DETAILED ACTION
Notice of Pre-AIA or AIA Status
Claim(s) 1-41 is/are pending.
Claim(s) 1-16 is/are rejected.
Claim(s) 17-41is/are withdrawn from consideration.
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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Response to Election/Restrictions
Claim(s) 17-41 is/are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 06/02/2025.
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.
The rejections under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, in the previous Office Action mailed 06/18/2025 have been withdrawn in view of the Claim Amendments filed 12/18/2025.
Claim Rejections - 35 USC § 103 (AIA )
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-3, 6-9, 11-14, 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over:
• HENNIG ET AL (US 2014/0350211),
in view of CRAWFORD ET AL (US 2013/0072628),
as stated in the previous Office Action mailed 12/18/2025.
HENNIG ET AL ‘211 discloses amorphous copolyesters, wherein the copolyesters are derived from:
(a) an acid component comprising:
(1) at least 35-100 mol% (preferably 45-98 mol%) of one or more aromatic dicarboxylic acid(s) or derivatives thereof -- for example:
• terephthalic acid (or anhydrides or esters thereof);
• 2,6-naphthalenedicarboxylic acid (or anhydrides or esters thereof);
• isophthalic acid (or anhydrides or esters thereof); etc.;
• mixtures thereof;
(b) a diol/polyol component comprising:
(1) 10-90 mol% (preferably 20-70 mol%) of an aliphatic diol (e.g., ethylene glycol, etc.);
(2) 10-90 mol% (preferably 30-80 mol%) of one or more branched or cycloaliphatic diol(s) (e.g., cyclohexanedimethanols, etc.) or polyol(s), wherein diols such as neopentyl glycol or 2-Methyl-1,3-propanediol are not required;
• mixtures thereof;
wherein the copolyesters are characterized by:
• a glass transition temperature (Tg) of 35-150 ºC (preferably 40-130 ºC);
• an acid number of 0.1-3 mg KOH/g;
• a hydroxy number of 0.1-15 mg KOH/g;
• a number-average molecular weight (Mn) of 9,000 to 35,000 g/mol;
• a weight-average molecular weight (Mw) of 30,000 to 100,000 g/mol;
• a viscosity number of 40-180 cm3/g.
(entire document, e.g., paragraph 0002, 0009-0010, 0015, 0018, 0020-0022, 0025-0038, 0040-0041, 0067, etc.)
CRAWFORD ET AL ‘628 discloses that it is well known in the art to utilize dimethyl esters of dicarboxylic acids (e.g., dimethyl esters of terephthalic acid (corresponding to the recited “dimethyl terephthalate”) in place of the dicarboxylic acids (e.g., terephthalic acid; 2,6-naphthalenedicarboxylic acid; etc.), in polyester synthesis to avoid decomposition or degradation of other monomers. (paragraph 0460-0461, 0463-0464, 0466, etc.)
Regarding claims 1-3, 6-9, 11-14, 16, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form amorphous copolyesters derived from: (a) a mixture of two or three known aromatic dicarboxylic acids (e.g., terephthalic acid or derivatives thereof; 2,6-naphthalenedicarboxylic acid or derivatives thereof; optionally isophthalic acid or derivatives thereof); and (b) a mixture of at least two known diols (e.g., ethylene glycol; cyclohexanedimethanol); in accordance with HENNIG ET AL ‘211 to form materials useful for coating or film applications.
Further regarding claim 1, since: (i) HENNIG ET AL ‘211 discloses copolyesters derived from a mixture of two or three dicarboxylic acids (or derivatives thereof) (e.g., terephthalic acid or derivatives thereof; 2,6-naphthalenedicarboxylic acid or derivatives thereof; optionally isophthalic acid or derivatives thereof); the dicarboxylic acid component (a) used to produce the amorphous copolyesters of HENNIG ET AL ‘211 can comprise a mixture containing more than 0 to 100 mol% terephthalic-based monomer and more than 0 to 100 mol% naphthalenedicarboxylic-based monomer, which overlaps the recited range of 20-60 mol% for terephthalate-based monomer and the recited range of 20-60 mol% for naphthalene-based monomer.
