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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
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.
Claim 1 recites the limitation “at least one terephthalate acid residue” in line 2, which is indefinite because its definition is unclear because “terephthalate acid” is not a known acid, but “terephthalic acid” is a known acid, and “terephthalate” is a salt or ester of terephthalic acid. Also, the specification of the instant application recites that “as used herein, the term “terephthalic acid” is intended to include terephthalic acid itself and residues thereof as well as any derivative of terephthalic acid, including its associated acid halides, esters, half-esters, salts, half-salts, anhydride, mixed anhydrides, and/or mixtures thereof or residues thereof useful in a reaction process with a diol to make polyester [00021]. For further examination of the claims, this limitation is interpreted as “at least one terephthalic acid residue”.
Claim 1 recites the limitation "the terephthalate monomer" in line 9. There is insufficient antecedent basis for this limitation in the claim because claim 1 recites the limitation “at least one terephthalate acid residue” in line 2 and not “a terephthalate monomer”. For further examination of the claims, this limitation is interpreted as “the terephthalic acid residue”.
Claims 2 and 4 recite the limitation “said terephthalic acid residues” in line 1. There is insufficient antecedent basis for this limitation in the claim because claim 1 recites the limitation “at least one terephthalate acid residue” in line 2, which is interpreted as “at least one terephthalic acid residue”. The limitation in claim 2 reads on more than one terephthalic acid residues, but it is not clear if more than one is required. For further examination of the claims, this limitation is interpreted as “said at least one terephthalic acid residue”.
Claim 20 recites the limitation “terephthalate acid residues” in line 2, which is indefinite because its definition is unclear for the same reasons as explained for claim 1. For further examination of the claims, this limitation is interpreted as “terephthalic acid residues”.
Claim 20 recites the limitation "the terephthalate monomer" in line 9. There is insufficient antecedent basis for this limitation in the claim because claim 1 recites the limitation “terephthalate acid residues” in line 2 and not “a terephthalate monomer”. For further examination of the claims, this limitation is interpreted as “the terephthalic acid residues”.
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.
Claims 1-4, 7, 10, and 13-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nakamichi et al. (JP H07-207003 A, machine translation in English used for citation).
Regarding claims 1, 2, and 10, Nakamichi teaches a copolymer polyester characterized in that it comprises terephthalic acid as the dicarboxylic acid component and ethylene glycol as the diol component, and contains 0.5 to 10 mol% cyclohexanedimethanol and 1 to 4 mol% diethylene glycol as the diol component, and has a germanium atom content of 20 to 60 ppm [0008], wherein examples of cyclohexanedimethanol raw materials include 1,4-cyclohexanedimethanol, and 1,4-cyclohexanedimethanol is usually preferred [0009], wherein the germanium atoms originate from a germanium compound used as a polymerization catalyst for the copolymer polyester [0014], which reads on a copolyester comprising a. at least one terephthalate acid residue, b. about 86 to about 98.5 mole% of ethylene glycol residues, c. about 1.5 to about 14 mole% of a combination of 1,4-cyclohexanedimethanol residues (CHDM) and diethylene glycol (DEG) residues, and d. a germanium catalyst present in the copolyester at a concentration of about 20 to about 60 ppm based on elemental germanium, wherein the terephthalate monomer is based on the substantial equal diacid equivalents of 100 mole% to diol equivalence of 100 mole% for a total of 200 mole% as claimed, wherein said terephthalic acid residues are from at least one monomer selected from terephthalic acid as claimed, wherein the amount of germanium present in the copolymer is at a concentration of about 20 to about 60 ppm as claimed
Regarding claim 3, Nakamichi teaches that the copolymer polyester [0008] may also contain small amounts of dicarboxylic acid components other than terephthalic acid [0025], and that examples of these dicarboxylic acid components include phthalic acid, isophthalic acid, naphthalenedicarboxylic acid, diphenylsulfondicarboxylic acid, 4,4’-biphenyldicarboxylic acid, malonic acid, succinic acid, and adipic acid [0025], which reads on the copolymer of Claim 1 further comprising a dicarboxylic acid selected from aliphatic dicarboxylic acids having 3, 4, or 6 carbon atoms, and aromatic dicarboxylic acids having 8, 12, or 14 carbon atoms as claimed.
Regarding claim 4, Nakamichi teaches that the copolymer polyester is characterized in that it comprises terephthalic acid as the dicarboxylic acid component [0008], which reads on a specific embodiment wherein Nakamichi’s terephthalic acid is Nakamichi’s only dicarboxylic acid component, which reads on wherein said terephthalic acid residues in said copolyester is 100 mol % as claimed.
Regarding claim 7, Nakamichi teaches that the copolymer polyester [0008] may also contain small amounts of diol components other than ethylene glycol, diethylene glycol, and cyclohexanedimethanol [0025], and that examples of diol components include aliphatic diols [0025], which reads on the copolyester of Claim 1 further comprising at least one additional aliphatic glycol as claimed.
