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 .
Amendments to claims 1 and 6 and the cancellation of claims 2-5, in the response filed September 24, 2025, have been entered.
Claims 1 and 6-14 are currently pending in the above identified applications.
Claims 10-14 have been withdrawn as being directed towards a non-elected invention.
Claim Objections
Claims 1 and 6-9 are objected to because of the following informalities: - Claim 1- “—at least an inorganic tin compound catalyst… an inorganic first compound (stannous compound)—". Remaining claims are objected based on their dependency on objected claim 1. Appropriate correction is required.
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.
Claims 1 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 2008/0242751 to Kurian in view of US Pub. No. 2013/0184414 to Ayodhya.
Regarding claims 1 and 6, Kurian teaches a polyester used to make fibers, such as monofilaments and bulked continuous filaments (polyester yarn), formed from post-consumer polyesters, such as polyethylene terephthalate, polytrimethylene terephthalate, polybutylene terephthalate, and mixtures of blends thereof (claim 6), with at least one diol in the presence of a catalyst, including inorganic tin compound, effecting a transesterification reaction (Kurian, abstract, para 0016-0017, 0022-0023, 0039, 0047), reading on the polyester being obtained by polymerization in the presence of an inorganic tin compound catalyst and the yarn comprising polyethylene terephthalate and polybutylene terephthalate. Kurian teaches the tin being present in an amount between about 2 and 400 ppm based on the weight of the reactants in the esterification medium (Id., para 0043) and the polyester being polyethylene terephthalate, polybutylene terephthalate, and mixtures of blends thereof (Id., para 0016-0017), reading on the polyester yarn comprising polyethylene and polybutylene terephthalate and comprising between about 2 and 400 ppm based on the weight of the reactants in the esterification medium.
Kurian does not appear to explicitly teach the inorganic tin catalyst being an inorganic tin first compound or an inorganic tin second compound (stannic compound), wherein the inorganic tin first compound is at least one compound selected from the group consisting of stannous oxide, stannous pyrophosphoric acid, stannous phosphoric acid, stannous tartaric acid, stannous acetic acid, stannous oxalic acid, stannous stearic acid, stannous oleic acid, stannous gluconic acid, stannous citric acid, stannous 2-ethylhexanonic acid, stannous ethoxide, stannous acetylacetonate, and stannous glycolic acid, the inorganic tin second compound is at least one compound selected from the group consisting of stannic oxide, stannic pyrophosphoric acid, stannic phosphoric acid, stannic tartaric acid, stannic acetic acid, stannic oxalic acid, stannic stearic acid, stannic oleic acid, stannic gluconic acid, stannic citric acid, stannic 2-ethylhexanonic acid, stannic ethoxide, stannic acetylacetonate, and stannic glycolic acid.
However, Ayodhya teaches a catalyst system for use in preparing polyester comprising an inorganic tin and teaches that using inorganic tin compounds helps in uniform distribution of catalyst in the polymer matrix resulting in better properties compared to convention catalyst that comprise organo tin compounds (Ayodhya, abstract, para 0012). Ayodhya teaches the inorganic tin catalyst being tin oxalate (tin(II), or stannous, oxalic acid) and is preferably present in ana mount of 5 to 50 ppm (Id., para 0020-0021, 0026). Ayodhya teaches the polyester being formed from dicarboxylic acid, including terephthalic acid and diol, including ethylene glycol and butylene glycol (Id., para 0032-0036).
It would have been obvious to one of ordinary skill in the art before the effective filing date to form the yarn of Kurian, wherein the inorganic tin is tin oxalate, such as present in ana mount of 5 to 50 ppm, as taught by Ayodhya, motivated by the desire of using conventionally known inorganic tin catalysts predictably suitable for use in polyester production and by the desire to help uniform distribution of the catalyst in the polymer matrix that results in better properties compared to conventional catalysts that comprise organo tin compounds.
While the reference does not specifically teach the claimed range of 10 ppm to 200 ppm of a residue of the inorganic tin compound, the disclosed range of the prior art combination overlaps with the instant claimed range. It should be noted that 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). The existence of overlapping or encompassing ranges shifts the burden to Applicant to show that his invention would not have been obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003). Furthermore, it would have been obvious to one of ordinary skill in the art before the effective filing date to adjust, vary, and optimize the amount of the tin catalyst, and therefore the residue amount, such as within the claimed range, motivated by the desire to successfully practice the invention of the prior art based on the totality of the teachings of the prior art.
The limitations “a polyester polymer obtained by polymerization in the presence of at least inorganic tin compound catalyst selected from the group consisting of an inorganic tin first compound or an inorganic tin second compound (stannic compound), wherein the inorganic tin first compound is at least one compound selected from the group consisting of stannous oxide, stannous pyrophosphoric acid, stannous phosphoric acid, stannous tartaric acid, stannous acetic acid, stannous oxalic acid, stannous stearic acid, stannous oleic acid, stannous gluconic acid, stannous citric acid, stannous 2-ethylhexanonic acid, stannous ethoxide, stannous acetylacetonate, and stannous glycolic acid, the inorganic tin second compound is at least one compound selected from the group consisting of stannic oxide, stannic pyrophosphoric acid, stannic phosphoric acid, stannic tartaric acid, stannic acetic acid, stannic oxalic acid, stannic stearic acid, stannic oleic acid, stannic gluconic acid, stannic citric acid, stannic 2-ethylhexanonic acid, stannic ethoxide, stannic acetylacetonate, and stannic glycolic acid” are interpreted as a product-by-process limitations. Absent a showing to the contrary, it is Examiner's position that the article of the applied prior art is identical to or only slightly different than the claimed article. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). Kurian teaches a polyester monofilament and bulked continuous filament of polyester and teaches the use of an inorganic tin catalyst used during the polymerization of the polyester, including polyethylene terephthalate and polybutylene terephthalate. The burden has been shifted to Applicant to show unobvious difference between the claimed product and the prior art product. In re Marosi, 218 USPQ 289 (Fed. Cir. 1983). The applied prior art either anticipated or strongly suggested the claimed subject matter. It is noted that if Applicant intends to rely on Examples in the specification or in a submitted declaration to show unobviousness, Applicant should clearly state how the Examples of the present invention are commensurate in scope with the claims and how the Comparative Examples are commensurate in scope with the applied prior art.
