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 a non-final reopening prosecution because of cut and paste mistake by the examiner. Specifically, rejection of claims 19-21 over Walsh is an obviousness rejection. The cut and paste included anticipation heading of the rejection, at which point, the examiner will not proceed to the appeal. The rejection will be restated with proper heading so that applicants can have proper rejection to respond to and then the examiner will be more than happy to issue examiner’s answer. In this office action however the examiner will address the arguments in the appeal brief, as it is a response to the final office action dated 12/29/2025.
Claim Interpretation
By definition: polymer alloy is a material formed by combining two or more polymers to create new composition with either enhanced or distinct properties. It is formed by physically or chemically blending two or more polymers.
Under broadest reasonable interpretation:
Claim 1 recites first PET polymers and second PET polymers. Polymers is plural, therefore first and second PET polymers may include several other PET polymers. First PET can be the first portion and second PET can be second portion.
Term PET polymers is interpreted broadly, to include PET itself as well as modified versions therefore in addition to base homopolymer, wherein at least one of the 1st PET polymers and 2nd PET polymers meet the required claimed average molecular weight. While the applicants claim that the average molecular weight are selected from weight average molecular weight, number average molecular weight and z-average molecular weights, these are molecular weights that are well known in the art. One way to distinguish the molecular weights is by the units that accompany the number. For weight average molecular weight common units are kg/mole, gram/mole or Daltons. Number average molecular weight is dimensionless and expressed as pure number, because it is a ratio of masses relative to standard. Z-average molecular weight is based on sum of molar mass each of the of the specific species to sum of mole fraction of that species. When referring to polymers the units are expressed in Daltons or kilo Daltons.
With respect to the PAT or polyalkylene terephthalate polymers, the claim is broad and does not limit the definition of alkylene at all. Consequently the same PET polymers meet the limitations of instant claims 19 and 21 regardless of what is included in claim 1.
With respect to limitations of “first portion of PET polymers” and “second portion of PET polymers” the limitation lacks delineation and physical description which allow examiner to more accurately meet the claimed limitation. Under broadest reasonable interpretation, any part of the alloy can be first portion or second portion and without any limitation as to what the actual average molecular weight of the two portion can be attributed to two different PETs each one of different molecular weight and the difference between the average molecular weights can be minimal.
Response to Arguments
The examiner would like to discuss the definition of claims 1, 19 and 21 as presented in the appeal brief pages 4-6. While examiner appreciates identified by the applicants support as to where each limitation can be found in the specification, the examiner cannot read specification into the claims. Going directly to claims 19 and 21, these claims utilize exactly the same language as claim 1 except use PAT in lieu of PET. Applicants included [0109] which states that PET in the PET alloy may be substituted with any PAT so as to form PAT alloy. Instant claims 1, 19 and 21 do not use recite any substitutions between PET and PAT. The two claims are directly reciting PET or PAT polymers. Regardless what type of substitution applicants have support for in the specification, the claims are simply directed to PAT polymers only. The claims will be treated as such, wherein based on broad reasonable interpretation, includes PET wherein alkylene is ethylene.
First Argument (p. 11) is directed to interpretation of PET polymers and exclusion of another type of polymer. The applicants also indicate that claim 1 is directed to PET alloy comprising first PET polymers and second PET polymers is devoid of any other type of polymer other than PET (PAT for claims 19 and 20).
Examiner agrees. While the examiner’s interpretation may not be want applicants expect, it is still proper under broadest reasonable interpretation according to MPEP. Claim interpretation above clearly states that term “polymers” is a plural term and term “polymers” encompasses homopolymers copolymers and modified polymers. PET has to be majority of the polymer. It should be noted that in industry polymers referred to as PET have small amounts of other monomers such as isophthalic acid, which is evident from the prior art applied in the rejection. Such polymers are still considered PET polymers of PAT polymers for claims 19 and 21.
The word “type” is also viewed under broadest reasonable interpretation, where all PET (or PAT) polymers are one type of polymers while all other polymers not PET (PAT). PET (PAT) exists in several types such amorphous, crystalline, modified, oriented and recycled copolymer. Each is a PET (PAT). Each one has its own variants, modification and additives. That is how broad term “PET polymers” or “PAT polymers” is.
Instant specification fails to explicitly define the polymers other than repeat unit (See page 3). Term comprising in instant claims 1, 19 and 21 allow other repeat units.
