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 .
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.
Claim 8 recites the limitation "the polyester having a particle size" in line 2. There is insufficient antecedent basis for this limitation in claim 1 which does recite a particle size.
The claim would be more appropriately worded as “..the polyester has a particle size…”.
Claims 3 and 15 are rejected under 112b since they contain the species “erythritane”, which when searched, is a compound that doesn’t exist. This appears to be a typographical error, since when concerned with an alcohol, the species should be “erythritol”.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 17 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 17 depends on claim 16 which requires the carboxylic acid to contain a heterocycle. The species of claim 17 of succinic acid does NOT contain a heterocyclic group. The definition of a heterocyclic group is one that contains a ring, and wherein at least one of the ring components is not carbon (usually N, O or S). Succinic acid is aliphatic and does not contain a ring.
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Note applicants specification does not re-define the term, and also makes it unclear what they considered to be a “heterocycle”. See page 13 below:
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Note that ONLY 2,5 furandicarboxylic acid contains a heterocyclic group from the acids mention in the paragraph above.
The same issue exists with the alcohol reactant, wherein the erythritane (erythritol) is not heterocyclic:
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Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim(s) 1-3, 5-7, 9, 13-15, 17 ,18 are rejected under 35 U.S.C. 103 as being unpatentable over Moens-US patent 8637581.
Moens discloses polyester resins made from the reaction of (column 5 lines 24-37):
10-80% by weight (bw) of terephthalic acid,
5-35% bw of ethylene glycol (NOTE the reaction of A and B create polyethylene terephthalate (or PET)),
5-40% bw of dianhydrohexitol- preferably isosorbide (which is heterocyclic) which is from bio-based feedstock, see claim 13,
5-40% bw of linear chain dicarboxylic acids
0-40% bw of other polyols and/or polyacids.
Further, the reference discloses that the polyesters are made from materials based on PET that is glycolysed (transesterification) in the presence of the isosorbide and further reacted with the one or more dicarboxylic acids (preferably succinic acid made from renewable resources, see column 6 lines 29-30). Renewable resources are defined by the art to be biomass (as one of a few possibilities).
Based on the % bw disclosed above of each component it is clear that the limitation of wherein the ratio of carbon atoms derived from the PET is 5-40% bw is overlapped by the reference (this would also include the ranges required by claims 6 and 7). MPEP 2144.05 I. 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)
Additionally, the reference makes no mention of methyl ethyl ketone insoluble matter content. Therefore, one can only assume, at present, that none exists. The claim does read on 0% of the insoluble matter, therefore the limitation is met by Moens.
With respect to claim 9, Moens discloses the creation of a paint in example 15 with the use of the polyester and addition of a solvent.
With respect to the method claims 13-18, column 2 of Moens discloses a process of transesterification of the reactants at a temperature of 200-260 C in the presence of a catalysts, one being tetra-n-butyltitanate for around 3 hours (seen in the examples). Note the melting temperature of PET is generally in the range of 250-260 degrees C.
Therefore, since the reference has overlapping ranges, and a selection of certain embodiments (from many), the reference lacks sufficient specificity for anticipation, but it would have been obvious to one skilled in the art to have selected the preferred embodiments cited above to make the claimed polyester.
Claim(s) 4, 12 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Moens-‘581 in view of Ghosh et al-CA 2859547.
The disclosure of Moens from above is applied here as such. Moens fails to disclose the use of an acid reactant which contains a heterocyclic structure and use of being in an image forming device/material.
Ghosh teaches polyesters made from biomass components, one component being an acid, specifically 2,5 furan dicarboxylic acid, with an alcohol of isosorbide. The reference teaches advantages such as a replacement for fossil fuel based reactants which are diminishing, along with the fact that they are more bio-friendly. Ghosh also teaches the functional equivalency between such furan acids and other acids such as succinic acid. Ghosh also teaches that the formed polyesters can be used for liquid crystal displays, in reference to present claim 12.
Therefore, it would have been obvious to one skilled in the art to have used the Moens polyester and 1) to have replaced the succinic acid with 2,5, furan dicarboxylic acid since it is a recognized functional equivalent in the art and 2) to have used the polyester of Moens in the area of LC displays, both taught by Ghosh et al.
Claim(s) 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Moens-‘581 in view of WO 2014157507-Oda et al.
The disclosure of Moens from above is applied here as such. Moens fails to disclose the use of the polyester as an ink or an adhesive.
The Oda reference discloses bio based polyesters to used in many fields, such as coatings, an ink or an adhesive. See the abstract.
Therefore it would have been obvious to one skilled in the art to use the polyester formulations on Moens in the areas of inks and/or adhesives since Oda teaches that the coatings of Moens would be considered a functionally equivalent use with inks and adhesives for the bio based polyesters that are disclosed in Moens.
Claim(s) 8 is rejected under 35 U.S.C. 103 as being unpatentable over Moens-‘581.
The disclosure of Moens from above is applied here as such. Moens fails to disclose the claimed particle size and color values as required by claim 8. Moens discloses 10-150 microns for its use as a powder coating.
The office takes that position that it would have been obvious to one skilled in the art to merely scale up/change the size of the obtained particles, based on the final end use of the product. Scaling up of the particles to the MM size range would allow one easier storage, transportation, and less loss of product when transferring/using the particles. Hence, the particles size is considered to be a result effective variable, see MPEP 2144.05.
Additionally, the courts have held that:
MPEP 2144.04 IV.
A. Changes in Size/Proportion
In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) (Claims directed to a lumber package "of appreciable size and weight requiring handling by a lift truck" were held unpatentable over prior art lumber packages which could be lifted by hand because limitations relating to the size of the package were not sufficient to patentably distinguish over the prior art.); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976) ("mere scaling up of a prior art process capable of being scaled up, if such were the case, would not establish patentability in a claim to an old process so scaled." 531 F.2d at 1053, 189 USPQ at 148.).
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In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device.
With respect to the claimed color properties of claim 8, Moens fails to disclose any color properties. Since the polyester polymer of Moens is so structurally similar to the presently disclosed AND is made via the same processes, one skilled in the art would clearly expect the color properties of Moens to be the same or similar to the ones of claim 8.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RANDY P GULAKOWSKI whose telephone number is (571)272-1302. The examiner can normally be reached M-F 7:30-4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy P Gulakowski can be reached at 571-272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RANDY P GULAKOWSKI/ Supervisory Patent Examiner, Art Unit 1766