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 Objections
Claim 9 is objected to because of the following informalities: the word “percent” should be inserted after “weight.” Appropriate correction is required.
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 claim 1:
The last three lines of “d” in the claim contain a “wherein” clause. The clause further limits what “the diacid monomer” is “based on.” The clause is confusing for several reasons.
It is not clear what “the diacid monomer” is referring to. There is a prior recitation of “at least one terephthalate monomer residue” in the claim, but “the diacid monomer” recited in the wherein clause lacks antecedent basis, because there is no prior recitation of a diacid monomer.
It is not clear whether or how the clause limits an amount of something, and it is not clear what is meant by “based on the 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). However, because it is not possible to determine the metes and bounds of claim 1 due to unclear language, the scope of claim 1, and the scope of dependent claims 1-19, is indefinite. The scope of independent claim 20 is unclear for the same reasons set forth above for claim 1.
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, 6 and 11-20 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, 13-15 and 20, Takamiya discloses a molded article [0008] comprising a copolyester comprising ethylene terephthalate as the main repeating unit, wherein 95 mol% or more of the acid component is terephthalic acid [0011] (see also [0031], diacid component in Example 1 is 100 mol% terephthalic acid), meeting instant claim 1(a)). 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 14. 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 13.
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 15.
As to claims 6, 11 and 12, Takamiya exemplifies a container (having an internal volume of 150 ml) [0032] formed by injection stretch blow molding [0031]. Takamiya teaches the use of hollow containers as food containers [0002].
As to claim 16, 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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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 17-19, 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) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takamiya et al (JP 2019014866A; included EPO machine translation cited herein).
The rejection over Takamiya under 35 USC 102(a)(1) above is incorporated here by reference.
As to claim 3, Takamiya discloses that PET is widely used in various sheets, films and containers due to various excellent properties [0002]. The molded articles which are exemplified by Takamiya are hollow containers formed by stretch blow molding, however, it would have been obvious to the person having ordinary skill in the art to have utilized Takamiya’s polyester resin to prepare any type of article for which PET is widely used, including sheets or films, in order to increase the number of applications for which the polyester can be used.
Claim(s) 2-5 and 7-10 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 over Takamiya under 35 USC 102(a)(1) above is incorporated here by reference.
As to claim 2, Takamiya further teaches adding other resins or additives during the melt-mixing of the copolymer polyester resin in an extruder [0027]. It would have been obvious to the person having ordinary skill in the art, therefore, to have added any appropriate further component named by Takamiya during the melt-mixing of the polyester, including “other resins,” in order to provide a desired blend based on an intended application. However, Takamiya fails to disclose a specific type of resin additive (as recited in claim 2).
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 impact modifiers, and names commercial examples thereof which are acrylic copolymers [0134] (meeting the “acrylic copolymer” recited in claim 2). 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 an acrylic copolymer impact modifier, as taught by Howell, to the copolyester of Takamiya, in order to provide impact resistance to the ultimately obtained polymer article.
As to claims 3-5 and 10, Takamiya discloses that PET is widely used in various sheets, films and containers due to various excellent properties [0002]. The molded articles which are exemplified by Takamiya are hollow containers formed by stretch blow molding [0031]. Takamiya fails to teach sheets and films formed from the disclosed copolyester, and fails to teach extrusion blow molded articles.
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 utilizing any known method in the art of forming polyester compositions into molded or shaped articles [00192], including injection stretch blow molding, as exemplified by Takamiya, as well as extrusion blow molding [00192]. Howell further discloses forming the polyester into films or sheets using methods which are well known in the art, including compression molding, calendaring and solution casting [00141]. Howell teaches many types of articles which can be formed, including shrink films, oriented films [00165], thermoformed sheets [00180], and articles such as bottles, eyeglass frames, cutlery, automotive parts, etc… [00187-9]. The person having ordinary skill in the art would have been motivated to form Takamiya’s polyester into any shapes (films/molded articles) which are well known to be formed from similar known polyesters, using any method which is well known in the art, in order to increase the commercial viability of the polymer material. It would have been obvious to the person having ordinary skill in the art, therefore, to have utilized Takamiya’s polyester to form films and sheets (including compression, thermoformed, calendared and solution casted films and sheets) and molded articles (including bottles, frames, automotive parts etc…, including via extrusion blow molding), as taught by Howell, thereby arriving at the presently claimed subject matter.