Applicants argue that examiner did not make prima facie case in the rejection over Ye because Ye does not teach each and every element of independent claims 1, 19 and 20.
Ye is anticipatory reference so it either teaches the claims or not. The prior art teaches every element required by the claim under its broadest reasonable interpretation with sufficient specificity to establish anticipation as required by 35 USC 102 and MPEP 2131.
Instant claims 1, 19 and 21 are directed to the PET (or PAT) alloy, only require that first PET (or PAT) polymers have first average molecular weight and second PET (or PAT) polymers have second average molecular weight. The claim is silent as two how the two average molecular weights are related with another. The first can be higher or lower or the same. Claims just require that the polymers have weight average molecular weight. The one well established fact in any polymer industry is that intrinsic viscosity of the polymer is proportional to the molecular weight and therefore different viscosities means different average molecular weights (all of the claimed average molecular weights).
Reference of Ye discloses several polyester polymers as it was depicted in the final office action dated 12/29/2025:
Laser+ PET with intrinsic viscosity of 0.83 [0037]
F1CC PET with intrinsic viscosity of 0.61 [0038]
KoSa PET with intrinsic viscosity of 0.66 [0038]
All three are PET polymers as required by instant claims 1, 19 and 21. All have different viscosities, which inherently implies different average molecular weights required by instant claims 1, 19 and 21. Since all polymers within Ye are PET polymers they are not considered another type.
Going through the arguments the biggest disagreement between examiner and the applicants is the scope of the term polymer. Applicants appear to view the PET polymers term as homopolymers. Examiner interprets the term PET polymer as any PET polymer (including modified polymers or copolymers), which is broader than applicant’s interpretation but it is not wrong under broadest reasonable interpretation.
Definition of polymer from Brittanica:
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A modified PET is still fundamentally PET but its properties have been altered to improve performance based on intended use. This is because modification does not change its core chemical composition, instead it changes how PET is processed or combined with other materials.
ASTM D3418 specifies procedure that helps identify polymers designate and establish processing behavior. For PET polymer in order to be designated as PET, 90% of the mass of polymer has to be derived from terephthalic monomer and an ethylene glycol monomer. The PET must exhibit specific melting peak measured as required per ASTM method.
This is also established in PTO publications such as US 2007/0092672:
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US 2008/0161529 states following:
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Published patent publications recognize term PET polymer to mean both homopolymers and copolymers.
Summarizing PET polymers of Ye:
F1CC is a PET homopolymer and was not argued by the applicants.
Laser+ polymer by DAK America’s is one contested polymer. The examiner includes safety data sheet which clearly establishes that Laser+ PET is at least 99% of PET and less than 1% of residual. It should be noted that DAK Americas was bought out by Alpek polyester (www.alpekpolyester.com), which is something that examiner was not aware before.
KoSa PET FR8934 appears to be proprietary polymer. Kosa was acquired by Koch Industries (conglomerate) in 2025, and no Data sheet exists for examiner to provide to the applicants. Here is what examiner found on the internet:
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MDPI in superscript is an article but it does not disclose the specific to KoSa PET polymer of Ye, therefore it is not considered a good evidence. Th examiner will therefore remove this polymer from the rejection.
Even without KoSa PET, example 5 discloses Laser + PET is compounded with 30% talc and pelletized. This meets the limitation of claim 2 with Laser + PET being the first portion. The resultant pellets were blended with F1CC polymer (second portion PET) wherein two polymers are enough to make an alloy (see How Polymer Alloys Are Made and Used Every Day - Engineer Fix). By definition alloy is a mixture of 2 or more polymers.
The rejections will be restated to better map the disclosure of Ye to instant claims.
Applicants further argued the inherency of biomodality of the two polyester. Specifically the limitation of claims 17 and 20:
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By definition bimodal polymer is a material whose molecular weight distribution has two distinct peaks. However, applicants claim PET or PAT alloy having bimodal molecular weight distribution not just PET or PAT polymers. Under broadest reasonable interpretation, bimodality can be attributed to one PET or PAT or two different molecular weights of the first and the second PET or PAT that make up the alloy. The claims are open to both interpretations. In fact the claims are so broad because they do not define what is first portion of PET (or PAT) polymers or second portion of PET (or PAT) polymers.
