DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-20 are pending as filed on 2/29/2024.
Specification
The amendment filed on 2/29/2024 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention.
Applicant has amended the specification to include an incorporation by reference statement. However, per MPEP 608.01(p)(I)(B), an incorporation by reference statement added after an application’s filing date is not effective because no new matter can be added to an application after its filing date. Applicant is required to cancel the new matter in the reply to this Office Action.
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 1-20 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.
As to claims 1 and 20:
The last three lines of “d” in the claim contain a “wherein” clause. The clause further limits what “the terephthalate monomer” is “based on.” The clause is confusing for several reasons.
It is not clear what “the terephthalate monomer” is referring to. There is a prior recitation of “terephthalate acid residues” in the claim, but “the terephthalate monomer” recited in the wherein clause lacks antecedent basis, because there is no prior recitation of a terephthalate monomer.
It is not clear whether or how the clause limits an amount of something, and it is not clear what is meant by “substantially equal diacid equivalents of 100 mol% to diol equivalence of 100 mol% for a total of 200 mol%.” There seems to be a grammatical error and/or omission of a word or phrase, and the examiner is unable to determine the manner in which the clause limits the claim.
Additionally, the inclusion of the wherein clause within component “d” is confusing because the clause does not seem to pertain to the germanium catalyst component (d). Rather the clause appears to attempt to limit the content of terephthalic residues and/or a ratio of diacid to diol residues within the polyester.
In all of the working examples, a copolyester is formed from dimethyl terephthalate (DMT) as the entire dicarboxylic component. Therefore, for examination purposes, the claim has been interpreted as at least encompassing copolyesters formed comprising 100 mol% terephthalic residues (based on total mol of dicarboxylic residues), as well as copolyesters up to 10 mol% of other dicarboxylic acids as recited in claims 5 and 6. However, because it is not possible to determine the metes and bounds of claims 1 and 20 due to unclear language, the scope of claims 1-20 is indefinite.
Additionally: the term “terephthalate acid residues” in claims 1 and 20 is unclear because “terephthalate” generally refers to an ester. It is not clear whether the claim requires an acid residue or a residue of an esterified acid. Furthermore, claim 2 depends from claim 1 and recites “said terephthalic acid residues,” which lacks antecedent basis because claim 1 recites terephthalate acid residues, not terephthalic acid residues.
Claim 3 recites that the copolyester of claim 1 further comprises “a dicarboxylic acid…” It is not clear whether claim 3 requires a composition comprising the copolyester of claim and a recited dicarboxylic acid which is in an unreacted form, or, whether claim 3 further limits the copolyester of claim 1 by requiring the copolyester to comprise residues of a recited dicarboxylic acid. Claims 5-7, 11, 12, 13 and 14 contain similarly ambiguous language and should be clarified if residues of the components (rather than unreacted monomers) were intended to be recited.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-12 and 15-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Takamiya et al (JP 2019014866A; included EPO machine translation cited herein).
As to claims 1 and 9, Takamiya discloses a copolyester comprising ethylene terephthalate as the main repeating unit, wherein 95 mol% or more of the acid component is terephthalic acid [0011] (meeting claim 1(a) and claims 2 and 4, and further meeting claims 5 and 6 as no more than 5 mol% of any other acid component would be permitted if 95 mol% or more must be terephthalic). The glycol component comprises ethylene glycol, 1,4-cyclohexanedimethanol (CHDM) and diethylene glycol (DEG). The content of CHDM is preferably 3 to 8 mol% and the content of DEG is preferably 2 to 4 mol% [0013], which means that Takamiya discloses a copolyester comprising, minimally, 5 mol% of residues of DEG and CHDM (i.e., 2+3), and maximally, 12 mol% of residues of DEG and CHDM (i.e., 4+8). The range of 5 to 12 mol% falls within the presently claimed range of about 4 to 15 mol% recited in claim 1(c) and the range of about 4 to 12 mol% recited in claim 9. Takamiya teaches that the content of ethylene glycol (the main component) is preferably 85-95 mol% of the glycol component [0016], which falls within the range of about 85 to about 96 mol% recited in claim 1(b), and the range of “about 85 to about 92 mol%” recited in claim 8.
Takamiya discloses that germanium compounds are preferred as polymerization catalysts, and that germanium dioxide is preferred from the viewpoint of activity, resulting resin and cost [0026]. Takamiya exemplifies polyester prepared using 0.008 parts by mass germanium dioxide [0031], which corresponds to a germanium concentration in the copolyester of 80 ppm (0.008*1,000,000/100), which falls within the presently claimed range of 5 to 500 ppm recited in claim 1(d), and, within the range of 5 to 450 ppm recited in claim 10.
As to claim 3, Takamiya names examples of further dicarboxylic acid components in [0012] which have carbon atoms within the claimed ranges (adipic, sebacic, naphthalenedicarboxylic, isophthalic etc…).
As to claims 7, 11 and 12, Takamiya discloses [0017] that the total content of ethylene glycol, CHDM and DEG in the glycol component is 95 mol% or more (meeting claim 11, as no more than 5 mol% of a modifying glycol could be permitted). Takamiya names other glycol components in [0017], which meets claim 7. Several of the named diols/glycols in [0017] correspond to those recited in claim 12.
