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 .
DETAILED ACTION
Response to Amendment
The previous 112 rejection has been overcome by the amendment supported by the original disclosure.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The previous restriction and 102 rejections have been maintained, but the position has been modified due to the amendment.
Claim Rejections - 35 USC § 102
Claim(s) 1-8 is(are) rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tanaka et al. (JP1993186571, machine translation provided).
As to claims 1 and 5-7, Tanaka (claims, abs., examples) discloses a process of producing a PET copolymer for molding application (Ex.1, 1, 13, 26) comprising mixing 13.0 kg of terephthalic acid (78.25 mol), 0.27 kg of 1,4-cyclohexanedimethanol (1.87 mol), and 5.82 kg of ethylene glycol (93.76 mol) and 0.30 kg of bis(2-hydroxyethyl) terephthalate. The slurry was then sequentially fed over 4 hours to an esterification tank maintained at 250°C and yield an oligomer. After the esterification reaction, a polycondensation is conducted at temperature from 250°C to 280°C, and the pressure was gradually reduced from atmospheric pressure and maintained at 0.5 mmHg for 2.5 hours. Tanaka further (14) discloses when carried out in multiple stages, the first stage polycondensation (esterification) is usually 250 to 290°C and the pressure is usually 20-500 Torr. Tanaka teaches a process of making and raw materials that are indistinguishable from the process recited in instant pgpub [0033-37].
As to claim 7, the intrinsic viscosity (9,15) of the copolymer obtained from the polycondensation is usually 0.45 to 0.80 dL/g or 0.7 to 1 dL/g, falling within the claimed range.
The wt% of bis(2-hydroxyethyl) terephthalate in the aforementioned Tanaka’s polyester copolymer is 2% by calculation, falling with the range (1%-92%) of instant Ex.2-1 to 2-10 (instant Table 2). The wt% of bis(2-hydroxyethyl) terephthalate appears to be critical to the claimed property of equation 1, A, B, and YID as recited in claim 1. The mol% of ethylene glycol of the total diols in the aforementioned Tanaka’s polyester copolymer is 98% by calculation, falling within the range of instant [0020].
The limitation of “recycled BHET” and its properties of equation 1, A, B, and YID in claim 1 are product-by-process limitations. Thus, Claim 1-8 are product-by-process claims that are limited by and defined by the product. Determination of patentability is based on the product itself, not 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, 777 F. 2d 695, 698,277 USPQ 964,966 (Fed. Cir. 1985). See MPEP § 2113. In this case, the aforementioned Tanaka’s polyester copolymer shows no structural difference from the claimed ones.
In light of this, one of ordinary skill in the art would at once envisage the aforementioned Tanaka’s polyester copolymer would inherently exhibit the claimed Hunter values of claim 8, because in view of the substantially identical composition (in this case, the disclosed polyester copolymer structure) and process of producing thereof, it appears that the adduct would have inherently possessed the claimed properties. See MPEP § 2112.
Response to Arguments
The argument for allowance of amended claims has been fully considered but not persuasive.
The applicant attacked Tanaka for not teaching the claimed equation 1, A, B, and YID, properties of “recycled BHET” that is a product-by-process limitation. Determination of patentability is based on the product itself, not 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, 777 F. 2d 695, 698,277 USPQ 964,966 (Fed. Cir. 1985). See MPEP § 2113. In this case, the aforementioned Tanaka’s polyester copolymer shows no structural difference from the claimed ones. Since the PTO does not have proper means to conduct experiments, the burden of proof is now shifted to applicants to show otherwise. A case indicating that the burden of proof can be shifted to the applicant to show that the subject matter of the prior art does not possess the characteristic relied on whether the rejection is based on inherency under 35 U.S.C. 102 or obviousness under 35 U.S.C. 103. See MPEP § 2184. In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980).
Therefore, the previous restriction and 102 rejections have been maintained, but the position has been modified due to the amendment.
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 extension fee 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 date of this final action.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHANE FANG whose telephone number is (571)270-7378. The examiner can normally be reached on Mon-Thurs. 8am-6pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached on 571.572.1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHANE FANG/Primary Examiner, Art Unit 1766
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