Regarding claim 13, Nakamichi teaches that the copolymer polyester [0008] may also contain small amounts of polyfunctional compounds with three or more functions [0026], and that examples of polyfunctional compounds with three or more functions include trimellitic acid, trimesic acid, their structural isomers, pyromellitic acid, its structural isomers, anhydrides, and nuclear-substituted derivatives of these polyfunctional compounds, trimethylolethane, trimethylolpropane, glycerin, and pentaerythritol [0026], which reads on the copolyester according to Claim 1 further comprising at least one branching monomer as claimed.
Regarding claim 14, Nakamichi teaches that the copolymer polyester [0008] may also contain small amounts of polyfunctional compounds with three or more functions [0026], and that examples of polyfunctional compounds with three or more functions include glycidyl ethers of aromatic dihydroxy compounds, such as polyfunctional compounds like bisphenol A diglycidyl ether [0026]. The specification of the instant application recites that suitable chain extenders include, but are not limited to, multifunctional epoxides [00050]. Nakamichi’s teachings therefore read on the copolyester according to Claim 1 further comprising at least one chain extender as claimed.
Regarding claim 15, Nakamichi teaches that the copolymer polyester characterized in that it comprises terephthalic acid as the dicarboxylic acid component and ethylene glycol as the diol component [0008], and that PET resins have a high potential for recycling [0004]. Also, Nakamichi teaches all of the claimed ingredients, amounts, process steps, and process conditions of the copolyester according to Claim 1 as explained above. Nakamichi’s teachings therefore read on wherein said copolyester is capable of being recycled as claimed.
Regarding claim 16, the Office recognizes that all of the claimed physical properties are not positively taught by Nakamichi, namely that the copolyester according to Claim 1 has a crystallization half life of greater than 1 minute at 140°C. However, Nakamichi teaches obvious all of the claimed ingredients, amounts, process steps, and process conditions of the copolyester according to Claim 1 as explained above. Furthermore, the specification of the instant application recites that it is believed that the inventive copolyesters provide at least one of the following unique properties: 1) crystallization half times of greater than one minute [00015], that the copolyesters of this invention can have a crystallization half time of greater than 1 minute at 140°C as measured by the method described in the Examples [00076]. Therefore, the claimed physical properties would naturally arise from the copolyester of Nakamichi. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01(I)). Products of identical chemical composition can not have mutually exclusive properties (MPEP 2112.01(II)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not (MPEP 2112.01(I)). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product (MPEP 2112.01(I)).
Regarding claim 17, the Office recognizes that all of the claimed physical properties are not positively taught by Nakamichi, namely that the copolyester according to Claim 1 has a crystallization half life of greater than 2 minutes at 140°C. However, Nakamichi teaches obvious all of the claimed ingredients, amounts, process steps, and process conditions of the copolyester according to Claim 1 as explained above. Furthermore, the specification of the instant application recites that it is believed that the inventive copolyesters provide at least one of the following unique properties: 1) crystallization half times of greater than one minute [00015], that the copolyesters of this invention can have a crystallization half time of greater than 2 minutes at 140°C as measured by the method described in the Examples [00076]. Therefore, the claimed physical properties would naturally arise from the copolyester of Nakamichi. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01(I)). Products of identical chemical composition can not have mutually exclusive properties (MPEP 2112.01(II)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not (MPEP 2112.01(I)). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product (MPEP 2112.01(I)).
Regarding claim 18, the Office recognizes that all of the claimed physical properties are not positively taught by Nakamichi, namely that the copolyester according to Claim 1 has a crystallization half life of greater than 3 minutes at 140°C. However, Nakamichi teaches obvious all of the claimed ingredients, amounts, process steps, and process conditions of the copolyester according to Claim 1 as explained above. Furthermore, the specification of the instant application recites that it is believed that the inventive copolyesters provide at least one of the following unique properties: 1) crystallization half times of greater than one minute [00015], that the copolyesters of this invention can have a crystallization half time of greater than 3 minutes at 140°C as measured by the method described in the Examples [00076]. Therefore, the claimed physical properties would naturally arise from the copolyester of Nakamichi. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01(I)). Products of identical chemical composition can not have mutually exclusive properties (MPEP 2112.01(II)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not (MPEP 2112.01(I)). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product (MPEP 2112.01(I)).