In polymer science, molecular weight distribution described the range of chain lengths in the sample. It is a gaussian distribution. Even if the polymer is bimodal depending on the difference between two average molecular weights, the peaks can be so close such that overall gaussian distribution can result in one peak which is the sum of the two molecular weights. Claims do not distinguish physical differences between the two portions so any average molecular weight will meet the claims.
Ye discloses PET alloy each PET has different intrinsic viscosities. Intrinsic viscosity is related to molecular weight of the polymer through Mark-Houwink equation. The empirical equation states that the intrinsic viscosity is proportional to the molecular weight (M) raised to a power which can be expressed as [ƞ] = kMa, wherein k and a are constants that depend on the polymer solvent system and temperature. One of ordinary skill in the art (specifically polymers) has to know the basic principles which includes relationship between intrinsic viscosity and molecular weight of the polymer.
Consequently, when examiner states that if the two PET polymers have different intrinsic viscosities and therefore different average molecular weights, they will have bimodal distribution.
In summary Laser + PET with intrinsic viscosity of 0.83 will have higher molecular weight than F1CC PET with intrinsic viscosity of 0.61. Based on description in www.chematergroup.com PET with intrinsic viscosity of less than 0.78 is considered a low viscosity PET with polymer shorter chains and easier processing. PET with viscosity range of 0.78-0.85 is considered a medium viscosity PET with longer polymer chains and better strength. This means that the Laser + PET is molecularly heavier than F1CC PET and therefore has higher molecular weight.
The examiner completely strongly disagrees with applicant’s assumption that examiner’s statement that the PET mixture having two PET polymers would inherently be bimodal, is belied by applicant’s own specification. In this argument applicant fail to admit that the two PET polymers of Ye have two very different intrinsic viscosities. Additionally, one DOES NOT NEED to look into applicant’s specification when the concept of two polymer mixtures having two different viscosities will have bimodal distribution is taught in Introduction to polymer chemistry at the graduate school. At least it was part of the education in this examiner’s graduate school curriculum. Furthermore, the examiner does not refer to just any PET. Examiner’s rejection is focused specifically on the polymers of Ye, and the inherency of bimodality is in fact correct because Ye does describe the PET polymers in terms of inherent viscosity. See discussion above about polymer’s intrinsic viscosities.
Examiner further appreciates applicant’s discussion of gaussian distribution and how peaks are attributed to two different average molecular weights. However, this argument is really not commensurate with the scope of the instant claims. As it was mentioned earlier, instant independent claim do little to clearly define what the average molecular wights really are for both first and second part and the difference between the two averages that there may not be two peaks. In addition to applicants’ figures, there is another alternative not considered by the applicants:
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This alternative includes two PET polymers with average molecular weights so close that the overall Gaussian will end up with one peak.
Applicant’s statement that examiner’s reliance on inherency is impermissible is also flawed. First the prior art of Ye does provide sufficient information to make inherency arguments. Amazingly applicants continue to omit the fact that Ye’s PET polymers are actually defined by their inherent viscosity. That information alone means that higher intrinsic viscosity means higher molecular weight and ergo bimodal distribution. The basis for examiner’s inherency argument is the large difference between the intrinsic viscosities of the PET polymers of Ye. This is not a matter of examiner coming up with whatever comes to mind but it is based on basic polymer chemistry principles. There is no mischaracterization of science and the fact that instant claims fail to delineate any physical properties or amounts is not helping either. While one fraction can be small and second fraction can be large, they will both still have different viscosities and therefore different molecular weights. Ye may not disclose average molecular weights but he does disclose intrinsic viscosity which as shown below are proportional to increase in molecular weights. Higher instrinsic viscosity = higher molecular weights. While Ye does not disclose the content of the PET in the examples, neither does applicant in his claims. Since the content is not defined by the applicants, under broadest reasonable interpretation, any amount of PET in Ye will meet the claims. Applicant only define total PET concentration in claim 7, which matches total concentration of the teachings of Ye based on the amount of talc as the only other component.
Applicants have not defined the what they mean by term “bimodal”, and there are two approaches to bimodality, By definition, in instant case of PET polymers bimodality can be influenced by chemical compatibility and blend immiscibility or miscibility. Here PET is combined with another PET as such they are miscible and compatible. Second type of bimodality stems from two different molecular weights one being higher than the other. This again is evidenced by two different intrinsic viscosities of the PET polymers of Ye.
