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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 14-15 and 17-26 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Pub. No. 2017/0015780 to Kolstad et al.
As to claims 14-15, Kolstad discloses a polyester including ethylene 2,5-
furanedicarboxylate units and also includes diethylene glycol in amounts of less than 0.045
(Abstract, Tables and Examples), wherein the polyester has an intrinsic viscosity of 0.65 to 1.0
dl/g (0024), a melting temperature of values up to 245°C (0031), and a quantity of chain-end carboxylic acid functions of 15 to 122 meq/kg (as taught by instant specification). At the time of filing it would have been obvious to prepare the polyester with higher melting temperature values because the increase in crystallinity affects desired physical properties such as density (0031). Kolstad disclose a polydispersity index of 1.9 to 2.6, which touches the claimed values. A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected [the claimed product and a product disclosed in the prior art] to have the same properties, See MPEP 2100.
As to claim 17, with regard to the glass transition temperature, the Office realizes that
all of the claimed effects or physical properties are not positively stated by the reference.
However, the reference teaches all of the claimed ingredients including the same properties
and amounts of each reactant. Therefore, the claimed effects and physical properties, i.e. Tg
values would implicitly be achieved by a composite with all the claimed ingredients. If it is the
applicants' position that this would not be the case: (1) evidence would need to be provided to
support the applicants' position; and (2) it would the Office's position that the application
contains inadequate disclosure that there is no teaching as to how to obtain the claimed
properties with only the claimed ingredients.
As to claims 18-20 and 23, Kolstad disclose a process of transesterfying FDCA with
ethylene glycol at a molar ratio of 1.3:1 or greater in the presence of Lewis acid catalysts such
as titanium or zirconium alkoxides (0058), including titanium isopropoxide (See Examples in
Sipos) conducted at temperatures of 220°C (range from 160 to 240°C) and times of 90 to 160
minutes under 0.9 to 5 bar pressure (0039), followed by pressure reduction and
polycondensation at temperatures from 240-260°C for 90-120 minutes (0068, Table 1, 0070).
Please note reference to WO-2010/077133 to Sipos and WO-2013/120989 to Hess for further
transesterification conditions (0040).
As to claims 21-22, Kolstad in reference to Hess discloses multiple steps of
transesterification that includes ramping temperatures and decreasing pressure values in
stages. Accordingly, it would have been obvious to modify the reaction conditions of Kolstad
within the parameters claimed as taught in Hess (0021-0025) to ensure that the reactants are
present in a homogeneous mixture so that the most complete conversion is possible (0020).
As to claim 24, Kolstad with reference to Hess disclose a shaping step wherein the
polycondensate is cooled, dried at 100 to 200°C (0033), and prepared into granules or powders
(0032).
As to claim 25, Kolstad with reference to Hess disclose a two stage post treatment of
removing volatile reaction products under reduced pressure and temperatures of 100 to 200°C
(0047).
As to claim 26, Kolstad discloses a final step wherein the polyester is subjected to
extrusion (0061).
Response to Arguments
Applicant's arguments filed 04/17/2026 have been fully considered but they are not persuasive.
The applicant argues that Kolstad does not provide any teaching or suggestion of the unexpected technical effects achieved by the present invention. The applicant points to the claimed properties. Kolstad teaches or suggests each of the claimed properties. Kolstad teaches an intrinsic viscosity preferably in a range of 0.75 to 1.0 dl/g (0024). Kolstad teaches a content of diethylene glycol residues of less than 0.045, preferably 0.031-0.048 (Table 1). Kolstad teaches a quantity of chain-end carboxylic acid functions of 15 to 122 meq/kg. Kolstad teaches melting points of crystalline polyester polyols that can be as high as 245°C (0031). All of the claimed properties are present within the Kolstad reference. The polydispersity of the polyester touches the end range. Accordingly, because all properties are present it is unclear how the polyester polyol of the claimed invention provides an unexpected technical effect over the reference. When looking to Kolstad, a person of ordinary skill in the art could routinely work through different molar ratios of reactants, contents of DEG, and process conditions to arrive at the presently claimed polyester including all properties associated therein. For example, Kolstad teaches that decreasing the content of DEG increases the melting point of the polyester polyol (0012).
Applicant argues that Kolstad fails to disclose or suggest highly crystalline polyesters and how to simultaneously prepare a polyester polyol exhibiting a high melting temperature and a high intrinsic viscosity. This is not found persuasive because Kolstad teaches highly crystalline polyester polyols can be prepared the reaction products and further teaches that melting points can be increased by decreasing the content of diethylene glycol. Methods for preparing highly crystalline polyester polyols is well known in the cited art (0031, 0062). Kolstad teaches a melting temperature of at least 215 and up to 245 (0031). Accordingly, all claimed properties can be achieved when looking to Kolstad. It is noted that the use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including non-preferred embodiments (MPEP 2121(II)). Further, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or non-preferred embodiments (MPEP 2123 (II)).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL L LEONARD whose telephone number is (571)270-7450. The examiner can normally be reached M - F 7:00-4:00.
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, Joseph Del Sole can be reached at 571-272-1130. 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.
/MICHAEL L LEONARD/Primary Examiner, Art Unit 1763
Prosecution Insights