Regarding claim 19, the Office recognizes that all of the claimed physical properties are not positively taught by Nakamichi, namely that the copolyester according to Claim 1 has a crystallization half life of greater than 1 minute at 140°C, 160°C, and 180°C. However, Nakamichi teaches obvious all of the claimed ingredients, amounts, process steps, and process conditions of the copolyester according to Claim 1 as explained above. Furthermore, the specification of the instant application recites that it is believed that the inventive copolyesters provide at least one of the following unique properties: 1) crystallization half times of greater than one minute [00015], that the copolyesters of this invention can have a crystallization half time of greater than 1 minute at 140°C, 160°C, and 180°C as measured by the method described in the Examples [00076]. Therefore, the claimed physical properties would naturally arise from the copolyester of Nakamichi. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01(I)). Products of identical chemical composition can not have mutually exclusive properties (MPEP 2112.01(II)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not (MPEP 2112.01(I)). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product (MPEP 2112.01(I)).
Claim 20 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nakamichi et al. (JP H07-207003 A, machine translation in English used for citation).
Regarding claim 20, Nakamichi teaches a copolymer polyester characterized in that it comprises terephthalic acid as the dicarboxylic acid component and ethylene glycol as the diol component, and contains 0.5 to 10 mol% cyclohexanedimethanol and 1 to 4 mol% diethylene glycol as the diol component, and has a germanium atom content of 20 to 60 ppm [0008], wherein examples of cyclohexanedimethanol raw materials include 1,4-cyclohexanedimethanol, and 1,4-cyclohexanedimethanol is usually preferred [0009], wherein the germanium atoms originate from a germanium compound used as a polymerization catalyst for the copolymer polyester [0014], which reads on a copolyester comprising a. terephthalate acid residues, b. about 86 toa bout 98.5 mole% of ethylene glycol residues, c. about 1.5 to about 14 mole% of a combination of diethylene glycol (DEG) residues and 1,4-cyclohexanedimethanol residues (CHDM), and d. a germanium catalyst present in the copolyester at a concentration of about 20 to about 60 ppm based on elemental germanium, wherein the terephthalate monomer is based on the substantially equal diacid equivalents of 100 mole% to diol equivalence of 100 mole% for a total of 200 mole%.
The Office recognizes that all of the claimed physical properties are not positively taught by Nakamichi, namely that said copolyester has a crystallization half life of greater than 1 minute at 140°C. However, Nakamichi teaches obvious all of the claimed ingredients, amounts, process steps, and process conditions of said copolyester as explained above. Furthermore, the specification of the instant application recites that it is believed that the inventive copolyesters provide at least one of the following unique properties: 1) crystallization half times of greater than one minute [00015], that the copolyesters of this invention can have a crystallization half time of greater than 1 minute at 140°C as measured by the method described in the Examples [00076]. Therefore, the claimed physical properties would naturally arise from the copolyester of Nakamichi. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01(I)). Products of identical chemical composition can not have mutually exclusive properties (MPEP 2112.01(II)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not (MPEP 2112.01(I)). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product (MPEP 2112.01(I)).
Claim Rejections - 35 USC § 103
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 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 5, 6, 8, 9, 11, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Nakamichi et al. (JP H07-207003 A, machine translation in English used for citation) as applied to claim 1.
Regarding claim 5, Nakamichi teaches the copolyester of Claim 1 as explained above. Nakamichi teaches that the copolymer polyester [0008] may also contain small amounts of dicarboxylic acid components other than terephthalic acid as long as it does not deviate from the constituent elements of their invention [0025], and that examples of these dicarboxylic acid components include phthalic acid, isophthalic acid, naphthalenedicarboxylic acid, diphenylsulfondicarboxylic acid, and 4,4’-biphenyldicarboxylic acid [0025], which reads on the copolyester of Claim 1 further comprising greater than 0 and less than 100 mole % of one or more modifying aromatic dicarboxylic acids.
