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 and 17, in the reply filed on 3/2/2026 is acknowledged.
Applicant’s further election of species (a) antimony element is acknowledged. Claims 1-7 and 17 and newly added claims 21-23 read on the elected species. In this connection, applicant may consider amending the present claims, i.e., claim 1, to delete the recitations regarding the non-elected species “… titanium element, and germanium element”, for improved clarity of claim language.
Claims 8-16 and 18-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 1-7, 17 and 21-23 are being examined on the merits.
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).
Claims 1-7, 17 and 21-23 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-3, 6-8 and 10-13 of copending Application No. 18/850,317 (U.S. Pub No. 2025/0297096; hereinafter “copending Application ‘096”).
Although the conflicting claims are not identical, they are not patentably distinct from each other because the claims of the two applications cover patentably indistinct subject matter.
The claims of the present application cover a method for producing a polyester resin composition (C), the method comprising a step of: mixing a polyester resin (A) collected for recycling and a polyester resin (B) comprising an aluminum compound and a phosphorus compound, wherein the polyester resin (A) satisfies the following (1) to (3):(1) the polyester resin (A) comprises antimony element, (2) the polyester resin (A) comprises at least one element of the antimony element at a total content of 2 to 500 ppm by mass, and(3) the polyester resin (A) has an intrinsic viscosity of 0.5 to 0.8 dl/g (see the pending claim 1). The polyester resin (B) comprises aluminum element at a content of 5 to 50 ppm by mass, and (5) the polyester resin (B) comprises phosphorus element at a content of 5 to 1000 ppm by mass (see the pending claim 2). The phosphorus compound has the phosphorus element and phenolic structure in the same molecule (see the pending claim 7). The polyester resin composition (C) has an intrinsic viscosity retention rate of 89 % or more (see the pending claim 3).
The claims of the copending application ‘096 cover the same limitations, e.g. a method for producing a polyester film, comprising mixing a recovered polyester resin (A) and a polyester resin (B) comprising an aluminum compound and a phosphorus compound, the polyester resin (A) satisfying the following (1) to (3): (1) the polyester resin (A) comprises at least one element selected from antimony, titanium, and germanium; (2) the polyester resin (A) has a total content of antimony, titanium, and germanium elements of 2 to 500 ppm by mass; and (3) the polyester resin (A) has an intrinsic viscosity of 0.5 to 0.8 dl/g (see copending claim 1). The polyester resin (B) satisfies the following (4) and (5): (4) the polyester resin (B) has an aluminum element content of 5 to 50 ppm by mass; and (5) the polyester resin (B) has a phosphorus element content of 5 to 1000 ppm by mass (see copending claim 2). The polyester resin composition (C) has an intrinsic viscosity retention of 89% or more (see copending claim 6). The phosphorus compound comprises a phosphorus element and a phenolic structure in the same molecule (see copending claim 13).
The set of claims in the present application and the set of claims in the copending application ‘096 cover various patentably indistinct combinations of essentially the same limitations and thus are patentably indistinct subject matter. This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Claims 1-7, 17 and 21-23 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-9 of copending Application No. 18/572,417 (U.S. Pub No. 2024/0309202; hereinafter “copending Application ‘202”).
Although the conflicting claims are not identical, they are not patentably distinct from each other because the claims of the two applications cover patentably indistinct subject matter.
The claims of the present application cover a method for producing a polyester resin composition (C), the method comprising a step of: mixing a polyester resin (A) collected for recycling and a polyester resin (B) comprising an aluminum compound and a phosphorus compound, wherein the polyester resin (A) satisfies the following (1) to (3):(1) the polyester resin (A) comprises antimony element, (2) the polyester resin (A) comprises at least one element of the antimony element at a total content of 2 to 500 ppm by mass, and(3) the polyester resin (A) has an intrinsic viscosity of 0.5 to 0.8 dl/g (see the pending claim 1). The polyester resin (B) comprises aluminum element at a content of 5 to 50 ppm by mass, and (5) the polyester resin (B) comprises phosphorus element at a content of 5 to 1000 ppm by mass (see the pending claim 2). The phosphorus compound has the phosphorus element and phenolic structure in the same molecule (see the pending claim 7). The polyester resin composition (C) has an intrinsic viscosity retention rate of 89 % or more (see the pending claim 3).
