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 .
The lined out IDS items were either not provided or not in English
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 12 and 19 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 12’s “0.50-1.5:5 to 5:1” is not understood. Is “0.50:5 to 5:1” intended? Is “1.5:5 to 5:1” intended?
Claim 19 lacks any discernable step.
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.
Claims 5 and 19 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 1 already required claim 5’s aromatic diacid (ie terephthalic acid). Claim 19’s high amount of TMCD in the polyester is not permitted by claim 1.
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 § 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 1-13 and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Crawford 2007/0142511.
Crawford claims (#49) making a polyester from 90-100% terephthalic acid (applicant’s “ai”) and glycols of 1-90% TMCD (applicant’s “bi), 0-89% cyclohexanedimethanol (applicant’s “bii”) and more than 10% ethylene glycol (applicant’s “bii”) in the presence of a titanium catalyst and optionally at least one catalyst that may be Li, Ga etc and combinations thereof. This is suggestive of using any of Crawford’s listed optional metals simultaneously together with Crawford’s required titanium. One such possibility is using a Ti catalyst, a Li catalyst and a Ga catalyst simultaneously rendering obvious applicant’s claim 1. See also MPEP 2111.03 II.
If the claim element is intended to encompass combinations or mixtures of the alternatives set forth in the Markush grouping, the claim may include qualifying language preceding the recited alternatives (such as "at least one member" selected from the group), or within the list of alternatives (such as "or mixtures thereof").
Also note Crawford’s claim 65 requires a minimum of 25% cyclohexanedimethanol. When combined with claim 49’s 10% minimum of ethylene glycol, the maximum TMCD present could only be 65%. Also see Crawford’s table 3 showing polyesters of 24.1-40% TMCD.
In regards to applicant’s dependent claims:
Crawford’s claim 49 states that the IV is 0.5-1.2dL/g – meeting applicant’s claim 6.
The amount of catalyst metal can be as low as 10ppm (paragraph 348) – meeting applicant’s claim 7.
The amount of catalyst metal can be 10-20,000ppm (paragraph 348) – meeting applicant’s claim 13.
The polyester may be blended with other polymers (Crawford’s claim 31) – meeting applicant’s claim 17.
Crawford’s claim 49 also includes phosphorous atoms – meeting applicant’s claim 18.
Various articles may be made from the polyester (paragraph 447) – meeting applicant’s claim 20.
Claims 1-13 and 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Crawford 2013/0072628.
Crawford claims (#22) reacting a polyester from dicarboxylic acid, 30-40% TMCD (ie applicant’s “bi”) and 70-60%cyclohexanedimethanol (ie applicant’s “bii”) with modifying glycol in the presence of at least one catalyst that may be Li, Ga etc. This is suggestive of using both a Li catalyst and a Ga catalyst – rendering obvious applicant’s use of the two simultaneously.
The dicarboxylic acid may be 70-100% terephthalic acid (Crawford’s claim 6) -which is applicant’s “ai”.
In regards to applicant’s dependent claims:
The polyester can have an inherent viscosity of 0.35-1.2dL/g (paragraph 441). Presumably the “whether or not glycolyzed” of this paragraph means the starting polymer or the final polyester. This meets applicant’s claim 6.
The total amount of catalyst metal can be 10-250ppm (paragraph 492) – meeting applicant’s claim 13. This also renders obvious applicant’s claims 10 and 11 (ie 20-1000ppm Li; 50-1000ppm Ga) as the two must sum to 10-250ppm. Applicant’s claim 12 ratio of Li/Ga encompasses most mathematical possibilities.
Greater than 70% cis TMCD may be used (paragraph 457) – meeting applicant’s claim 16.
The polyester (paragraph 494) may be blended with alkyd (another polyester) – meeting applicant’s claim 17.
Greater than 70% cis TMCD may be used (paragraph 457) – meeting applicant’s claim 16.
Phosphorous compounds may be added (paragraph 508) – meeting applicant’s claim 18.
Various articles may be coated with the polyester (paragraph 505) – meeting applicant’s claim 20.
Claim 14 rejected under 35 U.S.C. 103 as being unpatentable over Crawford 2007/0142511 or Crawford 2013/0072628 in view of Konishi 4057534.
Both Crawford references suggest lithium catalysts, but fail to identify species thereof.
Konishi (col 3 line 60-68) suggests various lithium catalysts for making polyesters such as lithium acetate.
It would have been obvious to select any known lithium catalyst for use in Crawford’s process.
Claim 15 rejected under 35 U.S.C. 103 as being unpatentable over Crawford 2007/0142511 or Crawford 2013/0072628 in view of Smith 3254055.
Both Crawford references suggest Gallium catalysts, but fail to identify species thereof.
Smith (col 2 line 61-68) suggests various gallium catalysts for making polyesters such as gallium acetate.
It would have been obvious to select any known gallium catalyst for use in Crawford’s process.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-21 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 and 7-21 of copending Application No. 18-257669 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application also claims (#1) a polyester of TPA/TMCD/diols from Li and Ga catalysts. The instant claims are broader in the sense that the additional diols need not be cyclohexanedimethanol.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID J BUTTNER whose telephone number is (571)272-1084. The examiner can normally be reached M-F 9-3pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi 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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/DAVID J BUTTNER/Primary Examiner, Art Unit 1765 1/21/26