Nakamichi does not teach that the copolyester of Claim 1 further comprises up to 10 mole % of one or more modifying aromatic dicarboxylic acids. Before the effective filing date of the claimed invention, one ordinary skill in the art would have found it obvious to use Nakamichi’s dicarboxylic acid components other than terephthalic acid that are phthalic acid, isophthalic acid, naphthalenedicarboxylic acid, diphenylsulfondicarboxylic acid, or 4,4’-biphenyldicarboxylic acid to substitute for a fraction of Nakamichi’s terephthalic acid in Nakamichi’s dicarboxylic acid components in Nakamichi’s copolymer polyester, and to optimize the amount of Nakamichi’s dicarboxylic acid components other than terephthalic acid to be greater than 0 mol% and less than or equal to 10 mol% in Nakamichi’s dicarboxylic acid components in Nakamichi’s copolymer polyester. The proposed modification would read on the copolyester of Claim 1 further comprising up to 10 mole % of one or more modifying aromatic dicarboxylic acids as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for optimizing suitability of Nakamichi’s copolymer polyester for direct blow bottles, for minimizing oligomer content of Nakamichi’s copolymer polyester, for optimizing a polymerization rate and/or oligomer reduction rate of Nakamichi’s copolymer polyester, and/or for optimizing transparency and/or low-temperature drop strength of direct-blow bottles comprising Nakamichi’s copolymer polyester because Nakamichi teaches that the copolymer polyester [0008] may also contain small amounts of dicarboxylic acid components other than terephthalic acid as long as it does not deviate from the constituent elements of their invention [0025], that examples of these dicarboxylic acid components include phthalic acid, isophthalic acid, naphthalenedicarboxylic acid, diphenylsulfondicarboxylic acid, and 4,4’-biphenyldicarboxylic acid [0025], that to achieve the objective of their invention, they found that a copolymer polyester containing a certain proportion of cyclohexanedimethanol and diethylene glycol in the constituent components of PET is a copolymer polyester suitable for direct blow bottles [0007], that the object of their invention is to provide a copolymerized polyester that has a low oligomer content and produces fewer oligomer by-products during molding, making it less likely to cause contamination of molds and other components during molding [0006], that it has a faster polymerization rate and oligomer reduction rate during solid-phase polymerization compared to PET, resulting in higher productivity [0006], and that compared to other copolymerized PETs, it can provide direct-blow bottles that have superior performance in terms of transparency and low-temperature drop strength [0006], which means that the amount of Nakamichi’s dicarboxylic acid components other than terephthalic acid in mol% in Nakamichi’s dicarboxylic acid components in Nakamichi’s copolymer polyester would have affected suitability of Nakamichi’s copolymer polyester for direct blow bottles, oligomer content of Nakamichi’s copolymer polyester, a polymerization rate and/or oligomer reduction rate of Nakamichi’s copolymer polyester, and/or transparency and/or low-temperature drop strength of direct-blow bottles comprising Nakamichi’s copolymer polyester.
Regarding claim 6, Nakamichi teaches the copolyester of Claim 1 as explained above. Nakamichi teaches that the copolymer polyester [0008] may also contain small amounts of dicarboxylic acid components other than terephthalic acid as long as it does not deviate from the constituent elements of their invention [0025], and that examples of these dicarboxylic acid components include malonic acid, succinic acid, and adipic acid [0025], which reads on the copolyester of Claim 1 further comprising greater than 0 and less than 100 mole % of one or more aliphatic dicarboxylic acids containing 3, 4, or 6 carbon atoms.
Nakamichi does not teach that the copolyester of Claim 1 further comprises up to 10 mole % of one or more aliphatic dicarboxylic acids containing 2-16 carbon atoms. Before the effective filing date of the claimed invention, one ordinary skill in the art would have found it obvious to use Nakamichi’s dicarboxylic acid components other than terephthalic acid that are malonic acid, succinic acid, or adipic acid to substitute for a fraction of Nakamichi’s terephthalic acid in Nakamichi’s dicarboxylic acid components in Nakamichi’s copolymer polyester, and to optimize the amount of Nakamichi’s dicarboxylic acid components other than terephthalic acid to be greater than 0 mol% and less than or equal to 10 mol% in Nakamichi’s dicarboxylic acid components in Nakamichi’s copolymer polyester. The proposed modification would read on the copolyester of Claim 1 further comprising up to 10 mole % of one or more aliphatic dicarboxylic acids containing 3, 4, or 6 carbon atoms as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for optimizing suitability of Nakamichi’s copolymer polyester for direct blow bottles, for minimizing oligomer content of Nakamichi’s copolymer polyester, for optimizing a polymerization rate and/or oligomer reduction rate of Nakamichi’s copolymer polyester, and/or for optimizing transparency and/or low-temperature drop strength of direct-blow bottles comprising Nakamichi’s copolymer polyester because Nakamichi teaches that the copolymer polyester [0008] may also contain small amounts of dicarboxylic acid components other than terephthalic acid as long as it does not deviate from the constituent elements of their invention [0025], that examples of these dicarboxylic acid components include malonic acid, succinic acid, and adipic acid [0025], that to achieve the objective of their invention, they found that a copolymer polyester containing a certain proportion of cyclohexanedimethanol and diethylene glycol in the constituent components of PET is a copolymer polyester suitable for direct blow bottles [0007], that the object of their invention is to provide a copolymerized polyester that has a low oligomer content and produces fewer oligomer by-products during molding, making it less likely to cause contamination of molds and other components during molding [0006], that it has a faster polymerization rate and oligomer reduction rate during solid-phase polymerization compared to PET, resulting in higher productivity [0006], and that compared to other copolymerized PETs, it can provide direct-blow bottles that have superior performance in terms of transparency and low-temperature drop strength [0006], which means that the amount of Nakamichi’s dicarboxylic acid components other than terephthalic acid in mol% in Nakamichi’s dicarboxylic acid components in Nakamichi’s copolymer polyester would have affected suitability of Nakamichi’s copolymer polyester for direct blow bottles, oligomer content of Nakamichi’s copolymer polyester, a polymerization rate and/or oligomer reduction rate of Nakamichi’s copolymer polyester, and/or transparency and/or low-temperature drop strength of direct-blow bottles comprising Nakamichi’s copolymer polyester.