As to claim 7, modified Takamiya suggests an extrusion blow molded article according to claim 5, as set forth above. Modified Takamiya fails to teach a haze value as presently recited. However, considering that modified Takamiya suggests an article formed via the same type of molding method (extrusion blow molding), and from the same polyester as recited in the present claims and described in the instant specification, there is reasonable basis to conclude that modified Takamiya suggests an article having the same properties exhibited by the instant articles, including a haze value of less than 15. Alternatively, Takamiya teaches that PET is widely used in view of properties which include transparency [0002], and that molded articles having an appearance with excellent transparency can be used for various applications [0009]. Howell teaches that a part which is very hazy would not be considered viable, and measures haze as an indication of part quality and crystallization [00308]. It would have been obvious to the person having ordinary skill in the art, therefore, to have formed an extrusion blow molded article, as suggested by modified Takamiya, by decreasing the haze value thereof in order to improve the desirability thereof, including to a haze value within the claimed range.
As to claim 8, modified Takamiya suggests an extrusion blow molded article according to claim 5, as set forth above. In Takamiya’s examples, no further components are combined with the copolyester prior to molding the polyester into an article. Therefore, modified Takamiya suggests an extrusion blow molded article formed entirely of the polyester.
As to claim 9, modified Takamiya suggests an article comprising an acrylic copolymer additive according to claim 2, as set forth above. Howell teaches that the polyester composition can contain from 0.01 to 25 wt% additives [00134]. It would have been obvious to the person having ordinary skill in the art, therefore, to have formed an article as suggested by modified Takamiya by including additives in any amount within Howell’s disclosed range in order to achieve the effect(s) associated with the additive while still maintaining desired properties associated with the polyester, including an amount of less than 10 wt% such that the content of copolyester is at least 90 wt% as presently recited. Additionally, 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.
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 12-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims of copending Application No. 18688068 (reference application) in view of Utracki et al (Utracki, L.A., Mukhopadhyay, P., Gupta, R.K. (2014). Polymer Blends: Introduction. In: Utracki, L., Wilkie, C. (eds) Polymer Blends Handbook. Springer, Dordrecht, Chapter 1, pp 3-170).
The process of producing an article recited in copending claim 1 results in an extrusion blow molded article comprising a copolyester according to instant claims 1, 5, 6, 8, 12 and 20. The range of germanium concentration recited in copending claim 1 falls within the presently claimed range. The recitations of claim 7 must be met by the article of copending claim 1 considering that the article formed by copending claim 1 is made by the same process from the same material.
The ranges recited in instant claims 13-15 are also recited in copending claims 8-10.
The recitations and ranges recited in instant claims 16-19 are in copending claims 15-19.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 2 and 9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims of copending Application No. 18688068 (reference application), as set forth above, in view of Utracki et al (Utracki, L.A., Mukhopadhyay, P., Gupta, R.K. (2014). Polymer Blends: Introduction. In: Utracki, L., Wilkie, C. (eds) Polymer Blends Handbook. Springer, Dordrecht, Chapter 1, pp 3-170).
The copending claims fail to recite a polymeric component as recited in claim 2. However, Utracki discloses polymer blending is performed in order to provide materials having enhanced performance (p 5, top half), and that blends constitute almost one third of total polymer consumption (p 19, last sentence). Several benefits of blending are disclosed on p 21, section 1.4.1. Utracki further provides a table (1.62, see p 94) of various examples of polyester blends (including polyester blends with many of the types of polymers recited in instant claim 2) and the benefits associated therewith. It would have been obvious to the person having ordinary skill in the art, therefore, to have blended the polyester recited in the copending claims with a polymeric component (including a component as recited in instant claim 2), as taught by Utracki, in order to achieve the benefits associated therewith. As to claim 9, It would have been obvious to the person having ordinary skill in the art, therefore, to have selected any desired proportions of polymers in a blend thereof in order to form a composition exhibiting the desired balance of properties associated with each polymer, including selecting a proportion of copolyester in an amount of at least 90 wt%.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 2 and 13-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims of copending Application No. 18688090 (reference application).
The copolyester and copolyester blend recited in copending claims 1 and 2, respectively, meet the copolyester and copolyester blend recited in instant claims 1, 2 and 20. The copending claims recite a “composition” and do not recite “an article” as required in the instant claims. However, one having ordinary skill in the art would have recognized that polymers such as polyesters are used to form articles, and would have immediately envisaged the formation of an article from a polyester as recited in the copending claims.
The recitations of instant claims 13-15 are in copending claims 9-11.
The recitations of instant claims 16-19 are in copending claims 16-20.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 and 13-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims of copending Application No. 18688059 (reference application).
The copolyester recited in copending claims 1 and 8-10 meet the copolyester recited in instant claims 1, 13-15 and 20. The copending claims do not recite “an article” as required in the instant claims. However, one having ordinary skill in the art would have recognized that polymers such as polyesters are used to form articles, and would have immediately envisaged the formation of an article from a polyester as recited in the copending claims.
