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.
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, 5-6, and 8-13 is(are) rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tanaka et al. (JP1993186571, machine translation provided) and evidenced by Inada et al. (US 20040019234, listed on IDS and ISR).
As to claims 1, 5-6, and 8-13, 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 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.
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 of this title, 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(s) 4 and 7 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).
Disclosure of Tanaka is adequately set forth in ¶1 and is incorporated herein by reference.
As to claim 4, 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.
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.
Claim(s) 1-13 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 (94.7 wt%, 5.3 wt% water at room temperature 25 °C), because the resultant process would yield a PET copolymer with improved color and hue.
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.
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/SHANE FANG/Primary Examiner, Art Unit 1766