Regarding claim 8, Nakamichi teaches the copolyester of Claim 1 as explained above. Nakamichi teaches that the copolymer polyester is characterized in that it comprises ethylene glycol as the diol component and contains 0.5 to 10 mol% cyclohexanedimethanol and 1 to 4 mol% diethylene glycol as the diol component [0008], which reads on wherein the amount of ethylene glycol residues ranges from about 86 to about 98.5 mol%.
Nakamichi does not teach with sufficient specificity wherein the amount of ethylene glycol residues ranges from about 85 to about 92 mol%. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to optimize the amount of ethylene glycol in Nakamichi’s diol component in Nakamichi’s copolymer polyester to be 86 to about 92 mol%. The proposed modification would read on wherein the amount of ethylene glycol residues ranges from about 86 to about 92 mol% as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for optimizing suitability of Nakamichi’s copolymer polyester for direct blow bottles, for minimizing oligomer content of Nakamichi’s copolymer polyester, for optimizing a polymerization rate and/or oligomer reduction rate of Nakamichi’s copolymer polyester, and/or for optimizing transparency and/or low-temperature drop strength of direct-blow bottles comprising Nakamichi’s copolymer polyester because Nakamichi teaches that the copolymer polyester is characterized in that it comprises ethylene glycol as the diol component and contains 0.5 to 10 mol% cyclohexanedimethanol and 1 to 4 mol% diethylene glycol as the diol component [0008], which means that Nakamichi’s copolymer polyester comprises 86 to 98.5 mole% ethylene glycol as the diol component, that to achieve the objective of their invention, they found that a copolymer polyester containing a certain proportion of cyclohexanedimethanol and diethylene glycol in the constituent components of PET is a copolymer polyester suitable for direct blow bottles [0007], that the object of their invention is to provide a copolymerized polyester that has a low oligomer content and produces fewer oligomer by-products during molding, making it less likely to cause contamination of molds and other components during molding [0006], that it has a faster polymerization rate and oligomer reduction rate during solid-phase polymerization compared to PET, resulting in higher productivity [0006], and that compared to other copolymerized PETs, it can provide direct-blow bottles that have superior performance in terms of transparency and low-temperature drop strength [0006], which means that the amount of ethylene glycol in Nakamichi’s diol component in Nakamichi’s copolymer polyester in mol% would have affected suitability of Nakamichi’s copolymer polyester for direct blow bottles, oligomer content of Nakamichi’s copolymer polyester, a polymerization rate and/or oligomer reduction rate of Nakamichi’s copolymer polyester, and/or transparency and/or low-temperature drop strength of direct-blow bottles comprising Nakamichi’s copolymer polyester.
Regarding claim 9, Nakamichi teaches the copolyester of Claim 1 as explained above. Nakamichi teaches that the copolymer polyester is characterized in that contains 0.5 to 10 mol% cyclohexanedimethanol and 1 to 4 mol% diethylene glycol as the diol component [0008, 0011], that examples of cyclohexanedimethanol raw materials include 1,4-cyclohexanedimethanol, and 1,4-cyclohexanedimethanol is usually preferred [0009], and that the copolymerized polyester has a cyclohexanedimethanol content preferably 1 to 7 mol% and more preferably 2 to 4.5 mol% in the total diol components and a diethylene glycol content of preferably 1.5 to 3.5 mol% and more preferably 2 to 3.5 mol% in the total diol components [0011], which reads on wherein said copolyester comprises about 1.5 to about 14 mole % of a combination of diethylene glycol (DEG) residues and 1,4-cyclohexanedimethanol residues (CHDM).
