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 .
Claim Objections
Claim 7 is objected to because of the following informalities: the acronym “PEI” should be defined at first use. Appropriate correction is required.
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 5 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 requires a specific intrinsic viscosity, but fails to identify what conditions/solvent the IV value pertains to. Therefore, the intended scope of the claim is unclear.
Claim 5 requires a specific thermal decomposition temperature, but fails to identify what conditions/atmosphere the Td pertains to (e.g. air, nitrogen). Therefore, the intended scope of the claim is unclear.
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.
Claim(s) 1, 4, and 5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cai (CN115558092A). As the cited CN publication is in a non-English language, a machine-translated version of the publication will be cited to.
Regarding Claims 1, 4, and 5, Cai describes copolyesters produced from PET (Page 1) and describes an embodiment in Example 8 where PET, ethylene glycol, and succinic acid are reacted at a molar ratio of 5:5:5.5 to produce a random poly(ethylene glycol succinate-ethylene terephthalate) copolymer (Pages 5-6; Table 2), equivalent to a PET:succinic acid ratio of 47.6:52.4 and a PET:ethylene glycol ratio of 100:100. 0.025 wt% of antimony ethylene glycol (C6H12O6Sb2; corresponding to 0.014 wt% of antimony element) is used relative to total reactant mass, equivalent to roughly 100:0.028 PET:antimony element.
It is acknowledged that Cai describes reacting PET, ethylene glycol, and succinic acid together whereas the claims imply reacting PET and ethylene glycol first followed by succinic acid. However, Cai reports the end result in a random co-polyester (Page 5) much like that reported within the specification (e.g. Page 7). Case law holds that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). In the present case, the co-polyesters of Cai are seen to be no different in structure than what is implied by the claims despite being manufactured by alternative means.
Cai describes co-polyesters derived by the same starting materials (PET, ethylene glycol, succinic acid), the same molar ratios, the same catalysts, and indicates the same random structure is achieved. Although Cai does not describe the storage modulus characteristics at 80 degrees C or thermal decomposition temperatures, such is seen to necessarily be present since identical chemical compositions cannot have mutually exclusive properties. MPEP 2112 states “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Claim(s) 3 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cai (CN115558092A) as evidenced by Farah (Molecular Weight Determination of Polyethylene Terephthalate). As the cited CN publication is in a non-English language, a machine-translated version of the publication will be cited to.
The discussion regarding Cai within ¶ 9-11 is incorporated herein by reference.
Regarding Claim 3, Cai reports a number-average molecular weight of 37,500 (Table 2). While not probing intrinsic viscosities, intrinsic viscosity is an indirect measure of molecular weight (Sections 8.2 and 8.2.1 of Farah). Farah notes in the context of polyesters, number average molecular weights of roughly 21,700 to 37,000 correlates roughly with intrinsic viscosities spanning 0.51-0.75 (Tables 8.2 and 8.4). Given Cai reports polyesters of 37,500 molecular weight, the position is taken the polymers of Cai necessarily exhibit the intrinsic viscosity values claimed in the absence of evidence to the contrary.
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cai (CN115558092A) in view of Su (CN105778066A). As the cited CN publications are in a non-English language, machine-translated versions of the publications will be cited to.
Cai describes copolyesters produced from PET (Page 1) and describes an embodiment in Example 8 where PET, ethylene glycol, and succinic acid are reacted at a molar ratio of 5:5:5.5 to produce a random poly(ethylene glycol succinate-ethylene terephthalate) copolymer (Pages 5-6; Table 2), equivalent to a PET:succinic acid ratio of 47.6:52.4 and a PET:ethylene glycol ratio of 100:100. 0.025 wt% of antimony ethylene glycol (C6H12O6Sb2; corresponding to 0.014 wt% of antimony element) is used relative to total reactant mass, equivalent to roughly 100:0.028 PET:antimony element.
It is acknowledged that Cai describes reacting PET, ethylene glycol, and succinic acid together whereas the claims imply reacting PET and ethylene glycol first followed by succinic acid. However, Cai reports the end result in a random co-polyester (Page 5) much like that reported within the specification (e.g. Page 7). Case law holds that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). In the present case, the co-polyesters of Cai are seen to be no different in structure than what is implied by the claims despite being manufactured by alternative means.
Cai describes co-polyesters derived by the same starting materials (PET, ethylene glycol, succinic acid), the same molar ratios, the same catalysts, and indicates the same random structure is achieved. Although Cai does not describe the storage modulus characteristics at 80 degrees C or thermal decomposition temperatures, such is seen to necessarily be present since identical chemical compositions cannot have mutually exclusive properties. MPEP 2112 states “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Regarding Claim 6, Cai differs from the subject matter claimed in that hot melt adhesives are not described. Su also pertains to co-polyesters formed from waste PET, diols, and diacids (¶ 8, Examples). Su notes such low melting point characteristics can be achieved via controlling amount of diol to 1-10:1 diol:polyester (¶ 53) such that polymers suitable for hot melt adhesives can be achieved (¶ 55). It would have been obvious to one of ordinary skill in the art to create co-polyesters suitable for use as hot melt adhesives because doing so would process waste polyester to useful applications while saving energy and resources (¶ 55).
