DETAILED ACTION
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 .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 20 rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 20 depends on claim 1 and includes a limitation, stipulating TMCD monomer incorporation to the polymer backbone at amount of greater than 55 mol%.
Meanwhile, independent claim 1 recites that amount of such monomer in the polymer should not exceed 50 mol %.
Appropriate correction is required.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
The claimed invention is directed to non-statutory subject matter. The claim does not fall within at least one of the four categories of patent eligible subject matter because the claim 20 represents a method claim without any limitations related to the method steps.
Appropriate amendments are required.
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, 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.
Claims 1-4, 6-10, 14-15, 17-19 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Germroth et al. et al (US 9169388).
Regarding corresponding limitations of claims 1-4, 6, 17, 19 and 21, Germroth teaches a polyester composition comprising:
(I) at least one polyester which comprises:
a) a dicarboxylic acid component comprising:
i) 80 to 100 mole % of terephthalic acid residues;
ii) 0 to 20 mole % of aromatic dicarboxylic acid residues having up to 20 carbon atoms; and
iii) 0 to 10 mole % of aliphatic dicarboxylic acid residues having up to 16 carbon atoms; and
(b) a glycol component comprising:
i) 30 to 40 mole % of 2,2,4,4-tetramethyl-1,3-cyclobutanediol residues (TMCD); and
ii) 60 to 70 mole % of cyclohexanedimethanol residues(CHDM), and
(II) at least one thermal stabilizer chosen from at least one of alkyl phosphate esters, aryl phosphate esters, mixed alkyl aryl phosphate esters, reaction products thereof, or mixtures thereof;
wherein the total mole % of the dicarboxylic acid component is 100 mole %, and
the total mole % of the glycol component is 100 mole %; and
wherein the inherent viscosity of said polyester is from 0.55 to 0.68 dL/g as determined in 60/40 (wt/wt) phenol/tetrachloroethane at a concentration of 0.25 g/50 ml at 25° C (see claim 1).
In reference to claim 2, Germroth discloses that the polyester comprises from 0.01 to 10 mole % of ethylene glycol residues (see claim 6).
In reference to claim 17, Germroth discloses 72.1 and 71.7 % cis TMCD (see Table 9, Entries A and C, see 159:60).
Regarding claims 18 and 21, Germroth discloses blends with polyetherimides (see claim 25) and articles of manufacture (see claim 18).
In reference to catalyst-related limitations of claims 1, 7-10, 14 and 15, Germroth discloses at least one catalyst comprising at least one tin compound at 10-300 ppm (see 117:55), and optionally an aluminum compound with lithium hydroxide (see claim 26). Since such catalysts as titanium, zinc, manganese and germanium are optional (see claim 26), their amount can be equal to 0 ppm.
Note that Germroth fails to teach a catalyst system comprising lithium and aluminum and less than 30 ppm of tin in one example.
However, a genus does not always anticipate a claim to a species within the genus. However, when the species is clearly named, the species claim is anticipated no matter how many other species are additionally named. Ex parte A, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990) See also MPEP 2131.02.
Therefore, it would have been obvious to a person of ordinary skills in the art before the effective filing date of the invention to use a catalyst system comprising lithium and aluminum and less than 30 ppm of tin, since they clearly named in the reference.
Claims 11-13 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Germroth as applied to claims 1-4, 6-10, 14-15, 17-19 and 21 above, and further in view of Pearcy et al (US 20140113094).
Germroth fails to teach lithium and aluminum amounts, their ratio and type of aluminum compound used.
Pearcy teaches a copolyester comprising the following residues:
100% mol of terephthalic acid ester;
21.4%-35 % mol of 2,2,4,4-tetramethyl 1.3- cyclobutanediol (TMCD);
62.4%- 78.5% mol of 1,4-cyclohexanedimethanol (CHDM) (see Examples 87-91 at Table 9 and 114-116 at Table 10, see pages 22 and 23).
Regarding claims 1, 7, 9, 11- 14 and 19, Pearcy teaches 20 ppm of lithium atoms, 19 ppm of aluminum atoms and 6 ppm of phosphorus atoms (see Example 114 at Table 10).
The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) , 325 U.S. at 335, 65 USPQ at 301, see also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960), Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988) and MPEP 2144.07.
Therefore, it would have been obvious to a person of ordinary skills in the art before the effective filing date of the invention to use Pearcy’s lithium hydroxide/aluminum compound catalyst component in Germroth’s composition, since it is a known material based on its suitability for its intended use.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GREGORY LISTVOYB whose telephone number is (571)272-6105. The examiner can normally be reached 9am-5pm EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere Kelley can be reached at (571) 270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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GL
/GREGORY LISTVOYB/Primary Examiner, Art Unit 1765