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 .
DETAILED ACTION
All the references cited in the International Search Report have been considered. None is anticipatory. The most pertinent of these references have been applied below.
Election/Restrictions
The applicant has elected Group I (claims 1-2 and 4-5) and 2,6-naphthalene dicarboxylic acid without indicating traverse, and no argument has been submitted. Applicant’s election in the reply is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.03(a)).
This restriction is made FINAL. See previous action for the reasons of applying restriction.
Claim Rejections - 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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claim(s) 1-2 and 4-5 is (are) rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-5 and 16 of copending Application No. 18/275491 This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
‘491 (claims 1-5 and 16) meets instant claims 1-2 and 4-5 in an anticipatory manner, because it discloses the claimed polyester composition:
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Claim(s) 1-2 and 4 is (are) rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-2 and 4 of copending Application No. 18/275492 This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
‘492 (claims 1-2 and 4-5) meets instant claims 1-2 and 4 in an anticipatory manner, because it discloses the claimed polyester composition:
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Claim Rejections - 35 USC § 112
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.
Claim 4 is rejected under 35 U.S.C. 112(d), 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 4 fails to further limit claim 1, because the recited acids appear to not to be species of the claimed unsaturated dicarboxylic acid of claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 of this title, 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 and 4-5 is (are) rejected under 35 U.S.C. 103(a) as being unpatentable over Kawakusu et al. (US 20150064378) in view of Wanprecht et al. (US 20060149019), both listed on IDS and ISR.
As to claims 1 and 4-5, Kawakusu (abs., claims, examples, Tables) discloses a polyester composition for producing inner surface coatings/films for food containers (1-2), wherein the polyester comprising two or more acids including preferably 80 mol% of 2,6-naphthalenedicaroxylic acid (as to instant claim 4, for processability, stability, and retort/dent resistance) and fumaric or maleic acid (17-34) and two more diols including ethylene glycol (as to the claimed diol a of instant claim 1), 1-2-propylene glycol (as to the claimed diol c of instant claim 1), and 1,4-cyclohexane dimethanol (as to the claimed diol b of instant claim 1). The polyester shows an acid value of 0-200 eq/ton, overlapping with the range of instant claim 1. It has been found that where claimed ranges overlap ranges disclosed by the prior art, a prima facie case of obviousness exists - see MPEP 2144.05.
Kawakusu does not explicitly teach including fumaric or maleic acid to the polyester.
In the same area of endeavor of producing inner surface coatings/films for food containers (abs., claims, examples, 2) using a polyester with similar comonomers (15, 36-54), Wanprecht (36-49) discloses maleic acid (as to the claimed unsaturated acid of instant claim 1) is FDA-compliant diacid to USA code 21-175300 for low toxicity.
Therefore, as to claims 1 and 4-5, it would have been obvious to one of ordinary skill in the art to have modified the polyester disclosed by Kawakusu and select the diacid component as 80 or more mol% of 2,6-naphthalenedicaroxylic acid and maleic acid in view of Wanprecht, because the resultant polyester would yield less toxicity and improved processability, stability, and retort/dent resistance. The resultant maleic acid would be 0-20 mol%, overlapping with the range of instant claim 1. It has been found that where claimed ranges overlap ranges disclosed by the prior art, a prima facie case of obviousness exists - see MPEP 2144.05.
Claim(s) 2 is (are) rejected under 35 U.S.C. 103(a) as being unpatentable over Kawakusu et al. (US 20150064378) in view of Wanprecht et al. (US 20060149019) and in further view of Kajimaru et al. (US 20020061959), all listed on IDS and ISR.
Disclosure of Kawakusu and Wanprecht is adequately set forth in ¶4 and is incorporated herein by reference.
They are silent on branching. Kawakusu teaches adding trimethyolopropane (Table 1).
In the same area of endeavor of producing coatings/films (abs., claims, examples, 1-4) using a polyester with similar comonomers (19-29), Kajimara (29) discloses adding trifunctional polyol, such as trimethyolopropane, to obtain excellent processibilities of the polyester coating/films.
Therefore, as to claim 2, it would have been obvious to one of ordinary skill in the art to have modified the polyester disclosed by Kaner and further added with a trifunctional polyol of trimethyolopropane in view of Kajimaru, because the resultant polyester coating/films would yield improved processibilities. One of ordinary skill in the art would obviously recognize trimethyolopropane would inherently yield branching because of the trifunctional hydroxyl group, as acknowledged by instant pgpub [0050].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHANE FANG whose telephone number is (571)270-7378. The examiner can normally be reached on Mon-Thurs. 8am-6pm. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached on 571.572.1302. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SHANE FANG/Primary Examiner, Art Unit 1766
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