DETAILED ACTION
Claim Status
Claim(s) 1-4, 21-36 is/are pending.
Claim(s) 1-4, 21-36 is/are rejected.
Claim(s) 5-20 is/are cancelled by Applicant.
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 .
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 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.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim(s) 22, 27, 34 is/are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 22, 27, 34, the disclosure as originally filed does not provide adequate support for the exclusion of “recycled polyethylene terephthalate”, particularly when the disclosure as originally filed contains no discussion or mention of recycled materials. Any negative limitation or exclusionary proviso must have basis in the original disclosure. The mere absence of a positive recitation is not basis for an exclusion. See MPEP 2173.05(i).
Claim Rejections - 35 USC § 103 (AIA )
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.
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) 1-4, 21-36 is/are rejected under 35 U.S.C. 103 as being unpatentable over:
• JP 2004-123984 (SUZUKI-JP ‘984).
SUZUKI-JP ‘984 discloses polyethylene terephthalate (PET)-based copolyester resins, wherein the copolyester derived from:
(A) a dicarboxylic acid component (a total of 100 mol%) comprising:
(1) 70-100 mol% of terephthalic acid (TPA) (corresponding to recited “component (A1)”);
(2) the remainder (i.e., up to 30 mol%) of other dicarboxylic acid(s) (e.g., aromatic dicarboxylic acids such as isophthalic acid (IPA) (corresponding to recited “component (A2)”), etc.);
(B) a glycol component (a total of 100 mol%) comprising:
(1) 60-99 mol% ethylene glycol (EG) (corresponding to the recited “component (B1);
(2) 1-40 mol% (preferably 5-25 mol%) neopentyl glycol (NPG) (corresponding to the recited “component (B2)”);
(3) less than 3 mol% diethylene glycol (corresponding to recited “component (B3)”);
wherein the PET-based copolyester has an inherent viscosity of 0.6-1.0 dL/g. Compositions containing the PET-based copolyester compositions are useful to produce a variety of molded products (e.g., molded containers, etc.). (entire document, e.g., paragraph 0003, 0015, 0019-0020, 0022-0023, 0025, etc.; Table 1, etc.)
Regarding claims 1-2, 21, 24-26, 31-33, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate known dicarboxylic acids in known amounts (e.g., isophthalic acid, in amounts of up to 30 mol%, based on the total amount of dicarboxylic acid component) in the PET-based copolyesters of SUZUKI-JP ‘984 in order to produce polyester resin composition suitable for forming molded articles for various applications.
Further regarding claims 1-2, 24, 26, 31, 33, since SUZUKI-JP ‘984 discloses copolyesters derived from: (A)(2) up to 30 mol% of other dicarboxylic acid(s) such as isophthalic acid (corresponding to recited “component (A2)”); and (B)(2) 1-40 mol% neopentyl glycol (NPG) (corresponding to the recited “component (B2)”); the PET-based copolyesters of SUZUKI-JP ‘984 disclose PET-based copolyesters wherein the sum of (A)(2) + (B)(2) at least partially overlaps the recited (A2)+(B2) range of 24-43 mol% (claims 1, 24, 31) or 27-40 mol% (claims 2, 26, 33).
Regarding claims 3, 28, 35, one of ordinary skill in the art would have selected the molecular weight (as represented by intrinsic viscosity) of the PET-based copolyester of SUZUKI-JP ‘984 in order to produce molding compositions with the optimal melt viscosity at 180 ºC for specific molding methods and apparatus, and specific product structures (e.g., lower melt viscosities provide for greater fluidity which can facilitate the molding of complex and/or intricate and/or narrow shapes, etc.).
Regarding claims 4, 29, 36, one of ordinary skill in the art would have: (1) selected the composition of the PET-based copolyester of SUZUKI-JP ‘984 (e.g., through appropriate selection of types and amounts of comonomers, etc.); and/or (2) incorporated effective amounts of known flexibility-enhancing and/or elongation-enhancing additives (e.g., more flexible resins and/or elastomeric resins, etc.) in molding compositions comprising the PET-based copolyester of SUZUKI-JP ‘984; in order to produce molded articles with sufficient flexibility or stretchability (as represented by tensile elongation of at least 100%) for specific packaging or film applications (e.g., packaging and/or containers capable of bending or flexing without cracking or breaking; packaging or films that resist tearing, penetration, puncturing, and/or tampering (e.g., tamper-resistant packaging; protective or reinforcing films for windows or glass laminates, etc.); packaging and/or articles which can be made using cold-forming methods; etc.).
Regarding claims 4, 29, 36, one of ordinary skill in the art would have incorporated effective amounts of known impact strength-increasing additives (e.g., rubbery and/or elastomeric impact modifiers; reinforcing fibers or fillers; etc.) in molding compositions comprising the PET-based copolyester of SUZUKI-JP ‘984 in order to obtain molded article with with sufficiently high Charpy impact strength to meet the performance requirements for specific end-use applications (e.g., to prevent cracking or breakage in containers when dropped or struck, etc.).
Regarding claims 22, 27, 34, the presence of recycled PET resin is not required in molding compositions comprising the PET-based copolyester of SUZUKI-JP ‘984.