Nakamichi does not teach with sufficient specificity that said copolyester comprises about 4 to about 12 mole % of a combination of diethylene glycol (DEG) residues and 1,4-cyclohexanedimethanol residues (CHDM). Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to optimize the total content of Nakamichi’s 1,4-cyclohexanedimethanol and Nakamichi’s diethylene glycol in Nakamichi’s diol component in Nakamichi’s copolymer polyester to be about 4 to about 12 mol%, such that Nakamichi’s copolymer polyester contains 0.5 to 10 mol% cyclohexanedimethanol and 1 to 4 mol% diethylene glycol as the diol component. The proposed modification would read on wherein said copolyester comprises about 4 to about 12 mole % of a combination of diethylene glycol (DEG) residues and 1,4-cyclohexanedimethanol residues (CHDM) as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for optimizing suitability of Nakamichi’s copolymer polyester for direct blow bottles, for minimizing oligomer content of Nakamichi’s copolymer polyester, for optimizing a polymerization rate and/or oligomer reduction rate of Nakamichi’s copolymer polyester, and/or for optimizing transparency and/or low-temperature drop strength of direct-blow bottles comprising Nakamichi’s copolymer polyester because Nakamichi teaches that the copolymer polyester is characterized in that contains 0.5 to 10 mol% cyclohexanedimethanol and 1 to 4 mol% diethylene glycol as the diol component [0008, 0011], that examples of cyclohexanedimethanol raw materials include 1,4-cyclohexanedimethanol, and 1,4-cyclohexanedimethanol is usually preferred [0009], which means that the total content of Nakamichi’s 1,4-cyclohexanedimethanol and Nakamichi’s diethylene glycol in Nakamichi’s diol component in Nakamichi’s copolymer polyester to be about 4 to about 12 mol%, that the copolymerized polyester has a cyclohexanedimethanol content preferably 1 to 7 mol% and more preferably 2 to 4.5 mol% in the total diol components and a diethylene glycol content of preferably 1.5 to 3.5 mol% and more preferably 2 to 3.5 mol% in the total diol components [0011], that to achieve the objective of their invention, they found that a copolymer polyester containing a certain proportion of cyclohexanedimethanol and diethylene glycol in the constituent components of PET is a copolymer polyester suitable for direct blow bottles [0007], that the object of their invention is to provide a copolymerized polyester that has a low oligomer content and produces fewer oligomer by-products during molding, making it less likely to cause contamination of molds and other components during molding [0006], that it has a faster polymerization rate and oligomer reduction rate during solid-phase polymerization compared to PET, resulting in higher productivity [0006], and that compared to other copolymerized PETs, it can provide direct-blow bottles that have superior performance in terms of transparency and low-temperature drop strength [0006], which means that the total content of Nakamichi’s 1,4-cyclohexanedimethanol and Nakamichi’s diethylene glycol in Nakamichi’s diol component in Nakamichi’s copolymer polyester in mol% would have affected suitability of Nakamichi’s copolymer polyester for direct blow bottles, oligomer content of Nakamichi’s copolymer polyester, a polymerization rate and/or oligomer reduction rate of Nakamichi’s copolymer polyester, and/or transparency and/or low-temperature drop strength of direct-blow bottles comprising Nakamichi’s copolymer polyester.
Regarding claims 11 and 12, Nakamichi teaches the copolyester according to Claim 1 as explained above. Nakamichi teaches that the copolymer polyester [0008] may also contain small amounts of diol components other than ethylene glycol, diethylene glycol, and cyclohexanedimethanol [0025], that examples of diol components include aliphatic diols such as 1,2-propanediol, 1,3-propanediol, 1,4-butanediol, pentamethylene glycol, hexamethylene glycol, and neopentyl glycol [0025], and that the copolymer polyester comprises ethylene glycol as the diol component, and contains 0.5 to 10 mol% cyclohexanedimethanol and 1 to 4 mol% diethylene glycol as the diol component [0008], which reads on wherein the glycol component of the polyester portion of said copolyester further comprises greater than 0 and less than 100 mol% of one or more modifying glycols which are not 2,2,4,4-tetramethyl-1,3-cyclobutanediol, ethylene glycol, diethylene glycol, 1,4-cyclohexanedimethanol, or monopropylene glycol, wherein said modifying glycol is at least one selected from 1,2-propanediol, 1,3-proapnediol, neopentyl glycol, 1,4-butanediol, 1,5-pentanediol, and 1,6-hexanediol.
Nakamichi does not teach with sufficient specificity wherein the glycol component of the polyester portion of said copolyester further comprises up to 10 mole % of one or more modifying glycols which are not 2,2,4,4-tetramethyl-1,3-cyclobutanediol, ethylene glycol, diethylene glycol, 1,4-cyclohexanedimethanol, or monopropylene glycol, wherein said modifying glycol is at least one selected from the claimed group. Before the effective filing date of the claimed invention, one ordinary skill in the art would have found it obvious to use Nakamichi’s diol components other than ethylene glycol, diethylene glycol, and cyclohexanedimethanol that are 1,2-propanediol, 1,3-propanediol, 1,4-butanediol, pentamethylene glycol, hexamethylene glycol, or neopentyl glycol to substitute for a fraction of Nakamichi’s ethylene glycol, diethylene glycol, and cyclohexanedimethanol in Nakamichi’s diol component in Nakamichi’s copolymer polyester, and to optimize the amount of Nakamichi’s diol components other than ethylene glycol, diethylene glycol, and cyclohexanedimethanol to be greater than 0 mol% and less than or equal to 10 mol% in Nakamichi’s diol component in Nakamichi’s copolymer polyester. The proposed modification would read on wherein the glycol component of the polyester portion of said copolyester further comprises up to 10 mole % of one or more