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 6-12 are pending as amended on November 6, 2025. Support for amended claims 1, 3-4, 6, and 8 is found in original claims 1, 3-4, 6, and 8. Claim 5 is canceled.
The new grounds of rejection set forth below were necessitated by the amendments revising the clarity of claim 1 and claim 2. Therefore, this action is properly made final.
Any objections and/or rejections made in the previous Office action and not repeated below are hereby withdrawn.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 November 6, 2025 have been fully considered.
Applicant argues (page 6) that all claim rejections under 35 U.S.C. 112 have been overcome. The examiner disagrees that the amendments clarify the basis of the weight % polybutylene terephthalate in claim 1. In view of page 2, lines 24-26 of the specification, the copolyetherester of claim 1 could be interpreted as being derived from a composition comprising 25-50 weight % of polybutylene terephthalate based on the mass of the copolyetherester or derived from a composition comprising 25-50 weight % of polybutylene terephthalate based on the overall quantity of acid. The examiner also disagrees that the amendments clarify the “1 to 10 mol %” of claim 2 because it is still unclear what component is being limited to 1 to 10 mol %. The rejections under 35 U.S.C. 112 have been updated below to provide further clarification and in light of the amendments.
Applicant argues (page 9) that one would not have been motivated to add the monoethylene glycol of Gilbert (Effect of chemical structure on crystallization rates and melting of polymers: Part 1. Aromatic polyesters, Polymer, 1972, 13, 327-332) to the composition of Kinkelin (US 5, 869,594) because Kinkelin focuses on developing low-melting, fast-crystallizing products (Kinkelin, col. 1, lines 59-61), while Gilbert teaches monoethylene glycol leads to higher melting points and slower crystallization. This argument is persuasive because, although one would have understood the impact of adding monoethylene glycol based on Gilbert, neither of Kinkelin and Gilbert provide motivation for increasing the melting point of the polyester of Kinkelin. In addition, neither of Gilbert and Kinkelin suggest the claimed ratio of isophthalic acid and terephthalic acid and the claimed content of monoethylene glycol.
Claim Rejections - 35 USC § 112
Claims 1-4 and 6-12 are 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 is drawn to “a low melt copolyetherester based on terephthalic acid, isophthalic acid and aliphatic diols.” Claim 1 further states that “the terephthalic acid is present in an amount of 80 to 98 mol % based on the overall acid quantity, the diol content is 2 to 65 mol % of monoethylene glycol and 25 to 98 mol % diethylene glycol, and the low melt copolyetherester further comprises 25 to 50 weight % polybutylene terephthalate.” Specification page 2, lines 24-26 states that “25 to 50 weight % polybutylene terephthalate is used based upon overall quantity/proportion of acid.” Claim 1 is indefinite because, in light of the specification, the basis of the weight % of the polybutylene terephthalate is unclear. The weight % of polybutylene terephthalate could be based on the total copolyetherester mass or on the quantity of acid. It is also unclear if the terephthalic acid derivatives included in the polybutylene terephthalate component contribute to the overall acid quantity of line 3. It is unclear if the 1,4-butane diol from which polybutylene terephthalate is derived is included in “the diol” of lines 5-6 because the term “the diol” has insufficient antecedent basis. Line 2 refers to “aliphatic diols,” but this term also encompasses the 1,4-butane diol from which polybutylene terephthalate is derived.
In overcoming this rejection, Applicant could consider explicitly stating the basis for the weight % of polybutylene terephthalate in line 10, clarifying what is included in the “overall acid quantity” of line 4, and/or correcting the antecedent basis issue associated with “the diol” of line 5.
Claims 2-4 and 6-12 are rejected by virtue of dependency on claim 1.
Claim 2 contains the limitation “a 1 to 10 mol % mixture of monoethylene glycol and diethylene glycol.” It is unclear what is meant by a mixture that is 1 to 10 mol %. If Applicant is attempting to further limit the content of monoethylene glycol, this limitation does not include all of the limitations of claim 1 because the lower limit of the monoethylene glycol range recited in claim 2 is 2%. If Applicant is attempting to narrow the combined content of monoethylene glycol and diethylene glycol within the aliphatic diol component, this limitation does not include all of the limitations of claim 1 and is not supported by the application as filed because there is no record in the application of a copolyetherester where monoethylene glycol and diethylene glycol together account for only 1 to 10 mol % of the diol.
Allowable Subject Matter
Claims 1-4 and 6-12 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
As of the date of this office action, no prior art references, whether considered individually or in combination have been identified to anticipate or render obvious the claimed invention under 35 U.S.C. §102 or §103. In particular, no record has been found of a copolyetherester comprising derivatives of terephthalic acid, isophthalic acid, monoethylene glycol, diethylene glycol, and 1,4-butane diol (or polybutylene terephthalate) in the claimed ratios.
