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
Examiner’s Comment
The examiner suggests replacing “the metal of the metallic salt” of claim 6 with ““the metal of the mono- metallic salt and multi-metallic salt” for a clarification.
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.
Claims 1-6 and 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over CN 102898632 A (Jan. 30, 2013) with Machine translation in view of CN 101704944 A (May 12, 2010) in view of CN 101704944 A (May 12, 2010).
Machine translated CN’632 teaches a copolyester comprising polyethylene glycol structural unit and production method thereof in abstract
Machine translated CN’632 teaches 55 ppm of sodium dihydrogen phosphate (NaH2PO4 2H2O) in Embodiment 1 [0050-0051] and the sodium dihydrogen phosphate would meet the recited mono-metallic salt of an inorganic acid as evidenced by para. [62] of the instant specification. Embodiment 1 further teaches employing PEG4000 which would be expected to yield a copolyetherester
The instant invention further recites presence of a mono-metallic salt of an inorganic acid and multi-metallic salt of an inorganic acid in a polymer matrix over CN’632.
Machine translated CN’632 further teaches the multi-metallic salt of an inorganic acid such as Na2HPO4 (which is taught in para. [60] of the instant specification) and a combination of thereof in [0015].
Utilization of a mixture of the NaH2PO4 and Na2HPO4 for providing good hydrolytic resistance for a polyester is known as taught by example 5 in table of page 11 of CN’944.
Thus, it would have been obvious to one skilled in the art before the effective filing date of invention further to utilize the Na2HPO4 in the Embodiment 1 of CN’632 since CN’632 teaches utilization of a mixture of metal phosphate in the [0015] and since utilization of a mixture of the NaH2PO4 and Na2HPO4 for providing good hydrolytic resistance is known as taught by example 5 in table of page 11 of CN’944 absent showing otherwise.
See In re Mills, 477 F.2d 649, 176 USPQ 196 (CCPA), In re Lamberti, 545 F.2d 747, 750 (CCPA 1976): Reference must be considered for all that it discloses and must not be limited to preferred embodiments or working examples. MPEP 2123.
Regarding the long list of phosphates taught in [0015] of Machine translated CN’632, a prior art reference’s teaching, however, can render a claim obvious even when as ingredient appears without emphasis in a longer list. See Merch & Co., Inc. v. Biocraft Labs, Inc., 874 F.2d 804, 807 (Fed. Cir. 1989). MPEP 2123.
Regarding claim 2, Machine translated CN’632 teaches excellent hydrolysis resistance in abstract which would be expected to have the recited yellowness index inherently.
Regarding claims 3-4, the Embodiment 1 of CN’632 further teaches comprising the Na2HPO4 which would be expected to have the recited properties inherently.
Since PTO does not have equipment to conduct the test, it is fair to require applicant to shoulder the burden of proving that his material differs from those of CN. In re Best, 195 USPQ 430, 433 (CCPA 1977). Inherent anticipation does not require that a person of ordinary skill in the art would have recognized the inherent disclosure. Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373 (Fed. Cir. 2002). MPEP 2112.
Whether the rejection is based on “inherency” under 35 U.S.C. 102, or “prima facie obviousness” under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same. In re Fitzgerald, 619 F.2d 67, 70 (CCPA 1980) (quoting) In re Best, 562 F.2d 1252, 1255 (CCPA 1977). MPEP 2183.
Further, Machine translated CN’632 teaches heating to 280oC for DSC measurement in [0047] which would be evidence that a melting point is 150oC or more.
Regarding claims 5-6, the NaH2PO4 2H2O and Na2HPO4 taught by CN’944 would meet the claims 5-6.
Regarding claims 8-10, Machine translated CN’632 teaches an amount of the phosphate compounds being 20-120 ppm in [0016] and thus utilization of different amounts of phosphate compound as long as the copolyester would exhibit the excellent hydrolysis resistance taught by CN’632 would have been obvious. When patentability is predicated upon a change in a condition of a prior art composition, such as a change in concentration or in temperature, or both, the burden is on Applicant to establish with objective evidence that the change is critical, i.e., it leads to a new unexpected result. It is not inventive to discover the optimum or workable ranges by routine experimentation when the general conditions of a claim are disclosed in the prior art. See In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); In re Aller, 220 F.2d 454, 456 (CCPA 1955). MPEP 2144.05.
Claims 1-6, 8-17 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over KR 10-2021-0095514 A (Aug. 2, 2021) in view of CN 101704944 A (May 12, 2010).
KR teaches a polyetherester copolymer obtained by adding metal slat of an organic fatty acid multimer as a co-catalyst in order to reduce polymerization time in English abstract.
The instant invention further recites presence of a mono-metallic salt of an inorganic acid and multi-metallic salt of an inorganic acid in a polymer matrix over KR.
Utilization of a mixture of the NaH2PO4 and Na2HPO4 as cocatalyst for providing good hydrolytic resistance for a polyester is known as taught by example 5 in table of page 11 of CN.
Thus, it would have been obvious to one skilled in the art before the effective filing date of invention further to utilize the art well known cocatalysts comprising the mixture of the NaH2PO4 and Na2HPO4 for providing good hydrolytic resistance for a polyester taught by CN in KR during polymerization and a polyetherester obtained by such method would be expected have the cocatalysts in a matrix absent showing otherwise.
