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 1-6 are pending as amended on 4/19/2024.
Election/Restrictions
Applicant’s election without traverse of species “a” (such as exemplified in Examples 1-5) wherein R1 is a branched alkyl group and R2 is CH3 in the reply filed on 10/1/2026 is acknowledged.
Claims 4 and 5 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.
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) 1-3 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Asahi (JP S6474217A; cited as D1 on the ISR; references below are made to the copy of original Applicant provided on 5/17/2024 and to the machine translation provided with the restriction requirement on 8/3/2026).
As to claims 1-3 and 6, Asahi discloses a polyester polyol obtained by subjecting a lactone to ring opening polymerization using an alcohol as initiator, having a formula as shown on page 2, copied below:
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In the formula above, “A” is a mono to trivalent alcohol residue, B is a lactone residue, and C is a monovalent carboxylic acid residue (see abstract).
Asahi discloses β-methyl-δ-valerolactone as the most preferred lactone because it has an asymmetric carbon atom, lower crystallinity, is liquid even with high molecular weight, and easily industrially available. Among examples of initiators, Asahi names monohydric alcohols such as propyl alcohol and octyl alcohol, dihydric alcohols such as propylene glycol, butanediol, and trihydric alcohols such as trimethylolpropane and glycerol (see translation paragraph bridging pp 1-2). Asahi does not specify an isomer of propyl alcohol or octyl alcohol, and therefore, one having ordinary skill in the art would have immediately envisaged both linear (e.g., n-propanol, n-octanol) and branched (e.g., isopropanol, 2-ethylhexanol) isomers of propyl alcohol and octyl alcohol as being encompassed by Asahi’s list of suitable initiators.
Asahi further discloses blocking the terminal hydroxyl group of the polyester polyol by reaction with an ester of a monocarboxylic acid, such as acetates (methyl acetate), propionates and benzoates (p 2, top half).
The structure of a polymer resulting from the ring-opening polymerization of β-methyl-δ-valerolactone utilizing any of the above-named alcohols and any of the above-named terminators has a structure according to instant formula I, as recited in claim 1. For example, a polymer resulting from the ring-opening polymerization of β-methyl-δ-valerolactone with octyl alcohol and blocked with methyl acetate has a structure according to instant formula I wherein R1 is a linear or branched alkyl group having 8 carbon atoms (derived from octyl alcohol) and R2 is a linear alkyl group having 1 carbon atom (derived from methyl acetate).
With regard to instant “n,” Asahi teaches a weight average molecular weight of 350 or more (p 1, lower half) and teaches that the molecular weight is preferably large from the viewpoint of non-migration. However, the ability of the polymer to plasticize lowers and the production cost increases at larger molecular weights, and therefore the molecular weight is 100,000 or less (p 2, lower half). It would have been obvious to the person having ordinary skill in the art, therefore, to have to have selected any molecular weight within Asahi’s range of 350 to 100,000, including a molecular weight corresponding to a number of repeating units (n) within a range of 8 to 1000. 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.
Claim(s) 1-3 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Asahi (JP S6474217A; cited as D1 on the ISR; references below are made to the copy of original Applicant provided on 5/17/2024 and to the machine translation provided on 8/3/2026) in view of Fowler et al (US 2977385).
As to claims 1-3 and 6, Asahi discloses a polyester polyol which is suitable as a plasticizer for vinyl chloride resins (translation top of p 1) obtained by subjecting a lactone to ring opening polymerization using an alcohol as initiator, having a formula as shown on page 2, copied below:
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In the formula above, “A” is a mono to trivalent alcohol residue, B is a lactone residue, and C is a monovalent carboxylic acid residue (see abstract).
Asahi discloses β-methyl-δ-valerolactone as the most preferred lactone because it has an asymmetric carbon atom, lower crystallinity, is liquid even with high molecular weight, and easily industrially available. Among examples of initiators, Asahi names monohydric alcohols such as propyl alcohol and octyl alcohol, dihydric alcohols such as propylene glycol and butanediol, and trihydric alcohols such as trimethylolpropane and glycerol (see translation paragraph bridging pp 1-2). Asahi further discloses blocking the terminal hydroxyl group of the polyester polyol by reaction with an ester of a monocarboxylic acid, such as acetates (methyl acetate), propionates and benzoates (p 2, top half).
Asahi fails to teach specific isomers of the named alcohol initiators and therefore fails to name a monohydric alcohol initiator having a branched alkyl group.
