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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 9 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 9 recites the limitation "(D50) is 50 nm or more" in line 3. It is unclear how the D50 is 50 nm or more, as claim 1 recites a (D50) of 20 nm or more and 500 nm or less, therefore claim 9 is indefinite. Claim 9 will be interpreted as (D50) of 50 nm or more and 500 nm or less.
Claim 19 recites the limitation "(D50) of the polyester particles is 50 nm or more" in lines 2-3. It is unclear how the D50 is 50 nm or more, as claim 11 recites a (D50) of 20 nm or more and 500 nm or less, therefore claim 19 is indefinite. Claim 19 will be interpreted as (D50) of 50 nm or more and 500 nm or less.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 1, 6-7 and 9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shidahara et al. (US 2015/0277250).
Regarding claims 1, 6-7 and 9: Shidahara et al. (US ‘250) discloses emulsions containing polyesters [abstract; 0042-0044; 0051], wherein resin emulsion (E-1) [(E-1); 0310-0311] contains water, non-crystalline polyester resin (F), and has a volume-median particle size (D50) of 0.096 µm (96 nm) [(E-1); 0310-0311]. Shidahara et al. (US ‘250) discloses non-crystalline polyester resin (F) [(F); 0286-0287; Table 2, F] was prepared from 90 mol% polyoxypropylene (2.2)-2,2-bis(4-hydroxyphenyl)propane, 10 mol% polyoxyethylene (2.0)-2,2-bis(4-hydroxyphenyl)propane, 82 mol% terephthalic acid and di(2-ethyl-hexanoic acid); and has an acid value of 19.4 mgKOH/g and a number-average molecular weight (Mn) of 1,900 [[(F); 0286-0287; Table 2, F].
A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim [see MPEP 2111.02].
Claim(s) 1-2, 6-7 and 9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mizuhata et al. (US 2008/026311).
Regarding claims 1-2, 6-7 and 9: Mizuhata et al. (US ‘311) discloses emulsions containing polyesters [abstract], wherein Example 1 [Ex. 1; 0122; Table 2, Ex. 1] contains water, polyester A, and has a volume-median particle size (D50) of 0.14 µm (140 nm) [Ex. 1; 0122; Table 2, Ex. 1]. Mizuhata et al. (US ‘311) discloses polyester A [Prod. Ex. 1; 0114; Table 1, Prod. Ex. 1] was prepared from polyoxypropylene (2.2)-2,2-bis(4-hydroxyphenyl)propane, polyoxyethylene (2.0)-2,2-bis(4-hydroxyphenyl)propane, glycerol, and terephthalic acid; and has an acid value of 13.9 mgKOH/g and a weight-average molecular weight (Mw) of 17,900 [Prod. Ex. 1; 0114; Table 1, Prod. Ex. 1].
A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim [see MPEP 2111.02].
Claim(s) 10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shidahara et al. (US 2015/0277250).
Regarding claim 10: Shidahara et al. (US ‘250) discloses a method of preparing emulsions containing polyesters [abstract; 0042-0044; 0051], wherein resin emulsion (E-1) [(E-1); 0310-0311] was prepared by melting a resin mixture containing non-crystalline polyester resin (F) and adding deionized water into the mixture, resulting in a volume-median particle size (D50) of 0.096 µm (96 nm) [(E-1); 0310-0311]. Shidahara et al. (US ‘250) discloses non-crystalline polyester resin (F) [(F); 0286-0287; Table 2, F] was prepared from 90 mol% polyoxypropylene (2.2)-2,2-bis(4-hydroxyphenyl)propane, 10 mol% polyoxyethylene (2.0)-2,2-bis(4-hydroxyphenyl)propane, 82 mol% terephthalic acid, and di(2-ethyl-hexanoic acid); and has an acid value of 19.4 mgKOH/g and a number-average molecular weight (Mn) of 1,900 [[(F); 0286-0287; Table 2, F].
A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim [see MPEP 2111.02].
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(s) 1, 3-4 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kong et al. (US 2008/0194771) in view of Mizuhata et al. (US 2011/0223531), when taken with PolyTHF, BASF, 07/2025.
Regarding claims 1 and 3-4: Kong et al. (US ‘771) discloses polyester emulsions [abstract; 0073-0083] for modifying asphalt [0133], wherein the Example [Ex.; 0138-0143] prepares a polyester emulsion having a mean particle size [0109] of 450 nm by reacting 4.1 mmol diethyl sebacate and 4.1 mmol polyetherdiol (Poly-THF 1000; Mn ~ 1,000 g/mol [0021]) [Ex.; 0138-0143]. Kong et al. (US ‘771) discloses mean particle sizes of 100 nm to 500 nm [0109].