Selection of a known material based on its suitability for its intended use is prima facie obvious, see Sinclair & Carroll Co. v. Interchemical Corp., 325 US 327, 65 USPQ 297 (1945). MPEP 2144.07.
The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. KSR Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). MPEP 2141.
Regarding claim 2, CN teaches excellent hydrolysis resistance in abstract and thus the polyetherester of KR obtained by utilizing the cocatalysts of CN would be expected to have the recited yellowness index inherently. Since PTO does not have equipment to conduct the test, it is fair to require applicant to shoulder the burden of proving that his material differs from those of KR. In re Best, 195 USPQ 430, 433 (CCPA 1977). Inherent anticipation does not require that a person of ordinary skill in the art would have recognized the inherent disclosure. Schering Corp. v. Geneva Pharms., Inc., 339 F.3d 1373 (Fed. Cir. 2002). MPEP 2112.
Whether the rejection is based on “inherency” under 35 U.S.C. 102, or “prima facie obviousness” under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same. In re Fitzgerald, 619 F.2d 67, 70 (CCPA 1980) (quoting) In re Best, 562 F.2d 1252, 1255 (CCPA 1977). MPEP 2183.
Regarding claim 3, KR teaches a melting point of 163oC to 166oC in a third full paragraph from bottom of page 25 (see table 1 of KR).
Regarding claim 4, KR teaches a crystalline temperature of 74oC or more in 12th full paragraph at page 22 of Machine translation (see table 1 of KR).
Regarding claims 5-6, the NaH2PO4 and Na2HPO4 taught by CN would meet the claims 5-6.
Regarding claims 8-10, Machine translated CN teaches various amounts of phosphate compounds in Embodiments 1-7 and thus utilization of different amounts of phosphate compounds as long as the copolyester would exhibit the excellent hydrolysis resistance taught by CN would have been obvious. When patentability is predicated upon a change in a condition of a prior art composition, such as a change in concentration or in temperature, or both, the burden is on Applicant to establish with objective evidence that the change is critical, i.e., it leads to a new unexpected result. It is not inventive to discover the optimum or workable ranges by routine experimentation when the general conditions of a claim are disclosed in the prior art. See In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); In re Aller, 220 F.2d 454, 456 (CCPA 1955). MPEP 2144.05.
Regarding claims 11-12, KR teaches the recited structures at page 4 (claims 7 and 8).
Regarding claim 13, the instant claim further recites utilization of a mono-metallic salt of an inorganic acid and multi-metallic salt of an inorganic acid as a cocatalyst over steps of polymerization taught in claims 12-13 of Machine translated KR and KR. The claim 13 teaches utilization of a mechanical stirrer.
Utilization of a mixture of the NaH2PO4 and Na2HPO4 as cocatalyst for providing good hydrolytic resistance for a polyester is known as taught by example 5 in table of page 11 of CN.
Thus, it would have been obvious to one skilled in the art before the effective filing date of invention further to utilize the art well known cocatalysts comprising the mixture of the NaH2PO4 and Na2HPO4 for providing good hydrolytic resistance for a polyester taught by CN in KR during polymerization absent showing otherwise.
Selection of a known material based on its suitability for its intended use is prima facie obvious, see Sinclair & Carroll Co. v. Interchemical Corp., 325 US 327, 65 USPQ 297 (1945). MPEP 2144.07.
The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. KSR Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). MPEP 2141.
Regarding the recited torques value of 0.8 Nm and reaction time of 100 minutes or less of claim 14 over the torques value of 0.6 Nm and reaction time of 140 minutes or less taught by claim 13 of KR, KR teaches that cocatalysts would increase productivity by reduce polymerization time in abstract. Thus, a shorter polymerization and a higher torque would be obvious to one skilled in the art. When patentability is predicated upon a change in a condition of a prior art composition, such as a change in concentration or in temperature, or both, the burden is on Applicant to establish with objective evidence that the change is critical, i.e., it leads to a new unexpected result. It is not inventive to discover the optimum or workable ranges by routine experimentation when the general conditions of a claim are disclosed in the prior art. See In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); In re Aller, 220 F.2d 454, 456 (CCPA 1955). MPEP 2144.05.
Regarding claims 15-17, Machine translated CN teaches various amounts of phosphate compounds in Embodiments 1-7 and thus utilization of different amounts of phosphate compounds as long as the copolyester would exhibit the excellent hydrolysis resistance taught by CN would have been obvious. When patentability is predicated upon a change in a condition of a prior art composition, such as a change in concentration or in temperature, or both, the burden is on Applicant to establish with objective evidence that the change is critical, i.e., it leads to a new unexpected result. It is not inventive to discover the optimum or workable ranges by routine experimentation when the general conditions of a claim are disclosed in the prior art. See In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); In re Aller, 220 F.2d 454, 456 (CCPA 1955). MPEP 2144.05.
Regarding claims 19 and 20, claims 16-17 of KR teach the recited conditions.
CALIM OBJECTION
Claims 7 and 18 are 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.
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/TAE H YOON/Primary Examiner, Art Unit 1762
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