Further regarding claim 1, 9, 14, since it is well known in the art that naphthalene-based monomers tend to produce (co)polyesters with higher Tg values due to presence of condensed aromatic ring structures; one of ordinary skill in the art would have selected the relative amounts of terephthalic-based monomers (or derivatives thereof) and naphthalene-based monomers (or derivatives thereof) used as primary components in the acid component used to produce the amorphous copolyesters of HENNIG ET AL ‘211 in order to optimize the Tg of the copolyester for specific applications (e.g., lower relative amounts of naphthalene-based comonomers to produce lower Tg values for better impact and/or low temperature resistance, etc.; higher relative amounts of naphthalene-based comonomers to produce higher Tg values for better heat resistance, etc.).
Further regarding claims 6-9, 14, one of ordinary skill in the art would have utilized conventional derivatives (e.g., dimethyl esters, as suggested in CRAWFORD ET AL ‘628) of one or more aromatic dicarboxylic acids used to produce the amorphous copolyesters of HENNIG ET AL ‘211 in order to avoid degradation or decomposition of other monomers used in the copolyester synthesis.
Regarding claim 8-9, since it is well known in the art that isophthalate-based monomers tend to produce copolyesters with lower Tg values due to presence of the kinked or bent aromatic ring structure; one of ordinary skill in the art would have incorporated minor amounts of isophthalic acid-based monomers (or derivatives thereof) in the acid component used to produce the amorphous copolyesters of HENNIG ET AL ‘211 in order to adjust the Tg of the copolyester for specific applications (e.g., lower Tg values for better impact and/or low temperature resistance, etc.; higher Tg values for better heat resistance, etc.).
Regarding claim 13, since: HENNIG ET AL ‘211 disclose copolyesters with a viscosity number of 40-180 cm3/g; the Examiner has reason to believe that the copolyesters of HENNIG ET AL ‘211 have intrinsic viscosity values which at least partially read on the intrinsic viscosity recited in claim 13; therefore the Examiner has basis for shifting the burden of proof to applicant as in In re Fitzgerald et al., 205 USPQ 594. Additionally and/or alternatively, one of ordinary skill in the art would have selected the intrinsic viscosity (which is a function of molecular weight) of the copolyesters of HENNEG ET AL ‘211 depending on the performance properties (e.g., strength, coating characteristics, durability, etc.) required by specific end-uses. Additionally and/or alternatively, one of ordinary skill in the art would have selected the melt viscosity of the copolyesters of HENNEG ET AL ‘211 in order to facilitate product formation by specific methods (e.g., extrusion coating, etc.).
* * *
Claim(s) 1-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over:
• DEAN ET AL (US 6,132,868) or DEAN ET AL (US 6,197,856);
in view of GLASS TRANSITION TEMPERATURE OF PET;
and in view of CRAWFORD ET AL (US 2013/0072628),
as stated in the previous Office Action mailed 12/18/2025.
DEAN ET AL ‘868 and DEAN ET AL ‘856 disclose amorphous copolyesters, wherein the copolyesters are derived from:
(a) a dicarboxylic acid component comprising:
(1) at least 50 mol% of one or more aromatic dicarboxylic acid(s) or ester derivatives thereof -- for example:
• terephthalic acid (or dimethyl terephthalate);
• naphthalenedicarboxylic acid (or esters thereof);
• mixtures thereof;
(2) 5-50 mol% of isophthalic acid (or esters thereof);
(b) a glycol component comprising:
(1) 50-95 mol% of ethylene glycol;
(2) 5-50 mol% of 1,3- or 1,4-cyclohexanedimethanol;
(3) up to about 10 mol% of additional glycol(s) (e.g., diethylene glycol, etc.), wherein diols such as neopentyl glycol or 2-Methyl-1,3-propanediol are not required;
wherein the copolyesters are characterized by:
• a glass transition temperature (Tg) which is similar to or slightly lower than polyethylene terephthalate (PET);
• an inherent viscosity (IV) of 0.4-0.7;
(DEAN ET AL ‘868, entire document, e.g., line 11-20, col. 1; line 56, col. 3 to line 15, col. 3; line 33, col. 3 to line 28, col. 4; line 58, col. 8 to line 8, col. 9; line 16-33, col. 9; line 1-8, col. 10; etc.) (see corresponding portions of DEAN ET AL ‘856)
GLASS TRANSITION TEMPERATURE OF PET discloses that it is well known in the art that polyethylene terephthalate (PET) resins generally have Tg values of about 69-85 ºC. (page 1, etc.)