Claim(s) 1, 4, and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cai (CN115558092A) in view of Tsai (European Polymer Journal, 2008, 44, 550-554). As the cited CN publication is in a non-English language, a machine-translated version of the publication will be cited to.
Regarding Claims 1 and 4, Cai describes copolyesters produced from PET (Page 1) and describes an embodiment in Example 8 where PET, ethylene glycol, and succinic acid are reacted at a molar ratio of 5:5:5.5 to produce a random poly(ethylene glycol succinate-ethylene terephthalate) copolymer (Pages 5-6; Table 2), equivalent to a PET:succinic acid ratio of 47.6:52.4 and a PET:ethylene glycol ratio of 100:100. 0.025 wt% of antimony ethylene glycol (C6H12O6Sb2; corresponding to 0.014 wt% of antimony element) is used relative to total reactant mass, equivalent to roughly 100:0.028 PET:antimony element.
It is acknowledged that Cai describes reacting PET, ethylene glycol, and succinic acid together whereas the claims imply reacting PET and ethylene glycol first followed by succinic acid. However, Cai reports the end result in a random co-polyester (Page 5) much like that reported within the specification (e.g. Page 7). Case law holds that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). In the present case, the co-polyesters of Cai are seen to be no different in structure than what is implied by the claims despite being manufactured by alternative means.
To the extent Cai differs from the subject matter claimed with respect to particular storage modulus characteristics, Tsai teaches it was known in the art the observed storage modulus at 80 degrees C is directly related to characteristics such as the relative quantity of succinic acid monomers within random (polyethylene succinate terephthalate) copolymers (Abstract; Table 1; Figure 1). Thus, the relative quantities of monomers used are known result effective variables subject to routine optimization by one of ordinary skill in the art to adjust mechanical characteristics such as storage modulus. See MPEP 2144.05(II). Case law holds that “discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In view of this, it would have been obvious to one of ordinary skill in the art to discover workable/optimal monomer contents within the scope of the present claims so as to produce desired storage modulus characteristics, such as 1x104 to 1x106 Pa.
Regarding Claim 5, Cai describes co-polyesters derived by the same starting materials (PET, ethylene glycol, succinic acid), the same molar ratios, the same catalysts, and indicates the same random structure is achieved. Although Cai does not describe thermal decomposition temperatures, such is seen to necessarily be present since identical chemical compositions cannot have mutually exclusive properties. MPEP 2112 states “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cai (CN115558092A) in view of Tsai (European Polymer Journal, 2008, 44, 550-554) as evidenced by Farah (Molecular Weight Determination of Polyethylene Terephthalate). As the cited CN publication is in a non-English language, a machine-translated version of the publication will be cited to.
The discussion regarding Cai and Tsai within ¶ 24-27 is incorporated herein by reference.
Regarding Claim 3, Cai reports a number-average molecular weight of 37,500 (Table 2). While not probing intrinsic viscosities, intrinsic viscosity is an indirect measure of molecular weight (Sections 8.2 and 8.2.1 of Farah). Farah notes in the context of polyesters, number average molecular weights of roughly 21,700 to 37,000 correlates roughly with intrinsic viscosities spanning 0.51-0.75 (Tables 8.2 and 8.4). Given Cai reports polyesters of 37,500 molecular weight, the position is taken the polymers of Cai necessarily exhibit the intrinsic viscosity values claimed in the absence of evidence to the contrary.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cai (CN115558092A) in view of Tsai (European Polymer Journal, 2008, 44, 550-554) and Su (CN105778066A). As the cited CN publications are in a non-English language, machine-translated versions of the publications will be cited to.
The discussion regarding Cai and Tsai within ¶ 24-27 is incorporated herein by reference.
Regarding Claim 6, Cai differs from the subject matter claimed in that hot melt adhesives are not described. Su also pertains to co-polyesters formed from waste PET, diols, and diacids (¶ 8, Examples). Su notes such low melting point characteristics can be achieved via controlling amount of diol to 1-10:1 diol:polyester (¶ 53) such that polymers suitable for hot melt adhesives can be achieved (¶ 55). It would have been obvious to one of ordinary skill in the art to create co-polyesters suitable for use as hot melt adhesives because doing so would process waste polyester to useful applications while saving energy and resources (¶ 55).
Allowable Subject Matter
Claim 2 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 7 would be allowable if rewritten to overcome the claim objection set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
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/STEPHEN E RIETH/Primary Examiner, Art Unit 1759
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