tDETAILED 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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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.
Claims 2, 5-7, 11-12, and 14 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.
Claims 2, 5-6, 11-12, and 14 are unclear because they list preferable embodiments/examples in the claim after stating a broader limitation, which is indicated by the word “preferably.” It is unclear if the limitation is to be limited only to that preferred embodiment, if the preference is only an example of the limitation, or is an optional limitation; such as in claim 6 which states the phosphoric acid ester is “preferably obtainable by reacting phosphoric acid with an aromatic diol compound.” Also, claims 11 and 12 state ppm ranges where the claim states a broader range followed by a preferable narrower range, which renders the claims indefinite. Therefore the metes and bounds of the claims are unclear.
Claims 6 and 7 have an improper Markush grouping, both claims use the word “comprises”, which is an open-ended phrase, followed by the phrase “one or more compounds selected from the group consisting of” which indicates a closed set and contradicts the word “comprises.” Examiner recommends deleting the word “comprises” and replacing with the word “is”.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), 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.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], 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 13 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 13 is not further limiting of claim 1 insofar as it is directed to a chemical composition whereas claim 1 recites a process.
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.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim 13 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Edwards, C. US-4721817A.
Regarding claim 13, Edwards teaches a catalyst system comprising an aluminum compound and a phosphorous containing acid, abstract. The phosphorous compound is preferably selected as aryl dihydrogen phosphate, Col. 7 line 56. The catalyst system is for the process of reacting alkylene oxide with alkanol, abstract. The preamble recites an intended use of the catalyst system, Edwards’ catalyst system anticipates the compositional limitations of the claim in the body, and therefore anticipates the claim despite being for a different intended use.
Statements in the preamble reciting the purpose or intended use of the claimed invention which do not result in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art do not limit the claim and do not distinguish over the prior art. See, e.g., In re Otto, 312 F.2d 937, 938, 136 USPQ 458, 459 (CCPA 1963); In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997) and cases cited therein, as it has been held that the recitation of a new intended use for an old product does not make a claim to that old product patentable. In re Schreiber, 44 USPQ2d 1429 (Fed. Cir. 1997). See also MPEP § 2111.02, §2112.02 and 2114-2115.
Claim 13 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lindall et al, US20020087027A1.
Regarding claim 13, Lindall teaches a catalyst composition suitable for use as a catalyst for the preparation of an ester comprising an aluminum compound and an organophosphorous compound, abstract. The organophosphorous compound is selected as an aryl phosphate, ¶[0021], with preferred compounds being aryl polyethylene glycol phosphates ¶[0023].
The preamble recites an intended use of the catalyst system, Lindall’s catalyst system anticipates the compositional limitations of the claim in the body, and therefore anticipates the claim, despite being for a different intended use.
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claims 1-6, 8-11, 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Kolstad et al, US 20170015781 A1.
Regarding claims 1-2, 5, Kolstad teaches a process for producing a polyester comprising reacting 2,5-furandicarboxylic acid and ethylene glycol (reads on claim 2) in an esterification reaction, followed by a polycondensation reaction ¶¶[0014, 0034]. The polycondensation reaction comprises a catalyst which can be selected as aluminum acetate, aluminum carbonate, or aluminum oxide, ¶[0047], which reads on claim 5. Other compounds such as stabilizing agents may be added prior to the polycondensation reaction, such as aryl phosphates ¶[0043]. It would be obvious to one of ordinary skill in the art before the effective filing date of the invention to have selected the aluminum catalyst and the aryl phosphate stabilizer because Kolstad clearly states they are suitable for the polycondensation of the ester formed from the 2,5-FDCA and ethylene glycol reaction.
The fact that Kolstad discloses numerous types of metal catalysts and phosphorous compounds which can be suitably selected for forming the polyester does not render any particular combination of catalyst and phosphorous compound less obvious. A reference is available for all that it teaches to a person of ordinary skill in the art. Merck & Co., Inc. v. Biocraft Laboratories, Inc. 874 F.2d 804, 807 (Fed. Cir. 1989).
Regarding claim 3, Kolstad teaches the molar amount of 2,5-FDCA to ethylene glycol is 1:1.01 to 1:1.15, ¶0034], which overlaps with the claimed range. It would be 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. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Regarding claim 4, Kolstad teaches the esterification reaction is performed at a temperature of 160-240°C, ¶[0037], and the polycondensation temperature is 245-270°C, ¶[0045], both of which overlap with the claimed temperature ranges.