CRAWFORD ET AL ‘628 discloses that it is well known in the art to utilize dimethyl esters of dicarboxylic acids (e.g., dimethyl esters of terephthalic acid (corresponding to the recited “dimethyl terephthalate”) in place of the dicarboxylic acids (e.g., terephthalic acid; 2,6-naphthalenedicarboxylic acid; etc.), in polyester synthesis to avoid decomposition or degradation of other monomers. (paragraph 0460-0461, 0463-0464, 0466, etc.)
Regarding claims 1-10, 16,it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form amorphous copolyesters derived from: (a) a mixture of three known aromatic dicarboxylic acids (e.g., terephthalic acid or derivatives thereof; 2,6-naphthalenedicarboxylic acid or derivatives thereof; isophthalic acid or derivatives thereof); and (b) a mixture of at three known diols (e.g., ethylene glycol; cyclohexanedimethanol; diethylene glycol); in accordance with DEAN ET AL ‘868 or DEAN ET AL ‘856 to form materials useful for various applications having Tg values comparable to conventional PET resins (about 69-85 ºC, as evidenced by GLASS TRANSITION TEMPERATURE OF PET).
Further regarding claim 1, since: (i) DEAN ET AL ‘868 or DEAN ET AL ‘856 disclose copolyesters derived from a mixture of three dicarboxylic acids (or derivatives thereof) (e.g., terephthalic acid or derivatives thereof; naphthalenedicarboxylic acid or derivatives thereof; optionally, isophthalic acid or derivatives thereof); dicarboxylic acid component (a) used to produce the amorphous copolyesters of DEAN ET AL ‘868 or DEAN ET AL ‘856 can comprise a mixture containing more than 0 to 95 mol% terephthalic-based monomer and more than 0 to 95 mol% naphthalenedicarboxylic-based monomer, which overlaps the recited range of 20-60 mol% for terephthalate-based monomer and the recited range of 20-60 mol% for naphthalene-based monomer.
Further regarding claim 1, 9, 14, since it is well known in the art that naphthalene-based monomers tend to produce (co)polyesters with higher Tg values due to presence of condensed aromatic ring structures; one of ordinary skill in the art would have selected the relative amounts of terephthalic-based monomers (or derivatives thereof) and naphthalene-based monomers (or derivatives thereof) used as primary components in the dicarboxylic acid component (a) used to produce the amorphous copolyesters of DEAN ET AL ‘868) or DEAN ET AL ‘856 in order to optimize the Tg of the copolyester for specific applications (e.g., lower relative amounts of naphthalene-based comonomers to produce lower Tg values for better impact and/or low temperature resistance, etc.; higher relative amounts of naphthalene-based comonomers to produce higher Tg values for better heat resistance, etc.).
Regarding claims 6-9, one of ordinary skill in the art would have utilized known napthalenedicarboxylic acids (or derivatives thereof) (e.g., 2,6-naphthalenedicarboxylic acid, etc., as suggested in CRAWFORD ET AL ‘628) as the naphthalenedicarboxylic acid in the one or more aromatic dicarboxylic acids used to produce the amorphous copolyesters of DEAN ET AL ‘868) or DEAN ET AL ‘856.
Regarding claims 6-9, 14, one of ordinary skill in the art would have utilized conventional derivatives (e.g., dimethyl esters, as suggested in CRAWFORD ET AL ‘628) of one or more aromatic dicarboxylic acids used to produce the amorphous copolyesters of DEAN ET AL ‘868) or DEAN ET AL ‘856 in order to avoid degradation or decomposition of other monomers used in the copolyester synthesis.
