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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-7 in the reply filed on 7/21/2026 is acknowledged.
Claims 8-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 7/21/2026.
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 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Murakami et al. (JP-2008239691-A).
Regarding claim 1
Murakami discloses a polyester composition comprising a polyester resin A with an acid value of 20-40 mgKOH/g (corresponds to resin B of instant claim 1, with 356 to 713 eq/ton), and a polyester resin B with an acid value of 2-12 mgKOH/g (corresponds to resin A of instant claim 1, with 36 to 214 eq/ton), in a ratio of 30/70 to 50/50 (Claim 1).
As the range of acid values and the ratio of A and B of the reference overlap the claimed ranges the subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness. In re Malagari, 182 U.S.P.Q. 549.
Regarding claim 2
Murakami is silent as to any curing agent, making it obvious if not anticipated to exclude a curing agent.
Regarding claim 3
Murakami discloses that the diol may be an aliphatic diol such as 1,4-butane diol and an alicyclic diol such as 1,4-cyclohexanedimethanol (approx. para 0044).
Regarding claims 4
Murakami discloses that the acid used for both the A and B resins may be a polybasic acid such as 1,2,3,4-butanetetracarboxylic acid (approx. para 0047). As such it would have been obvious to use this acid to make the polyester, which would necessarily provide a branched structure.
Regarding claim 5
Murakami discloses that a dicarboxylic acid may be used as the acid component to control the glass transition temperature and the heat of crystal melting, and that the dicarboxylic acid can be oxalic (i.e., an unsaturated dicarboxylic acid) (approx. paras 0035 and 0041).
Regarding claim 6
Murakami discloses that a zinc acetate dihydrate catalyst may be used (Production example of polyester resin “P-8”), making the use and/or inclusion of a catalyst obvious.
The content of the THF-insoluble matter is a property of the composition, and when the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See MPEP § § 2112- 2112.02.
Allowable Subject Matter
Claim 7 is objected to as being dependent upon a rejected base claim but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: None of the prior art fairly teaches or suggest the limitations of this claim in combination with the limitations of the base claim from which it depends.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES E MCDONOUGH whose telephone number is (571)272-6398. The examiner can normally be reached Mon-Fri 10-10.
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JAMES E. MCDONOUGH
Examiner
Art Unit 1734
/JAMES E MCDONOUGH/Primary Examiner, Art Unit 1734
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