Regarding claims 23, 30-36, one of ordinary skill in the art would have utilized molding compositions comprising the PET-based copolyester of SUZUKI-JP ‘984 in known packaging applications such as containers for cosmetic products.
The Examiner cautions that if Applicant chooses to argue that the physical properties recited in claims 3-4, 28-29, 35-36 cannot be obtained by one of ordinary skill in the art using known improvement and/or modification techniques or methods (e.g., as discussed above) using routine experimentation, this may raise significant issues under 35 U.S.C. 112(a) with respect to scope of enablement, and that Applicant’s arguments and/or assertions may be used as admissions or supporting evidence with respect to rejections under 35 U.S.C. 112(a) with respect to scope of enablement
Claim(s) 4, 29, 36 is/are rejected under 35 U.S.C. 103 as being unpatentable over:
• JP 2004-123984 (SUZUKI-JP ‘984),
as applied to claims 1-4, 21-36 above,
and further in view of WADA ET AL (US 5,086,104) or MOCHIZUKI ET AL (US 5,115,004).
WADA ET AL ‘104 and MOCHIZUKI ET AL ‘004 disclose that it is well known in the art to combine PET-based (co)polyesters with minor amounts of polyester elastomers in order to produce molded articles with enhanced elongation (e.g., 100% or more) and/or improved impact resistance for specific applications requiring flexibility and toughness. (WADA ET AL ‘104, line 30-61, col. 3; line 5-12, col. 4; Table 1; etc.) (MOCHIZUKI ET AL ‘004, line 60, col. 2 to line 45, col. 3; line 41-53, col. 4; Table 1-2; etc.)
Regarding claims 4, 29, 36, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate effective minor amounts of known flexibility-enhancing and/or elongation-enhancing additives (e.g., thermoplastic polyester elastomers, as suggested in WADA ET AL ‘104 or MOCHIZUKI ET AL ‘004) in molding compositions comprising the PET-based copolyester of SUZUKI-JP ‘984 in order to produce molded articles with sufficient flexibility or stretchability (as represented by tensile elongation of at least 100%) for specific packaging or film applications (e.g., packaging and/or containers capable of bending or flexing without cracking or breaking; packaging or films that resist tearing, penetration, puncturing, and/or tampering (e.g., tamper-resistant packaging; protective or reinforcing films for windows or glass laminates, etc.); packaging and/or articles which can be made using cold-forming methods; etc.).
Further regarding claims 4, 29, 36, one of ordinary skill in the art would have incorporated effective amounts of known impact strength-increasing additives (e.g., rubbery and/or elastomeric impact modifiers as suggested in WADA ET AL ‘104 or MOCHIZUKI ET AL ‘004; and/or reinforcing fibers or fillers; etc.) in molding compositions comprising the PET-based copolyester of SUZUKI-JP ‘984 in order to obtain molded article with sufficiently high Charpy impact strength to meet the performance requirements for specific end-use applications (e.g., to prevent cracking or breakage in containers when dropped or struck, etc.).
The Examiner cautions that if Applicant chooses to argue that the physical properties recited in claims 4, 29, 36 cannot be obtained by one of ordinary skill in the art using known improvement and/or modification techniques or methods (e.g., as discussed above) using routine experimentation, this may raise significant issues under 35 U.S.C. 112(a) with respect to scope of enablement, and that Applicant’s arguments and/or assertions may be used as admissions or supporting evidence with respect to rejections under 35 U.S.C. 112(a) with respect to scope of enablement.
Claim(s) 23, 30-36 is/are rejected under 35 U.S.C. 103 as being unpatentable over:
• JP 2004-123984 (SUZUKI-JP ‘984),
as applied to claims 1-4, 21-36 above,
and further in view of KITA ET AL (US 2013/0267674).
KITA ET AL ‘674 discloses that it is well known in the art to utilize polyester resins (e.g., PET, etc.) to form molded articles (e.g., containers for cosmetics, etc.). (paragraph 0002, 0051-0057, etc.)
Regarding 23, 30-36, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize molding compositions comprising the PET-based copolyester of SUZUKI-JP ‘984 in known molded product applications such as containers for cosmetic products (as suggested in KITA ET AL ‘674).
Response to Arguments
Applicant’s arguments filed 12/22/2025 (e.g., regarding TREECE ET AL ‘993, etc.) have been considered but are moot because of the new grounds of rejection necessitated by the Claim Amendments filed 12/22/2025.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
LACROIX ET AL (US 7,022,768) disclose impact-modified PET (co)polyester compositions.
JP 2008-013664 and OHASHI ET AL (US 2016/0237207) and ITO ET AL (US 2020/0024388) disclose PET copolyesters at least partially derived from NPG.
SUZUKI ET AL (US 6,500,506) and ODAJIMA ET AL (US 5,397,610) and ODATE ET AL (US 5,089,309) disclose cosmetic containers formed from PET-based (co)polyesters.
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 Vivian Chen (Vivian.chen@uspto.gov) whose telephone number is (571) 272-1506. The examiner can normally be reached on Monday through Thursday from 8:30 AM to 6 PM. The examiner can also be reached on alternate Fridays.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Callie Shosho, can be reached on (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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April 1, 2026
/VIVIAN CHEN/Primary Examiner, Art Unit 1787