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 § 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 and 17-21 are rejected under 35 U.S.C. 103 as being unpatentable
over Germroth et al. et al (US 9169388), cited in the previous Office Action in view of Crawford (US 20070142511), necessitated by amendment.
Regarding corresponding limitations of claims 1-4, 6, 17, 19 and 21, Germroth teaches the following polyester composition:
(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 amended claim 20, Germroth teaches a process of making a polyester above (see Example 1A at 138:30) , where the molar ratio of glycol component/dicarboxylic acid component added in Step (I) is 1.0-1.5/1.0 (see claim 26).
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.
However, Germroth fails to disclose newly claimed limitation requiring 0-10 ppm of tin residues.
Crawford teaches the following:
A polyester composition containing at least one following polyester:
(a) a dicarboxylic acid component comprising:
(i) about 90 to about 100 mole % of terephthalic acid residues;
(ii) about 0 to about 10 mole % of aromatic and/or aliphatic dicarboxylic acid residues having up to 20 carbon atoms; and
(b) a glycol component comprising:
(i) about 1 to less than 90 mole % 2,2,4,4-tetramethyl-1,3-cyclobutanediol residues; and
(ii) about 0 to about 89 mole % cyclohexanedimethanol residues and vi) less than about 2 mole % of a modifying glycol having from 3 to 16 carbon atoms (see claim 1).
Crawford discloses the amount of tin atoms present in the final polyester can be from 1 to 400 ppm tin atoms based on the weight of the final polyester (see claim 84).
Crawford teaches that the polyester above is superior to certain commercial polymers with respect to one or more of high notched Izod impact strength, certain glass transition temperature (Tg), certain inherent viscosities, good clarity, good color, and certain flexural modulus (see 0008).
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 Crawford’s lithium range since it leads to a polymer with superior notched Izod impact strength, good clarity and color.
Note that Crawford fails to teach a catalyst system comprising lithium and aluminum and 10 ppm or less
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 10 ppm or less
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 in view of Crawford as applied to claims 1-4, 6-10, 14-15 and 17-21 above, and further in view of Pearcy et al (US20140113094), cited in previous Office Action.
Germroth and Crawford fails to teach 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 modified Germroth's composition, since it is a known material based on its suitability for its intended use.
Response to Arguments
Applicant’s arguments with respect to claims 1-4 and 6-21 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Amendments to claims 1, 2 and 20 are noted. As a result, rejections under 35 USC 112(a) and 35 USC 101 are withdrawn.
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 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
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