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 .
DETAILED ACTION
Election/Restrictions
The applicant has elected Group I and Species terephthalic acid (claims 2 and 4), adipic acid (claim 3), ethylene glycol (claims 6 and 7), glycerol (claim 9), and tetrabutyl titanate (claim 10), with traverse. Applicant’s election in the reply is acknowledged. The applicant argued the elected species is encompassed by all pending claims (claims 1-13), and therefore no claims are excluded from examination as a result of the election. The examiner asserts the election of species requirement is proper, because those species are mutually exclusive because of the resultant polyesters are structurally distinctive and chemicals used for the process are materially distinctive.
In this particular case, at least one of (a)-(e) applies. This restriction is made FINAL. The restriction and election of species as stated in the previous office action are repeated here as such.
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 of this title, 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) 1-13 is (are) rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (CN 111793331, listed on IDS, machine translation provided) in view of Chun et al. (TW 1606078, machine translation provided).
As to claims 1-13, Wang (abs., claims, examples, see red underline) discloses a process of producing a biodegradable polyester comprising esterification (2nd resin) at 180 ºC of 1 mol of terephthalic acid (40 mol%), 1.5 mol of adipic acid (60 mol%), 3.0 mol of 1,4-ethylene glycol (diol:diacids=1.2), and 0.05 mol xylitol plus 0.2 mol sorbitol, which can be replaced by a functionally equivalent aliphatic polyol of glycol for producing a biodegradable polyester. The esterification is followed by a polycondensation at 150-280 ºC, overlapping with the range of 220-235 ºC of instant claim 13, for 3 hours at 100 Pa (0.75 Torr). The molar ratio of aliphatic polyols to dicarboxylic acid is 0-10:5-90, overlapping with the range of 1.5-3.5% of instant claim 1. Catalysts, such as tetra-butyl titanate, are added at a molar ratio of 1-10:1000 to dicarboxylic acids and would be expected to yield a range overlapping with the range of instant claim 10.
Glycol would be capable of performing the claimed intended use of “discoloration inhibitor” for meeting the claimed structure. Case law holds that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2111.02, In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458,459 (CCPA 1963).
Wang is silent on the claimed stabilizer and loading of instant claims 1 and 12. Wang is silent on the claimed two esterifications of instant claim 11 .
In the same area of endeavor and solving the same problem of producing a biodegradable polyester having similar monomer components, Chun (abs., claims, examples, see red underline, Ex.1) discloses adding 0.1g of triphenyl phosphate per 1 mol of dicarboxylic acid (TPA/AA, falling within the claimed range of instant claim 12) as a thermal stabilizer to avoid thermal decomposition for the polymerization of producing the polyester. Chun further discloses (Ex.1, technical field) using two sequential two esterification steps for AA with a diol (200 ºC) and TPA with a diol (230-240ºC, overlapping with the range of instant claim 11) to increase the solubility and reduction of the aromatic dicarboxylic acid (TPA) in the polymerization process.
Therefore, as to claims 1-13, it would have been obvious to one of ordinary skill in the art to have modified the process disclosed by Wang, added 0.1g of triphenyl phosphate per 1 mol of dicarboxylic acid as the stabilizer, and utilized Chun’s two sequential two esterification steps, because the resultant process would yield decreased thermal decomposition, improved solubility and reduction of the aromatic dicarboxylic acid in the polymerization process, and resultantly an increased yield of the biodegradable polyester.
It has been found that where claimed ranges overlap ranges disclosed by the prior art, a prima facie case of obviousness exists - see MPEP 2144.05 I. 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). Therefore, it would have been obvious to one skilled in the art to have created/selected the claimed compositional elements from the composition disclosed in the Wang and Chun since it discloses all applicants' components, values and methods of making.
Furthermore, one ordinary skill in the art would have expected the process (and the resulting product) disclosed by Wand and Chun to feature the claimed melt flow index and color characteristic, because Wand and Chun teach a process using the claimed steps, claimed processing conditions, and the claimed components in the claimed amounts. Therefore, one of ordinary skill would have a reasonable expectation that the claimed effects and physical properties, i.e. melt flow index and color characteristic, would necessarily flow from a process employing the claimed steps, claimed processing conditions, and the claimed components in the claimed amounts. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. See In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977); In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990); see also MPEP § 2112.01(I)-(II). If it is the applicant’s position that this would not be the case: (1) applicant must provide evidence to support the applicant’s position, and (2) it would be the examiner’s position that the application contains inadequate disclosure on how to obtain the claimed effects or properties with only the claimed steps, claimed processing conditions, and the claimed components in the claimed amounts.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHANE FANG whose telephone number is (571)270-7378. The examiner can normally be reached on Mon-Thurs. 8am-6pm. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached on 571.572.1302. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SHANE FANG/Primary Examiner, Art Unit 1766
Prosecution Insights