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 .
DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 6/22/26 has been entered.
Response to Amendment
The amendment is supported by the original disclosure.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The previous restriction and 103 rejections have been maintained, but the position has been modified due to the amendment.
Claim Rejections - 35 USC § 103
Claim(s) 11-14 is (are) rejected under 35 U.S.C. 103(a) as being unpatentable over Shirahama et al. (US 20180186927, listed on IDS and ISR) in view of Sato et al. (US 20230167232, eff. F/D:07/01/20).
As to claim 11, Shirahama (abs., claims, examples) discloses a mold (89, 100, Table 1) comprising a polyfurandicarboxylate (Ex.A2/A9,Table 2, [0282]) having a Mn of 42k produced via polymerizing dimethyl 2,5-furandicarboxylate with 1,4-cyclohexanedimethanol in presence of titanium tetrabutyltin catalyst. Shirahama discloses Furandicarboxylate and furandicarboxylic acid can be equivalently used for polymerization (38). The polyfurandicarboxylate can be further polymerized via solid state polymerization (Ex.A9). Shirahama does not teach the separation of the catalyst from the resultant polymerization mixture. Shirahama (125) teaches the catalyst is added at 1-300ppm or 1-500 ppm relative the resultant polyfurandicarboxylate. Shirahama (119-120) teaches titanium and germanium compounds are functional equivalent catalysts.
It is duly notified 1,4-cyclohexanedimethanol can be construed as a cyclic alkylene diol, as obviously recognized by one of ordinary skill in the art. The original disclosure does not exclude cyclic alkylene diols from alkylene diols.
As to the new limitation of claim 11, in the same area of endeavor of producing a mold (45, 52) comprising polyfurandicarboxylate, Sato (abs., claims, examples) discloses a method of producing polyfurandicarboxylate via furandicarboxylate or furandicarboxylic acid polymerized with 1,4-cyclohexanedimethanol (63-65). Sato (65) further discloses 1,4-cyclohexanedimethanol and 1,4-butanediol are functionally equivalent diols for producing polyfurandicarboxylate derived from biomass. Therefore, it would have been obvious to one of ordinary skill in the art to have replaced 1,4-cyclohexanedimethanol of Shirahama with 1,4-butanediol because of their equivalent functionality as diols for producing polyfurandicarboxylate for mold derived from biomass. These conditions appear to equally apply to both productions using similar phenoplast raw materials. This adaptation would have obviously yielded instantly claimed poly(butylene 2, 5-furandicarboxylate).
As to the new limitation of “consisting essentially of”, The transitional phrase "consisting essentially of” limits the scope of a claim to the specified materials or steps "and those that do not materially affect the basic and novel characteristic(s)" of the claimed invention. For the purposes of searching for and applying prior art under 35 U.S.C. 102, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, "consisting essentially of” will be construed as equivalent to "comprising." In this particular case, the instant specification actually indicates the organic polymer used for the composition can be polyethylenes or polycarbonates (0025, original claim 17). No exclusion of polycarbonates has been found in present invention. No evidence of basic and novel characteristics has been found, so "consisting essentially of” is construed as “comprising”.
Therefore, as to claim 11, it would have been obvious to one of ordinary skill in the art to have replaced the titanium catalyst in Ex.A2 with a germanium catalyst (1-300ppm or 1-500 ppm) because of their equivalent functionality as primary catalysts for producing polyfurandicarboxylate. These conditions appear to equally apply to both productions using similar catalysts. This adaptation would have obviously yielded instantly claimed invention. Furthermore, one of ordinary skill in the art would expect the resultant polyfurandicarboxylate would contain 1-300ppm or 1-500 ppm germanium, overlapping with the claimed range. It has been found that where claimed ranges overlap ranges disclosed by the prior art, a prima facie case of obviousness exists - see MPEP 2144.05.
As to claim 12, Shirahama is silent on the claimed amount of decarboxylated end groups in the polyester is less than 7 eq/t as determined by 1H-NMR.
