluenesulfonate) to deactivate the catalyst in order to retain heat stability and hydrolytic stability (Kato, [0117]). Kato teaches that when too little deactivator is used the deactivation effects are insufficient, but when too much deactivator is used the heat resistance of the resin is reduced and the obtained molded body is unfavorably easily colored (Kato, [0117]). Based on this teaching, one would expect worse heat resistance if too little or too much sulfonate compound is present and worse discoloration resistance if too much sulfonate compound is present. In view of Kato’s teachings, Applicant’s results are not unexpected. Applicant’s argument is not persuasive because the data is insufficient to show unexpected results or demonstrate that the sulfonate compound content was not recognized in the prior art as a result-effective variable.
Applicant argues (page 7) that the data in Comparative Examples 3-6 demonstrates that there is no reasonable expectation of success with respect to the ability to formulate a composition having the same properties as the claimed compositions. Evidence showing there was no reasonable expectation of success may support a conclusion of nonobviousness. In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976). See MPEP 2143.02.II. This argument is not persuasive because it does not articulate a reason why one would not have had a reasonable expectation of success. In this case, Kato provides motivation to optimize the sulfonate compound content into the claimed range and there is reasonable basis to conclude that the claimed properties would necessarily arise from this optimization.
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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/AUDRA J DESTEFANO/Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766
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