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
Third party has filed IDS on Sep. 17, 2025 and a signed IDS is enclosed.
SPECIFICATION OBJECTION
The recited structures for Chemical 1 and Chemical 2 at pages 4 and 5 of the instant specification contain illegible characters (i.e., see pages 2-3 of PG Pub. US 2025/0101639 A1 for issues) and submission of clean structures is needed.
Claim Rejections - 35 USC § 102 and 35 USC § 103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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, 2, 4 and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2003055300 A (Feb. 26, 2003) with Machine translation.
English abstract of JP teaches polyethylene terephthalate (PET) obtained from bis-beta-hydroxyethyl terephthalate (BHET) from depolymerized PET and ethylene glycol. Machine translated JP teaches utilization of distilled BHET which would be free of isophthalic acid inherently meeting claim 2.
Machine translated JP teaches various articles thereof such as fiber.
Although Example 1 in table 1 of [0034] teaches PET having a DEG content of 1.8 wt.% and an intrinsic viscosity of 0.67 dl/g without mentioning the instantly recited degree of crystallinity of the PET fiber, the PET fiber would be obtained from stretching of PET fibers from the starting fiber inherently. Thus, the stretched PET fiber obtained from an initial fiber would be expected to increase the degree of crystallinity the starting fiber and the PET fiber obtained from the PET of the Example 1 would be expected to have the instantly recited degree of crystallinity of the PET fiber 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 JP See In re Best, 195 USPQ 430, 433 (CCPA 1977). Charles Pfizer & Co. v. FTC, 401 F.2d 574, 579 (6th Cir. 1968). 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). See MPEP 2112.01.
Thus, the instant claim lacks novelty.
Claims 6-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kumakawa et al. (US 4,690,866).
Note that an invention in a product-by-process is a product, not a process. See In re Brown, 459 F2d 531, 173 USPQ 685 (CCPA 1972) and In re Thorpe, 777 F2d 695, 697, 227 USPQ 964 (Fed. Cir. 1985). MPEP 2113. Thus, it would be immaterial whether PET is obtained from fresh raw materials or recycled materials.
Kumakawa et al. teach a polyester fiber useful as tire cords,
Kumakawa et al. teach a polyester fiber composed of a polyester comprising ethylene terephthalate unis as the main recurring units and having an intrinsic viscosity of at least 0.9 in abstract.
Kumakawa et al. teach a polyester fiber useful as conveyer belts, rubber hoses tire cords and V-belts in lines 14-32 of col. 1 and the V-belts further meets a rubber-fiber composite of claim 6.
Thus, the instant invention lacks novelty.
Claims 6 and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sasamoto et al. (EP 0454868 B, Sep. 25, 1996).
Note that an invention in a product-by-process is a product, not a process. See In re Brown, 459 F2d 531, 173 USPQ 685 (CCPA 1972) and In re Thorpe, 777 F2d 695, 697, 227 USPQ 964 (Fed. Cir. 1985). MPEP 2113. Thus, it would be immaterial whether PET is obtained from fresh raw materials or recycled materials.
Sasamoto et al. teach a tire cord and tire thereof at page 2.
Sasamoto et al. teach the polyester fiber having the terminal carboxyl group concentration of 14 eq/ton, diethylene content of 0.7 wt.%% and intrinsic viscosity of.0.98 to 1.01 dl/g in lines 37-40 of page 6.
Thus, the instant invention lacks novelty.
Claims 1-3, 6, 9 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2000169623 A (June 20, 2000.
JP teaches polyethylene terephthalate (PET) obtained from bis-beta-hydroxyethyl terephthalate (BHET) from purified depolymerized PET and ethylene glycol which would be free of isophthalic acid (IPA) inherently in English abstract.
JP teaches a diethylene content of 1.11% and a terminal carboxyl group concentration of 9.9 eq/106g (i.e., 9.9 eq/ton) in Table 2 of [0042].
JP is taught to teach tire cords obtained from yarns in [0030] based on the PCT written opinion and the yarns would comprise PET fibers inherently.
Thus, the instant invention lacks novelty.
Claims 3, 5, 10 and 12-15 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2003055300 A (Feb. 26, 2003) with Machine translation as applied to claims 1, 2, 4 and 11 above, and further in view of Sasamoto et al. (EP 0454868 B, Sep. 25, 1996) or Machine translated KR 2010-0134211 A (Dec. 23, 2010).
Regarding claims 3, 5, 10 and 12-15, Sasamoto et al. teach the polyester fiber having a high toughness useful for a tire cord and tire thereof at page 2 and in lines 14-37 of page 3. Sasamoto et al. teach that a behavior of the crystallinity is depending of orientation such as high-speed spinning as well as a method of polymerization in lines 40-51 of page 3.
