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 .
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1,3,4,6-13,15-17,19 and 20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The new amendment requiring a temperature of “less than or equal to 90C” is not supported by the specification. Applicants response did not show where the amendment was present, so as to avoid new matter. Searching the specification, page 18, line 17 shows basis for “less than 90C”, only. This is a new matter rejection.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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.
Claim(s) 1,3,4,6-13,15-17,19 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Gupta et al US 2013/0298362.
Gupta discloses water dispersible fibers comprising sulfopolyester (0120) which can comprise terephthalic acid (TA) in range from 60-80 mol%, from 0 to 30 mol% of IPA (isophthalic dicarboxylic acid), more than 10 mol% of 5SSIPA ( 5-sodiosulfoisophthalic acid) as sulfomonomer, up to 50 mol% of DEG ( diethylene glycol) and from 50 to 100 mol% of EG ( ethylene glycol). Note that ratio of DEG / EG can be below 0.65 ( see Table in [0120]). Regarding Tg ( glass transition temperature Gupta teaches that ( see [0032]):" The sulfopolyester has a glass transition temperature of at least 57°C. which greatly reduces blocking and fusion of the fiber during winding and long-term storage" and further teaches that sulfopolyester may have Tg of " at least 60°C., at least 65° C., at least 80°C., and at least 90° C". 4.2.
Regarding Claim 6 Gupta teaches that viscosity of the sulfopolyester can be 0.1dL/g or higher (see [0077]): " The sulfopolyesters described herein have an inherent viscosity, abbreviated hereinafter as "lh.V., of at least about 0.1 dL/g, preferably about 0.2 to 0.3 dL/g, and most preferably greater than about 0.3 dL/g, " 4.3.
Regarding Claim 15 note that sodium salt of sulfoisophthalic acid comprises sulfoisophthalic acid. In addition, Gupta teaches that sulfomonomers suitable for preparation water dispersible sulfopolyesters can be obtained from: " Sulfonic acid and followed by reaction with a metal oxide or base, for example, Sodium acetate, to prepare the Sulfonate salt". Gupta also teaches that( see [0080])" When a monovalent alkali metal ion is used as the cation of the Sulfonate salt, the resulting Sulfopolyester is completely dispersible in water with the rate of dispersion dependent on the content of Sulfomonomer in the polymer, temperature of the water, surface area/thickness of the sulfopolyester, and so forth Other examples of sulfomonomers which may be used are 5-sodiosulfoisophthalid acid and esters thereof." Therefore, it would be obvious to one of ordinary skill in the art to claim use of sulfoisophthalic acid in the method of preparing sulfopolyester but use this acid in combination with sodium acetate in order to obtained salt of sulfoisophthalic acid "in situ" and therefore obtain completely water dispersible sulfopolyester. 4.4. As shown above, Gupta teaches same water dispersible sulfopolyester, wherein same monomers used in same / overlapping ranges. Therefore, Gupta renders obvious Applicant's claimed subject matter as established in the art : " 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). 4.5. In addition, note that because Gupta teaches substantially same sulfopolyester than it would be expected that sulfopolyester of Gupta would have same properties including absence of melting point (if measured by same method as used by Applicant) which is indication that sulfopolyester is amorphous. Note that, as established in the art: " a material and its properties are inseparable. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
With respect to the amendment “dispersing said sulfopolyester in water at a temperature at a temperature less than or equal to 90C forms a dispersion of at least 5 wt% sulfopolyester”, it is the offices position that since the sulfopolyester disclosed by Gupta is so very similar with only minor (range overlapping) differences that the claimed property would be expected from the sulopolyester of Gupta. Additionally, throughout the reference it teaches the making of a water dispersible fiber, via the use/addition of the sulfopolyester. Therefore, the burden is shifted to applicants to show that such a property is not necessarily present in Gupta.
Claim(s) 1,3,4,6-13,15-17,19 and 20 are rejected under 35 U.S.C. 102(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over George et al- US 5,369,211.
George discloses water dispersible sulfopolyesters have a Tg of greater than 89C. The sulfopolyester has an acid component and diol component of at least 35 mol percent. The acid component is generally a naphthalenecarboxylate (or it’s salt see column lines 40-end), but can be replaced by isophthalic acid or terephthalic acid, see examples 23 and 24. George also discloses, for the diol component, a combination of diethylene glycol (DEG) and ethylene glycol (EG), wherein the EG is molar excess, see for example, example 5. Which reads on the claimed ratio of DEG/EG is less than .65. The sulfopolyesters have an inherent viscosity of 0.1-1 dl.g, see column 4 lines 12-13. Column 2 shows:
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156
470
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Greyscale
With respect to the amendment “dispersing said sulfopolyester in water at a temperature at a temperature less than or equal to 90C forms a dispersion of at least 5 wt% sulfopolyester”, it is the offices position that since the sulfopolyester disclosed by George (examples 23 and 24) actually anticipate the preferred sulfopolyesters, that the claimed property would be expected from the sulopolyester of George. Additionally, the examples shows that the disclosed polyesters show water solubility (wt%) in the range of 15-30 wt% (no temperature given). Therefore, the burden is shifted to applicants to show that such a property is not necessarily present in George.
In the alternative, if the disclosure lacks sufficient specificity for anticipation, then one skilled in the art would have found that it would have been obvious to combine the elements of George in such a way (as is disclosed) to arrive at applicants’ invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RANDY P GULAKOWSKI whose telephone number is (571)272-1302. The examiner can normally be reached M-F 7:30-4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy P 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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/RANDY P GULAKOWSKI/ Supervisory Patent Examiner, Art Unit 1766
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