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 .
Applicant’s election without traverse of Group I and formula (Ia) in the reply filed on 3/25/26 is acknowledged. Claims 5-14,16,18, and 26 are considered non-elected.
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 1-4,15,17 and 32 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.
There is no “formula I” in claim 1.
Claim 1’s “or a salt thereof” is not understood. The depicted polymer does not show acid (or other groups) groups that can be formed into a salt.
Claim 2 defines i2, i3 etc not present in the formula.
Claim 2 defines j2, j3 etc not present in the formula.
“R” is left undefined in claim 3.
Claim Rejections - 35 USC § 102
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.
Claims 1-3 and 32 rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shepard EP368690.
Shepard exemplifies (#2) a polymer polymerized from ethylene glycol, 2,6-dimethyl naphthalenedicarboxylate and 2,7-dimethyl naphthalenedicarboxylate. This makes a polyester of applicant’s formula with the 2,6 naphthalene structure qualifying as applicant’s “Α” and the 2,7 naphthalene structure qualifying as applicant’s “B”. The ethylene glycol provides applicant’s -Y-CH2(CH2)sY- with “Y” being oxygen and “s” being 1. The ethylene glycol also provides applicant’s -X-(CH2)kCH2X- with “X” being oxygen and “k” being 1.
The Mw of these polyesters are ~49,000 (table 1). Given the molecular weight of both repeat units is ~230, “i” and “j” would sum to ~213 - easily within applicant’s ranges.
In regards to applicant’s dependent claims:
Shepard’s polyester is useful as packaging film (page 3 line 27) – meeting applicant’s claim 32.
Claims 1,2 and 32 rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shepard EP368690.
Shepard exemplifies (#4) a polymer polymerized from ethylene glycol, 2,6-dimethyl naphthalenedicarboxylate and dimethyl terephthalate. This makes a polyester of applicant’s formula with the terephthalate structure qualifying as applicant’s “A” and the 2,6 naphthalene structure qualifying as applicant’s “B”. The ethylene glycol provides applicant’s -Y-CH2(CH2)sY- with “Y” being oxygen and “s” being 1. The ethylene glycol also provides applicant’s -X-(CH2)kCH2X- with “X” being oxygen and “k” being 1.
The Mw of this polyester is ~57,000 (table 1). Given the molecular weight of the repeat units is ~182 and 230, “i” and “j” would sum to ~240 - easily within applicant’s ranges.
In regards to applicant’s dependent claims:
Shepard’s polyester is useful as packaging film (page 3 line 27) – meeting applicant’s claim 32.
Claims 1, 2 and 32 rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jen 6620362.
Jen exemplifies (#4) a polymer polymerized from ethylene glycol, 2,6-dimethyl naphthalenedicarboxylate and dimethyl terephthalate. This makes a polyester of applicant’s formula with the terephthalate structure qualifying as applicant’s “A” and the 2,6 naphthalene structure qualifying as applicant’s “B”. The ethylene glycol provides applicant’s -Y-CH2(CH2)sY- with “Y” being oxygen and “s” being 1. The ethylene glycol also provides applicant’s -X-(CH2)kCH2X- with “X” being oxygen and “k” being 1.
Jen does not report the number of repeating units or molecular weight of the polyester, although an IV of 0.615 is measured (col 5 line 45). IV’s of this value correspond to molecular weights below 50,000 (see table 1 of EP368690).
Given the molecular weight of the repeat units are ~182 and 230, “i” and “j” would sum to less than 250 - easily within applicant’s ranges.
In regards to applicant’s dependent claims:
Applicant’s claim 32 is merely a composition claim with a future intended use (ie packaging). Jen’s polyester meets applicant’s polyester. Jen’s polyester has the potential to be used in packaging regardless of whether Jen recognizes such an end use.
Claims 1,2 and 32 rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP06-18903.
