DETAILED ACTION
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.
Claims 1-6 and 8-17 are rejected under 35 U.S.C. 103 as being unpatentable over Beavers (WO 96/30428) in view of Pecorini (US 20090130353), with Tokushige (JP 1996-188643) as evidence only.
As to claims 1, 9, and 10, Beavers teaches preparing a copolyester (examples 6-14) comprising at least one terephthalate acid (Abstract, terephthalic acid; Examples 6-14, dimethyl terephthalate), ethylene glycol (page 4, lines 19-20), 4-12 mole% combination of diethylene glycol and CHDM (Abstract, 2-10 mole% diethylene glycol and 0.1-10 mole% CHDM), and a germanium catalyst (page 5, line 9). Beavers teaches equal mole% of terephthalic acid (or dimethyl terephthalate) and ethylene glycol (page 4, lines 18-21). Although Beavers does not specifically teach 100-500 ppm or 100-450 ppm elemental germanium, one of ordinary skill in the art would recognize the amount of catalyst to be a result effective variable necessary to catalyze the polymerization to form a copolyester. One would have arrived at the claimed range as a matter of routine optimization. Tokushige ([0018]) provides evidence supporting this position.
While Beavers does mention extrusion blow molding (page 2, line 18), Beavers does not specifically teach the same steps of (1) melting, (2) extruding through a die to form a tube parison, (3) clamping a mold having the desired finished shape around the parison, (4) blowing air into the parison to stretch, expand to fill the mold, and produce a molded article, (5) cooling, (6) ejecting, and (7) removing excess plastic.
Pecorini teaches ([1242]) that extrusion blow molding is known and typically includes (1) melting the resin in an extruder, (2) extruding the molten resin through a die to form a tube parison of molten polymer, (3) clamping a mold having the desired finished shape around the parison, (4) blowing air into the parison causing the extrudate to stretch, expand to fill the mold, and produce a molded article, (5) cooling, and removing excess plastic/flash. Note also that Pecorini provides (redundant) teaching of diacid monomer based on substantially equal diacid equivalents of 100 mole% to diol equivalence of 100 mole% in [0021].
It would have been prima facie obvious to one of ordinary skill in the art prior to filing to incorporate this typical/conventional extrusion blow molding process into Beavers because Beavers suggests an extrusion blow molding process (page 2, line 18) and this is what Pecorini provides.
As to claims 2, 4, and 8, Beavers teaches at least 80 mole% terephthalic acid (page 4, lines 18-19) and dimethyl terephthalate (Examples 6-14). Beavers also teaches at least 80 mol% ethylene glycol (page 4, line 20). As to claims 3, 5, 6, Beavers is silent to the claimed components. However, Pecorini teaches aliphatic dicarboxylic acid having up to 16 carbon atoms and aromatic dicarboxylic acid having up to 20 carbon atoms that overlap in amount with the claimed “up to 10 mole%” ([0012]-[0024]). It would have been prima facie obvious to one of ordinary skill in the art prior to filing to incorporate these composition features from Pecorini into Beavers motivated by the desirable glass transition temperature and low shrinkage produced by this composition ([0012]). As to claims 11 and 12, Beavers teaches 1,4-butanediol (page 6, line 7). As to claim 13, Beavers teaches a branching agent interpreted to be a monomer (page 6, line 30). As to claim 14, while Beavers does not specifically teach a chain extender, Pecorini teaches polyesters comprising chain extenders ([1227]). It would have been prima facie obvious to one of ordinary skill in the art prior to filing to incorporate the Pecorini chain extender into Beavers as an obvious improvement for increasing (extending) molecular (chain) length. As to claims 15-17, in light of the same components being used in Beavers and the instant application, the Beavers copolyester would have the same half-time, capability for being recycled, and melting point as the copolyester in the instant claims.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Beavers (WO 9630428) in view of Pecorini (US 20090130353), with Tokushige (JP 1996-188643) as evidence only, and further in view of Weinhold (US 99/58328). Beavers and Pecorini (with Tokushige as evidence only) teach the subject matter of claim 1 above under 35 USC 103.
