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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 7-10 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.
Regarding Claims 7-10
Claims 7-10 recite the limitation "the polyester resin composition" in regard to the amount of branching agent, melting temperature, cold crystallization temperature, and crystallization half-time. There is insufficient antecedent basis for this limitation in the claims as these claims are dependent upon claim 1 and claim 6, which refer only to a polyester resin and not a composition. The applicant is required to review and revise the claim language.
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.
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.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Hwang (WO 2020080634, herein using US version US 20210380770).
Regarding Claims 1-5,
Hwang teaches a polyester resin comprised of terephthalic acid (Paragraph 11), ethylene glycol (Paragraph 11), isosorbide (Paragraph 12) and cyclohexanedimethanol (Paragraph 12) where the amount of isosorbide and cyclohexanedimethanol in combination is between 5 and 20 mole% of the diol (Paragraph 13). This value overlaps with the range of 9 to 17 mole% found in claim 4. Further, Hwang teaches in Examples 4 (Paragraph 74) and 5 (Paragraph 78) resins that include 2% by mole isosorbide, meeting the requirements of claim 2 and additionally teaches the use of 8 mole% cyclohexanedimethanol (Example 5, Paragraph 78), meeting the requirements of claim 3. Hwang teaches that the amounts of these two diols have significant influence on the chemical resistance and transparency of the resin, affording the ordinarily skilled artisan motivation to alter these values within the range taught to obtain the desired levels of both transparency and chemical resistance. It would therefore have been obvious prior to the effective filing date of the instant application to have selected the overlapping portion of the ranges because the selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
Regarding equation 1, Hwang is silent. However, the value of equation 1 is calculated based upon the melting point, cold crystallization temperature, and crystallization half-time of the polyester resin. These are properties of the polymer itself and would necessarily follow the monomers and amounts contained within the polymer. As the polymers of the instant application overlap in amounts of monomer with those of Hwang, it would logically follow that the polymers Hwang would also meet this requirement. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01.II.
Regarding Claims 6 and 7,
Hwang teaches the use of trimellitic anhydride as a branching agent (Example 71, Paragraph 71), meeting the requirement of claim 6. Further, Hwang teaches the use of trimellitic anhydride in an amount of 22 grams relative to 2221.2 grams of diol, an amount that is less than 1% by weight relative to the total amount diol, meeting the requirements of claim 7.
Regarding Claims 8-10,
Hwang is silent on the melting point, cold crystallization temperature, and crystallization half-time of the resins. However, as the composition of the resins taught by Hwang overlap with those of the instant application, it would necessarily follow that the resins taught by Hwang would fall within the ranges of the instant claims. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01.II.
Regarding Claims 11-20,
Hwang teaches that resin may be used together with other polymers, including polyethylene terephthalate (PET) (Paragraph 51), meeting the requirements of the instant claims.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-5, 8, and 11-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 8-11 of U.S. Patent No. 12,606668. Although the claims at issue are not identical, they are not patentably distinct from each other because the polyester resin of the instant application is required to contain isosorbide in amounts of up to 3% of the diol composition and between 8 and 16% of cyclohexanedimethanol relative to the amount of the diol with the combination of the two accounting for up to 17% of the diol. These amounts overlap with the amounts in claims 1, 9, and 11 of US 12,606,668. Further, the instant application requires a melting temperature of 200-230 °C in claim 8, which overlaps with a range of 210-245 °C in claim 8 of US 12,606,668. Finally, claims 11-20 are directed towards a polyester resin blend with polyethylene terephthalate, which is disclosed in claim 1 of US 12,606,668. While claim 1 of the instant application requires the polymer to meet a value defined by equation 1, this value is calculated based upon the melting point, cold crystallization temperature, and crystallization half-time of the polyester resin. These are properties of the polymer itself and would necessarily follow the monomers and amounts contained within the polymer. As the polymers of the instant application overlap in amounts with those in US 12,606,668, it would logically follow that the polymers of US 12,606,668 would also meet this requirement. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01.II.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM J BERRO whose telephone number is (703)756-1283. The examiner can normally be reached M-F 8:30-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.J.B./Examiner, Art Unit 1765
/JOHN M COONEY/Primary Examiner, Art Unit 1765
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