Claim 2, as mentioned above, the applicants failed to define what exactly is considered as first portion of the PET polymers and second portion PET polymers. Consequently under broadest reasonable interpretation examiner can view different portions as two different polymers. A master batch can therefore be the first portion. All talc is utilized in the masterbatch. Furthermore, the claims are so broad that under broadest reasonable interpretation alloy can simply be a mixture of the two PET so when pellets of first PET with talc are combined with second PET the definition of alloy is already met. That alone is taught in Ye.
While Chen discloses use of compatibilizer, that is not why Chen was utilized. Applicants’ arguments are not commensurate with the grounds of rejection. The case law examiner cited was KSR.
With respect to applicants’ arguments directed at teachings of Walsh, claims 19 and 21 require PAT alloy comprising first portion of PAT polymers and second portion PAT polymers, wherein PBT of Walsh meets the definition of PAT. Walsh teaches alloy of PBT having high molecular weight (1100 poise viscosity) (see description of Figure 1) and polymer having low molecular weight (300 poise). The distinction between molecular weights already meets the limitations of the polymer alloys because claims do not disclose any physical characteristics of the polymer itself.
Talc of Walsh is utilized as a reinforcing agent just like the glass fibers. While content of glass fibers is 2.5-60 parts, talc as reinforcing agent is clearly envisaged and its amounts have to be in an amount effective to impart reinforcement to the PBT alloy. The content of glass fibers as reinforcing filler is viewed as a guidance on the content of the reinforcing filler. Since mixtures of reinforcing fillers can be utilized the amount of 2.5-60 more preferably 5-55 parts and most preferably in amount of 20-40 pats. Consequently if talc is utilized with glass fiber at the minimum of most preferred range its content would be 20 parts meeting the instant claims. While range for the talc alone is not taught, claims 19 and 21 with term “comprising” allow other reinforcing fillers which are also known additives to plastics.
Walsh’s use of term glass (col. 6, starting line 53) which is one of the 4 listed reinforcing filler is not just glass. Walsh uses term filamentous glass, glass fibers , C-glass filaments, glass filaments that are bundled into fibers, chopped strands. Clearly when Walsh discusses reinforcement the glass is in the form of a chopped strand (preferred embodiment) not just glass by itself. The examiner would suggest reading the entire paragraph along with broader and narrower range of the reinforcing filler not just pick and choose terms to fit the arguments. Further the examples disclose glass fiber not glass. The actual language that examiner utilized in the rejection is not what applicant argues. The examiner clearly stated that the reinforcing filler is selected from glass fiber, talc, mica and clay. Therefore use of talc is clearly envisaged.
If reinforcing filler is listed as part of Markush group, per MPEP 2117 means that it is alternatively usable member for a particular element or feature, in this case reinforcing filler. Consequently, the MPEP itself states that talc is alternative to glass fibers. The examiner never said that the amounts for talc are exactly the same as those for glass fibers.
With respect applicant’s arguments that Walsh is silent on modality of “high low blend of high molecular weight polyester and low molecular weight PBT” this argument is not commensurate with applicant’s own claims. Term “high flow blend” is not a limitation in any independent claim. The process of how the polymers are melt processed are not commensurate with the instant claims which are directed to composition.
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 16 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.
Claim 16 fails to further limit claim 1 since it discloses addition of polycarbonate, PBT and PAT which is excluded by instant claim 1. The claim is further indefinite because of terms “other typical additives” is undefined and it is not clear if other typical additives refer to the additional polymers or the alloy itself. Both terms “other typical additives” and “other components of a PET article” do encompass additional polymers.
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.
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.
Claim Rejections - 35 USC § 102
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 1-9, 11, 15-18 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Ye (US 2005/0079342).
With respect to claims 1, 2 and 8, Ye discloses polyethylene terephthalate blends with talc. Following PET polymers were utilized (see claim 1):
Laser+ PET having intrinsic viscosity of 0.83 [0037], is a PET comprising low amount of isophthalate comonomer, encompassed by the term “polymer”
F1CC PET having intrinsic viscosity of 0.61 [0038] and
Based on the intrinsic viscosities of the polyester Laser+ PET has higher molecular weight than F1CC and KoSa because the higher the viscosity the higher the molecular weight.