As to claim 7, Beavers appears to be silent to at least one additional aliphatic, alicyclic, and aralkyl glycol.
Weinhold teaches preparing copolyesters, and specifically teaches that various glycols are useful for preparing copolyesters. Examples include aliphatic, alicyclic, and aralkyl glycols (page 12, line 29 to page 13, line 11).
It would have been prima facie obvious to one of ordinary skill to incorporate these additional glycols from Weinhold into Beavers because:
(a) Beavers teaches/suggests preparing copolyesters and Weinhold provides useful glycols for preparing copolyesters within the scope of the Beavers teaching/suggestion. There was a reasonable expectation of success because both Weinhold (Eastman Chemical Corporation) and Beavers (Eastman Chemical Corporation) prepare copolyesters.
(b) One practicing the Beavers process would have recognized the Weinhold glycols to be obvious interchangeable substitute glycols for preparing copolyesters. One of ordinary skill in the art could have substituted one known glycol for another and the results would have been predictable (result is a copolyester).
Claims 1-6 and 8-17 are rejected under 35 U.S.C. 103 as being unpatentable over Beavers (WO 9630428) in view of Peters (WO 2021080779) and Pecorini (US 20090130353).
As to claims 1, 9, and 10, Beavers teaches preparing a copolyester (examples 6-14) comprising at least one terephthalate monomer (Abstract, terephthalic acid; Examples 6-14, dimethyl terephthalate), ethylene glycol (page 4, lines 19-20), 4-12 mole% combination of diethylene glycol and CHDM (Abstract, 2-10 mole% diethylene glycol and 0.1-10 mole% CHDM), and a germanium catalyst (page 5, line 9). The claimed diacid monomer based on substantially equal diacid equivalents of 100 mole% to diol equivalence of 100 mole% is interpreted to be met by Beavers’ teaching of equal mole% of terephthalic acid (or dimethyl terephthalate) and ethylene glycol (page 4, lines 18-21).
Beavers does not specifically teach (i) 100-500 ppm (or 100-450 ppm in claim 10) germanium catalyst, or (ii) steps of (1) melting, (2) extruding through a die to form a tube parison, (3) clamping a mold having the desired finished shape around the parison, (4) blowing air into the parison to stretch, expand to fill the mold, and produce a molded article, (5) cooling, (6) ejecting, and (7) removing excess plastic.
Regarding (i), Peters teaches using germanium-based compounds and teaches a catalyst be added in the range of 1-500 ppm ([00206]). It would have been prima facie obvious to incorporate the Peters catalyst amount into Beavers in view of Beavers’ teaching/suggestion to use a germanium catalyst and Peters’ provision of an effective amount of germanium catalyst for preparing a copolyester within the scope of the Beavers’ teaching/suggestion.
Regarding (ii), Pecorini teaches ([1242]) that extrusion blow molding is known and typically includes (1) melting the resin in an extruder, (2) extruding the molten resin through a die to form a tube parison of molten polymer, (3) clamping a mold having the desired finished shape around the parison, (4) blowing air into the parison causing the extrudate to stretch, expand to fill the mold, and produce a molded article, (5) cooling, and removing excess plastic/flash. Note also that Pecorini provides (redundant) teaching of diacid monomer based on substantially equal diacid equivalents of 100 mole% to diol equivalence of 100 mole% (for a total of 200 mole%) in [0021]. It would have been prima facie obvious to one of ordinary skill in the art prior to filing to incorporate this typical/conventional extrusion blow molding process into Beavers because Beavers suggests an extrusion blow molding process (page 2, line 18) and this is what Pecorini provides.
