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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Perera et al. US 2016/0237240 A1 (present on IDS).
Regarding claims 1-2, 5, 15,17 and 20, Perera teaches a branched copolyester resin for extrusion blow molded bottles (para [0014]).
Perera discloses that the branched copolyester is made from terephthalic acid, ethylene glycol, bifunctional diacid other than terephthalic acid, diol other than ethylene glycol and a multifunctional compound such as pentaerythritol (which corresponds to the required branching comonomer component (c)) (reference claim 4 and para [0026]). Perera adds that the bifunctional diacid and the diol is about 1 to 30 mol% of the total copolyester (reference claim 5, para [0022]).
Perera further narrows (para [0024]) the range of one or more modifying aromatic dicarboxylic acid in addition to terephthalic acid dicarboxylic acid component of the polyesters to up to 5 mole%, meeting the claimed component (a). The modifying aromatic dicarboxylic acid can be 2,6-naphthalene dicarboxylic acid (instant claim 5).
Perera teaches that the diol component in making the inventive polyester consist of ethylene glycol and one or more difunctional glycol which can be chosen to be 2,2-dimethyl-1,3-propanediol (para [0023]), which meet the required ethylene glycol (i) and aliphatic branched glycol (ii) of Formula I respectively, where R1 and R2 are alkyl group having 1 carbon atom and a and b are both equal to 1.
Perera’s additional diol component is disclosed in the range of 1 to 30 mol% of the total copolyester, which is the same range as described for additional aromatic dicarboxylic acid (reference claim 5). Perera narrows the additional dicarboxylic component to up to 5 mole% with respect to total dicarboxylic acid component of the polyester (noted earlier and para [0024]), but is silent on narrowing of the additional diol component. Perera notes that alternatives, modifications, and variations fall within the scope of the invention (para [0077]). It would have been obvious to one of ordinary skilled in the art before the effective filing date of the invention to have similarly narrowed the additional aliphatic branched glycols (which are known to decrease crystallinity levels and thus make the polyester amorphous), to manage the crystallinity of the polyester (paras [0044] and [0009]), to level of upto 5 mol% with respect to total glycol residues (as taught for the additional dicarboxylic component), leading to ethylene glycol level of 100 to 95 mol% and aliphatic branched glycol level of 0 to 5 mol%, which overlap the claimed glycol components (i) and (ii). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 3, Perera teaches diethylene glycol as the additional glycol component, meeting the claimed requirement (para [0023]).
Regarding claims 4 and 16, Perera teaches that multifunctional branching agent is present at 0.01 to 1 mol% with respect to the total copolyester (reference claim 6 and para [0026]), which overlap the claimed requirement of 0.005 to 0.2 mol% (50 to 2000 µmol). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 18, Perera doesn’t express drop height measurements as claimed. However, Perera does express improved aged drop performance for its product (title and abstract, reference claim 10). Accordingly, owing to the closeness of materials disclosed and the good drop properties, it would necessarily follow that the products provided for by Perara would possess the drop height characteristics as defined by this claim.
Regarding claims 6 and 19, Perera discloses (Table 1, Polymer P1-P2) polyester compositions with intrinsic viscosity of 1.0 dl/g.
Regarding claim 7, Perera teaches additives such as colorants (para [0034]).
Regarding claim 8, Perera teaches that polyester composition can be further modified by aliphatic dicarboxylic acid such as adipic acid with upto 5 mole%, thus making the claimed requirement obvious (para [0025]).
Regarding claims 9 and 14, as discussed when addressing claims 1 and 15, Perera renders the copolyester composition for extrusion blow molded bottles, obvious. Perera teaches extrusion blow molding manufacturing process (para [0040]) which involves 1) melt blending the resin in an extruder 2) extruding the molten resin through a die to form a tube of molten polymer (a parison) 3), 4) and 5) combined: clamping and blowing air into the parison to conform to the shape of the container and cooling the container, which meet applicant’s step c), and finally the last step of removing excess plastic, flash (scrap) from the container. Thus, both the polyester resin and the extrusion blow molding process steps are made obvious by Perera’s disclosure.
Regarding claim 10, as discussed when addressing claims 1, 15 and 9, Perera renders the copolyester composition for extrusion blow molded (EBM) bottles, and the EBM manufacturing process obvious, where the primary aromatic dicarboxylic acid is terephthalic acid (reference claim 4).
Regarding claim 11, as discussed when addressing claims 1, 3, 15 and 9, Perera renders the copolyester composition for extrusion blow molded (EBM) bottles, and the EBM manufacturing process obvious, where additional glycol component can be diethylene glycol (para [0023]).
Regarding claim 12, as discussed when addressing claims 1, 15 and 9, Perera renders the copolyester composition for extrusion blow molded (EBM) bottles, and the EBM manufacturing process obvious. Perera further adds that the EBM process produces waste from the flash (scrap) that has to be cut off the molded container, and this waste can be reground and mixed with the virgin resin and dried prior to re-extrusion, thus making the claimed requirement obvious (para [0043]).
Regarding claim 13, Perera is silent on the melting point of the inventive copolyester composition tailored for generation of extrusion blow molded (EBM) bottles, however discloses (para [0062]) processing temperatures of 245 and 260 oC to even out the polymer distribution in the generated containers. The processing temperature is set above the melting temperature to ensure that the molten polymer can flow effectively. Perera thus provides an indication that the melting point of the inventive copolyester resin would be less than 245 oC, which overlaps the claimed requirement. Additionally, since the prior art compositions (para [0062]) are being utilized for similar end products: rectangular handleware containers as the instant specification (page 12, 2a) EBM bottles), it would be obvious to one of ordinary skilled in the art before the effective filing date of the invention, to optimize the polyester compositions such that they exhibit similar melting point ranges.
Response to Arguments
Applicant's arguments filed on 02/03/2026 have been fully considered, please see the response below.
The amended claims 1, 9, 15 and 17 overcome the 35 U.S.C 112 rejections.
Applicant argues that reference Perera’s copolyester are prepared from DMT, IPA and pentaerythyritol. While it is acknowledged that Perara’s inventive embodiments show the use of DMT, IPA and pentaerythritol to generate the copolymer, Perera clearly teaches the required monomers (as discussed when addressing claim 1) in the claims and overall disclosure. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). See MPEP 2123 I. and II.
Applicant further notes that Perera adds silica to the copolyester composition and the instant invention does not include silica. Applicant is reminded that the use of transitional phrase “comprising” in the claim language allows for the presence of additional components. The transitional term "comprising", which is synonymous with "including," "containing," or "characterized by," is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See, e.g., Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004). See MPEP 2111.03 I. Applicant’s arguments against reference Perera are therefore not persuasive and the reference continues to provide the support for maintaining the rejections.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/S.M.D./
Examiner
Art Unit 1765
/JOHN M COONEY/Primary Examiner, Art Unit 1765
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