The claims of the copending application ‘202 cover the same limitations, e.g. a method for producing a polyester resin composition (C), comprising a step of mixing a polyester resin (A) collected for recycling and a polyester resin (B) comprising an aluminum compound and a phosphorus compound, wherein the polyester resin (A) satisfies the following (1) to (3) and the polyester resin (B) satisfies the following (4) to (6): (1) the polyester resin (A) comprises at least one element selected from the group consisting of antimony element, titanium element, and germanium element, (2) the polyester resin (A) comprises at least one of the antimony element, the titanium element, and the germanium element at a total content of from 2 to 500 ppm by mass, (3) the polyester resin (A) has an intrinsic viscosity of from 0.5 to 0.8 dl/g, (4) the polyester resin (B) comprises aluminum element at a content of from 9 to 20 ppm by mass, (5) the polyester resin (B) comprises phosphorus element at a content of from 13 to 31 ppm by mass, and (6) the polyester resin (B) comprises the aluminum element and the phosphorus element at a residual mole ratio of the phosphorus element with respect to the aluminum element of 1.32 or more and 1.80 or less (see copending claim 1 and claim 6). The polyester resin (B) comprises dialkyl 3,5-di-tert-butyl-4-hydroxybenzyl phosphonate as the phosphorus compound (see copending claims 3, 8).
The set of claims in the present application and the set of claims in the copending application ‘202 cover various patentably indistinct combinations of essentially the same limitations and thus are patentably indistinct subject matter. This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Claims 1-7, 17 and 21-23 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-12 and 14-15 of copending Application No. 19/103,026 (U.S. Pub No. 2026/0048540; hereinafter “copending Application ‘540”).
Although the conflicting claims are not identical, they are not patentably distinct from each other because the claims of the two applications cover patentably indistinct subject matter.
The claims of the present application cover a method for producing a polyester resin composition (C), the method comprising a step of: mixing a polyester resin (A) collected for recycling and a polyester resin (B) comprising an aluminum compound and a phosphorus compound, wherein the polyester resin (A) satisfies the following (1) to (3):(1) the polyester resin (A) comprises antimony element, (2) the polyester resin (A) comprises at least one element of the antimony element at a total content of 2 to 500 ppm by mass, and(3) the polyester resin (A) has an intrinsic viscosity of 0.5 to 0.8 dl/g (see the pending claim 1). The polyester resin (B) comprises aluminum element at a content of 5 to 50 ppm by mass, and (5) the polyester resin (B) comprises phosphorus element at a content of 5 to 1000 ppm by mass (see the pending claim 2). The phosphorus compound has the phosphorus element and phenolic structure in the same molecule (see the pending claim 7). The polyester resin composition (C) has an intrinsic viscosity retention rate of 89 % or more (see the pending claim 3). A content of the polyester resin (A) is 5 to 95 parts by mass relative to 100 parts by mass of the total of the polyester resin (A) and the polyester resin (B) (see the pending claim 6).
The claims of the copending application ‘202 cover the same limitations, e.g. a method for producing a polyester film, comprising the steps of: mixing a recovered polyester resin (A) with a polyester resin (B) containing an aluminum compound and a phosphorus compound, wherein the polyester resin (A) satisfies the following (1) to (3) and the polyester resin (B) satisfies the following (4): (1) the polyester resin (A) comprises at least one element selected from antimony element, titanium element, and germanium element, (2) a total content of the antimony element, the titanium element, and the germanium element in the polyester resin (A) is 2 to 500 ppm by mass, (3) the polyester resin (A) has an intrinsic viscosity of 0.5 to 0.8 dl/g (see copending claim 1). The mixing step comprises melting and mixing the polyester resin (A) and the polyester resin (B) to prepare a polyester resin composition (C) (see copending claim 3). A content of the polyester resin (A) is 5 to 95 parts by mass relative to 100 parts by mass of the total of the polyester resin (A) and the polyester resin (B) (see copending claim 10). The polyester resin composition (C) has an intrinsic viscosity retention rate of 89 % or more (see the pending claim 6).