Regarding claim 11, one of ordinary skill would selected the acid number and hydroxy number of the amorphous copolyesters of DEAN ET AL ‘868 or DEAN ET AL ‘856 in order to provide the desired balance between receptivity to dyes, surface treatments, and/or coatings (because the presence of controlled amounts of acid groups and/or hydroxy groups can enhance receptivity to dyes, surface treatments, and/or coatings) and resistance to moisture and/or chemicals (because polyesters with high acid and hydroxy numbers can be undesirably reactive to water and other compounds).
Regarding claim 12, one of ordinary skill in the art would have selected the number-average and weight-average molecular weight of the amorphous copolyesters of DEAN ET AL ‘868 or DEAN ET AL ‘856 in order to provide materials with the desired performance properties (e.g., tensile strength, stiffness or flexibility, extrusion temperature, flow or softening properties, etc.) for specific applications.
Regarding claim 13, since: DEAN ET AL ‘868 or DEAN ET AL ‘856 disclose copolyesters with an inherent viscosity (IV) of 0.4-0.7; the Examiner has reason to believe that the copolyesters of DEAN ET AL ‘868 or DEAN ET AL ‘856 have intrinsic viscosity values which at least partially read on the intrinsic viscosity recited in claim 13; therefore the Examiner has basis for shifting the burden of proof to applicant as in In re Fitzgerald et al., 205 USPQ 594. Additionally and/or alternatively, one of ordinary skill in the art would have selected the intrinsic viscosity (which is a function of molecular weight) of the copolyesters of DEAN ET AL ‘868 or DEAN ET AL ‘856 depending on the performance properties (e.g., strength, durability, etc.) required by specific end-uses. Additionally and/or alternatively, one of ordinary skill in the art would have selected the melt viscosity of the copolyesters of DEAN ET AL ‘868 or DEAN ET AL ‘856 in order to facilitate product formation by specific methods (e.g., melt extrusion, etc.).
Regarding claim 14, one of ordinary skill in the art would have selected the relative combined amount of terephthalate-based units and ethylene glycol-based units in the amorphous copolyesters of DEAN ET AL ‘868 or DEAN ET AL ‘856 in order to optimize the performance properties (e.g., Tg, melt properties, etc.) for specific applications. Additionally and/or alternatively, since the amorphous copolyesters of DEAN ET AL ‘868 or DEAN ET AL ‘856 can contain up to 95 mol% (up to 0.95 molar fraction) terephthalic-based units and 50-95 mol% (0.5-0.95 molar fraction) ethylene glycol-based units, amorphous copolyesters of DEAN ET AL ‘868 or DEAN ET AL ‘856 can have a combined ethylene glycol molar fraction and dimethyl terephthalate molar fraction which at least partially read on the combined ethylene glycol molar fraction and dimethyl terephthalate molar fraction recited in claim 14.
Regarding claim 15, one of ordinary skill in the art would have selected the combined amount of isophthalic-based units and diethylene glycol-based units in the amorphous copolyesters of DEAN ET AL ‘868 or DEAN ET AL ‘856 in order to optimize the performance properties (e.g., Tg, melt properties, etc.) for specific applications. Additionally and/or alternatively, since the amorphous copolyesters of DEAN ET AL ‘868 or DEAN ET AL ‘856 can contain up to 10 mol% (up to 0.1 molar fraction) diethylene glycol-based units and 5-50 mol% (0.05-0.50 molar fraction) isophthalic-based units, amorphous copolyesters of DEAN ET AL ‘868 or DEAN ET AL ‘856 can have a combined diethylene glycol molar fraction and isophthalic acid molar fraction which at least partially read on the combined diethylene glycol molar fraction and isophthalic acid molar fraction recited in claim 15.
Response to Arguments
Applicant's arguments filed 12/18/2025 have been fully considered but they are not persuasive.
(A) Applicant argues that “Neither of the primary references disclose or render obvious a copolyester resin made from a naphthalene-based monomer and a terephthalic-based monomer, each in an amount of at least 20 mol percent and at most 60 mol percent” because “none of the examples of any of the primary references uses both a naphthalene-based monomer and a terephthalic-based monomer in a single example, let alone with each being used in the range of molar percentages claimed.” However, the teachings of a reference are not limited solely to the working Examples in said reference, but encompass the reference as a whole.
