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 not provided.
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.
Claim 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.
It is highly implausible that the polymerization employed only 10-50mol% TMCD, yet somehow results in >55mol% of the final polyester.
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 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 only permits up to about 50mol% TMCB, which is inconsistent with claim 19’s requirement of >55%.
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 and 6-20 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 from 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 (a modifying glycol) 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 Crawford’s TPA/CHDM/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 claim 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.
A majority of the cis TMCD if favored by Crawford (claim zz; paragraph 858; table 10) – meeting applicant’s claim 16.
Phosphorous stabilizers (Crawford’s claim 8) may be included – meeting applicant’s claim 18.
Crawford’s polymerization (paragraph 852) employs 1.2 mol glycols per mol of acid -meeting applicant’s claim 19.
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.
Applicant's arguments filed 6/28/26 have been fully considered but they are not persuasive.
Applicant provided no explanation how claim 19’s >55mol% is possible using 10-50mol% of the TMCD.
Applicant did provide any arguments relating to the rejection based on Crawford or the obviousness double patenting rejections.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DAVID J BUTTNER/Primary Examiner, Art Unit 1765 7/2/26
Prosecution Insights