Claims 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 2008/0242751 to Kurian in view of US Pub. No. 2013/0184414 to Ayodhya, as applied to claims 1-6 above, in view of USPN 3,797,221 to Ikeda.
Regarding claims 8-9, Kurian teaches the polyester being used in articles such as apparel fibers, carpet fibers, monofilaments, and bulked continuous filament (BCF) fibers (Kurian, para 0023, 0047).
Kurian does not explicitly teach the polyester fiber or filaments being a non-circular cross-section yarn (claim 8) or a false-twist crimped yarn (claim 9).
However, Ikeda teaches it is known to form polyester filament into yarns, specifically false twist-crimped yarn, from polyester such as polyethylene terephthalate that are used in apparel and can have non-circular section (non-circular cross-section yarn) (Ikeda, abstract, col. 1 line 3-68, col. 8 lines 32-60, col. 9 lines 7-60).
It would have been obvious to one of ordinary skill in the art before the effective filing date to form polyester apparel fibers or filaments of Kurian, wherein the apparel fibers or filaments take the form of a false twist-crimped yarn or have a non-circular cross section as taught by Ikeda, motivated by the desire of forming conventionally known polyester fiber products predictably suitable for use with polyester, such as polyethylene terephthalate, and used in apparel.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over US Pub. No. 2008/0242751 to Kurian in view of US Pub. No. 2013/0184414 to Ayodhya, as applied to claims 1-6 above, in view of USPN 5,716,568 to Kaegi.
Regarding claim , Kurian teaches the polyester being used in articles such as apparel fibers, carpet fibers, monofilaments, and bulked continuous filament (BCF) fibers (Kurian, para 0023, 0047).
The prior art does not explicitly teach the polyester yarn being a core-sheath type composite fiber and the polyester being disposed in a sheath portion of the core-sheath composite fiber.
However, Kaegi teaches a yarn comprising a core/cover bicomponent thread (core-sheath type composite fiber) comprising polyethylene terephthalate (PET) polymerized in the presence of tin (II) dioctoate (inorganic tin compound catalyst, inorganic tin first compound) at a concentration of 100 ppm as the cover (polyester is disposed in a sheath portion) (Kaegi, abstract, col. 4 line 47- col. 6 line 22).
It would have been obvious to one of ordinary skill in the art before the effective filing date to form the yarn of the prior art combination, wherein the fiber is a core/cover bicomponent fiber as taught by Kaegi, motivated by the desire of forming conventionally known polyester fiber predictably suitably formed from polyester polymerized using tin catalysts and known in the fiber art for use in formation of articles.
Response to Arguments
Applicant’s arguments with respect to the pending claims have been considered but are moot based on the current grounds of rejection. For the purpose of compact prosecution, Examiner will address argument that may pertain to the current grounds of rejection.
Regarding the application of Kurian, Applicant argues that Kurian lists many examples of organic tin compounds but no inorganic tin compounds and uses only one amount of titanate catalyst in each example and does not disclose the effect of the catalyst concentration. Kurian teaches the catalyst being an inorganic tin compound (Kurian, para 0039). Aydohya teaches a predictably suitable inorganic tin catalyst and teaches an advantage of the inorganic tin include more uniform distribution of catalyst in the polymer matrix. Additionally, the disclosure amount is within the claimed range. Applicant appears to be arguing that the claimed catalyst concentration is critical and shows beneficial properties of the polyester yarn including high strength, better elongation, reduced number of yard breakage, and less warping obtained when the inorganic tin compounds are used in the amounts between 10 ppm to 200 ppm, pointing to the Tables in the originally filed disclosure. To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). The instant disclosure tests 1, 8, 10, 20, 40, 100, 200, 500 ppm of catalyst. 500 ppm is not just above the assert critical range of 200 ppm. Furthermore, US Pub. No. 2015/0087789 to Utsunomiya teaches a polyester formed using an esterification catalyst, including metal such as tin and inorganic oxides of the metal (Utsunomiya, abstract, para 0133-0135). Utsunomiya teaches if the amount of catalyst used is too large, not only this is economically disadvantageous but also the terminal acid value at the time of polymer withdrawal greatly rises, as a result, the thermal stability or hydrolysis resistance of the polyester tends to decrease, and, conversely, if the amount added is too small, thermal decomposition of the polyester is induced during the production, and a polyester exhibiting practically useful physical properties can be hardly obtained (Id., para 0152). Therefore, adjusting the concentration of the catalyst is known to influencing the properties of the polyester.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US Pub. No. 2004/0077486 to Bellamy teaches the use of an esterification catalyst in the production of polyester articles and teaches a high level of antimony catalyst can lead to level of insoluble elemental antimony in the finished polymer which may cause breakage of or defects in a fiber made from such polymer. Catalytic Applications Of Tin Compounds to Gitlitz teaches an inorganic tin catalyst known for use in esterification application including stannous oxide, stannous oxalate and stannous octoate.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/JENNIFER A GILLETT/Examiner, Art Unit 1789