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
This Office action is responsive to Applicant's Response to Restriction
Requirement filed September 15, 2026. As filed, claims 1-12 are pending.
Priority
This application, filed 9/27/2023 is a National Stage entry of PCT/KR2022/005282 , International Filing Date: 04/12/2022 claims foreign priority to 10-2021-0047271, filed 04/12/2021;claims foreign priority to 10-2022-0002282, filed 01/06/2022; claims foreign priority to 10-2022-0002283, filed 01/06/2022
Information Disclosure Statement
Applicants' information disclosure statements (IDS) have been considered except where lined through. Please refer to Applicants' copy of the 1449 submitted herewith.
Response to Restriction
Applicant's election with traverse of Group I, claims 1-3, drawn to a method for producing a terephthalate derivative from dimethyl terephthalate in the reply filed 9/15/2026 is acknowledged.
Applicant argues that restriction among Groups I-II is not proper because there is a technical relationship that involves the same special technical feature among Groups I-II ( Remarks 2). This is not persuasive because the Office set forth reasons for distinctness on page 6 of the restriction requirement.
In response to a further requirement for the election of a single disclosed species, Applicants further elected:
Product: bis(2-hydroxyethyl) terephthalate (BHET).
Alcohol reactant: ethylene glycol.
Catalyst: potassium carbonate (K2CO3).
Regarding Applicants traversal of the election of species requirement, it is noted that MPEP section 803.02 states: Following election, the Markush-type claim will be examined fully with respect to the elected species and further to the extent necessary to determine patentability.
If the elected species is found to be allowable, then the search and examination will be expanded by the Examiner to consider additional species and subgenera within the generic formula until: (1) An art rejection can be made, or (2) The genus claim is found to lack unity of invention, or (3) The claims have been searched in their entirety.
Applicants' elected species have been found not allowable due to the following rejections.
Claims 4-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claims 1-3 will be examined on the merits herein.
Claim Objections
Claim 1 is objected to because of the following informalities: claim 1 recites “dimethyl terephthalate” and the “DMT”, which raise issues of consistency in claim terminology.
The recitation of “guanidine-based organic” appears to be incomplete.
Claim 2 recites “used” language. The objected claim is not viewed as “use” claim, but proper transition wording should be present.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
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 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 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over CN1137278A, 2004, Xu (“the ‘278 publication”; cited in PTO-892 attached herewith; machine translation attached herewith) and further in view of JP4880918B2, by Kurihara May 2005 (“the ‘918 publication”; by Applicants in IDS).
The ‘278 publication teach to a process for transesterification of dimethyl terephthalate (DMT) and ethylene glycol (elected species) mediated by suitable transesterification catalyst such as zinc acetate or manganese acetate while bringing the molten esterified DMT into intimate contact with an inert gas stream (such as but not limited to N 2 or CO 2 ) at atmospheric pressure or slightly higher pressure (page 5, 6 of translation) ; the reaction produces bis(2-hydroxyethyl) terephthalate, low molecular weight bis(2-hydroxyethyl) terephthalate (BETH- the elected species) polymerization a mixture of (oligomers) and mono(2-hydroxyethyl) terephthalate oligomers - which corresponds to claimed terephthalate derivative; which corresponds to step a) and (b) of the instant process ( instant claims 1, 3).
The method of the present application differs from the method described in the ‘278 publication in that prior art teach transesterification of DMT with ethylene glycol mediate by zinc acetate or magnesium acetate while instant claims require transesterification of with catalyst such as alkali carbonates for the formation of the terephthalate derivative; the prior art does not specify the amount of catalyst of claim 3.
These limitations are disclosed in the prior art by the ‘918 publication, analogous prior art, drawn to a method for preparing BHET which teaches transesterification of ethylene glycol mediated by potassium carbonate (1 part) after the reaction, a reactor is filled with nitrogen and returned to atmospheric pressure (example on page 10; claims; instant claims 1,3).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to combine the teachings of the prior art and to produce BHET by the transesterification of DMT with ethylene glycol method taught by 278 publication and to use potassium carbonate as alternative catalyst for transesterification as taught by the ‘918 publication, to arrive at instant invention with reasonable expectation of success, because the prior art teaches that transesterification reaction of ethylene glycol cane be mediated by potassium carbonate.
"Exemplary rationales that may support a conclusion of obviousness include: (A) Combining prior art elements according to known methods to yield predictable results ". See MPEP § 2143.
Therefore, absent a showing of unexpected results, the instant claims are obvious over the prior art.
Conclusion
Claims 1-3 are rejected. Claims 4-12 are withdrawn from consideration.
Telephone Inquiry
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the
examiner should be directed to:
Ana Muresan
(571) 270-7587
Ana.Muresan@uspto.gov
The examiner can normally be reached Monday - Friday (9:00AM - 5:30PM).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Scarlett Goon can be reached at 571-270-5241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANA Z MURESAN/Primary Examiner, Art Unit 1692
