DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on June 22, 2026 has been entered.
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 8-18 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 the material be used in a molding process or an extrusion blow molding process (page 2) 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. As to claim 18, since Beavers teaches all compositional aspects of claim 1, the copolyester of Beavers would have the same inherent viscosity as the claimed copolyester.
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 (WO 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 8-18 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 the material be used in a molding process or an extrusion blow molding process (page 2) 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. As to claim 18, since Beavers teaches all compositional aspects of claim 1, the copolyester of Beavers would have the same inherent viscosity as the claimed copolyester.
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 Pecorini (US 20090130353), and further in view of Weinhold (WO 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 June 22, 2026 have been fully considered but they are not persuasive.
The arguments appear to be on the grounds that (1) Beavers fails to disclose or suggest that its copolymers are suitable for EBM, and (2) Beaver fails to disclose or suggests a process for producing an article by EBM using the presently claimed polyester. Applicant argues that (for argument (1)) Beavers own copolymers are not disclosed as suitable for EBM. Applicant argues (for argument (2)) that Beavers uses small amounts of CHDM and diethylene glycol, and that higher concentrations decrease the softening point and can lead to pellet sticking, and since Pecorini uses large amounts of CHDM one would not have been motivated to look to Pecorini to modify Beavers.
Regarding Applicant’s argument (1), the Examiner has carefully considered this argument. Although “Poly(ethylene terephthalate) (PET) polymers are useful in a wide variety of applications including fibers, molding plastics, sheeting, films and the like” (Beavers, page 1, lines 13-15) and a reference is cited (page 2, lines 17-18) where a terephthalic acid is used in extrusion blow molding, Applicant argues that Beaver does not actually use its own polymer in extrusion blow molding. While Applicant is technically correct that Beaver does not specifically disclose using its own polymer in extrusion blow molding, the Examiner also notes that Beaver does not appear to specifically disclose any manner of using its own polymer. By Applicant’s reasoning and following this reasoning to its logical end, one could only conclude that Beavers own polymer is not useful in any process because Beaver does not specifically teach/suggest any process for using its own polymer. Of course this cannot be correct, and even if Beaver never teaches using its own polymer in any particular process, Beavers must have envisioned using its own polymer in “molding plastics” (page 1, lines 13-15) or in the cited prior art processes like extrusion blow molding (page 2, lines 17-18). The position set forth in the rejection is consistent with this view.
Regarding Applicant’s argument (2), even if Pecorini teaches a similar PET composition with different catalyst or additive levels, this does not mean that extrusion blow molding is not an obvious process for molding the Beavers (or modified Beavers) composition. Note that the rejection does not actually depend on any compositional aspects of Pecorini, and any composition features discussed in Pecorini are always disclosed as being redundant and cited only for the purpose of showing the similarity with the composition already disclosed in Beaver. The rejection merely relies on Pecorini for disclosure of the conventional aspects of the known extrusion blow molding process.
Conclusion
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
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