DETAILED ACTION
This office action follows a reply filed on January 16, 2026. Claims 4, 6-7 and 9 have been amended. Claims 1, 4, 6-11 and 13-14 are currently pending and under examination.
All previous rejections are withdrawn; however, upon further consideration, a new ground(s) of rejection are proposed below.
The texts of those sections of Title 35 U.S. Code are not included in this section and can be found in a prior Office action.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 102/103
Claims 1, 4, 6-11 and 13-14 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Blackwell (US 4,148,779), as evidenced by Kibler (US 3,734,874) and George (US 5,369,211).
Blackwell discloses the following:
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Blackwell exemplifies a copolymer of the following:
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Blackwell discloses useful water-dispersible copolymers and their preparations are described in US 3,734,874, to Kibler, which is incorporated by reference.
Kibler discloses preparing the copolyesters in the presence of 0.8 mL of a 21% catalyst solution of titanium isopropoxide and 0.41 g (0.005 mole) of sodium acetate as buffer, where the mixture is stirred and heated at 200°C for 2 hours.
Applicants disclose that the following:
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Applicants exemplify that at a ratio of moles of base/moles of SIP of 0.05 to about 0.2 is sufficient to produce the claimed polyester with the claimed ratio of carboxylate ends to acid ends (see instant specification, p. 154, Table 1).
Kibler exemplifies a ratio of moles of base/moles of SIP of 0.005/0.05=0.1.
Therefore, the polymers of Blackwell inherently possess the claimed polyester with the claimed ratio of carboxylate ends to acid ends.
Please consider the following:
MPEP 2112(I) Something which is old does not become patentable upon the discovery of a new property.
MPEP 2112(III) A rejection under 35 U.S.C. 102 and 103 can be made when the prior art product seems to be identical except that the prior art is silent to an inherent characteristic.
Note the burden shifts to applicants to prove that the claimed properties are not inherent.
Alternatively, George teaches the following:
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George exemplifies preparing a similar polyester with and without 0.1 mol sodium acetate per mole of sulfomonomer, and shows that the polyester prepared with the sodium acetate buffer has a greater water solubility than when prepared without the buffer (Examples 5-6).
Therefore, one of ordinary skill in the art would expect the buffer to convert at least some of the acid groups to salt groups, as this is a known method for improving water solubility of a polyester, and George teaches that when the buffer is used for polymerization, the sulfonated polyester has a higher solubility.
Blackwell anticipates or is prima facie obvious over instant claims 1, 8, 10-11, 13-14.
As to claim 9, Blackwell discloses the inherent viscosity of the polyesters as about 0.4 dl/g.
Claim Rejections - 35 USC § 103
Claims 1, 4, 6-8, 10 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Tachika (US 5,356,989), as evidenced by Schoff (Coatings Tech: Optimum Viscosity for Paint Applications, April 2017, page 44).
Tachika teaches an aqueous dispersion comprising the following:
(A) a polyester comprising a polycarboxylic acid component and a polyol component, the polycarboxylic acid component comprising 50-99.99 mol% of an aromatic dicarboxylic acid containing no metal sulfonate group and 0.01-20 mol% of a dicarboxylic acid having a metal sulfonate group, the polyester having an acid number of 50 equivalents/106g or more, preferably 100-250 equivalents/106 g, and
(D) a neutralizer, where D/A (equivalent ratio) = 0.1-20.
Neutralizing a polyester with an acid number of 100 equivalents/106g with a base at an equivalent ratio of 0.8 suggests 80% of the acid groups are neutralized, and results in a ratio of carboxylate ends to acid ends of (80 carboxylate equivalents/106g)/(20 remaining acid equivalents/106g)=4.
Therefore, it can be seen that the polyesters suggested by Tachika possess a ratio of carboxylate ends to acid ends which overlaps with the claimed range of 0.6 in instant claim 1, and 0.7-10 in instant claim 4, as well as the content of dicarboxylic acid having a metal sulfonate group of 4-8.5 mol% in instant claim 1 and at least 5 mol% in instant claim 11, and the amount of carboxylate groups and acid groups in the sulfopolyester in instant claims 6-7, and it has been held that overlapping ranges are sufficient to establish prima facie obviousness. See MPEP 2144.05.
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the range taught by the reference because overlapping ranges have been held to establish prima facie obviousness.
Tachika is prima facie obvious over instant claims 1, 4, 6-7 and 11.
As to claim 8, Tachika does not teach or suggest the viscosity of the polyester in water at 20 wt%, as claimed; however, Tachika does teach since the aqueous dispersion has low viscosity, it can be applied by spray coating (p. 10, ll. 35-40). There is a general rule of thumb in the paint industry that a viscosity of approximately 100 cps (1 P, 0.1 Pa•s), within a workable range of 50-500 cps, provides sprayable viscosities, as evidenced by Schoff (p. 44).
As to claim 10, Tachika exemplifies the dicarboxylic acid having a metal sulfonate group as 5-sodfium sulfoisophthalate.
As to claim 13, the aromatic dicarboxylic acid containing no metal sulfonate group is taught to include terephthalic acid and isophthalic acid (col. 4, ll. 4-12).
Response to Arguments
Applicant’s argument have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIEANN R JOHNSTON whose telephone number is (571)270-7344. The examiner can normally be reached Monday-Friday, 8:00 AM - 4:00 PM EST.
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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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/Brieann R Johnston/Primary Examiner, Art Unit 1766
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