As to claims 2, 4, and 8, Beavers teaches at least 80 mole% terephthalic acid (page 4, lines 18-19) and dimethyl terephthalate (Examples 6-14). Beavers also teaches at least 80 mol% ethylene glycol (page 4, line 20). As to claims 3, 5, 6, Beavers is silent to the claimed components. However, Pecorini teaches aliphatic dicarboxylic acid having up to 16 carbon atoms and aromatic dicarboxylic acid having up to 20 carbon atoms that overlap in amount with the claimed “up to 10 mole%” ([0012]-[0024]). It would have been prima facie obvious to one of ordinary skill in the art prior to filing to incorporate these composition features from Pecorini into Beavers motivated by the desirable glass transition temperature and low shrinkage produced by this composition ([0012]). As to claims 11 and 12, Beavers teaches 1,4-butanediol (page 6, line 7). As to claim 13, Beavers teaches a branching agent interpreted to be a monomer (page 6, line 30). As to claim 14, while Beavers does not specifically teach a chain extender, Pecorini teaches polyesters comprising chain extenders ([1227]). It would have been prima facie obvious to one of ordinary skill in the art prior to filing to incorporate the Pecorini chain extender into Beavers as an obvious improvement for increasing (extending) molecular (chain) length. As to claims 15-17, in light of the same components being used in Beavers and the instant application, the Beavers copolyester would have the same half-time, capability for being recycled, and melting point as the copolyester in the instant claims.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Beavers (WO 96/30428) in view of Peters (WO 2021080779), and further in view of Weinhold (US 99/58328). Beavers, Peters, and Pecorini teach the subject matter of claim 1 above under 35 USC 103.
As to claim 7, Beavers appears to be silent to at least one additional aliphatic, alicyclic, and aralkyl glycol.
Weinhold teaches preparing copolyesters, and specifically teaches that various glycols are useful for preparing copolyesters. Examples include aliphatic, alicyclic, and aralkyl glycols (page 12, line 29 to page 13, line 11).
It would have been prima facie obvious to one of ordinary skill to incorporate these additional glycols from Weinhold into Beavers because:
(a) Beavers teaches/suggests preparing copolyesters and Weinhold provides useful glycols for preparing copolyesters within the scope of the Beavers teaching/suggestion. There was a reasonable expectation of success because both Weinhold (Eastman Chemical Corporation) and Beavers (Eastman Chemical Corporation) prepare copolyesters.
(b) One practicing the Beavers process would have recognized the Weinhold glycols to be obvious interchangeable substitute glycols for preparing copolyesters. One of ordinary skill in the art could have substituted one known glycol for another and the results would have been predictable (result is a copolyester).
Response to Arguments
Applicant's arguments filed January 28, 2026 have been fully considered but they are not persuasive. The arguments appear to be on the grounds that Beavers fails to disclose a copolyester comprising 100-500 ppm of germanium catalyst. Applicant points to Tokushige’s disclosure of 20-80 ppm germanium, and that thermal stability may decrease above 80 ppm which would not lead one to arrive at 100-500 ppm germanium. Applicant next admits that Peters discloses 1-500 ppm of catalyst, but does not particularly disclose this amount of germanium. Applicant argues that one would still not arrive at 100-500 ppm in light of Tokushige’s teaching of thermal stability above 80 ppm.
The Examiner notes the withdrawal of a rejection made over Beavers in view of Tokushige, but the other rejections are maintained. The Examiner’s position is that even if Tokushige teaches thermal stability problems can occur above 80 ppm, the translation of Tokushige ([0018]) suggests that this is a “preferred” amount, and not a teaching away from 100 ppm germanium. The rejections above based on the optimization of the amount of catalyst in Beavers are maintained, and Tokushige continues to support the position in the rejection that the quantity of catalyst is a result effective variable. No unexpected result associated with the claimed amount (100-500 ppm) compared to Tokushige (80 ppm) appears to be discussed in the Applicant’s arguments.
Even if Peters’ disclosure of 1-500 ppm of catalyst does not specifically disclose 1-500 ppm of germanium, the Examiner’s position is that the disclosed amount pertains to any catalyst disclose by Peters, even though preferred ranges may also disclosed. The disclosure of such a broad range of catalyst supports the Examiner’s position that the amount of catalyst should be optimized, and when germanium is used, one would have arrived at the same amount recited in the claim. No unexpected result associated with the claimed amount appears to be discussed in the Applicant’s arguments.
Conclusion
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 MATTHEW J DANIELS whose telephone number is (313)446-4826. The examiner can normally be reached Monday-Friday, 8:30-5:00 pm.
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/MATTHEW J DANIELS/ Primary Examiner, Art Unit 1742