The reference exemplifies (#1) a polymer polymerized from ethylene glycol, 2,6-dimethyl naphthalenedicarboxylic acid and terephthalic acid. This makes a polyester of applicant’s formula with the terephthalate structure qualifying as applicant’s “A” and the 2,6 naphthalene structure qualifying as applicant’s “B”. The ethylene glycol provides applicant’s -Y-CH2(CH2)sY- with “Y” being oxygen and “s” being 1. The ethylene glycol also provides applicant’s -X-(CH2)kCH2X- with “X” being oxygen and “k” being 1.
The reference does not report the number of repeating units or molecular weight of the polyester, although an IV of 0.71 is measured. IV’s of this value correspond to molecular weights of about 61,000 (see table 1 of EP368690).
Given the molecular weight of the repeat units are ~182 and 230, “i” and “j” would sum to less than 250 - easily within applicant’s ranges.
In regards to applicant’s dependent claims:
The reference’s polyester is useful as packaging (see end of publication) – meeting applicant’s claim 32.
Claims 1-3,17 and 32 rejected under 35 U.S.C. 102(a)(1) as being anticipated by Heise US 5663290.
Heise exemplifies (#3) a polymer polymerized from, 2,6-dimethyl naphthalenedicarboxylate, 2,7-dimethyl naphthalenedicarboxylate and an excess of ethylene glycol . This makes a polyester of applicant’s formula with the 2,6 naphthalene structure qualifying as applicant’s “Α” and the 2,7 naphthalene structure qualifying as applicant’s “B”. The ethylene glycol provides applicant’s -Y-CH2(CH2)sY- with “Y” being oxygen and “s” being 1. The ethylene glycol also provides applicant’s -X-(CH2)kCH2X- with “X” being oxygen and “k” being 1.
Heise does not report the number of repeating units or molecular weight of the polyester, although an IV of 0.64 is measured (col 6 line 33). IV’s of this value correspond to molecular weights below 50,000 (see table 1 of EP368690).
Given the molecular weight of the repeat units are ~ 230, “i” and “j” would sum to less than 250 - easily within applicant’s ranges.
In regards to applicant’s dependent claims:
An excess of ethylene glycol was used. With more diol than diacid in the reaction mixture, the end groups would necessarily be HO-CH2CH2- which meets applicant’s claim 17.
Applicant’s claim 32 is merely a composition claim with a future intended use (ie packaging). Heise’s polyester meets applicant’s polyester. Jen’s polyester has the potential to be used in packaging regardless of whether Jen recognizes such an end use. Additionally, Heise (col 1 line 20) recognizes films as an end use.
Claim Rejections - 35 USC § 103
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 3,4 and 15 rejected under 35 U.S.C. 103 as being unpatentable over Jen 6620362.
Jen applies as explained above.
Jen’s cited example utilizes 2,6-dimethyl naphthalenedicarboxylate for making his polyester instead of 2,7-dimethyl naphthalenedicarboxylate.
However, Jen (abstract) suggests the 2,7 version may be used in lieu of 2,6-dimethyl naphthalenedicarboxylate.
It would have been prima facie obvious to use any isomer of naphthalenedicarboxylate to make Jen’s polyester.
Claims 3,4 and 15 rejected under 35 U.S.C. 103 as being unpatentable over JP06-18903.
JP06-18903. applies as explained above.
The reference’s cited example utilizes 2,6-dimethyl naphthalenedicarboxylate for making his polyester instead of 2,7-dimethyl naphthalenedicarboxylate.
However, the reference suggests the 2,7 version may be used in lieu of 2,6-dimethyl naphthalenedicarboxylate.
It would have been prima facie obvious to use any isomer of naphthalenedicarboxylate to make the reference’s polyester.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID J BUTTNER whose telephone number is (571)272-1084. The examiner can normally be reached M-F 9-3pm.
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/DAVID J BUTTNER/Primary Examiner, Art Unit 1765 4/15/26