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 .
Amendments to claims 9-10 and 16 and the addition of claims 18-20, in the response filed April 2, 2026, have been entered.
Claims 1-20 are currently pending in the above identified application.
Claims 1-8 have been withdrawn from consideration as being directed towards the non-elected invention.
Claim Rejections - 35 USC § 112
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.
Claims 15 and 20 are 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. Claims 15 and 20 recite the limitation “wherein the compatibilizer is an ethylene-methyl-acrylate copolymer, an ethylene-methyl-acrylate copolymer grafted with maleic anhydride or a mixture thereof. Claims 9 and 16, upon which claims 15 and 20 depend, respectively, recites the limitation “wherein the compatibilizer is a polyolefin polymer grafted with maleic anhydride, a polyolefin co-polymer with maleic anhydride or a mixture thereof, an ethylene-methyl-acrylate copolymer grafted with maleic anhydride or a mixture thereof, or a polymer comprising a glycidyl-methacrylate monomer.” Limiting the compatibilizer to being ethylene-methyl-acrylate copolymer, without being grafted with maleic anhydride, is outside the scope of the recited options of the compatibilizer recited in the independent claims. Therefore, claims 15 and 20 fail to include all the limitations of the claim upon which it depends. 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.
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 9-20 are rejected under 35 U.S.C. 103 as being unpatentable US Pub. No. 2013/0210308 to McEneany.
Regarding claims 9-20, McEneany teaches a nonwoven web comprising fibers formed from a thermoplastic composition comprising about 70 wt% to about 99 wt% of a polyester, including recycled polyester and polyethylene terephthalate (claim 11), blended with about 1 wt% to about 20 wt% of a polymeric toughening additive, including polyolefins such as polyethylene (polyolefin polymer, claim 12), and from about 1 wt% to about 15 wt% of a compatibilizer, including a maleic anhydride modified polyolefin formed by grafting maleic anhydride onto a polymeric backbone (claim 14, 19) (McEneany, abstract, para 0003, 0021-0022, 0030-0031, 0041-0042, 0047, 0053-0055, 0074, 0095-0097, 0103). McEneany also teaches a polyepoxide modifier having a glycidyl methacrylate monomer content of 7 wt% to 11 wt% (Id., para 0065, 0058), reading on a polymer comprising a glycidyl-methacrylate monomer (claim 9, 16). McEneany teaches the compatibilizer being a maleic anhydride modified polyolefin, including chemically modified polyethylene (Id., para 0055), reading on ethylene grafted with maleic anhydride (claim 14, 19). McEneany teaches the compatibilizer comprising a polyepoxide modifier including poly(ethylene-co-methylacrylate-co-glycidyl methacrylate (Id., para 0062-0064), reading on a ethylene-methyl-acrylate copolymer (claim 15, 20).
While the reference does not specifically teach the claimed range of 90 to 98.7 wt% of a polyester polymer, 1 to 5 wt% of the polyethylene, and 0.3 to 5 wt% of the compatibilizer, the disclosed range of the prior art combination overlaps with the instant claimed range. It should be noted that 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). The existence of overlapping or encompassing ranges shifts the burden to Applicant to show that his invention would not have been obvious. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003). Furthermore, it would have been obvious to one of ordinary skill in the art before the effective filing date to adjust, vary, and optimize the amounts of the polyester, polyethylene, and compatibilizer, such as within the claimed range, motivated by the desire to successfully practice the invention of the prior art based on the totality of the teachings of the prior art.
Regarding claims 9, 13, 16, and 18, the limitation “recycled” is interpreted as a product-by-process limitation. Absent a showing to the contrary, it is Examiner's position that the article of the applied prior art is identical to or only slightly different than the claimed article. 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. In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). The burden has been shifted to Applicant to show unobvious difference between the claimed product and the prior art product. In re Marosi, 218 USPQ 289 (Fed. Cir. 1983). The applied prior art either anticipated or strongly suggested the claimed subject matter. It is noted that if Applicant intends to rely on Examples in the specification or in a submitted declaration to show unobviousness, Applicant should clearly state how the Examples of the present invention are commensurate in scope with the claims and how the Comparative Examples are commensurate in scope with the applied prior art.