modifying glycols which are not 2,2,4,4-tetramethyl-1,3-cyclobutanediol, ethylene glycol, diethylene glycol, 1,4-cyclohexanedimethanol, or monopropylene glycol as claimed, wherein said modifying glycol is at least one selected from 1,2-propanediol, 1,3-proapnediol, neopentyl glycol, 1,4-butanediol, 1,5-pentanediol, and 1,6-hexanediol as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for optimizing suitability of Nakamichi’s copolymer polyester for direct blow bottles, for minimizing oligomer content of Nakamichi’s copolymer polyester, for optimizing a polymerization rate and/or oligomer reduction rate of Nakamichi’s copolymer polyester, and/or for optimizing transparency and/or low-temperature drop strength of direct-blow bottles comprising Nakamichi’s copolymer polyester because Nakamichi teaches that the copolymer polyester [0008] may also contain small amounts of diol components other than ethylene glycol, diethylene glycol, and cyclohexanedimethanol [0025], that examples of diol components include aliphatic diols such as 1,2-propanediol, 1,3-propanediol, 1,4-butanediol, pentamethylene glycol, hexamethylene glycol, and neopentyl glycol [0025], that the copolymer polyester comprises ethylene glycol as the diol component, and contains 0.5 to 10 mol% cyclohexanedimethanol and 1 to 4 mol% diethylene glycol as the diol component [0008], that to achieve the objective of their invention, they found that a copolymer polyester containing a certain proportion of cyclohexanedimethanol and diethylene glycol in the constituent components of PET is a copolymer polyester suitable for direct blow bottles [0007], that the object of their invention is to provide a copolymerized polyester that has a low oligomer content and produces fewer oligomer by-products during molding, making it less likely to cause contamination of molds and other components during molding [0006], that it has a faster polymerization rate and oligomer reduction rate during solid-phase polymerization compared to PET, resulting in higher productivity [0006], and that compared to other copolymerized PETs, it can provide direct-blow bottles that have superior performance in terms of transparency and low-temperature drop strength [0006], which means that the amount of Nakamichi’s diol components other than ethylene glycol, diethylene glycol, and cyclohexanedimethanol in mol% in Nakamichi’s diol component in Nakamichi’s copolymer polyester would have affected suitability of Nakamichi’s copolymer polyester for direct blow bottles, oligomer content of Nakamichi’s copolymer polyester, a polymerization rate and/or oligomer reduction rate of Nakamichi’s copolymer polyester, and/or transparency and/or low-temperature drop strength of direct-blow bottles comprising Nakamichi’s copolymer polyester.
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 1-16 of copending Application No. 18/688,068 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application claims a copolyester comprising a. acid terephthalic residues; b. about 85 to about 96 mole% of ethylene glycol residues; c. about 4 to about 15 mole% of a combination diethylene glycol residues (DEG) and at least one glycol residue selected from 1,4-cyclohexanedimethanol residues (CHDM); and d. a germanium catalyst present in the copolyester at a concentration of 100 to 500 ppm based on elemental germanium; wherein the total mole% of acid residues in the copolyester is 100 and the total mole% of glycol residues in the copolyester is 100 (claim 1), wherein said copolyester has a crystallization half-time of greater than 1 minute at 140°C (claim 16), which reads on a copolyester comprising: a. at least one terephthalate acid residue; b. about 85 to about 96 mole% of ethylene glycol residues; c. about 4 to about 15 mole% of a combination of 1,4- cyclohexanedimethanol residues (CHDM) and diethylene glycol (DEG) residues; and d. a germanium catalyst present in the copolyester at a concentration of about 100 to about 500 ppm based on elemental germanium; wherein the terephthalate monomer is based on the substantially equal diacid equivalents of 100 mole% to diol equivalence of 100 mole% for a total of 200 mole% as claimed, wherein said copolyester has a crystallization half-time of greater than 1 minute at 140°C as claimed.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 8-11, and 15-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 13-19 of copending Application No. 18/688,078 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application claims a copolyester comprising: a. at least one terephthalate monomer residue; b. about 85 to about 96 mole% of ethylene glycol residues; c. about 4 to about 15 mole% of a combination diethylene glycol (DEG) and at least one glycol residue selected from the group consisting of 1,4-cyclohexanedimethanol residues (CHDM), monopropylene glycol residues (MPG), and 2,2,4,4-tetramethyl- 1,3-cyclobutane diol residues (TMCD); and d. a germanium catalyst present in the copolyester at a concentration of about 5 to about 500 ppm based on elemental germanium; wherein the diacid monomer is based on the substantially equal diacid equivalents of 100 mole% to diol equivalence of 100 mole% for a total of 200 mole% (claim 1), wherein said copolyester has a crystallization half life of greater than 1 minute at 140°C (claim 17), which reads on a copolyester comprising: a. at least one terephthalate acid residue; b. about 85 to about 96 mole% of ethylene glycol residues; c. about 4 to about 15 mole% of a combination of 1,4- cyclohexanedimethanol residues (CHDM) and diethylene glycol (DEG) residues; and d. a germanium catalyst present in the copolyester at a concentration of about 5 to about 500 ppm based on elemental germanium; wherein the terephthalate monomer is based on the substantially equal diacid equivalents of 100 mole% to diol equivalence of 100 mole% for a total of 200 mole% as claimed, wherein said copolyester has a crystallization half-time of greater than 1 minute at 140°C as claimed.
