DETAILED ACTION
This office action is response to Remarks and Amendments filed August 26, 2025 in regards to a continuing application filed December 30, 2022 claiming priority to PCT/JP2021/025593 filed July 7, 2021 and to foreign application JP2020-122966 filed July 17, 2020. Claim 1 has been amended. Claims 3-4 have been cancelled without prejudice. Claim 8 is new. Claims 1-2 and 5-8 are pending and currently being examined.
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 .
Response to Argument
In view of the Remarks and Amendments of claim 1, the rejection of claims of 1-2 and 5-7 under 35 USC § 103 in view of Ito et al. (JP2012-087291 A) have been withdrawn due to the glass transition temperature is out of the claimed range and new rejections of claims 1-2 and 5-7 under 35 USC § 102 in view of Zhu et al. (CN 102558519 A) have been made.
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 1-2 and 5-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhu et al. (CN 102558519 A – machine translation).
Zhu et al. teach in Example 3 [Table 1] an aromatic-aliphatic polyester comprising 60 mol% of 1,4-succinic acid, 40 mol% of terephthalic acid, 100 mol% of 1,4-butanediol, and 0.1 wt.% of trimethylolpropane, wherein the molar ratio of 1,4-succinic acid to terephthalic acid is 60:40 is within the range of 85:15 to 15:85. Since Zhu et al. teach the identical or substantially identical composition of an aliphatic-aromatic polyester comprising 1,4-butanediol units – 1,4-succinic acid units – terephthalic acid units in the molar ratios as the recited claimed, one of ordinary skill in the art at the time of invention was made, would have expected that the compound properties of Zhu et al. will inherently be the same as claimed (i.e., a glass transition temperature of -25°C to -3°C). If there is any difference between the product of Zhu et al. and the product of the instant claims the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I).
In regards to claim 2, Zhu et al. teach 0.1 wt.% of trimethylolpropane (i.e., the branch structure) which corresponds to 0.078 mol% which is in the range of 0.00001 mol% to 4.0 mol% [Example 3].
In regards to claims 5-6, Zhu et al. teach molded film articles for testing of properties [Table 1].
In regards to claim 7, Zhu et al. teach the molar ratio of 1,4-succinic acid to terephthalic acid is 60:40 [Examples 3, Table 1].
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 8 is rejected under 35 U.S.C. 103 as being unpatentable over Zhu et al. (CN 102558519 A) in view of Ponti et al. (US 2019/0160796 A1).
Zhu et al. teach in Example 3 [Table 1] an aromatic-aliphatic polyester comprising 60 mol% of 1,4-succinic acid, 40 mol% of terephthalic acid, 100 mol% of 1,4-butanediol, and 0.1 wt.% of trimethylolpropane, wherein the molar ratio of 1,4-succinic acid to terephthalic acid is 60:40 is within the range of 85:15 to 15:85.
Zhu et al. do not disclose an aliphatic-aromatic polyester comprising furandicarboxylic acid units. .
Ponti et al. disclose biodegradable films comprising an aliphatic-aromatic polyester layer A comprising a dicarboxylic acid component of 35-70% by moles of at least one aromatic dicarboxylic acid and 65-30% by moles of at least one saturated aliphatic dicarboxylic acid, and a diol component of 95-100% by moles of at least one saturated aliphatic diol [0021-0029]. Ponti et al. disclose the saturated aliphatic dicarboxylic acid is preferably succinic acid [0033]. Ponti et al. disclose the saturated aliphatic diol component more preferably comprises or consists of 1,4-butanediol [0035]. Ponti et al. disclose the aromatic dicarboxylic acid is more preferably selected from terephthalic acid and 2,5-furandicarboxylic acid [0030]. Therefore, Ponti et al. disclose 35-70 mole% of 2,5-furandicarboxylic acid and 65-30 mole% of succinic acid within the molar range of 85:15 to 15:85.
The examiner notes that the substitution of equivalents (i.e., terephthalic acid and 2,5-furandicarboxylic acid) requires no express motivation as long as the prior art recognizes the equivalency. In re Fount USPQ 532 (CCPA 1982); In re Siebentritt, 152 USPQ 618 (CCPA 1967); Graver Tank & Mfg. Co. Inc. v Linde Air Products Co., 85 USPQ 328 (USSC). Therefore, it is prima facie obvious that the terephthalic acid and 2,5-furandicarboxylic acid are considered to be equivalent (exchangeable), it is held that substitution of art recognized equivalents is within the level of ordinary skill in the art. (MPEP § 2144.06).
Since Ponti et al. teach the substantially identical composition of an aliphatic-aromatic polyester comprising 1,4-butanediol units, 1,4-succinic acid units, and 2,5-furandicarboxylic acid units in the molar ratios as the recited claimed, one of ordinary skill in the art at the time of invention was made, would have expected that the compound properties of Zhu et al. in view of Ponti et al. will be the same as claimed (i.e., a glass transition temperature of -25°C or more). If there is any difference between the product of Zhu et al. in view of Ponti et al. and the product of the instant claims the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I).
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RONALD GRINSTED whose telephone number is (571)270-7634. The examiner can normally be reached M-F 8am-5pm.
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/RONALD GRINSTED/Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763