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 15 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 15’s “preferably” is never proper claim language.
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 5 calls for aromatic units from diacid – already required by claim 1’s terephthalic acid.
Claim 1 only permits up to about 50mol% TMCB, which is inconsistent with claim 19.
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 § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-16 and 20 rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pearcy 2014/0113094.
Pearcy exemplifies (#13) a polyester made from dimethylterephthalate (ie applicant’s (a)(i)), neopentyl glycol (ie applicants (b)(ii) and tetramethylcyclobutanediol (ie applicant’s (b)(i)). The polyester (table 2) is said to have 66.7mol% NPG and 31.6mol% TMCD. There is 32ppm lithium and 57ppm aluminum present (table 2).
In regards to applicant’s dependent claims:
The cited example’s inherent viscosity is 0.69dL/g – meeting applicant’s claims 4 and 6.
No Ti, Mn, or Zn is present – meeting applicant’s claims 7,8 and 9.
The ratio of Li/Al is 32:57 – meeting applicant’s claim 12.
The total catalyst metal is 32ppm + 57ppm – meeting applicant’s claim 13.
Lithium hydroxide monohydrate (paragraph 214) is used as the lithium source. The claimed final composition would be expected to be the same as when using the lithium hydroxide of applicant’s claim 14. Applicants claim 14 is essentially a product by process claim.
Aluminum isopropoxide (paragraph 214) is used as the aluminum catalyst – meeting applicant’s claim 15.
The TMCD is 70.5% cis and 29.5% trans (table 2) – meeting applicant’s claim 16.
The polyester is useful as various articles (paragraph 171) – meeting applicant’s claim 20.
Claims 1-16,18 and 20 rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pearcy 2014/0113094.
Pearcy exemplifies (#8) a polyester made from dimethylterephthalate (ie applicant’s (a)(i)), neopentyl glycol (ie applicants (b)(ii) and tetramethylcyclobutanediol (ie applicant’s (b)(i)). The polyester (table 2) is said to have 59.1mol% NPG and 39.3mol% TMCD. There is 31ppm lithium, 48ppm aluminum present and 31ppm tin present (table 2). Applicant’s “optionally less than 30ppm tin” permits more than 30ppm tin as this is an optional limitation.
In regards to applicant’s dependent claims:
The cited example’s inherent viscosity is 0.711dL/g – meeting applicant’s claims 4 and 6.
No Ti, Mn, or Zn is present – meeting applicant’s claims 7,8 and 9.
The ratio of Li/Al is 31:48 – meeting applicant’s claim 12.
The total catalyst metal is 32ppm + 57ppm + 31ppm – meeting applicant’s claim 13.
Lithium hydroxide monohydrate (paragraph 214) is used as the lithium source. The claimed final composition would be expected to be the same as when using the lithium hydroxide of applicant’s claim 14. Applicants claim 14 is essentially a product by process claim.
Aluminum isopropoxide (paragraph 214) is used as the aluminum catalyst – meeting applicant’s claim 15.
The TMCD is 77% cis and 23% trans (table 2) – meeting applicant’s claim 16.
4ppm phosphorous is present – meeting applicant’s claim 18.
The polyester is useful as various articles (paragraph 171) – meeting applicant’s claim 20.
Claims 19 rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pearcy 2014/0113094.
Pearcy exemplifies (#67) a polyester made from dimethylterephthalate (ie applicant’s (a)(i)), neopentyl glycol (ie applicants (b)(ii) and tetramethylcyclobutanediol (ie applicant’s (b)(i)). The polyester (table 9) is said to have 25.3mol% NPG and 72.8mol% TMCD. There is 27ppm lithium, 50ppm aluminum present and 32ppm tin present (table 9). Applicant’s “optionally less than 30ppm tin” permits more than 30ppm tin as this is an optional limitation.
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.
Claim 18 rejected under 35 U.S.C. 103 as being unpatentable over Pearcy 2014/0113094.
Pearcy applies as explained above.
Cited example #13 lacks phosphorous.
However, Pearcy (paragraph 120) suggests the inclusion phosphorous based stabilizers.
Such an inclusion to Pearcy’s cited example would have been obvious for its expected benefit.
Claim 1-16,18 and 20 rejected under 35 U.S.C. 103 as being unpatentable over Pearcy 2014/0113094.
If applicant’s claim 1 is interpreted to only permit a maximum of 30ppm, then the following applies:
Pearcy’s example #13 applies as explained above.
This example contains 31ppm tin – slightly above applicant’s 30ppm maximum. However, Pearcy (paragraph 112,113) teaches the amount of tin may be as low as 3ppm.
It would have been obvious to lessen the cited example’s amount of tin to below 30ppm as this is directly taught by Pearcy.
Claim 17 rejected under 35 U.S.C. 103 as being unpatentable over Scott 6005059 in combination with Pearcy 2014/0113094.
