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 .
Election/Restrictions
Applicants’ election with traverse of Group I in the reply filed on August 19, 2026 is acknowledged. The traversal is on the ground(s) that the additional groups could be searched without undue burden. This is not found persuasive because the inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies). Moreover, Applicants have not submitted evidence or identified such evidence now of record showing the inventions to be obvious variants or clearly admitted on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
The requirement is still deemed proper and is therefore made FINAL.
Claims 3, 4 and 6-9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected group, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on August 19, 2026.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on April 10, 2024 has been considered by the examiner.
Claim Rejections - 35 USC § 112
Claim 5 is 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.
In claim 5, line 6, there is no express antecedent basis for the presence of water.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim 1 and 5 are rejected under 35 U.S.C. 102(a1) and (a2) as being anticipated by US 2022/0106481 (Kizumoto).
As to claim 1, Kizumoto discloses in Table 1 copolymerized polyester resin 2B prepared from isophthalic acid (I), 1,4-cyclohexandicarboxylic acid (CHDA) and 1,4-cyclohexanedimethanol (CHDM).
As to claim 5, Kizumoto’s copolymerized polyester is prepared by polymerizing the monomers in the presence of a catalyst and distilling away the generated water [0113].
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.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over US 2022/0106481 (Kizumoto) described hereinabove.
As to claim 2, Kizumoto’s exemplified copolymerized polyester resin 2B does not meet the presently claimed dicarboxylic acid stoichiometric ratio of CHDA to isophthalic acid (I). It would have been within the purview of Kizumoto’s inventive disclosure, however, and obvious to one having ordinary skill in the art, to use a stoichiometric ratio of CHDA to isophthalic acid of at least 3:1 with the reasonable expectation of success and in accordance with the desired glass transition temperature and ultimate properties including strength and flexibility per [000023-0024]. Notably, Kizumoto exemplifies copolymerized polyester 7G prepared from CHDA and terephthalic acid (T) (i.e., a functional alternative of isophthalic acid) of 4:1 (40/100).
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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/ANA L. WOODWARD/Primary Examiner, Art Unit 1765
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