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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 May 13, 2026 has been entered.
Claims 1-4 and 6-12 are pending as amended on May 13, 2026. Claims 1-2 have been amended for clarity.
Any objections and/or rejections made in the previous Office action and not repeated below are hereby withdrawn.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 May 13, 2026 have been fully considered.
The examiner disagrees that the amendment to claim 1 overcomes the rejections under 35 U.S.C. 112(b) laid out in the previous Office action. It continues to be unclear what is included in the terephthalic acid content of line 3 and the aliphatic diol content of line 6. The final copolyetherester comprises residues of terephthalic acid (from terephthalic acid and polybutylene terephthalate (PBT)), isophthalic acid, diethylene glycol, monoethylene glycol, and 1,4-butane diol (from PBT). Because the copolyetherester comprises terephthalic acid residues derived from both the monomer terephthalic acid and PBT, it is unclear if the terephthalic acid included in the “total amount of terephthalic acid and isophthalic acid” includes terephthalic acid residues from PBT. Similarly, because 1,4-butane diol is an aliphatic diol, it is unclear if 1,4-butane diol residues from PBT are included in the aliphatic diol content. The examiner has suggested language to clarify claim 1 in the 35 U.S.C. 112(b) section below.
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.
Regarding claim 1, it continues to be unclear what is included in the terephthalic acid content of line 3 and the aliphatic diol content of line 6. The final copolyetherester comprises residues of terephthalic acid (from terephthalic acid and polybutylene terephthalate (PBT)), isophthalic acid, diethylene glycol, monoethylene glycol, and 1,4-butane diol (from PBT). Because the copolyetherester comprises terephthalic acid residues derived from both the monomer terephthalic acid and PBT, it is unclear if the terephthalic acid included in the “total amount of terephthalic acid and isophthalic acid” includes terephthalic acid residues from PBT. Similarly, because 1,4-butane diol is an aliphatic diol, it is unclear if 1,4-butane diol residues from PBT are included in the aliphatic diol content. In addition, the phrase “the total copolyetherester” in line 9 lacks antecedent basis. This issue can be corrected by using the phrase “the low melt copolyetherester” in line 9.
The examiner suggests considering product-by-process language as a means of clarifying the content of each component of the copolyetherester. An example of suitable claim language is shown below. This language is supported by claim 1 and the instant examples. If applicant were to use similar language, claim 2 should be amended to further limit claim 1 or cancelled.
1. A low melt copolyetherester obtained by a first reaction and a second reaction, wherein:
in the first reaction, a mixture of terephthalic acid and isophthalic acid undergoes an esterification reaction with an aliphatic diol to form a first reaction product;
the molar ratio of terephthalic acid and isophthalic acid in the first reaction is 80:20 to 98:2;
the aliphatic diol in the first reaction comprises 2 to 65 mol % of monoethylene glycol and 25 to 98 mol % of diethylene glycol;
in the second reaction, the first reaction product undergoes a polycondensation reaction with polybutylene terephthalate to form the low melt copolyetherester;
the quantity of polybutylene terephthalate in the second reaction is 25 to 50 weight% based on the low melt copolyetherester mass; and
the low melt copolyetherester has a melting point between 90 °C and 170 °C.
Claims 2-3 and 6-12 are rejected because they depend from claim 1 and incorporate all of the limitations of claim 1, including those that are indefinite.
Claim 3 contains the limitation “having a composition of 35 to 45 weight% polybutylene terephthalate.” This limitation is indefinite because it is unclear if claim 3 limits the content of the polybutylene terephthalate (PBT) comprised in the copolyetherester of claim 1 (PBT used as a macromonomer) or limits the content of PBT within a composition formed by adding PBT to the copolyetherester. If using the suggested claim 1 language above, this issue can be corrected by amending claim 3 to read “The low melt copolyetherester according to claim 1, wherein the quantity of polybutylene terephthalate in the second reaction is 35 to 45 weight% based on the total copolyetherester mass.”
Claim 4 contains the limitation “having a composition of 30 to 50 mol% diethylene glycol.” This limitation is indefinite because it is unclear if claim 4 limits the content of diethylene glycol comprised in the copolyetherester of claim 1 (diethylene glycol used as a monomer) or limits the content of diethylene glycol within a composition formed by adding diethylene glycol to the copolyetherester. If using the suggested claim 1 language above, this issue can be corrected by amending claim 4 to read “The low melt copolyetherester according to claim 1, wherein the aliphatic diol in the first reaction comprises 30 to 50 mol% diethylene glycol.”
Claim 11 contains the limitation “used as a hot melt adhesive in textile industry.” This limitation causes uncertainty as to whether the claimed invention is a method of using a low melt copolyetherester, a copolyetherester that has been used as a hot melt adhesive, or a copolyetherester that is capable of being used as a hot melt adhesive.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection €, a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 2 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 2 contains the limitation “wherein the low melt copolyetherester is made by esterifying a mixture of terephthalic acid and isophthalic acid in a mol ratio of 80:20 to 98:2 with monoethylene glycol and diethylene glycol.” Claim 2 depends from claim 1. Claim 1 requires that the copolyetherester comprises 25-50 weight% polybutylene terephthalate. Claim 2 does not require all of the limitations of claim 1 because a copolyetherester produced by the process recited in claim 2 would not comprise the polybutylene terephthalate component required by claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Allowable Subject Matter
Claims 1-4 and 6-12 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) and 35 U.S.C. 112(d), set forth in this Office action.
A statement for the reasons for the indication of allowable subject matter is laid out in the 2/20/2026 Office action. See pages 5-8.
Conclusion
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at (571)272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AUDRA J DESTEFANO/Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/Supervisory Patent Examiner, Art Unit 1766
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