Scott exemplifies (#1C) a 50/50 blend of polycarbonate with a polyester made from dimethylterephthalate (ie applicant’s (a)(i)), neopentyl glycol (ie applicants (b)(ii) and tetramethylcyclobutanediol (ie applicant’s (b)(i)). The ratio of neopentyl glycol to TMCD is 77/23. The catalysts used for making this example’s polyester is not identified. Scott (col 8 line 45-51) states the polyester can be made by processes known in the art.
Preparing such TPA/NPG/TMCD polyesters have been conducted in the prior art. Pearcy exemplifies (#13) a polyester made from dimethylterephthalate (ie applicant’s (a)(i)), neopentyl glycol (ie applicants (b)(ii) and tetramethylcyclobutanediol (ie applicant’s (b)(i)). The polyester (table 2) is said to have 66.7mol% NPG and 31.6mol% TMCD. The residual catalyst present is 32ppm lithium and 57ppm aluminum (table 2).
It would have been obvious to employ any known catalyst combination when producing Scott’s TPA/NPG/TMCD polyester. Pearcy shows Al + Li functions well and would have been an obvious choice.
Alternatively, it would have been obvious to add polycarbonate to Pearcy’s exemplified TPA/NPG/TMCD polyester as such blends are said to make good clear articles according to Scott.
Claim 19 rejected under 35 U.S.C. 103 as being unpatentable over Pearcy 2014/0113094.
Pearcy exemplifies (#67) a polyester made from dimethylterephthalate (ie applicant’s (a)(i)), neopentyl glycol (ie applicants (b)(ii) and tetramethylcyclobutanediol (ie applicant’s (b)(i)). The polyester (table 9) is said to have 25.3mol% NPG and 72.8mol% TMCD. There is 27ppm lithium, 50ppm aluminum present and 32ppm tin present (table 9).
This example contains 32ppm tin – slightly above applicant’s 30ppm. However, Pearcy (paragraph 112,113) teaches the amount of tin may be as low as 3ppm.
It would have been obvious to lessen the cited example’s amount of tin to below 30ppm as this is directly taught by Pearcy.
Claims 1-17 and 20 rejected under 35 U.S.C. 103 as being unpatentable over Crawford 2011/0144266 optionally in view of Pearcy 2014/0113094.
Crawford claims (#1) a blend of polycarbonate with a polyester terephthalic acid (applicants (a)(i)), cyclohexanedimethanol (applicant’s (b)(ii)) and tetramethylcyclobutanediol (applicant’s (b)(i)). The ratio of CHDM:TMCD is 65-70:30-35.
The catalyst residue resulting from making the polyester is not identified by the claim.
However, Crawford (paragraph 695) specifically calls for a Li/Al combination – rendering obvious applicant’s claim 1.
Pearcy provides further motivation to choose a catalyst combination of lithium + aluminum. Pearcy exemplifies (#13) a polyester made from dimethylterephthalate (ie applicant’s (a)(i)), neopentyl glycol (ie applicants (b)(ii) and tetramethylcyclobutanediol (ie applicant’s (b)(i)). The polyester (table 2) is said to have 66.7mol% NPG and 31.6mol% TMCD. There is 32ppm lithium and 57ppm aluminum present (table 2).
It would have been obvious to employ any known catalyst combination when producing Scott’s TPA/NPG/TMCD polyester. Pearcy shows Al + Li functions well and would have been an obvious choice.
In regards to applicant’s dependent claims:
Crawford (claim 1) calls for an inherent viscosity of 0.5-0.68dL/g for the polyester – meeting applicant’s claims 4 and 6.
Pearcy’s Li/Al ratio is 32:57 – meeting applicant’s claim 12.
Pearcy’s total catalyst metal is 32ppm + 57ppm – meeting applicant’s claim 13.
Lithium hydroxide monohydrate (paragraph 214) is used as Pearcy’s lithium source. The claimed final composition would be expected to be the same as when using the lithium hydroxide of applicant’s claim 14. Applicants claim 14 is essentially a product by process claim.
Aluminum isopropoxide (paragraph 214) is used as Pearcy’s aluminum catalyst – meeting applicant’s claim 15.
Crawford’s blend is useful as various objects (paragraph 759) – meeting applicant’s claim 20.
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 1-16 and 20 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1,3,11-16,18,20,29,32,35,40 and 42 of copending Application No. 18-257454 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application also claims polyesters of terephthalic acid/TMCD/2nd diol made with Li and Al catalysts (eg claim 1,3). The instant application is broader in the sense that the 2nd diol need not be CHDM.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-18 and 20 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 and 6-21 of copending Application No. 18-257692 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application also claims polyesters of terephthalic acid/TMCD/2nd diol made with Li and Al catalysts (eg claim 1). The instant application is broader in the sense that the 2nd diol need not be CHDM.
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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/DAVID J BUTTNER/Primary Examiner, Art Unit 1765 1/8/26