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 .
Claim Objections
Claim 5 is objected to because of the following informalities: in claim 5, line 1, delete “further”. Appropriate correction is required.
Claim 7 is objected to because of the following informalities: in claim 7, line 2, amend “comprises” to “further comprises”. 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 1-19 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 defines a coefficient of extrusion of the polyester copolymer based on the content of BHET present in the polyester and the content of residual monomers (BHET, diols, and diacids). However, it is unclear how to determine said parameters and the claims do not contain a method and means used to determine A, B, C, and D used in the coefficient of extrusion formula. In the specification, gas chromatography was used, and the total area of the collected materials was quantified (area/g). However, the area/g of oligomers detected in GC means materials commonly having a molecular weight of 1000 or less and therefore includes residual monomers such as residual acids, residual diols, and residual BHET. As a result, the claim scope is unclear with respect to the measurement and the units (area/g) used to describe the oligomers.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3, 6-13, and 16-19 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by KR-20220055192 to Hwang et al. (U.S. Patent Pub. No. 2024/0002593 will be used for citations).
As to claims 1-3 and 6-8, Hwang discloses a polyester copolymer polymerized from 1269.7 grams of recycled bis-2-hydroxyethyl terephthalate, 2361.8 grams of terephthalic acid or isophthalic acid, 673.5 grams of ethylene glycol, and 221.5 grams of cyclohexanedimethanol (Example 3). The content of each component is:
rBHET: 28.5%
TA: 52.2%
EG: 14.8%
CHDM: 4.88%. Extrusion coefficient is not taught within Hwang. However, because Hwang teaches similar reaction conditions and components, the claimed extrusion coefficient values are deemed inherent.
As to claim 9, Hwang discloses an intrinsic viscosity of 0.5 to 1.0 dl/g (0042).
As to claims 10-13 and 16-19, Hwang discloses articles including films comprising the polyester copolymer (0002).
Claims 1-3, 5-6, and 8-19 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by WO-2021/080777 to Peters et al.
As to claims 1-3, 5-6, 8, and 10-19, Peters discloses an extruded heat shrinkable film (0011) comprising a copolyester copolymer polymerized from 53.6 grams of phthalic acid, 62.21 grams of ethylene glycol, 2.97 grams of diethylene glycol, 11.52 grams of CHDM, and 18.86 grams of recycled bis-2(2-hydroxyethyl) terephthalate (00041, 00099). Extrusion coefficient is not taught within Peters. However, because Peters teaches similar reaction conditions and components, the claimed extrusion coefficient values are deemed inherent. The content of RBHET is 12.7%.
As to claim 9, Peters discloses an intrinsic viscosity of 0.6 to 0.9 dL/g (00084).
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 1-3, 6-13, and 16-19 are rejected under 35 U.S.C. 103 as being unpatentable over KR-20220055192 to Hwang et al. (U.S. Patent Pub. No. 2024/0002593 will be used for citations).
As to claims 1-3 and 6-8, Hwang discloses a polyester copolymer polymerized from 1269.7 grams of recycled bis-2-hydroxyethyl terephthalate, 2361.8 grams of terephthalic acid or isophthalic acid, 673.5 grams of ethylene glycol, and 221.5 grams of cyclohexanedimethanol (Example 3). The content of each component is:
rBHET: 28.5%
TA: 52.2%
EG: 14.8%
CHDM: 4.88%. Extrusion coefficient is not taught within Hwang. However, the reference teaches all of the claimed ingredients. Therefore, the claimed effects and physical properties, i.e. extrusion coefficient values would implicitly be achieved by a composite with all the claimed ingredients. If it is the applicants’ position that this would not be the case: (1) evidence would need to be provided to support the applicants’ position; and (2) it would the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
As to claim 9, Hwang discloses an intrinsic viscosity of 0.5 to 1.0 dl/g (0042).
As to claims 10-13 and 16-19, Hwang discloses articles including films comprising the polyester copolymer (0002).
Claims 1-3 and 5-19 are rejected under 35 U.S.C. 103 as being unpatentable over WO-2021/080777 to Peters et al.
As to claims 1-3, 5-6, 8, and 10-19, Peters discloses an extruded heat shrinkable film (0011) comprising a copolyester copolymer polymerized from 53.6 grams of terephthalic acid, 62.21 grams of ethylene glycol, 2.97 grams of diethylene glycol, 11.52 grams of CHDM, and 18.86 grams of recycled bis-2(2-hydroxyethyl) terephthalate (00041, 00099). Extrusion coefficient is not taught within Peters. However, because Peters teaches similar reaction conditions and components, the claimed extrusion coefficient values are deemed inherent. The content of RBHET is 12.7%.
Extrusion coefficient is not taught within Hwang. However, the reference teaches all of the claimed ingredients. Therefore, the claimed effects and physical properties, i.e. extrusion coefficient values would implicitly be achieved by a composite with all the claimed ingredients. If it is the applicants’ position that this would not be the case: (1) evidence would need to be provided to support the applicants’ position; and (2) it would the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
As to claim 7, Peters discloses wherein PTA may further comprise additional diacids such as isophthalic acid or 1,4-cyclohexanedicarboxylic acid (00031).
As to claim 9, Peters discloses an intrinsic viscosity of 0.6 to 0.9 dL/g (00084).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over WO-2021/080777 to Peters et al. in view of U.S. Patent Pub. No. 2022/0389214 to Lee et al.
As to claim 4, Peters discloses an extruded heat shrinkable film (0011) comprising a copolyester copolymer polymerized from 53.6 grams of terephthalic acid, 62.21 grams of ethylene glycol, 2.97 grams of diethylene glycol, 11.52 grams of CHDM, and 18.86 grams of recycled bis-2(2-hydroxyethyl) terephthalate (00041, 00099). Extrusion coefficient is not taught within Peters. However, because Peters teaches similar reaction conditions and components, the claimed extrusion coefficient values are deemed inherent. The content of RBHET is 12.7%.
Peters does not expressly disclose the diols in claim 4.
However, within the same field of endeavor Lee discloses a polyester resin blend comprising recycled PET and a diol mixture that includes 4-(hydroxymethyl)cyclohexyl 4-(hydroxymethyl) cyclohexanecarboxylate (0009).
At the time of filing it would have been obvious to substitute CHDM of Peters with 4-(hydroxymethyl)cyclohexyl 4-(hydroxymethyl) cyclohexanecarboxylate taught in Lee to improve film transparency and shrinkage (0018).
Conclusion
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/MICHAEL L LEONARD/Primary Examiner, Art Unit 1763
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