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 1 and 3-20 of copending Application No. 18/688,090 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application claims a copolyester comprising: a. terephthalate acid residues; b. about 85 to about 96 mole% of ethylene glycol residues; c. about 4 to about 15 mole% of a combination of diethylene glycol (DEG) residues and at least one glycol residue selected from the group consisting of 1,4-cyclohexanedimethanol residues (CHDM), monopropylene glycol residues (MPG), and 2,2,4,4-tetramethyl-1,3- cyclobutane diol residues (TMCD); and d. a germanium catalyst present in the copolyester at a concentration of about 5 to about 500 ppm based on elemental germanium; wherein the terephthalate monomer is based on the substantially equal diacid equivalents of 100 mole% to diol equivalence of 100 mole% for a total of 200 mole% (claim 1), wherein said copolyester has a crystallization half life of greater than 1 minute at 140°C (claim 17), which reads on a copolyester comprising: a. at least one terephthalate acid residue; b. about 85 to about 96 mole% of ethylene glycol residues; c. about 4 to about 15 mole% of a combination of 1,4- cyclohexanedimethanol residues (CHDM) and diethylene glycol (DEG) residues; and d. a germanium catalyst present in the copolyester at a concentration of about 5 to about 500 ppm based on elemental germanium; wherein the terephthalate monomer is based on the substantially equal diacid equivalents of 100 mole% to diol equivalence of 100 mole% for a total of 200 mole% as claimed, wherein said copolyester has a crystallization half life of greater than 1 minute at 140°C as claimed.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 8-11, and 15-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 10, 14-19, and 30 of copending Application No. 18/688,160 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application claims a copolyester comprising: a. polymerizing 1) at least one terephthalate monomer; 2) about 85 to about 96 mole% of ethylene glycol; and 3) about 4 to about 15 mole% of a combination diethylene glycol (DEG) and at least one glycol residue selected from 1 ,4-cyclohexanedimethanol residues (CHDM); in the presence of a germanium catalyst to produce said copolyester; wherein said germanium catalyst is present in said copolyester at a concentration of about 5 to about 500 ppm based on elemental germanium; wherein the diacid is based on the substantially equal diacid equivalents of 100 mole% to diol equivalence of 100 mole% for a total (claim 1), wherein said copolyester has a crystallization half life of greater than 1 minute at 140°C (claim 18), which reads on a copolyester comprising: a. at least one terephthalate acid residue; b. about 85 to about 96 mole% of ethylene glycol residues; c. about 4 to about 15 mole% of a combination of 1,4- cyclohexanedimethanol residues (CHDM) and diethylene glycol (DEG) residues; and d. a germanium catalyst present in the copolyester at a concentration of about 5 to about 500 ppm based on elemental germanium; wherein the terephthalate monomer is based on the substantially equal diacid equivalents of 100 mole% to diol equivalence of 100 mole% for a total of 200 mole% as claimed, wherein said copolyester has a crystallization half life of greater than 1 minute at 140°C as claimed.
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 1-20 of copending Application No. 18/688,059 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application claims a copolyester comprising: a. terephthalate acid residues; b. about 85 to about 96 mole% of ethylene glycol residues; c. about 4 to about 15 mole% of a combination of diethylene glycol (DEG) residues and at least one glycol residue selected from 1,4--cyclohexanedimethanol residues (CHDM); and d. a germanium catalyst present in the copolyester at a concentration of about 5 to about 500 ppm based on elemental germanium: wherein the terephthalate monomer is based on the substantially equal diacid equivalents of 100 mole% to diol equivalence of 100 mole% for a total of 200 mole% (claims 1, 20), the copolymer according to claim 1 having a crystallization half life of greater than 1 minute at 140°C (claim 20), which reads on a copolyester comprising: a. at least one terephthalate acid residue; b. about 85 to about 96 mole% of ethylene glycol residues; c. about 4 to about 15 mole% of a combination of 1,4- cyclohexanedimethanol residues (CHDM) and diethylene glycol (DEG) residues; and d. a germanium catalyst present in the copolyester at a concentration of about 5 to about 500 ppm based on elemental germanium; wherein the terephthalate monomer is based on the substantially equal diacid equivalents of 100 mole% to diol equivalence of 100 mole% for a total of 200 mole% claimed, wherein said copolyester has a crystallization half life of greater than 1 minute at 140°C as claimed.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Correspondence
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/DAVID T KARST/Primary Examiner, Art Unit 1767
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