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 § 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.
Applicant’s claim language in (2)(i) of “tin atoms and/or titanium atoms” can only be interpreted as calling for a) 0ppm tin or b) 0ppm titanium or c) 0ppm tin + titanium. Crawford’s claim does not require the presence of tin. Therefore, the 0ppm tin meets applicant’s (2)(i) requirement.
In regards to applicant’s dependent claims:
Crawford’s claim 49 calls for 0-10% additional diacid – meeting applicant’s claim 5.
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 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 “(a)(i)”.
The cited claims do not require the presence of any tin or titanium.
In regards to applicant’s dependent claims:
A secondary diacid may ne used (ii) and (iii) of claim 1 – meeting applicant’s claim 5.
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.
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.
Applicant's arguments filed 7/17/26 have been fully considered but they are not persuasive.
Applicant argues claim 1 was amended to eliminate any titanium or <10ppm titanium with <10% ethylene glycol.
This is not convincing. Applicant chose to amend with the phrase “tin atoms and/or titanium atoms”. Applicant did not amend with “0ppm titanium and 0ppm tin”. Applicant did not amend with “0ppm titanium and tin”. The presence of “or” within “and/or” can only be interpreted as requiring one or the other be at a 0ppm level.
With the above in mind, the presence of titanium in Crawford 2007/0142511 is not forbidden by applicant’s claims as long as there is 0ppm tin. Similarly, the presence of tin in Crawford 2013/00722628 is not forbidden by applicant’s claims as long as there is 0ppm titanium.
The terminal disclaimer overcomes the obviousness double patenting.
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 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 7/28/26
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