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 § 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 1-2 and 7-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Morimoto et al (US 20050176873)
Morimoto teaches a polyester composition comprising a polyester resin constituted from the following components:
a) acidic part:
99.5% mol terephthalic acid;
0.5% mol trimellitic acid;
b) diol part:
15% mol ethylene glycol;
20% mol 1,4-cyclohexane- dimethanol;
65% mol propylene glycol (1,2-propanediol), (see 0043),
where acid value is equal 510 eq/ton, Table 1, Example 1d at 0142).
Thus, all limitations of claim 1 is met.
In reference to claim 2, polyester has a branched structure, because trifunctional trimellitic acid used in synthesis (see definition of branched polyester in instant Application, which can be found in printed publication of instant Application at 0052).
Regarding claim 7, Morimoto discloses 0.3 mass of catalyst on 100 parts of composition (see Table 4, Example 1 at 0155)
In reference to claims 8-12, Morimoto discloses a polyester resin aqueous dispersion (see Claim 1) and a coating used on metal cans (see 0231).
Claim Rejections - 35 USC § 102/103
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 6 is rejected under 35 U.S.C. 102(a) (1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Morimoto et al.
Morimoto et al. fails to teach a quantity of tetrahydrofuran insolubles.
However, Morimoto teaches the same polyester as Applicant used for the same purposes. In addition, note that Morimoto’s polyester dispersion is applied on an internal surface of a food can (see 0232), which suggest that its solubility in hydrophilic media is below detection limit.
Thus, Morimoto’s polyester composition is inherently meets claimed solubility requirements.
Alternatively, it would have been obvious to a person of ordinary skills in the art before the effective filing date of the invention to expect to expect the same solubility for Morimoto’s and Applicant’s polyesters, since they have the same structure.
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 3-5 are rejected under 35 U.S.C. 103 as being unpatentable over Morimoto et al.
In reference to claim 3, Morimoto teaches the claimed amount of diols (b) and (c ) in the Example 1d above.
However, the reference teaches only 15% mol of ethylene glycol, whereas claim 3 recites 20-80 % mol range for this component.
Note that Morimoto teaches that the amount of ethylene glycol can be as high as 50% mol (see Table 1, Example 1c at 0142).
Regarding claims 4 and 5, Morimoto teaches naphthalene dicarboxylic acid, 1,4-cyclohexane dicarboxylic acid and adipic acid and unsaturated fumaric acid (see 0045).
Note that the reference fails to disclose the components above in the Examples.
However, a genus does not always anticipate a claim to a species within the genus. However, when the species is clearly named, the species claim is anticipated no matter how many other species are additionally named. Ex parte A, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990) See also MPEP 2131.02.
Therefore, it would have been obvious to a person of ordinary skills in the art before the effective filing date of the invention to expect to use the diacids above and claimed amount of ethylene glycol in Morimoto’s composition, since they clearly named in the reference.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GREGORY LISTVOYB whose telephone number is (571)272-6105. The examiner can normally be reached 9am-5pm EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Riviere 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.
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GL
/GREGORY LISTVOYB/Primary Examiner, Art Unit 1765
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