Regarding claim 6, Kolstad teaches the stabilizer can comprise aryl phosphate compounds ¶[0043], which includes phenol moieties.
Regarding claim 8, Kolstad teaches the aluminum catalyst and the phosphorous compound may be added to the ester composition after esterification, ¶¶[0048, 0043], and that it is only optional to add them both before the esterification reaction.
Regarding claims 9 and 10, Kolstad teaches the polyester undergoes a crystallization process after polycondensation, ¶¶[0019, 0051], and also a solid-state polymerization reaction to increase the molecular weight, abstract and ¶[0049], where the temperature for the SSP is performed at Tm-40°C, ¶[0049], which falls within the claimed temperature range.
Regarding claim 11, Kolstad teaches in an example that the antimony trioxide catalyst is added at an amount of 314ppm antimony ¶[0063]. Kolstad does not explicitly teach the ppm of aluminum catalyst to add, but it would be obvious to the skilled artisan to use a similar amount as the exemplified antimony, which falls within the claimed range.
Regarding claims 13-15, Kolstad teaches the polycondensation catalyst can be selected as an aluminum compound, ¶[0047], and that stabilizers comprising aryl phosphates can also be added to the esterification product before polycondensation, ¶[0043]. Kolstad does not explicitly call this combination a “catalyst system” as claimed, but based on applicant’s specification, page 12 line 18, page 16 line 6, and page 18 line 20 (experiments), the only requirement for the catalyst system is that the aluminum catalyst and phosphorous compound be added to the esterification product before the polycondensation, which Kolstad teaches, and therefore teaches the claimed catalyst system. Kolstad further teaches the process for producing a polyester with 2,5-FDCA units and the polyester made therefrom, as explained above for claim 1, which reads on claims 14 and 15. Kolstad also teaches that the SSP of the polyester increases the molecular weight, ¶[0011], which reads on claim 14.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Kolstad et al, US 20170015781 A1 in view of Lee et al, US9284405B2.
Regarding claim 12, Kolstad teaches the invention according to claim 1, as stated above and applied here. Kolstad does not teach the amount in ppm of the phosphate stabilizer to add to the esterification product.
Lee discloses a process for producing a polyester comprising reacting a dicarboxylic acid (such as 2,5-furandicarboxylic acid) with diols including isosorbide, abstract and Col. 4 line 23. The process uses a zinc-based esterification catalyst and a phosphorous based stabilizer, the phosphorous stabilizer is added to the esterification product before polycondensation, abstract. The phosphorous stabilizer is selected from alkyl or aryl phosphates such as triphenylphosphate, and is added in the amount of 100-300 ppm based on the weight of the resin, Col. 5 lines 35-40 and Col. 7 line 52. Lee discloses the phosphate stabilizer added at the end of the esterification reaction enables completion of the esterification reaction in a short time, which shortens the time needed at high temperature, reduces energy consumption, leads to improvement in the color of the polyester, and exhibits excellent appearance, Col. 6 lines 28-31, 35-40.
Lee and Kolstad are analogous to the claimed invention because both are in the field of methods of producing polyesters utilizing similar dicarboxylic acids, diols, and catalysts.
Therefore it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have practiced the invention of Kolstad but using an aryl phosphate stabilizer in an amount of 100-300 ppm based on the weight of the resin with the motivation of producing a polyester with a shortened esterification reaction time, reduced energy consumption, improvement in color, and excellent appearance as disclosed by Lee.
Allowable Subject Matter
Claim 7 is 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 7 is allowable because Kolstad does not list the specific phosphate compounds as the stabilizers that are added to the esterification product. Kolstad does mention the claimed aluminium-hydroxy-bis[2,2″-methylene-bis(4,6-di-t-butyl-phenyl)-phosphate ¶[0052], but only as a nucleating agent that is added after polycondensation, in order to help with the crystallization step ¶[0051]. Therefore this would not meet the limitation of the phosphorous compound of claim 1 because it must come in contact with the esterification product. Additionally, Lee does not mention the claimed phosphates as the stabilizing compounds either, and only mentions specific alkyl and phenyl phosphates.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VIRGINIA L STONEHOCKER whose telephone number is (571)272-3431. The examiner can normally be reached Monday-Friday 7:00AM-4:00PM EST.
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/V.L.S./Examiner, Art Unit 1766
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765