Regarding claims 10 and 17 and the claimed average tenacity according to ISO 5079:2020, although the prior art does not disclose the tenacity according to the recited methodology, the claimed properties are deemed to fall naturally from the teachings of the prior art since McEneany teaches an invention with a substantially similar structure and chemical composition as the claimed invention. McEneany teaches a fiber formed from a polyester, specifically polyethylene terephthalate, a polyolefin, specifically polyethylene, and a compatibilizer as claimed in amounts overlapping with the claimed amounts. Products of identical structure and composition cannot have mutually exclusive properties. The burden is on the Applicants to prove otherwise. Alternatively, if the tenacity of the fiber is not necessarily present, McEneany teaches the use of one or more additional polymers as component to further enhance strength (Id., para 0074). McEneany teaches the fiber having a tenacity from about 1.5 to 4.0 gram-force per denier (about 1.3 cN/dtex to about 3.6 cN/dtex) (Id., para 0093). It would have been obvious to one of ordinary skill in the art before the effective filing date to form the fiber of McEneany, wherein the fiber strength is optimized, such as within the claimed range, based on the desired strength for the intended application. As McEneany teach a tenacity overlapping with the claimed range and teach further enhancement of strength through the use of additive, there is a reasonable expectation of success.
Response to Arguments
Applicant's arguments filed April 2, 2026 have been fully considered but they are not persuasive with regards to the application of McEneany.
Applicant argues, with regards to the application of McEneany, that McEneany does not teach recycled polyester, but teaches renewable polyester. Examiner respectfully disagrees. The inclusion of recycled polyester in within the scope of McEneany (McEneany, para 0042). Additionally, as highlighted above, the term “recycled polyester” is a product by process limitation. Applicant’s specification does not set forth any characteristics which necessarily differentiate "recycled" polyester from "virgin" polyester or any other polyester, such that the recitation of "virgin" or "recycled" imputes certain unique characteristics or properties to claimed polyester, other than indicating the source of the polyester. Therefore, the recitation of "recycled" only appears to be directed to the intermediate product or source of the material which is eventually used in the claimed invention. 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. In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). Additionally, as shown by WO 2020/187371, recycled polyester can be processed such that the polyester has at least the same product properties like new goods and used without any loss of quality (see English Machine Translation of WO 2020/187371, p. 3). Therefore, there does not appear to be a structural significance to “recycled” and the invention of McEneany reads on the claimed invention.
Applicant argues that McEneany teaches away from employing a compatibilizer when the polymeric toughening additive is polyolefin polymer because a polyolefin polymer does not possess a polar moiety. Examiner respectfully disagrees. McEneany teaches “[t]his may be particularly desirable when the polymeric toughening additive possesses a polar moiety” (McEneany, para 0054). This is not a teaching against the use of the compatibilizer with polyolefin but merely teaching it is particularly desirable in the case of a polar moiety. Therefore, the inclusion with polyolefin toughening agent would still be within the invention of McEneany and obvious to one of ordinary skill in the art before the effective filing date. Additionally, McEneany also teaches the use polyepoxide modifier that contains a glycidyl methacrylate monomer in combination with the polyester and polyolefin toughening agent (Id., para 0116), which is within the amended scope of claims 9 and 16. Therefore, Examiner maintains the rejection as detailed above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Compatibilization of Recycled Poly(ethylene terephthalate) and Polypropylene Blends: Effect of Compatibilization on Blend Toughness, Dispersion of Minor Phase, and Thermal Stability to Inoya teaches blending recycled polyethylene terephthalate (rPET) from waste bottle with polypropylene using a compatibilizer. CN 110093018 to QIAN teaches a polyester alloy comprising recycled blended fabric that is a PET/PP alloy with at least 70% PET and a compatibilizer, including glycidyl methacrylate grafted polyolefin.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER ANN GILLETT whose telephone number is (571)270-0556. The examiner can normally be reached 7 AM- 4:30 PM EST M-H.
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/JENNIFER A GILLETT/Examiner, Art Unit 1789
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