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 .
This office action is in response to the amendment filed on 1/16/2026. Claims 1-20 are pending in the application. Claims 2, 3, 9, 13 and 15-20 are withdrawn due to a previous restriction requirement.
Claim Rejections - 35 USC § 112
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 8 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.
The amendment to claim 1 recites “wherein said sulfopolyester comprises a molar ratio of residues of diethylene qlycol to said residues of 1,4-cyclohexanedimethanol of less than 1:1”. Claim 8 (which depends from claim 1) recites “wherein said sulfopolyester comprises a molar ratio of residues of diethylene glycol to said residues of 1,4-cyclohexanedimethanol of less than 1”. As such, claim 8 fails to further limit the subject matter of the claim upon which it depends. 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
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
Claims 1, 4-8, 10-12 and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by George et al. (US Patent 5,369,211).
Regarding claim 1, George et al. teach a water dispersible sulfo-polyester in Table 1, in particular Example 11, comprising a dicarboxylate; 20 mol% of sulfo-polyester; 21 mol% of 1,4- cyclohexanedimethanol; and 79 mol% of diethylene glycol wherein the sulfo-polyester comprises a glass transition temperature, Tg, of 118°C [Claim 1; Example 11; Abstract] thereby reading on the claimed “consist essentially of 1,4- cyclohexanedimethanol; and diethylene glycol” and further reading on the claimed molar ratio of less than 1:1.
In regards to claim 4, George et al. teach in Examples 1, 10, 11, and 13, glass transition temperatures of 120°C, 104°C, 118°C, and 122°C, respectively [Example 1; Table 1].
In regards to claim 5, George et al. teach in Examples 1, 10, 11, and 13, inherent viscosities of 0.26, 0.29, 0.25, and 0.20, respectively [Example 1; Table 1].
In regards to claim 6, George et al. teach in Examples 1, 10, 11, and 13, compositions not comprising ethylene glycol [Example 1; Table 1].
In regards to claim 7, George et al. teach in Examples 1, 10, 11, and 13 sulfo-polyesters comprising 1,4-cyclohexanedimethanol and diethylene glycol [Example1; Table 1].
In regards to claim 8, George et al. teach in Examples 1, 11, and 13 sulfo-polyesters comprising the molar ratios of diethylene glycol to 1,4-cyclohexanedimethanol of 30/70, 21/79, and 15/85, respectively [Example 1; Table 1].
In regards to claim 10, George et al. teach in Examples 1, 10, 11, and 13 sulfo-polyesters comprising the mole% of 1,4-cyclohexanedimethanol of 70%, 48%, 79%, and 85%, respectively [Example1; Table 1].
In regards to claim 11, George et al. teach water-dispersible sulfo-polyester of which the sulfo- polyester is dissolved to form a true soluiton or is dispersed within an aqueous medium [Title; Abstract; Col. 2, lines 16-26].
In regards to claim 12, George et al. teach the sulfomonomer of sulfoisophthalic acid [Claim 6].
In regards to claim 14, George et al. teach the dicarboxylic acids of isophthalic acid, terephthalic acid, or a combination thereof may be substitute for the dimethyl-2,6-naphthalene dicarboxylate [Examples 23-24].
Response to Arguments
Applicant's arguments filed 1/16/2026 have been fully considered but they are not persuasive.
Regarding the 102 rejections over George, Applicants state “George does not disclose a sulfopolyester comprising residues of two or more diols; wherein the diols consist essentially of 1,4-cyclohexanedimethanol and diethylene glycol. George discloses sulfopolyesters produced with naphthalene dicarboxylate. Since each and every element of the amended claims are not disclosed, applicants respectfully request that the 102 rejection be withdrawn.”
In response, attention is drawn to the disclosure of George, in particular Example 11, among others, wherein George teaches the diols consist essentially of 1,4-cyclohexanedimethanol and diethylene glycol. The naphthalane dicarboxylate taught by George 1reads on the dicarboxylic residues as provided for in claim 1 component (a) and is not considered as a diol (c). It is for these reasons that Applicants are not persuasive.
Conclusion
THIS ACTION IS MADE FINAL. 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 LANEE REUTHER whose telephone number is (571)270-7026. The examiner can normally be reached M-F 7:30-3:30.
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/ARRIE L REUTHER/Supervisory Primary Examiner, Art Unit 1764
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