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 102 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 103 rejections have been maintained, but the position has been modified due to the amendment.
Claim Rejections - 35 USC § 103
Claim(s) 1 and 5-13 is (are) rejected under 35 U.S.C. 103(a) as being unpatentable over Tanaka et al. (JP1993186571, machine translation provided) evidenced by Inada et al. (US 20040019234, listed on IDS and ISR).
As to claims 1 and 5-13, 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, a heating temperature that would inherently dissolve bis(2-hydroxyethyl) terephthalate in ethylene glycol (evidenced by Inada 37,Ex.2,claim 5) and yield an oligomer. The molar ratio of diols to terephthalic acid is 1.22, falling within the range of claim 1. 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, a condition that meets the claimed ones in claims 10-11.
As to the new limitation of claim 1, one of ordinary skill would obviously recognize to dissolve bis(2-hydroxyethyl) terephthalate in ethylene glycol before esterification/polycondensation to facilitate reaction and material transfer at room temperature (25 °C) to 197 °C, because the boiling point of ethylene glycol is 197 °C. It is duly notified claim 1 does not claim the sequence of steps 1) to 3). Furthermore, Selection of any order of mixing ingredients is prima facie obvious. In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930).
As to claims 8-9, Tanaka (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, falling within the ranges. The claimed pressure is 0.1-30 kg/cm2 (73-2206 torr).
As to claim 13, 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 0.1 dL/g, falling within the range.
Tanaka is silent the claimed limitation of “recycled” bis(2-hydroxyethyl) terephthalate of claims 1 and 12, which is a product-by process limitation embed in process claims. The disclosed and claimed recycled bis(2-hydroxyethyl) terephthalate and the resultant PET copolymer appear to have no chemical and material difference. 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.
As to claim 7, Tanaka (9-10) discloses the diols comprises 0.5 to 3.5 mol % of 1,4-cyclohexanedimethanol and 1.0 to 2.5 mol % of diethylene glycol, so the total diols other than ethylene glycol is 1.5-6 mol% (other diols: ethylene glycol=0.015-0.1:1), overlapping with the claimed range. It has been found that where claimed ranges overlap ranges disclosed by the prior art, a prima facie case of obviousness exists - see MPEP 2144.05 I. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Therefore, it would have been obvious to one skilled in the art to have created/selected the claimed compositional elements and process from the composition disclosed in the Tanaka since it discloses all applicants' components, values and methods of making.
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Claim(s) 1 and 5-13 is (are) rejected under 35 U.S.C. 103(a) as being unpatentable over Tanaka et al. (JP1993186571, machine translation provided) in view of Konuma et al. (JP JP2006290996, listed on IDS and ISR).
Disclosure of Tanaka is adequately set forth in ¶1 and is incorporated herein by reference.
Tanaka is silent on the claimed recycled bis(2-hydroxyethyl) terephthalate and water solution comprising thereof, particularly in claims 2-3.
In the same area of endeavor of producing mold comprising PET copolymers, Konuma (1, 3, 5, 10, Ex.1, 25) discloses using recycled and purified bis-(2-hydroxyethyl) terephthalate (94.7 wt%, 5.3 wt% water at room temperature 25 °C) to improve the color and hue of PET.
Therefore, as to claims 1-13, it would have been obvious to one of ordinary skill in the art to have modified the process disclosed by Tanaka and replaced bis(2-hydroxyethyl) terephthalate with Konuma’s recycled and purified bis-(2-hydroxyethyl) terephthalate, because the resultant process would yield a PET copolymer with improved color and hue.
Response to Arguments
The argument for allowance of amended claims has been fully considered but not persuasive.
Applicant’s attack on the previous 102 rejection has been rendered moot. As to the new limitation of claim 1, one of ordinary skill would obviously recognize to dissolve bis(2-hydroxyethyl) terephthalate in ethylene glycol before esterification/polycondensation to facilitate reaction and material transfer at room temperature (25 °C) to 197 °C, because the boiling point of ethylene glycol is 197 °C. It is duly notified claim 1 does not claim the sequence of steps 1) to 3). Furthermore, Selection of any order of mixing ingredients is prima facie obvious. In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930).
Applicant's argument of unexpected results (5:1) is unpersuasive and insufficient. Evidence of unexpected results must be factually supported by an appropriate affidavit of declaration. See MPEP § 716.01(c). Unexpected results must, in actuality, be unexpected. Unexpected results must be compared with the closest art, in this particular case, Tanaka. Unexpected results must be commensurate in scope with the claims. The applicant must show unexpected results over the entire claimed range to support unexpected results for the entire range and generic structures. Therefore, Applicant should compare several compositions containing claimed components of A, B, and C in amounts at several data points over the claimed range to several compositions containing the same claimed components of A, B, and C in amounts at several data points outside of the claimed range, including data points close to and far from the claimed range.
The applicant individually attacked Konuma (5:2) for not teaching the claimed solution. One cannot show non-obviousness by attacking references individually where the rejections are based on combinations of references. See MPEP-2145. The primary reference, Tanaka, teaches a bis(2-hydroxyethyl) terephthalate solution in ethanol. Konuma’s mere disclosure of bis(2-hydroxyethyl) terephthalate (actually can be in an aqueous solution) does not constitute a teaching away from any of these alternatives, because such disclosure does not criticize, discredit, or otherwise discourage the claimed invention.
Therefore, the previous restriction and 103 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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