As to claim 15, Takamiya is silent as to recycling capability. However, Takamiya exemplifies polyesters which have melting points of 225-236 C, see examples 1-3 in Table 1 (translation copied below obtained using Google image translate):
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356
914
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Greyscale
According to the instant specification, a melting temperature of 225 C or greater allows for R1C1 recycling [0015]. Given that Takamiya’s exemplified polyesters have melting points of 225 C or greater, there is reasonable basis to conclude that they are capable of being recycled as presently recited.
As to claims 16-20, Takamiya is silent as to crystallization half life at 140, 160 and 180 C. However, as established in the above discussion, Takamiya discloses copolyesters comprising residues of the same monomers in the same proportions as presently claimed and described, and comprising germanium in the concentration as presently claimed and described. As shown in instant figures 1 and 2, such polyesters have a crystallization half life values at the recited temperatures which are well within the recited ranges. There is reasonable basis to conclude, therefore, that Takamiya discloses polyesters which have crystallization half life values within the presently claimed ranges.
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(s) 13 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takamiya et al (JP 2019014866A; included EPO machine translation cited herein) in view of Howell et al (WO 2021072020).
The rejection of claim 1 over Takamiya is incorporated here by reference.
Takamiya fails to disclose including a branching monomer or chain extender.
Like Takamiya, Howell discloses polyester compositions which can be formed into molded or shaped articles by blow molding [00192] and which comprise terephthalic acid residues and a diol component which is mainly ethylene glycol, and which comprises CHDM and DEG residues [0012]. Howell discloses various additives which can be added, including branching agents [0129, 258]. Howell further discloses that the chain extenders can be added [0079]. When forming the polyester disclosed by Takamiya, the person having ordinary skill in the art would have been motivated to add any appropriate known additive in order to achieve the function associated with the known additive. It would have been obvious to the person having ordinary skill in the art, therefore, to have added a branching agent and/or chain extender, as taught by Howell, to the copolyester of Takamiya, in order to provide branching to the polymer and/or in order to increase molecular weight via chain extension.
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 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims of copending Application No. 18688068 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
The process recited in copending claim 1 utilizes a copolyester according to instant claim 1. The range of germanium concentration recited in copending claim 1 falls within the presently claimed range.
The recitations of instant claims 2-16 and 20 are in copending claims 2-16, respectively.
The ranges recited in instant claims 17 and 18 fall within the range recited in copending claim 16. Case law has established that a prima facie case of obviousness is established where the claimed ranges overlap the ranges disclosed by the prior art. See MPEP 2144.05.
As to claim 19, there is no copending claim which recites the crystallization half life at 160 C and 180 C. However, given that the composition recited in the copending claims is the same as presently recited, there is reasonable basis to conclude that the presently recited property is inherently possessed by the copolyester recited in the copending claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-6, 8-12 and 15-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims of copending Application No. 18688078 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
The article recited in copending claim 1 comprises a copolyester according to the instant claim 1.
The recitations of instant claim 2 are met by copending claim 1 for at least the reason that the structure of the terephthalic residues does not depend on the type of functional groups on the monomer (product-by-process claim).
The recitations of instant claim 3 are met because terephthalic acid has 8 carbon atoms and a portion of the terephthalate residues in copending claim 1 can therefore be considered the aromatic dicarboxylic acid recited in claim 3.
The recitations of instant claims 4-6 are met for at least the reason that the claims encompass a copolyester wherein 100 mol% of dicarboxylic residues are terephthalic.
The recitations of instant claims 8-10 are in copending claims 13-15.
The recitations of instant claims 11 and 12 are met for at least the reason that the instant claims encompass copolyester comprising 0 mol% of a modifying glycol.
The recitations of instant claims 15-20 are in copending claims 16-19.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims of copending Application No. 18688090 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
The composition recited in copending claim 1 comprises a copolyester according to the instant claim 1.
The recitations of instant claims 2-20 are in copending claims 3-20.
The copending claims require a further copolymeric component and are therefore not identical in scope to the instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims of copending Application No. 18688147 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
The copolyester recited in copending claim 1 falls within the scope of instant claim 1. The copending claim is not identical in scope to the instant claim because the copending claim requires CHDM where the instant claims permit CHDM, MPG or TMCD.
The recitations of instant claims 2-20 are in copending claims 2-20.
The copending claims require a further copolymeric component and are therefore not identical in scope to the instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-6, 8-12 and 15-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims of copending Application No. 18688160 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
The copolyester produced in the process recited in copending claim 1 is a copolyester according to the instant claim 1.
The recitations of instant claim 2 are met by copending claim 12, which recites using dimethyl terephthalate.
The recitations of instant claim 3 are met because a terephthalate has 8 carbon atoms and a portion of the terephthalate residues in copending claim 1 can therefore be considered the aromatic dicarboxylic acid recited in claim 3.
The recitations of instant claims 4-6 are met for at least the reason that the claims encompass a copolyester wherein 100 mol% of dicarboxylic residues are terephthalic.
The recitations of instant claims 8-10 and 15-20 are in copending claims 14-20.
The recitations of instant claims 11 and 12 are met for at least the reason that the instant claims encompass copolyester comprising 0 mol% of a modifying glycol.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RACHEL KAHN whose telephone number is (571)270-7346. The examiner can normally be reached Monday to Friday, 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at 571-272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RACHEL KAHN/ Primary Examiner, Art Unit 1766
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