The recitations of instant claims 16-19 are in copending claims 15-19.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 2 and 9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims of copending Application No. 18688059 (reference application) in view of Utracki et al (Utracki, L.A., Mukhopadhyay, P., Gupta, R.K. (2014). Polymer Blends: Introduction. In: Utracki, L., Wilkie, C. (eds) Polymer Blends Handbook. Springer, Dordrecht, Chapter 1, pp 3-170).
The copending claims fail to recite a polymeric component as recited in claim 2. However, Utracki discloses polymer blending is performed in order to provide materials having enhanced performance (p 5, top half), and that blends constitute almost one third of total polymer consumption (p 19, last sentence). Several benefits of blending are disclosed on p 21, section 1.4.1. Utracki further provides a table (1.62, see p 94) of various examples of polyester blends (including polyester blends with many of the types of polymers recited in instant claim 2) and the benefits associated therewith. It would have been obvious to the person having ordinary skill in the art, therefore, to have blended the polyester recited in the copending claims with a polymeric component (including a component as recited in instant claim 2), as taught by Utracki, in order to achieve the benefits associated therewith. As to claim 9, It would have been obvious to the person having ordinary skill in the art, therefore, to have selected any desired proportions of polymers in a blend thereof in order to form a composition exhibiting the desired balance of properties associated with each polymer, including selecting a proportion of copolyester in an amount of at least 90 wt%.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 and 13-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims of copending Application No. 18688147 (reference application).
The copolyester recited in copending claims 1 and 8-10 meet the copolyester recited in instant claims 1, 13-15 and 20. The copending claims do not recite “an article” as required in the instant claims. However, one having ordinary skill in the art would have recognized that polymers such as polyesters are used to form articles, and would have immediately envisaged the formation of an article from a polyester as recited in the copending claims.
The recitations of instant claims 16-19 are in copending claims 15-19.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 2 and 9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims of copending Application No. 18688147 (reference application) in view of Utracki et al (Utracki, L.A., Mukhopadhyay, P., Gupta, R.K. (2014). Polymer Blends: Introduction. In: Utracki, L., Wilkie, C. (eds) Polymer Blends Handbook. Springer, Dordrecht, Chapter 1, pp 3-170).
The copending claims fail to recite a polymeric component as recited in claim 2. However, Utracki discloses polymer blending is performed in order to provide materials having enhanced performance (p 5, top half), and that blends constitute almost one third of total polymer consumption (p 19, last sentence). Several benefits of blending are disclosed on p 21, section 1.4.1. Utracki further provides a table (1.62, see p 94) of various examples of polyester blends (including polyester blends with many of the types of polymers recited in instant claim 2) and the benefits associated therewith. It would have been obvious to the person having ordinary skill in the art, therefore, to have blended the polyester recited in the copending claims with a polymeric component (including a component as recited in instant claim 2), as taught by Utracki, in order to achieve the benefits associated therewith. As to claim 9, It would have been obvious to the person having ordinary skill in the art, therefore, to have selected any desired proportions of polymers in a blend thereof in order to form a composition exhibiting the desired balance of properties associated with each polymer, including selecting a proportion of copolyester in an amount of at least 90 wt%.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 and 13-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims of copending Application No. 18688160 (reference application).
The process recited in copending claims 1 and 14-20 results in a copolyester as recited in instant claims 1 and 13-20. The copending claims do not recite “an article” as required in the instant claims. However, one having ordinary skill in the art would have recognized that polymers such as polyesters are used to form articles, and would have immediately envisaged the formation of an article from a polyester as 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 2 and 9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims of copending Application No. 18688160 (reference application) in view of Utracki et al (Utracki, L.A., Mukhopadhyay, P., Gupta, R.K. (2014). Polymer Blends: Introduction. In: Utracki, L., Wilkie, C. (eds) Polymer Blends Handbook. Springer, Dordrecht, Chapter 1, pp 3-170).
The copending claims fail to recite a polymeric component as recited in claim 2. However, Utracki discloses polymer blending is performed in order to provide materials having enhanced performance (p 5, top half), and that blends constitute almost one third of total polymer consumption (p 19, last sentence). Several benefits of blending are disclosed on p 21, section 1.4.1. Utracki further provides a table (1.62, see p 94) of various examples of polyester blends (including polyester blends with many of the types of polymers recited in instant claim 2) and the benefits associated therewith. It would have been obvious to the person having ordinary skill in the art, therefore, to have blended the polyester recited in the copending claims with a polymeric component (including a component as recited in instant claim 2), as taught by Utracki, in order to achieve the benefits associated therewith. As to claim 9, It would have been obvious to the person having ordinary skill in the art, therefore, to have selected any desired proportions of polymers in a blend thereof in order to form a composition exhibiting the desired balance of properties associated with each polymer, including selecting a proportion of copolyester in an amount of at least 90 wt%.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/RACHEL KAHN/Primary Examiner, Art Unit 1766
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