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 .
Applicant’s election without traverse of claims 1-10 in the reply filed on 3/12/26 is acknowledged.
Claim Rejections - 35 USC § 102
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 1-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO2021/066363.
Heo 2022/0330423 is relied on as a translation.
Heo exemplifies polyesters based on cyclohexane dimethanol, terephthalic acid and isophthalic acid (resin A,B,C of table 1). The cyclohexane dimethanol provides applicant’s cyclohexane skeleton. The terephthalic acid and isophthalic acid provide applicant’s benzene rings. These are the preferred monomers of applicant’s example.
Heo extrudes the polyester and forms into a sheet (paragraph 120). Heo then stretches the sheet at a MD of 2.9-3 and a TD of 3.7-3.75 (table 2). This corresponds to applicant’s MD and TD (page 32 lines 13-18; table 1 of spec). Finally, Heo heat sets the film at 2400C (table 2) which corresponds to applicant’s thermosetting step (page 33 line 9 of spec).
Heo does not report the ∆intensity of applicant’s claim.
However, Heo utilizes the polyester preferred by applicant and follows the same stretching and heat setting preferred by applicant. The same ∆intensity must inherently result. If not, applicant’s specification is fatally flawed.
In regards to applicant’s dependent claims:
Heo does not report the ∆intensity of applicant’s claims 2-4 or the physical properties of claims 5-8. However, Heo utilizes the polyester preferred by applicant and follows the same stretching and heat setting preferred by applicant. The same ∆intensity and properties must inherently result.
Heo does not report the Mw of the polyester, although intrinsic viscosities of 0.67-0.70 dl/g (table 4) are measured. These intrinsic viscosities are believed to correspond to Mw’s within the range of applicant’s claim 10. This is ascertained from data provided in Dickerson 5773554 and the Hussain article in Polymer (Korea).
Dickerson (table I-B;II-B) links a Mw of 36,000 to an intrinsic viscosity of 0.75.
Hussain (table 3) links a molecular weight of ~26,000 to an intrinsic viscosity of ~0.5dl/g for PCT type polyesters.
One can interpolate this data to estimate the Heo’s Mw to be just above 30,000.
Claims 1-8 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lee WO92/14771.
Lee exemplifies (#1-4) polyesters based on cyclohexane dimethanol and dimethylterephthalate. The cyclohexane dimethanol provides applicant’s cyclohexane skeleton. The terephthalate provides applicant’s benzene rings. These are the preferred units of applicant’s example.
Lee (example 5) extrudes these polyesters and forms into a sheet. Lee then biaxially stretches the sheets at 3X by 3X (table 1). This corresponds to applicant’s MD and TD (page 32 lines 13-18; table 1 of spec). Finally, Lee heat sets the film at 230- 2400C (table 1) which corresponds to applicant’s thermosetting step (page 33 line 9 of spec).
Lee does not report the ∆intensity of applicant’s claim.
However, Lee utilizes the polyester preferred by applicant and follows the same stretching and heat setting preferred by applicant. The same ∆intensity must inherently result. If not, applicant’s specification is fatally flawed.
In regards to applicant’s dependent claims:
Lee does not report the ∆intensity of applicant’s claims 2-4 or the physical properties of claims 5-8. However, Lee utilizes the polyester preferred by applicant and follows the same stretching and heat setting preferred by applicant. The same ∆intensity and properties must inherently result.
Lee does not report the Mw of the polyester, although intrinsic viscosities of 0.78, 0.74, 0.75 and 0.76 dl/g are measured (page 9 line 3, page 10 lines 19,32, page 11line 6). These intrinsic viscosities are believed to correspond to Mw’s within the range of applicant’s claim 10. This is ascertained from data provided in Dickerson 5773554.
Dickerson (table I-B;II-B) links a Mw of 36,000 to an intrinsic viscosity of 0.75.
One can estimate Lee’s polyester’s have a Mw of approximately 36,000.
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.
Claim 10 rejected under 35 U.S.C. 103 as being unpatentable over WO2021/066363.
WO2021/066363 applies as explained above.
Heo 2022/0330423 is relied on as a translation.
Heo does not report the Mw of the polyester, although intrinsic viscosities of 0.67-0.70 dl/g (table 4) are measured. In the event that these exemplified intrinsic viscosities fail to correspond to Mw’s within that of claim 10, Heo (paragraph 25) more broadly teaches intrinsic viscosities of 0.6-0.9dl/g. This broad range of intrinsic viscosities correspond to Mw’s overlaping applicant’s Mw range.
Operating anywhere within Heo’s broad teachings would have been prima facie obvious.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID J BUTTNER whose telephone number is (571)272-1084. The examiner can normally be reached M-F 9-3pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID J BUTTNER/Primary Examiner, Art Unit 1765 4/14/26
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