DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-4, 6, 7, 9-20, 22 and 23 are pending as amended on 8/12/2026.
The new grounds of rejection set forth below are necessitated by Applicant’s amendment to claim 1 limiting the glycol component to permitting 0 to less than 10 mol% of ethylene glycol residues. Therefore, this action is properly made final.
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
Election/Restrictions
Claim 22 has been amended to a process of making a polyester composition. The invention originally claimed (and which is still recited in the remaining pending claims) is a polyester composition (product).
The groups of inventions listed above (i.e., Group I: Product claims 1-4, 6, 7, 9-20 and 23; Group II: Process claim 22) do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features. A lack of unity a posteriori can be established by demonstrating the lack of a special technical feature among the cited groups of inventions. The lack of a special technical feature can be established if the common technical feature among the cited groups of inventions does not define a contribution over the prior art. (See MPEP 1850, PCT Rule 13.2). In this case, the common technical feature is a polyester composition as recited in claim 1. This common technical feature is known in the art: See the rejection of claim 1 below. Therefore, because the common technical feature is known in the art, the common technical feature does not amount to a special technical feature. Because no special technical feature can be established for the cited groups of inventions, there is lack of unity among the cited groups of inventions.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 22 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Rejections - 35 USC § 103
Claim(s) 1-4, 6-7, 9-12, 15-20 and 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Porter et al (US 2011/0144266).
As to claims 1, 2, 7 and 23, Porter discloses a polyester composition [0002, 9] (which is formed into articles [0002, 8]) comprising at least one polyester which comprises:
A dicarboxylic acid component comprising:
70-100 mol% terephthalic acid residues [0072] (meeting the presently claimed range of 70-100 mol%);
0 to about 30 mol% of aromatic and 0 to 10 mol% of aliphatic dicarboxylic acid residues [0073-4] (falling within the presently claimed range of 0 to 30 mol%);
A glycol component comprising:
21 to 50 mol% 2,2,4,4-tetramethyl-1,3-cyclobutanediol (TMCD) residues [0075], falling within the presently claimed range of 10 to 60 mol% (and substantially overlapping the range of 20 to 40 mol% recited in claim 3);
50 to 79 mol% 1,4-cyclohexanedimethanol (CHDM) residues [0077] falling within the presently claimed range of 40 to 90 mol% (and substantially overlapping the range of 60-80 mol% recited in claim 4);
25 mol% or less of modifying glycols [0680-1] (in some embodiments excluding ethylene glycol, and wherein several named species correspond to those recited in instant claim 2 [0681]), and
Wherein the total mol% of diacid component is 100 mol% and total mol% of glycol component is 100 mol% [0077], and, wherein the polyesters contain no ethylene glycol residues [0651] (meeting the recited range of 0 to less than 10 mol%).
Porter further teaches that the polymerization to prepare the polyester may be carried out in the presence of one or more conventional polymerization catalysts, and names several preferred catalyst systems, including Zn/Ti/Co/P [0695]. It would have been obvious to the person having ordinary skill in the art to have selected any preferred catalyst system disclosed by Porter, including Zn/Ti/Co/P, in order to facilitate the disclosed polyester condensation reaction in a conventional manner, thereby arriving at a polyester comprising catalyst residues of titanium (Ti) atoms and Zinc (Zn) atoms, and which comprises 0 ppm tin, no manganese and no gallium atoms (due to the selection of a catalyst which does not include tin, manganese or gallium).
As to claims 3 and 4, when forming a polyester comprising terephthalic acid residues and a diol component including TMCD and CHDM residues, as taught by Porter, it would have been obvious to the person having ordinary skill in the art to have selected any appropriate molar percentages for each of the TMCD and CHDM residues from within the corresponding ranges for each of TMCD and CHDM taught by Porter, including percentages within the presently claimed ranges, in order to provide a polyester as disclosed by Porter having a desired toughness and crystallization half time [0700-702]. Case law has established that a prima facie case of obviousness is established where the claimed ranges overlap the ranges disclosed by the prior art. See MPEP 2144.05.
As to claim 6, Porter discloses an inherent viscosity from 0.50 to 1.2 dL/g [0077], which falls within the claimed range.
As to claims 9-11 and 15, Porter further teaches that suitable catalysts include organo-zinc or tin compounds, and that the use of this type of catalyst is well known in the art. Porter names zinc acetate as an example catalyst. Porter further names “other catalysts,” which may include those based on titanium, and teaches that the catalyst amounts typically range from about 10 to about 500 ppm based on the catalyst metal [0719].
Considering Porter’s disclosure of an example of a suitable catalyst system which combines both zinc and titanium (Zn/Ti/Co/P [0695]), it would have at least been obvious to the person having ordinary skill in the art to have formed a catalyst system by selecting organo-zinc (specifically, zinc acetate, which is recited in instant claim 15) from Porter’s two disclosed options of organo-zinc or tin in [0719], in combination with a titanium catalyst (from Porter’s list of “other catalysts” in [0719]), and, to have utilized each of the combined catalysts in any amount within Porter’s disclosed range of 10 to 500 ppm, including amounts within the ranges recited in claims 9 and 10, in order to achieve a desired catalytic effect on polymerization/facilitate the reaction of monomers as taught by Porter in [0716]. Case law has established that a prima facie case of obviousness is established where the claimed ranges overlap the ranges disclosed by the prior art. See MPEP 2144.05. As to claim 11, Porter does not disclose different suitable ranges for different catalysts in [0719]. Therefore, one having ordinary skill in the art would have at least envisaged using equivalent amounts of each catalyst component when forming a combination thereof, which corresponds to a ratio (i.e., 1:1) within the range of 1:3 to 3:1 recited in claim 11.
