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 .
Claims Status
Claims 1-23 are pending. Claim 1 is amended. Claims 8-16 and 18-20 were withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention.
Response to Amendment /Argument
Receipt is acknowledged of applicant's amendment filed 7/10/2026.
The terminal disclaimer filed on 7/10/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of co-pending application 18/850,317 and co-pending application 19/103,026 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Applicant's arguments and claim amendment filed 7/10/2026 with respect to the rejection of present claims 1-2, 6-7, 17, 21 and 23 under 35 U.S.C. 103 as being unpatentable over JP2012122051A to Unrinin (“Unrinin”) have been fully considered and are persuasive. Therefore, the previous rejections have been withdrawn. However, upon further consideration, a new ground(s) of rejection is made based on Unrinin in view of a newly found prior art reference Kyber et al. (US 5,266,601; “Kyber”) in light of applicant's claim amendment.
Any rejections and/or objections, made in the previous Office Action, and not repeated in the present Office Action, are hereby withdrawn.
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) in view of Kyber et al. (US 5,266,601; “Kyber”).
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 master 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 resins 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.
Unrinin does not specifically teach its polyester resin (A) meeting the specific material limitations as instantly claimed, in claim 1 (i.e., comprises a polyester polymer containing an ethylene terephthalate constituent unit in an amount of 50 mol% or more, and the polyester polymer of the polyester resin (A) is composed of the ethylene terephthalate constituent unit; and only units derived from one or both of a polycarboxylic acid component other than terephthalic acid and a polyhydric alcohol component other than ethylene glycol).
Kyber teaches a polyester resin that is collected for recycling (col. 1, lines 5-12, col. 1, lines 62-67) and that the polyester resin of Kyber comprises:
- a polyester polymer containing an ethylene terephthalate constituent unit in an amount of 50 mol% or more (col. 1, lines 5-12, col. 3, lines 4-6, mostly ethylene terephthalate unit, and col. 4, lines 5-15, see the examples 6-10 of the Table at col. 4, where the IPA/isophthalic acid which is dicarboxylic acid is about only 0.93%, and DEG/diethylene glycol is about 1.27%, and thus, the calculated amount of ethylene terephthalate constituent unit is roughly about 96-97 mol%, which range overlaps with the instantly claimed range of 50 mol% or more of instant claim 1; (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) and
- the polyester polymer of the polyester resin is composed of the ethylene terephthalate constituent unit (col. 1, lines 5-12, col. 3, lines 4-6, and col. 4, lines 5-15, see the examples 6-10 of the Table at col. 4); and
- only units derived from one or both of a polycarboxylic acid component other than terephthalic acid and a polyhydric alcohol component other than ethylene glycol (col. 4, lines 5-15, col. 4, lines 5-15, see the examples 6-10 of the Table at col. 4, that includes units derived from the IPA/isophthalic acid which is dicarboxylic acid, and from DEG/diethylene glycol). The polyester resin of Kyber also includes antimony element (col. 4, lines 5-15, examples 6-10 of the Table at col. 4).
The polyester resin of Kyber is considered read on and meeting the claimed material limitations of the polyester resin (A) of instant claim 1.
It would have been obvious to one of ordinary skill in the art to modify the method of Unrinin in view the teachings of Kyber, to select and use the polyester resin taught by Kyber that is collected for recycling as the polyester material (A) in the blending process of the method of producing a polyester resin composition, because Kyber teaches its polyester resin is suitable for recycling and reprocessing (col. 1, lines 5-12, col. 1, lines 62-67). The selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. See MPEP 2144.05.
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
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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.
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/YAN LAN/Primary Examiner, Art Unit 1782
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