Sasamoto et al. teach the polyester fiber having the terminal carboxyl group concentration of 14 eq/ton, diethylene content of 0.7 wt.%% and intrinsic viscosity of.0.98 to 1.01 dl/g in lines 37-40 of page 6. Such polyester fiber would be expected to have the recited degree of crystallinity of claim 4 inherently also since ts has the recited terminal carboxyl group concentration of 14 eq/ton, diethylene content of 0.7 wt.%% and intrinsic viscosity of.0.98 to 1.01 dl/g as claimed.
Machine translated KR teaches polyester yarn having the instantly recited intrinsic viscosity, crystallinity, CEG content and DEG content in claim 1 for an airbag
Thus, it would have been obvious to one skilled in the art before the effective filing date of invention to obtain the instant chemical-recycled PET fiber of JP having the recited properties of Sasamoto et al. or KR since Machine translated JP teaches various articles thereof such as fiber and since Sasamoto et al. teach the polyester fiber having a high toughness having the terminal carboxyl group concentration of 14 eq/ton, diethylene content of 0.7 wt.%% and intrinsic viscosity of.0.98 to 1.01 dl/g useful for a tire cord and tire thereof and since abstract and claim 1 of Machine translated KR teach that polyester yarn having the instantly recited intrinsic viscosity, crystallinity, CEG content and DEG would have excellent physical properties for a long time 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.
Claims 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2003055300 A (Feb. 26, 2003) with Machine translation in view of Sasamoto et al. (EP 0454868 B, Sep. 25, 1996) as applied to claims 1-5 and 10-15 above, and further in view of Kumakawa et al. (US 4,690,866).
Regarding claims 6-9, utilization of the PET fibers and yarns for obtaining various articles such as fiber and various articles comprising the fiber is known in the art.
Kumakawa et al. teach a polyester fiber useful as conveyer belts, rubber hoses tire cords and V-belts in lines 14-32 of col. 1 and the V-belts further meets a rubber-fiber composite of claim 6.
Thus, it would have been obvious to one skilled in the art before the effective filing date of invention to obtain PET fiber from the polyethylene terephthalate (PET) obtained from bis-beta-hydroxyethyl terephthalate (BHET) from purified depolymerized PET and ethylene glycol taught by JP for obtaining various articles such as fiber and conveyer belts, rubber hoses tire cords and V-belts taught by Kumakawa et al. 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.
Claims 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2000169623 A (June 20, 2000) with Machine translation as applied to claims 1-3, 6, 9 and 10 above, and further in view of Kumakawa et al. (US 4,690,866).
Regarding claims 7 and 8, utilization of the PET fibers and yarns for obtaining various articles such as fiber and various articles comprising the fiber is known in the art.
Kumakawa et al. teach a polyester fiber useful as conveyer belts, rubber hoses tire cords and V-belts in lines 14-32 of col. 1 and the V-belts further meets a rubber-fiber composite of claim 6.
Thus, it would have been obvious to one skilled in the art before the effective filing date of invention to obtain PET fiber from the polyethylene terephthalate (PET) obtained from bis-beta-hydroxyethyl terephthalate (BHET) from purified depolymerized PET and ethylene glycol taught by JP for obtaining various articles such as fiber and conveyer belts, rubber hoses tire cords and V-belts taught by Kumakawa et al 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.
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 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 6-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4-7 of copending Application No. 18/294,751 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because an invention in a product-by-process is a product, not a process. See In re Brown, 459 F2d 531, 173 USPQ 685 (CCPA 1972) and In re Thorpe, 777 F2d 695, 697, 227 USPQ 964 (Fed. Cir. 1985). MPEP 2113. Thus, the recited depolymerization and polymerization thereof recited in the instant claim 1 would have no probative value.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
EXAMINER’S COMMENT REGARDING THE OPINIONS BY THE THIRD PARTY
KR 2010-0134211 A (Dec. 23, 2010) discussed by the third party teaches polyester yarn having the instantly recited intrinsic viscosity, crystallinity, CEG content and DEG content in claim 1 for an airbag, but failed to teach the instant method utilizing depolymerization of PET and articles thereof.
KR 2011-0057569 A (June 1,2011) and JP 2004-323411 A (Nov. 18, 2004) discussed by the third party teach polyester fiber obtained from raw material from depolymerization of PET product, but they would be redundant in view of JP 2003055300 A (Feb. 26, 2003) with Machine translation and other rejections used for the rejection above.
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/TAE H YOON/Primary Examiner, Art Unit 1762
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