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 .
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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 1-11 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over US 2008/0023887 (Vollenberg) as evidenced by US 2010/0168321 (Cahoon-Brister).
Initially, it is noted that product claims 1-10 are claimed in a product-by-process claim format. Thus, the patentability of the claimed products would not appear to depend on the various “formed according to a process” and “derived from” process limitations. Case law holds that “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.
Vollenberg discloses a composition comprising:
a copolyetherester comprising a polybutylene terephthalate (PBT) block and a polyalkylene oxide block such as polybutylene oxide (PTHF), wherein the PBT is preferably derived from recycled polyethylene terephthalate (PET);
a polyester; and
colorants such as titanium dioxide (e.g., abstract, [0021], [0038-0044], examples, Table 2, claims).
Vollenberg does not disclose the purity of the terephthalic moiety used in the formation of the PBT but discloses that the recycled PET is “processed to remove impurities…and other contaminants” [0036].
In Table 2, Vollenberg sets forth compositions (Example 2 and Comparative Example 2) comprising, inter alia:
a copolyetherester (TPEE derived from PCR-PET or Hytrel 4056 which is a PBT/PTHF copolymer as evidenced by Cahoo-Brister [0135]) comprising PBT and PTHF blocks (either material meets Applicants’ copolyester elastomer comprising a PBT moiety and an elastomer moiety derived from PTHF);
0.25 wt.% titanium dioxide colorant (meets Applicants’ brightening agent and content thereof).
Notably, the terephthalic moiety of the “TPEE derived from PCR-PET” is derived from recycled PET and that of the “Hytrel 4056” is derived from pre-consumer PET.
In essence, Vollenberg differs from product-by-process claim 1 in neither defining the purty level of the terephthalic moiety forming the PBT nor the L* color value of the composition. With respect to the first difference, given that Vollenberg prescribes the use of PET components wherein the impurities and contaminants have been removed [0036], it would have been obvious to one having ordinary skill in the art to use a terephthalic moiety of high purity (inclusive of that presently claimed) for its expected additive effect and with the reasonable expectation of success. That is, a copolyetherester comprising a polybutylene terephthalate (PBT) block derived from a terephthalic moiety having a high purity level would be expected to exhibit improved properties as compared to one having a lower purity level. Thus, it would have been within the purview of one having ordinary skill in the art to formulate compositions per Vollenberg wherein the terephthalic moiety of the PBT has a purity of at least about 95% for the expected improved properties. As to the second difference, Vollenberg expressly exemplifies incorporating 0.25 wt.% of titanium dioxide colorant. Given that 0.25 wt.% of titanium dioxide meets Applicants’ brightening agent and content thereof, it is reasonably expected that Vollenberg’s exemplified compositions would necessarily exhibit a L* color value falling within the presently claimed scope. In the alternative, it would have been within the purview of one having ordinary skill in the art to adjust Vollenberg’s titanium oxide content in accordance with the desired whiteness level (inclusive of that presently claimed).
As to product-by-process claim 2, given that 0.25 wt.% of titanium dioxide meets Applicants’ brightening agent and content thereof, it is reasonably expected that Vollenberg’s exemplified compositions would necessarily exhibit a L* color value falling within the presently claimed scope. In the alternative, it would have been within the purview of one having ordinary skill in the art to adjust Vollenberg’s titanium oxide content in accordance with the desired whiteness level (inclusive of that presently claimed). Differences in concentrations do not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating criticality for the claimed ranges. “Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation”, In re Aller, 105 USPQ 233.
As to product-by-process claims 3 and 4, Vollenberg discloses PBT formed by depolymerizing scrap PET to form components containing terephthalate moieties which are than reacted with 1,4-butane diol [0016]. It is not seen that Vollenberg’s said resulting copolyetherester distinguish structurally from those derived from the presently claimed PBT.
As to product-by-process claim 5, Vollenberg discloses the butane diol can be derived from a biomass [0045].
As to product-by-process claim 6, it would have been obvious to one having ordinary skill in the art to use a terephthalic moiety of high purity (inclusive of that presently claimed) in the production of Vollenberg’s copolyetherester for its expected additive effect and with the reasonable expectation of success
As to product-by-process claims 7 and 8, Vollenberg expressly uses PTHF for producing the polyalkylene oxide (elastomeric) block.
As to product-by-process claim 9, Vollenberg discloses the PTHF can also be derived from a biomass [0045].
As to product-by-process claim 10, Vollenberg expressly exemplifies titanium dioxide (Table 2).
As to process claim 11, Vollenberg discloses a method for forming a copolyetherester comprising (1) forming a PBT moiety and (2) polymerizing the PBT moiety with a polyalkylene oxide to give rise to a copolyetherester comprising a PBT block and a polyalkylene oxide (elastomeric) block, wherein the terephthalic moiety of the PBT is derived from PET. Given that Vollenberg prescribes the use of PET components wherein the impurities and contaminants have been removed [0036], it would have been obvious to one having ordinary skill in the art to use a terephthalic moiety of high purity (inclusive of that presently claimed) for its expected additive effect and with the reasonable expectation of success. Given that Vollenberg’s exemplified 0.25 wt.% of titanium dioxide meets Applicants’ brightening agent and content thereof, it is reasonably expected that Vollenberg’s exemplified compositions would necessarily exhibit a L* color value falling within the presently claimed scope.
As to process claim 15, Vollenberg expressly uses PTHF for producing the polyalkylene oxide block.
Allowable Subject Matter
Process claims 12-14 are 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.
US 2008/0023887 (Vollenberg) [0016]/[0048] does not expressly disclose or suggest depolymerizing the scrap PET to form any of the recited terephthalic moieties.
Response to Arguments
Applicant’s’ arguments filed September 15, 2026, with respect to the 35 USC 103 rejection over Vollenberg ‘887 in view of Vollenberg ‘644 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Vollenberg ‘887 alone.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ana L Woodward whose telephone number is (571)272-1082. The examiner can normally be reached M-F 8am-5pm.
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/ANA L. WOODWARD/Primary Examiner, Art Unit 1765
