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 .
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 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 11,708,453 B2, (hereinafter US 11,708,453).
Although the claims at issue are not identical, they are not patentably distinct from each other because US 11,708,453 teaches each and every component and reads upon the claims in an anticipatory manner.
Regarding claims 1-15, US 11,708,453 teaches introducing reacting CHDM, EG1 and a diacid in a first reaction zone (Z1), to form a first esterification product, passing the first esterification product to a second reaction zone (Z2), introducing fresh EG2 into the Z2 and esterifying to form a second esterification product, passing the second esterification product to a third reaction zone (Z3), introducing fresh EG3 into Z3, and undergoes polycondensation with a polycondensation catalyst to form a prepolymerization product, passing the a prepolymerization product in the presence of the polycondensation catalyst to one or more reaction zones (ZF), and polycondensing the prepolymerization product to form a copolyester containing 1.0 wt% or less of DEG, wherein the overall molar ratio of EG:TPA is 2.3:1 to 2.7:1 (claims 1-5), wherein the Z1 is carried at a melt temp of 250-270 deg C and a pressure of 25-40 psi and a reaction or 257-265 deg C and 30-40 psi, (claim 6), wherein Z2 is carried out at 257-265 deg C and 8-20 psi (claim 7), wherein the diacid component is 90-100 mol% of terephthalic acid, and diol component is 50-90 mol% of ethylene glycol and 10-50 mol% of 1,4-cyclohexanedimethanol (claim 8), the copolyester has an inherent viscosity of 0.6-0.9 dL/g (claim 9), and 0.9 wt% or less of DEG (claim 10-11).
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 1-15 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.
Claims 1, 5, 6, 14 and 15, recites the term “DEG.” However, DEG is not defined.
Claims 6 and 9, recites the term “TPA.” However, the term “TPA” in the claim does not appear to be defined. It appears that TPA is meant to indicate the terephthalic acid in step (g).
Claims 2-4, 7, 8, 10-13, are dependent claims which fail to alleviate the issues above.
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.
Claim(s) 1-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 5,681,918 A to Adams et al. (hereinafter Adams) and in further view of US 2002/0137877 A1 to Debruin (hereinafter Debruin).
Regarding claims 1-5, Adams teaches a three step process of forming a copolyester by reacting terephthalic acid (TPA), ethylene glycol (EG), and 1,4-cyclohexanedimethanol (CHDM), wherein a feed ratio of total glycols to dicarboxylic acid is 1.7:1 to 6.0:1 (See abstract). Adams teaches that the esterification reaction is carried out in two continuous reactors (R1 and R2), a third reaction is used as a flash tank to collected to the esterification product, and then the esterification product is collected in batch reactors and mixed with a catalyst and undergoes a polycondensation reaction to form the copolyester. (See Example 2). Adams teaches the first esterification R1 reactor is at a temp of 245-260 deg Cat a pressure of 37 psig, the second esterification R2 reactor is at a temp of 2450-267 dg C and a pressure of 10-27 psig. (See example 2). The above meets the Z1, Z2, Z3, and ZF zones, catalyst and polycondensation step of claim 1. Adams further teaches in Example 6 that the dicarboxylic component is only terephthalic acid, and the diol component contains 69 mole% of EG and 31 mole% of CHDM (See Example 6, col 9, ln 54-58), which meets the diol amount cited in claim 3. Adams also teaches the diols (69 mol% EG and 31 mol% CHDM) are fed into the R1 and R2 reactors at feed mole ratio of glycols to terephthalic acid of 3.5:1 with excess ethylene glycol, (col 9, ln 60-62), which correlates to an EG/TPA mole ratio of 2.415:1, which meets the claimed molar ratio. Adams further teaches the copolyester has an inherent viscosity of 0.7-0.8 dL/g (col 4, ln 34-37), which meets the claim 4.
Adams is silent regarding the amount of DEG in the copolyester.
However, one skilled in the art would have a reasonable expectation for the copolyester of Adams to have the claimed DEG wt% range properties because Adams teaches a substantially identical copolyester of TPA/EG/CHDM obtained by substantially identical method of the claimed invention such as the Z1, Z2, Z3 and ZF zones at the temperature ranges and pressures, with the EG/TPA molar ratio and Applicant further teaches in their the specification that a low DEG product is achieved by the Z1, Z2, Z3 and ZF zones at the temperature ranges and pressures, with the EG/TPA molar ratio (See specification), and this is further evident by the copolyester of Adams having the same inherent viscosity properties and Adams teaching the resultant copolyester has significantly reduced yellow color formation (col 9, ln 15-35 and col 10, ln 54-68), and the copolyester with improved color is known in the art as an indication of a more pure product with lower DEG. (See Debruin, “higher purity product (e.g., lower DEG impurity) or improved color,” para 274 and “lowered DEG and less coloration,” 489). See MPEP 2112.01. (Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)).
Furthermore, Debruin teaches that one skilled in the art can determine the reaction parameters and conditions such as temperature, pressure and mole ratios, to produce a higher purity product that is lower in DEG impurity with improved color. (para 274-275). This teaching demonstrates that one skilled in the art would know to adjust the reaction parameters and conditions of Adams to produce a higher purity product to have less DEG and improved color. Thus, it has also been found the DEG content is obvious to one ordinarily skilled in art by the optimization of ranges through routine experimentation. See MPEP 2144.05.
Thus, the claimed DEG wt% would have been obvious to one ordinarily skilled in the art before the effective date of the claimed invention by the optimization of ranges through routine experimentation because Adams teaches a substantially identical copolyester of TPA/EG/CHDM obtained by substantially identical method of the claimed invention such as the Z1, Z2, Z3 and ZF zones at the temperature ranges and pressures, with the EG/TPA molar ratio, and Debruin further teaches that one skilled in the art can determine the reaction parameters and conditions such as temperature, pressure and mole ratios, to produce a higher purity product that is lower in DEG impurity with improved color (para 274-275), which demonstrates that one skilled in the art would know to adjust the reaction parameters and conditions of Adams to produce a higher purity product to have less DEG and improved color. See MPEP 2144.05.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HA S NGUYEN whose telephone number is (571)270-7395. The examiner can normally be reached Mon-Fri, Flex schedule 7:30am-4:00pm.
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/HA S NGUYEN/Primary Examiner, Art Unit 1766