The set of claims in the present application and the set of claims in the copending application ‘540 cover various patentably indistinct combinations of essentially the same limitations and thus are patentably indistinct subject matter. This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
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 (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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-2, 6-7, 17, 21 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over JP2012122051A to Unrinin (“Unrinin”, see the English translation of record).
Regarding claim 1, Unrinin teaches a method for producing a polyester resin composition (para [0011] [0015], [0063] [0115], making the polyester composition of Unrinin by mixing a mater batch of separately prepared polyester). Unrinin teaches mixing a polyester resin (A) and a polyester resin (B) comprising an aluminum compound and a phosphorus compound (para [0011] [0115], [0015] [0053] [0054], Unrinin teaches blending two polyesters resins, and Unrinin further teaches the inclusion of suitable catalysts of aluminum compounds and phosphorus compound).
Unrinin teaches the suitable polyester resin (A) are those comprising 250 ppm of antimony (para 0105]), which range overlaps with the instantly claimed range of 2 to 500 ppm. 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). MPEP 2144.05.
Unrinin teaches as in various of its embodiments that the suitable polyester resin (A) having intrinsic viscosity (IV) of 0.55 dl/g, and 0.75 dl/g, respectively (para [0103] [0104] [0105]), which range overlaps with the instantly claimed range of 0.5 to 0.8 dl/g. 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). MPEP 2144.05.
Unrinin does not limit or restrict the sources of which the polyester resin (A) is from/collected, and thus, is considered as to encompass those polyester resin collected from recycling, meeting the claimed limitations.
Further, collection from recycling is a product by process limitation. The above arguments establish a rationale tending to show the claimed product is the same as what is taught by the prior art. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” (In re Thorpe, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113.
Regarding claim 2, Unrinin teaches the polyester resin (B) with the inclusion of suitable catalysts of aluminum compounds and phosphorus compound (para [0053] [0054]), Unrinin teaches using aluminum compounds and phosphorus compound as co-catalyst in combination (para [0052] [0103]). Unrinin also teaches as in one of its embodiments that the polyester resin includes aluminum element in amount of 20 ppm (para [0103]), which range overlaps with the instantly claimed range of aluminum element at a content of 5 to 50 ppm by mass, and includes phosphorus element in amount of 80 ppm (para [0103]), which range overlaps with the instantly claimed range of phosphorus element at a content of 5 to 1000 ppm by mass. 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). MPEP 2144.05.
Regarding claim 6, Unrinin teaches as in various of its embodiments the suitable amount of the polyester resin (A) with respect to 100 parts by mass of a total amount of the polyester resin (A) and the polyester resin (B) is about 60 parts by mass (para [0115] [0119], the ratio of polyester resin (A) over the polyester resin (B) is 60/40, so the calculated ratio is 60/100), which range overlaps with the instantly claimed range of from 5 to 95 parts by mass. 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). MPEP 2144.05.
Regarding claim 7, Unrinin teaches as in one of its embodiments the inclusion of suitable phosphorus compound (i.e., suitable catalyst) includes those having the phosphorus element and phenolic structure in the same molecule (para [0054], the suitable examples of the phosphorus compound include 3,5-di-tert-butyl-4-hydroxybenzylphosphonate, meeting the claimed limitations).
Regarding claim 21, Unrinin teaches the suitable polyester A are those comprising 250 ppm of antimony (para 0105]), which range overlaps with the instantly claimed range of 2 to 500 ppm. 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). MPEP 2144.05.