As to claim 12, Porter discloses that the catalyst amounts can range from 10 to 500 ppm based on the catalyst metal [0719]. It would have been obvious to the person having ordinary skill in the art to have selected any appropriate amount of zinc and titanium within Porter’s disclosed range of 10 to 500 ppm in order to achieve a desired catalytic effect on polymerization balanced with minimizing disadvantages associated with using high amounts of catalyst (color, cost, etc…), including amounts of each catalyst corresponding to a total metal concentration within the range recited in claim 12. Case law has established that a prima facie case of obviousness is established where the claimed ranges overlap the ranges disclosed by the prior art. See MPEP 2144.05.
As to claims 16, Porter discloses an embodiment wherein the molar ratio of cis/trans TMCD is greater than 70 mol% cis and less than 30 mole% trans [0656].
As to claim 17, Porter discloses a blend with polycarbonate [0009]. See also claim 1, component (2).
As to claim 18, Porter discloses including a thermal stabilizer [0736], which is a phosphorus compound [0738].
As to claim 19, the methyl content of a polyester composition as suggested by Porter must at least decrease as the content of TMCD (which contains four methyl groups) decrease. As set forth above, when forming a polyester comprising terephthalic acid residues and a diol component including TMCD and CHDM residues, as taught by Porter, it would have been obvious to the person having ordinary skill in the art to have selected any appropriate molar percentages for each of the TMCD and CHDM residues from within the corresponding ranges for each of TMCD and CHDM taught by Porter, including percentages within the presently claimed ranges, and further including corresponding to a methyl group content within the range recited in claim 19, in order to provide a polyester as disclosed by Porter having a desired toughness and crystallization half time [0700-702]. Case law has established that a prima facie case of obviousness is established where the claimed ranges overlap the ranges disclosed by the prior art. See MPEP 2144.05.
As to claim 20, Porter suggests a composition as set forth in claims 1 and 11, as set forth above. Porter discloses an inherent viscosity from 0.50 to 1.2 dL/g [0015], as well as narrower preferred ranges, such as in [0231] (0.50 to 0.75 dL/g) which fall within the presently recited range of 0.45 to 0.75 dL/g. Porter further teaches a b* value ranging from 0 to 5 [0713], which falls within the presently claimed range of less than 6.
Claim(s) 13 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Porter et al (US 2011/0144266) in view of Barkey et al (US 3404121).
The rejection above over Porter is incorporated here by reference.
As to claims 13 and 14, Porter fails to name a particular titanium catalyst.
Barkey discloses a catalyst-stabilizer system which inhibits the formation of undesirable by-products during a polyesterification process (col 2, lines 61-63). The catalyst system comprises, titanium, zinc and phosphorus components (col 1, lines 10-25), and the polyester is formed from diacids such as terephthalic acid (col 5, lines 29-30) and glycols such as CHDM (col 5, line 60). Barkey teaches that the metal compounds can be the alkanoates, oxides and/or esters of the metal (naming zinc acetate as an example of the zinc compound). Barkey names titanium dioxide and tetraisopropyl titanate (aka titanium isopropoxide) as examples of the titanium compound (col 4, lines 48-60).
When forming a polyester utilizing a catalyst system comprising zinc acetate and titanium, as suggested by Porter, the person having ordinary skill in the art would have been motivated to utilize a titanium catalyst known in the art as being effective in combination with zinc acetate in order to ensure sufficient catalytic performance when reacting the monomers taught by Porter. Considering the overlap in the types of monomers used to form the polyesters in Porter and Barkey, and further considering Barkey’s disclosure of titanium dioxide and tetraisopropyl titanate as examples of titanium catalysts which are known for use in combination with a zinc catalyst, one having ordinary skill in the art would have had a reasonable expectation of success in selecting titanium dioxide or tetraisopropyl titanate as an effective titanium catalyst for forming a polyester composition as taught by Porter. It would have been obvious to the person having ordinary skill in the art, therefore, to have combined zinc, titanium and phosphorus components together to form a catalyst, as suggested by Porter, by utilizing titanium dioxide or tetraisopropyl titanate as Porter’s titanium component, in order to achieve a desired reactivity and polymerization rate throughout the synthesis of the polyester as taught by Porter.
Response to Arguments
Applicant's arguments filed 8/12/2026 have been fully considered.
Applicant’s arguments that the previously set forth rejections under 35 USC 112 and 103 have been overcome by amendment are persuasive. The previous rejections of the claims have been withdrawn.
The terminal disclaimer filed on 8/12/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of 18/257703 has been reviewed and is accepted. The terminal disclaimer has been recorded. The rejection on the ground of nonstatutory double patenting over claims of copending Application No. 18/257703 has been withdrawn.
The claims are not in condition for allowance in view of the new rejections set forth above.
Conclusion
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RACHEL KAHN whose telephone number is (571)270-7346. The examiner can normally be reached Monday to Friday, 8-5.
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/RACHEL KAHN/Primary Examiner, Art Unit 1766
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