Kong et al. (US ‘771) does not specifically disclose a volume-median particle size (D50) of 20 nm to 500 nm. However, 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, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) [See MPEP 2144.05].
Kong et al. (US ‘771) does not disclose the polyester having an acid number of 2-70 mgKOH/g. However, Mizuhata et al. (US ‘531) discloses polyester emulsions [abstract], wherein the polyesters have acid numbers of 6-35 mgKOH/g [0045] (Ex. 24.4 mgKOH/g [0238]). Kong et al. (US ‘771) and Mizuhata et al. (US ‘531) are analogous art because they are concerned with a similar technical difficulty, namely the preparation of polyester emulsions. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined polyesters having acid numbers of 6-35 mgKOH/g (Ex. 24.4 mgKOH/g), as taught by Mizuhata et al. (US ‘531) in the invention of Kong et al. (US ‘771), and would have been motivated to do so since Mizuhata et al. (US ‘531) discloses polyesters having acid numbers of 6-35 mgKOH/g (Ex. 24.4 mgKOH/g [0238]) facilitates the production of the emulsion [0045].
PolyTHF provides evidence for PolyTHF 1000 has a Mn ~ 1,000 g/mol [pg. 10].
Regarding claim 7: Kong et al. (US ‘771) discloses terephthalic acid as the dicarboxylic acid compound B [0024].
An express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982) [see MPEP 2144.06].
Claim(s) 5-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kong et al. (US 2008/0194771) in view of Mizuhata et al. (US 2011/0223531) as applied to claims 3 and 1 above, respectively, and further in view of Takahashi et al. (US 2019/0233647).
Regarding claims 5-6: Kong et al. (US ‘771) and Mizuhata et al. (US ‘531) disclose the basic claimed composition [as set forth above with respect to claims 3 and 1, respectively]; wherein Kong et al. (US ‘771) discloses aromatic diols and polyetherdiols [0020-0022].
Kong et al. (US ‘771) does not specifically disclose an alkyleneoxide adduct of bisphenol A. However, Takahashi et al. (US ‘647) discloses asphalt compositions containing polyesters [abstract], wherein the alcohol can be a polypropylene oxide (2.2) adduct of bisphenol A (BPA-PO) and/or a polyethylene oxide (2.2) adduct of bisphenol A (BPA-EO) [0030-0035; 0136-0143; Table 1]. Kong et al. (US ‘771) and Takahashi et al. (US ‘647) are analogous art because they are concerned with a similar technical difficulty, namely polyesters for modifying asphalt. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined 65 mol% or more of alkylene oxide adducts of bisphenol A as the alcohol component {thereby affording 35 mol% or less of Poly-THF}, as taught Takahashi et al. (US ‘647) in the invention of Kong et al. (US ‘771), and would have been motivated to do so since Takahashi et al. (US ‘647) discloses 65 mol% or more of alkylene oxide adducts of bisphenol A (ex. BPA-PO and/or BPA-EO) as the alcohol component for obtaining excellent dry strength of the asphalt [0034-0035].
Claim(s) 11-14 and 16-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kong et al. (US 2008/0194771) in view of Takahashi et al. (US 2019/0233647), when taken with PolyTHF, BASF, 07/2025.
Regarding claims 11-12, 14 and 19: Kong et al. (US ‘771) discloses polyester emulsions [abstract; 0073-0083] for modifying asphalt [0133], wherein the Example [Ex.; 0138-0143] prepares a polyester emulsion having a mean particle size [0109] of 450 nm by reacting 4.1 mmol diethyl sebacate and 4.1 mmol polyetherdiol (Poly-THF 1000; Mn ~ 1,000 g/mol [0021]) [Ex.; 0138-0143]. Kong et al. (US ‘771) discloses mean particle sizes of 100 nm to 500 nm [0109].
Kong et al. (US ‘771) does not specifically disclose a volume-median particle size (D50) of 20 nm to 500 nm. However, 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, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) [See MPEP 2144.05].