Regarding claim 23, it should be noted that the recitation that the polyester resin composition “is for recycling” is considered as merely an intended use. Applicants’ attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim. It is the examiner’s position that the polyester resin composition of Unrinin is capable of performing the intended use. Unrinin teaches its polyester resin composition is suitable for various applications (para [0133]).
Claim(s) 3-5, 17 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Unrinin as applied to claims 1-2, further in view of Yamanaka et al. (US 2019/0010325; “Yamanaka”).
The limitations of claims 1-2 as taught by Unrinin as discussed above.
Regarding claim 3 and 17 and 22, Unrinin teaches as in various of its embodiments of its polyester resin composition (C) having intrinsic viscosity of 0.67 dl/g or more from the viewpoints of strength and durability (para [0069]). Unrinin does not specially teach the intrinsic viscosity retention rate of its polyester resin composition (C), as instantly claimed, in claims 3 and 17, 22.
In the same field of polyester resin, Yamanaka teaches a polyester resin and method for making polyester resin (para [0001]). Yamanaka teaches that the polyester resin intrinsic viscosity retention rate is a result effective variable, in that a higher intrinsic viscosity retention rate means lower resin decomposition (para [0146]).
Absent a showing of criticality with respect to intrinsic viscosity retention rate (a result effective variable), it would have been obvious to a person of ordinary skill in the art at the time of the invention to adjust the intrinsic viscosity retention rate of the polyester resin composition through routine experimentation in order to achieve the desired properties of the polyester resin composition once produced (i.e., resin decomposition properties/rate), which would have arrived at a workable intrinsic viscosity retention rate that falls within the broad range as instantly claimed, in claims 3 and 17 and 22, i.e. of 89 % or more. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). MPEP 2144.05.
Regarding claim 4, Unrinin teaches as in one of its embodiments of its polyester resin composition (A) having intrinsic viscosity of 0.55 dl/g (para [0103]). Unrinin does not specially teach the intrinsic viscosity retention rate of its polyester resin composition (A), as instantly claimed.
In the same field of polyester resin, Yamanaka teaches a polyester resin and method for making polyester resin (para [0001]). Yamanaka teaches that the polyester resin intrinsic viscosity retention rate is a result effective variable, in that a higher intrinsic viscosity retention rate means lower resin decomposition (para [0146]).
Absent a showing of criticality with respect to intrinsic viscosity retention rate (a result effective variable), it would have been obvious to a person of ordinary skill in the art at the time of the invention to adjust the intrinsic viscosity retention rate of the polyester resin composition through routine experimentation in order to achieve the desired properties of the polyester resin composition once produced (i.e., resin decomposition properties/rate), which would have arrived at a workable intrinsic viscosity retention rate that falls within the broad range as instantly claimed, i.e. 92 % or less. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). MPEP 2144.05.
Regarding claim 5, Unrinin teaches as in one of its embodiments of its polyester resin composition (B) having intrinsic viscosity of 0.75 dl/g (para [0105]). Unrinin does not specially teach the intrinsic viscosity retention rate of its polyester resin composition (B), as instantly claimed.
In the same field of polyester resin, Yamanaka teaches a polyester resin and method for making polyester resin (para [0001]). Yamanaka teaches that the polyester resin intrinsic viscosity retention rate is a result effective variable, in that a higher intrinsic viscosity retention rate means lower resin decomposition (para [0146]).
Absent a showing of criticality with respect to intrinsic viscosity retention rate (a result effective variable), it would have been obvious to a person of ordinary skill in the art at the time of the invention to adjust the intrinsic viscosity retention rate of the polyester resin composition through routine experimentation in order to achieve the desired properties of the polyester resin composition once produced (i.e., resin decomposition properties/rate), which would have arrived at a workable intrinsic viscosity retention rate that falls within the broad range as instantly claimed, i.e. of 93 % or more. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). MPEP 2144.05.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YAN LAN whose telephone number is (571)270-3687. The examiner can normally be reached Monday - Friday 7AM-4PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Aaron Austin can be reached at 5712728935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/YAN LAN/Primary Examiner, Art Unit 1782
Prosecution Insights