MPEP 2123 Rejection Over Prior Art’s Broad Disclosure Instead of Preferred Embodiments [R-07.2022]
I. PATENTS ARE RELEVANT AS PRIOR ART FOR ALL THEY CONTAIN
“The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)).
A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v.Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). See also Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005) (reference disclosing optional inclusion of a particular component teaches compositions that both do and do not contain that component); Celeritas Technologies Ltd. v. Rockwell International Corp., 150 F.3d 1354, 1361, 47 USPQ2d 1516, 1522-23 (Fed. Cir. 1998) (The court held that the prior art anticipated the claims even though it taught away from the claimed invention. “The fact that a modem with a single carrier data signal is shown to be less than optimal does not vitiate the fact that it is disclosed.”).
See also MPEP § 2131.05 and § 2145, subsection X.D., which discuss prior art that teaches away from the claimed invention in the context of anticipation and obviousness, respectively.
II. NONPREFERRED AND ALTERNATIVE EMBODIMENTS CONSTITUTE PRIOR ART
Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). “A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.” In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994) (The invention was directed to an epoxy impregnated fiber-reinforced printed circuit material. The applied prior art reference taught a printed circuit material similar to that of the claims but impregnated with polyester-imide resin instead of epoxy. The reference, however, disclosed that epoxy was known for this use, but that epoxy impregnated circuit boards have “relatively acceptable dimensional stability” and “some degree of flexibility,” but are inferior to circuit boards impregnated with polyester-imide resins. The court upheld the rejection concluding that applicant’s argument that the reference teaches away from using epoxy was insufficient to overcome the rejection since “Gurley asserted no discovery beyond what was known in the art.” Id. at 554, 31 USPQ2d at 1132.). Furthermore, “[t]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed….” In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004).
In the present instance, HENNIG ET AL ‘211 broadly discloses amorphous copolyesters with a glass transition temperature (Tg) of preferably 40-130 °C (which overlaps the recited Tg range of about 65-95 °C), wherein the dicarboxylic acid component (a) used to produce the amorphous copolyesters of HENNIG ET AL ‘211 can comprise a mixture containing: (i) more than 0 to 100 mol% terephthalic-based monomer; and (ii) more than 0 to 100 mol% naphthalenedicarboxylic-based monomer; which overlaps the recited range of 20-60 mol% for terephthalate-based monomer and the recited range of 20-60 mol% for naphthalene-based monomer. Similarly, DEAN ET AL ‘868 and DEAN ET AL ‘856 broadly discloses amorphous copolyesters with a glass transition temperature (Tg) which is similar to or slightly lower than the Tg of PET (which is about 69-85 ºC) (thereby overlapping the recited Tg range of about 65-95 °C), wherein the dicarboxylic acid component (a) used to produce the amorphous copolyesters of DEAN ET AL ‘868 or DEAN ET AL ‘856 can comprise a mixture containing: (i) more than 0 to 95 mol% terephthalic-based monomer; and (ii) more than 0 to 95 mol% naphthalenedicarboxylic-based monomer; which overlaps the recited range of 20-60 mol% for terephthalate-based monomer and the recited range of 20-60 mol% for naphthalene-based monomer.
Applicant has not provided probative evidence of unexpected results and/or criticality commensurate in scope with the present claims from the recited ratio of naphthalene-based monomer and terephthalate-based monomer.
(B) Applicant argues that “one of ordinary skill in the art would have had no reason to modify the compositions selected by Hennig et al. at all, let alone in such a profound way as to combine a naphthalene-based monomer and a terephthalic-based monomer in a single copolyester resin, let alone with each being present in an amount of at least 20 mol percent and at most 60 mol percent.” However, as discussed in detail above, HENNIG ET AL ‘211 at least broadly discloses amorphous copolyesters with: (i) ranges of Tg values; and (ii) ranges for terephthalate-based monomer content; and (iii) ranges of naphthalate-based content; which fully or substantially overlap the recited ranges recited in the present claims. Therefore, modification of the teachings of HENNIG ET AL ‘211 is not required to meet the limitations of the present claims, but rather merely routine experimentation within the scope of one of ordinary art utilizing the disclosure of HENNIG ET AL ‘211. Applicant has not provided probative evidence of unexpected results and/or criticality commensurate in scope with the present claims from the recited ratio of naphthalene-based monomer and terephthalate-based monomer.