Talc of Ye is utilized in amount of 0.1-20% based on the total mixture of polymers (claim 14).
Examples 5-7, 9-13 of Ye discloses forming pellets of Laser + PET with 30% of talc. Formed pellets are mixed F1CC PET and forms blended pellets. Blended pellets meet the limitation of claim 2, which requires the talc to be associated with first portion of PET polymers. This is because the claim is open to an interpretation as to what constitutes first portion of PET polymers and second portion of PET polymers. Blended pellets further meet the definition of alloy which is a mixture of at least two polymers.
With respect to claims 3 and 4, talc is made into masterbatch with Laser+ PET resin extruded and pelletized. The masterbatch was then incorporated into F1CC PET at which point the talc is not dispersed homogeneously. The mixture was blended heated to provide PET film having homogeneously dispersed talc. The film produced by Ye can be single layer or multilayer (see examples).
With respect to claim 5, the talc utilized in examples has particle sizes of 1.8-12.5 microns [0033], 1.0-6 microns [0035] and 2-3 to 14 microns [0036]. See also claims 11 and 13 of Ye.
With respect to claim 6, complete alloy of the PET polymers and talc formed into film does not include water. Ye does not teach any water presence as such the water content is viewed as zero.
With respect to claim 7, if talc is present in amount of 1-20%, the polyester overall is present in amount of 80-99%.
With respect to claim 9, based on the viscosities of the PET utilized (see above), the overall viscosity will be in a range of 0.61-0.83 just based on the intrinsic viscosities of polyester themselves.
With respect to claim 11, melting point of Laser+ PET varies depending on specific grade but overall melting point is 241-246oC. Melting point of F1CC PET homopolymer is in a range of 250-265oC (www.chembk.com). Consequently the melting point will be within the range of 241-265oC, depending on the content of each polyester.
With respect to claim 15, Laser+ PET has crystallization temperature of 245oC. For Torray F1CC the melt crystallization temperature is in a range of 140-230oC, maximum rate of crystallization generally occurs at 180oC. Based on the tradename available information the crystallization temperature of the alloy will be less than 245oC due to presence of F1CC PET.
With respect to claim 16, additives in Ye include pigments, UV Absorbers, optical brighteners [0022] with titanium dioxide specifically named as pigment utilized to make translucent or white films [0002].
With respect to claim 17, PET mixture having two PET polymers having differing molecular weights is inherently called bimodal. This is evidence by difference between intrinsic viscosity of Laser+ PET and F1CC PET as disclosed in Ye.
Claims 19 and 20 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Ye (US 2005/0079342).
With respect to claim 19, Ye discloses polyethylene terephthalate blends with talc. Following PET polymers were utilized (see claim 1):
Laser+ PET having intrinsic viscosity of 0.83 [0037], is a PET comprising low amount of isophthalate comonomer, encompassed by the term “polymer”
F1CC PET having intrinsic viscosity of 0.61 [0038] and
KoSa PET having intrinsic viscosity of 0.66 [0038]
Based on the intrinsic viscosities of the polyester Laser+ PET has higher molecular weight than F1CC and KoSa because the higher the viscosity the higher the molecular weight.
Talc of Ye is utilized in amount of 0.1-20% based on the total mixture of polymers (claim 14).
Example 1 of Ye discloses forming pellets of Laser + copolyester with 30% of talc. Formed pellets are mixed with two PET polymers wherein which are encompassed by “PET polymers”. Example 13 discloses pelletized mixture of Laser + copolyester with 30% of talc. Pellets are then mixed with PET homopolymer. As such Ye only discloses use of PET polymers.
With respect to claim 20, PET mixture having two PET polymers having differing molecular weights is inherently called bimodal. This is evidenced by difference in intrinsic viscosity of Laser + PET and F1CC PET.
Claim 21 is rejected under 35 U.S.C. 102(a)(2) as being anticipated by Ye (US 2005/0079342).
With respect to claim 21, Ye discloses polyethylene terephthalate blends with talc. Following PET polymers were utilized (see claim 1): PET meets the definition of PAT.
Laser+ PET having intrinsic viscosity of 0.83 [0037], is a PET comprising low amount of isophthalate comonomer, encompassed by the term “polymer”
F1CC PET having intrinsic viscosity of 0.61 [0038] and
KoSa PET having intrinsic viscosity of 0.66 [0038]
Based on the intrinsic viscosities of the polyester Laser+ PET has higher molecular weight than F1CC and KoSa because the higher the viscosity the higher the molecular weight.