In the same area of endeavor of producing a mold (45, 52) comprising polyfurandicarboxylate, Sato (abs., claims, examples) discloses a method of producing polyfurandicarboxylate via furandicarboxylate or furandicarboxylic acid polymerized with 1,4-cyclohexanedimethanol (63-65). Sato discloses (29, 109-115, claim 6) a method of controlling the content of decarboxylated end groups ≤10 eq/t (measured via the claimed 1H-NMR method) overlapping with the claimed range. It has been found that where claimed ranges overlap ranges disclosed by the prior art, a prima facie case of obviousness exists - see MPEP 2144.05. Sato (110) teaches by controlling the decarboxylated end group content, a polycondensation reaction followed by solid phase polymerization is likely to result in further increased viscosity. Sato (110) teaches the decarboxylated end group content in the polyfurandicarboxylate can be adjusted by devising the conditions of esterification or transesterification and polycondensation reactions as described in the polycondensation steps (92-96). To reduce the decarboxylated end group content, esterification or transesterification is preferably performed such that the reaction rate is higher. Specifically, the reaction time at lower temperature is preferably longer. Thus, the reaction rate of esterification can be increased, and by-products can be less likely to occur. The polycondensation reaction is preferably performed from a lower temperature at the start of the reduced pressure because of less tendency to produce by-products. Accordingly, by determining the decarboxylated end group content of the polyfurandicarboxylate manufactured by performing the esterification or transesterification and polycondensation reactions under the preferred conditions in the polycondensation steps (92-96), and selecting a polyfurandicarboxylate raw material having a desired content, a polyfurandicarboxylate raw material in which the decarboxylated end group content is a specific amount or less can be obtained.
Therefore, as to claims 11-12, it would have been obvious to one of ordinary skill in the art to have modified the process disclosed by Shirahama (EX.A2/A9) and applied the method of polycondensation to control amount of decarboxylated end groups in view of Sato, because the resultant process would yield reduced by-products and increased viscosity in the sequential solid-state polymerization.
The references are silent on the claimed light absorbance of claim 13. Accordingly, the examiner recognizes that not all of the claimed effects or physical properties are positively stated by the references. However, the references teach a polyfurandicarboxylate containing the claimed components in the claimed amounts of Mn, germanium content, decarboxylated end residue, and prepared by substantially similar processes. Therefore, one of ordinary skill would have a reasonable expectation that the claimed effects and physical properties, i.e. light absorbance, would necessarily flow from a process containing all of the claimed components in the claimed amounts. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. See In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977); In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990); see also MPEP § 2112.01(I)-(II). If it is the plicant’s position that this would not be the case: (1) applicant must provide evidence to support the applicant’s position, and (2) it would be the examiner’s position that the application contains inadequate disclosure on how to obtain the claimed effects or properties with only the claimed components in the claimed amounts by the disclosed or claimed process.
Allowable Subject Matter
The following is an examiner's statement of reasons for allowance:
Claim(s) 14 is(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.
Claim(s) 14 is(are) allowable over the closest prior art: Shirahama et al. (US 20180186927, listed on IDS and ISR) in view of Sato et al. (US 20230167232, eff. F/D:07/01/20).
The examiner agrees with applicant’s results and argument in 1.132. It is duly notified applicant’s merely show results of poly(ethylene 2, 5-furandicarboxylate) to defeat the rationale applied for the previous rejection.
Therefore, claims 14 is(are) allowable.
The examiner urges amendment of withdrawn claims for preparing claim rejoinder.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance”.
Response to Arguments
The argument for allowance of amended claims has been fully considered but not fully persuasive.
Applicant’s argument regarding the new limitation has been rendered moot. See above new ground rejection. The examiner agrees with applicant’s results and argument in 1.132. It is duly notified applicant’s merely show results of poly(ethylene 2, 5-furandicarboxylate) to defeat the rationale applied for the previous rejection.
Therefore, the previous restriction and 103 rejections have been maintained, but the position has been modified due to the amendment.
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 extension fee 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 date of this final action.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHANE FANG whose telephone number is (571)270-7378. The examiner can normally be reached on Mon-Thurs. 8am-6pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached on 571.572.1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHANE FANG/Primary Examiner, Art Unit 1766
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