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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-2, and 4-6, and species of claim 2(i), in the reply filed on 06/17/2026 is acknowledged.
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.
Regarding claims 5 and 6, the phrase "within parenthesis" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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.
Claims 1-2, 4, 5, and 6 are rejected under 35 U.S.C.. 103 as obvious over Yoon et al. (US 2024/0052131 A1 – PCT filed Nov 3rd, 2021 – Korean Application # KR10-2021-0005356 filed Jan. 14th,2021) in further view of Sakata et al. (US 2007/0141507 A1) (“Sakata” herein)
Claim 1.
Yoon discloses a polyester; [0045-0048]
so that when degraded with an alkali metal carbonate catalyst, (i.e. sodium carbonate,…, potassium carbonate) [0062-0066]
a single cyclic monomer results, which cyclic monomers can be repolymerized, to produce a new polymer. [0088]
Yoon however does not explicitly disclose the polyester formed from epoxy and anhydride monomers where both the epoxy and anhydride monomers include a cyclic backbone having dicarboxylate groups.
Sakata teaches the above limitation (See paragraphs 0129-0130, 0133 →Sakata teaches this limitation in that [0129] A resin having at least three carboxyl groups per molecule is obtained, for example, by reacting a compound having at least two epoxy groups per molecule with a compound having at least two carboxyl groups per molecule to give a polyester resin and adding an acid anhydride to the polyester resin. Examples of the compound having an epoxy group, which can be used. herein, …n, N-glycidyl type epoxy resin, novolak type epoxy resin of bisphenol A, rubber-modified epoxy resin, dicyclopentadiene phenolic type epoxy resin, silicone-modified epoxy resin, .epsilon.-caprolactone-modified epoxy resin, bisphenol S type epoxy resin, diglycidyl phthalate resin, heterocyclic epoxy resin, bixylenol type epoxy resin and biphenyl type epoxy resin are exemplified. In the present invention, these compounds having an epoxy resins can be used alone or in combination. Examples of the acid anhydride, which can be used herein, include dicarboxylic anhydrides such as maleic anhydride, succinic anhydride, itaconic anhydride, dodecenylsuccinic anhydride, phthalic anhydride, tetrahydrophthalic anhydride, methyltetrahydrophthalic anhydride, hexahydrophthalic anhydride, methylhexahydrophthalic anhydride, endomethylenetetrahydrophthalic anhydride and ethylendomethylenetetrahydrophthalic anhydride ] for the purpose of having excellent in curability, flexibility, adhesion and mechanical strength and also exhibits high safety to the human body. [0013]
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to have a polyester of Yoon, modified with the above limitation, as taught by Sakata, in order to provide a polyester having excellent in curability, flexibility, adhesion and mechanical strength and also exhibits high safety to the human body.
Claim 2.
Yoon discloses the polyester of claim 1, wherein the cyclic backbone comprises one of:
(ii) a cycloaliphatic structure having dicarboxylate groups. [0045-0048]
Claim 4.
Yoon discloses the polyester of claim 1. Yoon however does not explicitly disclose wherein both the epoxy and anhydride monomers include cyclohexane structures. (Same as claim 1)
Claim 5-6
Yoon discloses the polyester of claim 1, wherein the polyester does not include a polymerization product of a dicarboxylate and a diol wherein the polyester does not include polyethylene terephthalate ("PET"). (e.g., PET). (i.e.the polyester may be made by polymerizing a dibasic acid with alkylene glycol, and may be .. polybutylene terephthalate, and polyethylene naphthalate, or polycaprolactone made by polymerizing caprolactone. ) [0046]
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Wang et al. (US 2022/0106442 A1) BIODERIVED RECYCLABLE EPOXY-ANHYDRIDE THERMOSETTING POLYMERS AND RESINS teaches epoxy-amine based coating and adhesive materials are not degradable. Therefore, these coating and adhesives often prohibit the recovery and reuse of their substrate materials. Thus, there is an urgent need for drop-in solutions of new thermosetting polymers that are inherently recyclable, Eckel et al. (US 2019/0262973 A1) BONDED ABRASIVE WHEEL AND METHOD OF MAKING THE SAME teaches A bonded abrasive wheel comprises magnetizable abrasive particles retained in a first organic binder. The bonded abrasive wheel has a central portion adjacent to a central hub, an outer circumference, and a rotational axis extending through the central hub. A majority of the magnetizable abrasive particles are substantially parallel to the rotational axis, and Ikenaga (US 2009/0318579 A1) Method For Depolymerizing Polyester And Unsaturated Polyester, And Method For Recovering Polyester Monomer Using The Depolymerization teaches A method for rapidly depolymerizing a polyester and an unsaturated polyester by irradiating the polyester with microwaves in the presence of an alkylene glycol in which a titanium oxide fine powder having a bulk density of not more than 0.3 g/cm.sup.3 has been dispersed. Another embodiment comprises irradiating a polyester or an unsaturated polyester with microwaves in the presence of a monohydric alcohol or polyhydric alcohol containing an alkali metal and/or an alkaline earth metal.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SILVANA C RUNYAN whose telephone number is (571)270-5415. The examiner can normally be reached M-F 7:30-4:30.
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/SILVANA C RUNYAN/Primary Examiner, Art Unit 1616 07/14/2026
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