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
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 3 and 9-11 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 3 recites two Markush formats, “(ii) is/are selected from linear, ---” in line 2 and “(selected from) 1,3-propanediol, ---” in line 4 which would be indefinite since they would be an expression of a range within a range.
The recited “especially C6 polyols, and particularly --- glucitol” in lines 6-9 of claim 3 is indefinite since such recitation would be an expression of a range within a range.
With respect to “obtainable” in line 1 of claim 9, see Atlantic Thermoplastics Co. Inc. v Faytex Corp. 23 USPQ 2nd 1481 (footnote 6 on page 1486), Ex parte Tanksley 26 USPQ 2nd 1389, and Purdue Research v Watson 1959 CD 124 (Dist. Ct.) affirmed by CCPA 120 USPQ 521. It is unclear what is encompassed by “obtainable”. One does not exactly and precisely know what a given polymer is particularly considering the lack of recitation of a myriad of parameters which affect the polymer identity. MPEP 2133.03 (C). Thus, the examiner suggests “obtained” instead.
Also, the recited “in particular” in line 2 of claim 9 is indefinite and thus deletion is suggested since scope of claim would encompass polyester copolymers not recited also.
Claim 9 recites “(a) in the range from equal to or more than 10 mole % to equal to or less than 60 mole % of one or more primary diol monomeric units” and (f) optionally equal to or more than 0 mole % to equal to or less than 20 mole % of a monomer unit derived from 1,3-propanediol, 1,4-butanediol, ---” which would be indefinite since the clause (a) teaches equal to or more than 10 mole % to equal to or less than 60 mole % of one or more primary diol monomeric units and the primary diol monomeric units would encompass the diols recited for the clause (f). In other words, the clause (a) requires at least the 10 mole % of the primary diol monomeric units as opposed to the clause (f) requiring no primary diol.
Claims 10 and 11 depend from the indefinite claim 9 would be also indefinite.
EXAMINER’S COMMENT
Although Kannan et al. (US 2011/0071235 A1 (March 24, 2011) teach a simultaneous polymerization of a recycled polyester with one or more diols (ii) and one or more dicarboxylic acids or any esters thereof (iii) recited in the instant claim 1 in examples 1-3. Kannan et al. teach that the polyester comprises 1.3 to 3.6 mole % of EG in Table 3 and the examiner does not see any motivation to obtain a polyester comprising the instantly recited at least 40 mole % of ethylene glycol of claim 1.
WO 2021/070020 A1 (April 15, 2021) teaches copolyesters obtained from a recycled PET comprising 64-93.5 mole % of EG and 3.5 to 23 mole % of the instant primary diols (i.e., CHDM and NPG) in examples 1-11 in tables 3-5 of [00303-00305]. WO teaches that the recited monomers of the examples 1-11 are from the recycled PET in [0004]. Although WO teaches copolyesters falling within scope of the instant claims, it does not teach a simultaneous polymerization of a polyester with one or more diols (ii) and one or more dicarboxylic acids or any esters thereof (iii) recited in the instant claim 1. Further, WO fails to teach the instantly recited (d1) and (d2) of claim 9 requiring a monomer unit derived from furandicarboxylic acid.
CA 3119761 A (May 6, 2021) teaches polyesters comprising 71-80 mole % of ethylene glycol (EG) and 16-24 mole% of NPG (neopentyl glycol falling within scope of the instantly recited primary diol) in Table 1 of page 27, but fails to teach the instantly recited (d1) and (d2) of claim 9 requiring a monomer unit derived from furandicarboxylic acid.
CLAIM ALLOWANCE
Claims 1, 2 and 4-8 are allowed.
Claims 3 and 9-11 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
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/TAE H YOON/ Primary Examiner, Art Unit 1762
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