Kong et al. (US ‘771) does not specifically disclose an asphalt emulsion. However, Takahashi et al. (US ‘647) discloses asphalt compositions containing polyesters [abstract], wherein the asphalt is an emulsion containing water [0104], 1-40 parts by mass of the polyester, based on 100 parts by mass asphalt [0116], and a cationic surfactant [0062-0064; 0073]. Kong et al. (US ‘771) and Takahashi et al. (US ‘647) are analogous art because they are concerned with a similar technical difficulty, namely the polyesters for modifying asphalt. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined an asphalt emulsion containing water, 1-40 parts by mass of the polyester, based on 100 parts by mass asphalt and a cationic surfactant, as taught Takahashi et al. (US ‘647) in the invention of Kong et al. (US ‘771), and would have been motivated to do so since Takahashi et al. (US ‘647) discloses asphalt emulsions containing water [0104], 1-40 parts by mass of the polyester, based on 100 parts by mass asphalt [0116] and a cationic surfactant [0062-0064; 0073].
PolyTHF provides evidence for PolyTHF 1000 has a Mn ~ 1,000 g/mol [pg. 10].
Regarding claim 13: Kong et al. (US ‘771) and Takahashi et al. (US ‘647) disclose the basic claimed composition [as set forth above with respect to claim 11]; wherein Takahashi et al. (US ‘647) discloses the asphalt has a D50 of 0.001 mm to 0.05 mm (1 µm to 50 µm) [0090].
Regarding claims 16-17: Kong et al. (US ‘771) and Takahashi et al. (US ‘647) disclose the basic claimed composition [as set forth above with respect to claim 11]; wherein Kong et al. (US ‘771) discloses aromatic diols and polyetherdiols [0020-0022].
Kong et al. (US ‘771) does not specifically disclose an alkyleneoxide adduct of bis[phenol A. However, Takahashi et al. (US ‘647) discloses asphalt compositions containing polyesters [abstract], wherein the alcohol can be a polypropylene oxide (2.2) adduct of bisphenol A (BPA-PO) and/or a polyethylene oxide (2.2) adduct of bisphenol A (BPA-EO) [0030-0035; 0136-0143; Table 1]. Kong et al. (US ‘771) and Takahashi et al. (US ‘647) are analogous art because they are concerned with a similar technical difficulty, namely polyesters for modifying asphalt. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined 65 mol% or more of alkylene oxide adducts of bisphenol A as the alcohol component {thereby affording 35 mol% or less of Poly-THF}, as taught Takahashi et al. (US ‘647) in the invention of Kong et al. (US ‘771), and would have been motivated to do so since Takahashi et al. (US ‘647) discloses 65 mol% or more of alkylene oxide adducts of bisphenol A (ex. BPA-PO and/or BPA-EO) as the alcohol component for obtaining excellent dry strength of the asphalt [0034-0035].
Regarding claim 18: Kong et al. (US ‘771) discloses terephthalic acid as the dicarboxylic acid compound B [0024].
An express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982) [see MPEP 2144.06].
Regarding claim 20: Kong et al. (US ‘771) and Takahashi et al. (US ‘647) disclose the basic claimed composition [as set forth above with respect to claim 11]; wherein Takahashi et al. (US ‘647) discloses road paving by applying the asphalt mixture at 100 oC to 180 oC [0112-0115].
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kong et al. (US 2008/0194771) in view of Takahashi et al. (US 2019/0233647) as applied to claim 11 above, and further in view of Mizuhata et al. (US 2011/0223531).
Regarding claim 15: Kong et al. (US ‘771) and Takahashi et al. (US ‘647) disclose the basic claimed composition [as set forth above with respect to claim 11].
Kong et al. (US ‘771) does not disclose the polyester having an acid number of 2-70 mgKOH/g. However, Mizuhata et al. (US ‘531) discloses polyester emulsions [abstract], wherein the polyesters have acid numbers of 6-35 mgKOH/g [0045] (Ex. 24.4 mgKOH/g [0238]). Kong et al. (US ‘771) and Mizuhata et al. (US ‘531) are analogous art because they are concerned with a similar technical difficulty, namely the preparation of polyester emulsions. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined polyesters having acid numbers of 6-35 mgKOH/g (Ex. 24.4 mgKOH/g), as taught by Mizuhata et al. (US ‘531) in the invention of Kong et al. (US ‘771), and would have been motivated to do so since Mizuhata et al. (US ‘531) discloses polyesters having acid numbers of 6-35 mgKOH/g (Ex. 24.4 mgKOH/g [0238]) facilitates the production of the emulsion [0045].
See attached form PTO-892.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL F PEPITONE whose telephone number is (571)270-3299. The examiner can normally be reached on 7:00 AM - 3:30 PM.
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/MICHAEL F PEPITONE/Primary Examiner, Art Unit 1767
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