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
All the references cited in the International Search Report have been considered. None is anticipatory. The most pertinent of these references have been applied below.
Election/Restrictions
The applicant has elected Group I (claims 1-8) and the species of dimethylformamide and terephthalic acid without traverse.
This restriction is made FINAL. See previous action for the reasons of applying restriction.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claim(s) 1-8 (is)are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 1 fails to define YID, which is not defined in the specification either. The limitation is not obvious and understood by one of ordinary skill in the art and does not appear from internet or textbook search.
Claim Rejections - Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claim(s) 1-8 is (are) rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 10-13 of US 12077634.
‘634 (claims 10-13) discloses a polyester copolymer comprises 1 to 90 wt % of the residue of bis-2-hydroxyethyl terephthalate, a diol comonomer of cyclohexanedimethanol, isosorbide, or diethylene glycol, terephthalic acid, and ethylene glycol. The polyester copolymer shows an intrinsic viscosity of 0.50 to 1.0 dl/g and value of (Hunter L value)−(Hunter b value) measured with respect to a 6 mm-thick specimen of the polyester copolymer is 87 or more. Both ranges fall within the claimed ranges of instant claims 7-8. One ordinary skill in the art would have expected the polyester copolymer of ‘634 to feature the properties (equation 1, A, B, YID) of instant claims 1-4, because ‘634 obviously satisfy all of the material and chemical limitations (the disclosed polyester copolymer structure) of the instant invention-see MPEP 2112.01. The rejection is further supported by the fact that the polyester copolymer of ‘634 shows the same structure, intrinsic viscosity, and Hunter values. The rejection has been applied further in view of the above 112b rejection regarding “YID”.
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.
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]. 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 properties of claims 1-4 and 8 (equation 1, A, B, YID, and Hunter values), 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. The rejection has been applied further in view of the above 112b rejection regarding “YID”.
The limitation of “recycled” in claim 1 is a product-by-process limitation. 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.
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. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached on 571.572.1302. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SHANE FANG/Primary Examiner, Art Unit 1766
Prosecution Insights