(C) Applicant argues that “for the statements in the Office Action regarding the impact of
naphthalene-based monomer on a copolyester resin's Tg, the applicants submit that this cannot be done in a vacuum.” However, it is well known in the art that polyethylene naphthalate (PEN) has a significantly higher glass transition temperature compared to polyethylene terephthalate (PET), and that the increase in Tg is attributed to the presence of naphthalene rings (as evidenced by “Structure and Physical Properties of Naphthalene Containing Polyesters I. Structure of Poly(butylene 2,6-naphthalate) and Poly(ethylene 2,6-naphthalate) as Studied by Solid State NMR Spectroscopy”), which have a substantially more rigid structure compared to terephthalate rings. Furthermore, the relationship between the presence of naphthalene units and increased Tg is well-established in the art, as evidenced by BHIMARAJ ET AL (US 2008/0113189), which provides evidence that it is well known in the art that the Tg of PET-type copolyesters can be manipulated by the incorporation of naphthalene units, with the Tg typically increasing with increasing amounts of naphthalene units. Therefore, contrary to Applicant’s assertions, the general effect of naphthalate-type units on the Tg of PET-type copolyesters is a well-recognized and well-established phenomena for one of ordinary skill in the art, which allows one of ordinary skill in the art to manipulate the Tg (e.g., to raise the Tg of a copolyester above PET homopolymer) of the HENNIG ET AL ‘211 copolyesters by incorporating appropriate amounts of naphthalate comonomers using merely routine experimentation. Applicant has not provided persuasive evidence to the contrary. Additionally, Applicant has not provided probative evidence of unexpected results and/or criticality commensurate in scope with the present claims from the recited ratio of naphthalene-based monomer and terephthalate-based monomer.
(D) Applicant argues that “the uses contemplated by the Dean et al. primary references are as binder fibers for nonwoven fabrics, textiles, and industrial yarns, and composites. See Abstract. Accordingly, one of ordinary skill in the art would not have modified the teachings of Dean et al. to develop a copolyester resin that has the Tg and other properties needed to function as a metal can coating, such as excellent adhesion, chemical resistance, mechanical resistance and flexibility.” In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., a copolyester which serves as a metal can coating, etc.) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). In the present instance, the claims are directed to a copolyester per se, with no limitations regarding intended use or products containing said polyester. As discussed above in detail, DEAN ET AL ‘868 and DEAN ET AL ‘856 at least broadly discloses amorphous copolyesters with: (i) ranges of Tg values; and (ii) ranges for terephthalate-based monomer content; and (iii) ranges of naphthalate-based content; which fully or substantially overlap the recited ranges recited in the present claims. Therefore, modification of the teachings of DEAN ET AL ‘868 and DEAN ET AL ‘856 is not required to meet the limitations of the present claims, but rather merely routine experimentation within the scope of one of ordinary art utilizing the disclosure of DEAN ET AL ‘868 and DEAN ET AL ‘856. Applicant has not provided probative evidence of unexpected results and/or criticality commensurate in scope with the present claims from the recited ratio of naphthalene-based monomer and terephthalate-based monomer.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
TOGAWA ET AL (US 2011/0003100) and LIM ET AL (US 2020/0062954) and FUJIMORI ET AL (US 6,160,085) and RAO ET AL (US 2012/0071625) disclose PET-based copolyesters containing diethylene glycol repeat units.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 Vivian Chen (Vivian.chen@uspto.gov) whose telephone number is (571) 272-1506. The examiner can normally be reached on Monday through Thursday from 8:30 AM to 6 PM. The examiner can also be reached on alternate Fridays.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Callie Shosho, can be reached on (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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April 2, 2026
/Vivian Chen/
Primary Examiner, Art Unit 1787
.
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