The closest prior art of record is Li (US 2014/0256875 A1), Buxbaum (US 4,154,918), Ishii (US 4,659,615 A), and Gilbert (Effect of chemical structure on crystallization rates and melting of polymers: Part 1. Aromatic polyesters, Polymer, 1972, 13, 327-332; included with previous Office action).
Li teaches low-melting-point polyester hot-melt adhesives (Li, Abstract). Example 3 of Li has a melting point of 112 °C (Li, Table 1). The copolyester is derived from 0.8 moles terephthalic acid, 0.15 moles isophthalic acid, 0.05 moles 1,6-adipic acid, 1.35 moles ethylene glycol (reading on monoethylene glycol), 0.091 moles of 1,4-butane diol, and 0.36 moles of diethylene glycol (Li, Table 1). Units derived from 1,4-butane diol correspond to the polybutylene terephthalate contribution. This acid monomer composition corresponds to 80 mol % terephthalic acid and 20 mol % isophthalic acid. The diol content excluding 1,4-butane diol is 21 mol % diethylene glycol and 79 mol % monoethylene glycol.
Li differs from the claimed copolyetherester becuase Example 3 is derived from too much monoethylene glycol and too little diethylene glycol and 1,4-butane diol. The amount of 1,4-butane diol present is too small to satisfy the claimed polybutylene terephthalate content. In addition, the broader teaching that a molar ratio of ethylene glycol to the C3-C6 diol (corresponding to 1,4-butane diol and diethylene glycol) is 1:0.25-0.43 (Li, [0009]) limits the combined molar amount of 1,4-butane diol and diethylene glycol to a maximum of 30 mol% (0.43/1.43=0.3). The copolyester of Li therefore cannot simultaneously satisfy the claimed polybutylene terephthalate and diethylene glycol contents.
Buxbaum teaches a copolyester that is suitable as a hot-melt adhesive (Buxbaum, Abstract). The copolyester melting temperatures are above 150 °C (Buxbaum, col. 3, lines 5-9). This range overlaps with the claimed range of between 90 and 170 °C. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I. The copolyester preferably contains 40-45 mol% units of terephthalic acid, 10-5 mol% units of isophthalic acid, 12.5-25 mol% of units of ethylene glycol (reading on monoethylene glycol), and 37.5-25 mol% of units of diethylene glycol (Buxbaum, col. 1, lines 48-52). This composition corresponds to 80-90 mol% terephthalic acid and 10-20 mol% isophthalic acid based on the overall acid content and an aliphatic diol content that is 25-50 mol% ethylene glycol and 25-75 mol% diethylene glycol.
Buxbaum does not teach units derived from 1,4-butanediol or polybutylene terephthalate and, therefore, does not teach the claimed polybutylene terephthalate content.
Ishii teaches a hot melt adhesive comprising a copolyester film (Ishii, Abstract). The copolyester has a melting point in the range of 160 °C to 200 °C (Ishii, Abstract). This range overlaps with the claimed range of between 90 and 170 °C. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I. The copolyester has an acid composition of 80-97 mol% terephthalic acid and 20-3 mol% isophthalic acid and a diol component of 60-85 mol% 1,4-butanediol and 15-40 mol% diethylene glycol (Ishii, Abstract).
Ishii does not teach units derived from monoethylene glycol and the therefore does not teach the claimed diol composition.
Gilbert teaches poly(ethylene terephthalate) and poly(tetramethylene terephthalate) (reading on polybutylene terephthalate) polyesters (Gilbert, page 328, Table 1). Gilbert further teaches that poly(ethylene terephthalate) has a higher melting temperature than poly(tetramethylene terephthalate) (Gilbert, page 328, Table 1) and crystallizes more slowly than poly(tetramethylene terephthalate) (The polymers containing the longer sections of aliphatic units… crystallize more readily, Gilbert, page 331, column 1, last 3 lines).
Based on the teachings of Gilbert, one of ordinary skill in the art would have understood that compared to butane diol, monoethylene glycol raises the melting point and slows crystallization of the resulting polyester; however, one would not have been motivated to adjust the relative amounts of 1,4-butanediol and ethylene glycol of Li, Buxbaum, or Ishii to satisfy instant claim 1 because Li, Buxbaum, and Ishii do not provide motivation for further optimizing the polyester melting points.
Conclusion
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 AUDRA DESTEFANO whose telephone number is (703)756-1404. The examiner can normally be reached Monday-Friday 9-5.
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/AUDRA J DESTEFANO/Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766