Like Asahi, Fowler teaches reacting lactones with alcohol initiators to prepare adducts that include polyesters with widely varying and readily controllable molecular weight, and which are eminently useful as plasticizers for vinyl halide and other resins (col 1, lines 15-34). Like Asahi, Fowler teaches that suitable initiators include both monofunctional alcohol initiators and polyfunctional alcohol initiators (col 2, lines 41-58), and names several examples of both linear and branched isomers of alcohol initiators, including propanol, isopropanol, 1-octanol and 2-ethyl-1-hexanol (col 2, lines 59-65).
Considering Fowler’s disclosure, both the linear and branched isomers of the monohydric alcohols named by Asahi were known in the art as initiators which react with lactone in order to form polyesters suitable as plasticizers for vinyl halide resins. When reacting lactone with an alcohol initiator in order to form a polyester as taught by Asahi, one of ordinary skill in the art could have selected any monohydric alcohol initiator known to provide a plasticizing polyester upon reaction with lactone, and the result would have been predictable. The resulting plasticizing polyester would have a polyester backbone formed from lactone residues and an end group moiety derived from the initiator, and the structure of the end group moiety would correspond to the structure of the initiator. It would have been obvious to the person having ordinary skill in the art, therefore, to have formed a polyester polyol by subjecting β-methyl-δ-valerolactone to ring opening polymerization using propanol or octanol as an initiator, as taught by Asahi, by selecting any known isomer of propanol or octanol as Asahi’s initiator, including isopropanol or 2-ethyl-1-hexanol as taught by Fowler, thereby arriving at a polyester having a branched alkyl group corresponding to the structure of the initiator at one terminal thereof. Case law has established that it is prima facie obvious to substitute one known element for another to obtain predictable results. KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398 (2007). MPEP 2143, rationale (B).
The structure of a polymer resulting from the ring-opening polymerization of β-methyl-δ-valerolactone utilizing isopropanol or 2-ethyl-1-hexanol as initiator and methyl acetate as terminator, as suggested by modified Asahi, has a structure according to instant formula I wherein R1 is a branched alkyl group having 3 or 8 carbon atoms and R2 is a linear alkyl group having 1 carbon atom (derived from methyl acetate).
With regard to instant “n,” Asahi teaches a weight average molecular weight of 350 or more (p 1, lower half) and teaches that the molecular weight is preferably large from the viewpoint of non-migration. However, the ability of the polymer to plasticize lowers and the production cost increases at larger molecular weights, and therefore the molecular weight is 100,000 or less (p 2, lower half). It would have been obvious to the person having ordinary skill in the art, therefore, to have to have selected any molecular weight within Asahi’s range of 350 to 100,000, including a molecular weight corresponding to a number of repeating units (n) within a range of 8 to 1000. 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 1-3 and 6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2, 9 and 10 of copending Application No. 18/703155 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
Claims 2, 9 and 10 of the copending application recite a β-methyl-δ-valerolactone polymer according to the same formula (I) which is recited in the instant claims. The copending claims differ in scope from the instant claims because the instant claims contain a proviso which applies when R1 is a group in which one H atom bonded to a carbon at a terminal of an ethyl group is substituted with (X). The copending claims do not recite this proviso. Therefore, there are some polymers of β-methyl-δ-valerolactone which fall within the scope of the copending claims but do not fall within the scope of the instant claims. However, like the copending claims, the instant claims encompass polymers according to Formula I wherein R1 is hydrogen, or a branched alkyl group, or a linear alkyl group. The instant proviso does not apply to such polymers. Polymers according to Formula I wherein R1 is hydrogen, or a branched alkyl group, or a linear alkyl group, as recited in copending claims 2, 9 and 10, fall within the scope of the instant claims. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-3 and 6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of copending Application No. 19/478164 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
Claim 1 of the copending application recites a composition comprising a β-methyl-δ-valerolactone polymer represented by a Formula (I-a). Copending formula I-a is encompassed by formula (I) recited in instant claims 1-3 and 6 (when instant R1 is a branched alkyl group having 5 carbon atoms and instant R2 is linear alkyl having 1 carbon atom).
In copending formula I-a, “n” is defined as 5 to 20, while in instant formula (I), “n” is defined as 8 to 1000. The instant and copending ranges for “n” overlap. It would have been obvious to the person having ordinary skill in the art to have selected any value of “n” within the range recited in copending claim 1, including a value within the presently claimed range, in order to form a resin composition as recited in copending claim 1. 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. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RACHEL KAHN whose telephone number is (571)270-7346. The examiner can normally be reached Monday to Friday, 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at 571-272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RACHEL KAHN/Primary Examiner, Art Unit 1766
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