Talc of Ye is utilized in amount of 0.1-20% based on the total mixture of polymers (claim 14).
Example 1 of Ye discloses forming pellets of Laser + copolyester with 30% of talc. Formed pellets are mixed with two PET polymers wherein which are encompassed by “PET polymers”. Example 13 discloses pelletized mixture of Laser + copolyester with 30% of talc. Pellets are then mixed with PET homopolymer. As such Ye only discloses use of PET polymers.
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.
2. Claims 10, 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Ye (US 2005/0079342) in view of Chen (CN 107325500).
Discussion of Ye from paragraph 1 of this office action is incorporated here by reference. In summary Ye discloses composition comprising two polyesters one having higher molecular weight and second having lower molecular based weight on the difference in the disclosed intrinsic viscosity along with talc. Talc is first made into a master batch with high molecular weight then pelletized masterbatch is added to the lower molecular weight. The composition is utilized to form biaxially oriented films. The films of Ye have to exhibit specific haze, transparency, gloss and color.
With respect to claim 10, while Ye admits that titania is widely utilized to obtain translucent or while films, but does not does not report the combination of both talc and titania in claimed combined concentration.
Chen discloses composition for making PET films which also has good color appearance. The PET is mixed with 15-40 wt.% of colorant and 20-50 wt% of filler, wherein colorant includes titanium dioxide.
In the light of the above disclosure it would have been obvious to one having ordinary skill in the art at the time of the instant invention to utilize titanium dioxide disclosed in Ye in combination with talc and in amounts disclosed by Chen. Such modification would allow one of ordinary skill in the art to obtain desired translucency or white composition that has uniform color distribution.
With respect to claims 12-14, and the properties of oxygen permeation:
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount (eg. [0036] discloses PET alloy with and without talc wherein the content of talc in the instant invention is encompassed by Ye). Therefore, the claimed effects and physical properties, i.e. (permeability) would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
This analysis is further supported by the fact that Ye teaches use of bottle grade PET and the talc filler is a platelet which aligns with the surface of the film [0014]. One of ordinary skill in the art would also know that platelet type silicate fillers are well known and utilized in the industry to lower the gas permeability of the polymeric films in general due to their alignment within the film. Their use includes making soft drink bottles and food packaging.
Claims 19 and 21 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Walsh (US 5,589,530).
With respect to claims 19 and 21, Walsh discloses blend of low molecular weight PBT and high molecular PBT inherently rendering the PBT within the composition as bimodal (Abstract) which result of the two polymers having different molecular weights. Obtain PBT mixture (Alloy) has excellent melt viscosity by including lower molecular weight PBT. Figure 1 shows blend of PBT high molecular weight (1100 poise) with low molecular weight PBT (300 poise). In addition to PBT mixture, the composition comprised reinforcing filler selected from glass fiber, talc, mica and clay or combination thereof (claim 14 of Walsh).
As such the use of talc is clearly envisaged (col. 6, l. 25-27). Based on the teachings of Walsh talc can also be utilized in combination with glass fibers. The glass fiber is utilized in amount of 2.5-60% (col. 6, l. 62-66), preferably 5-55 parts and most preferably 20-40 parts. Consequently, even if talc is used in combination with glass fibers the most preferred range of reinforcing glass fiber is 20-40 parts, where talc would meet the minimum content required by instant claims.
In the light of the above disclosure at the time instant invention was filed it would have been obvious to one having ordinary skill in the art to utilize talc in lieu of or in addition to glass fiber as argued by the applicants and thereby obtain the claimed invention. Specifically, talc as listed in Walsh’s alternative reinforcing filler which would have to be utilized in an amount sufficient to impart reinforcing properties to the PBT.
The examiner invites applicants to an interview to discuss possible amendment that may put the application in better condition for allowance (subject to updated search). Such could include amounts of each PET portion, perhaps limiting viscosity or average molecular weight. It is difficult to propose an amendment, because applicant’s own specification seems to include only the properties of an alloy as a whole and not the PET or PAT polymers themselves.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATARZYNA I KOLB whose telephone number is (571)272-1127. The examiner can normally be reached M-F.
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767
June 25, 2026
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