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 .
Claim Interpretation
The specification para [0016] is utilized to interpret “living” hinge where it is understood that a hinge that has a flexible structure, meets the requirement of “living”. rCHDM is interpreted to be recycled CHDM.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Salazar Hernandez et al. US2020/0079900 A1 and further in view of Bashir et al. WO2021048336A1.
Regarding claims 1, 3 and 4, Salazar Hernandez discloses (reference claim 8) a polyester resin composition with 90 to 100 mol% terephthalic acid and 90 to 100 mol% ethylene glycol, such that total mol% of each acid and glycol residues are 100 mole%, with inherent viscosity 0.70 to 0.85 dl/g (see para [0068]), which read on the claimed polyester. Salazar Hernandez teaches (para [0076]) the polyester Tm of greater than 240 oC, overlapping the claimed requirement.
Salazar Hernandez discloses injection molded articles (para [0096]) but is silent on the creation of a reclosable lid with a living hinge. Salazar Hernandez adds that the invention may be embodied in other specific forms by skilled in the art (para [0158]). Analogous reference Bashir teaches hinged container cap which can be opened and closed for a long period of time (page 3, lines 21-25) which is derived from a polyester such as polyethylene terephthalate (reference claim 2, page 21). Bashir provides Fig. 2, 3, 4A and 4B with a flexible hinge structure 21 (and groove 22), which meets the requirement of the living hinge. Advantageously, Bashir provides the motivation to generate the hinged cap from the polyester, so that both the cap and the container are made of the same polyester material which leads to easier recycling, and also results in a see-through cap (page 4, lines 27-32; page 8, lines 1-3).
It would have been obvious to one of ordinary skilled in the art before the effective filing date of the invention to have created an injection molded reclosable lid with a living hinge from the polyester of Salazar Hernandez, as taught by Bashir to make the recycling process easier for both the container and the cap.
Regarding claim 2, Bashir teaches (page 23, claim 12) hinged container cap to be transparent, meeting the claimed requirement.
Regarding claim 5, Salazar Hernandez (reference claim 8) teaches incorporation of 1 to 3 mol% cyclohexanedimethanol residues, meeting the claimed requirement.
Regarding claims 6-7, Salazar Hernandez and Bashir are silent on the strength of the living hinge, however due to closeness of the disclosed monomers, and the intrinsic viscosity of the polymer, it would necessarily follow that the hinge provided by the combination of Salazar Hernandez and Bashir would possess the strength values as defined by the claims.
Regarding claim 8, Salazar Hernandez (reference claim 8) teaches inherent viscosity 0.70 to 0.85 dl/g, overlapping the claimed requirement. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 9, Bashir teaches (page 8, line 26), inclusion of recycled PET in the polyester composition, meeting the claimed requirement.
Regarding claim 10, as discussed when addressing claim 1, Salazar Hernandez discloses ethylene glycol. Since the claimed recycled EG(rEG) is chemically indistinguishable from EG, Salaza Hernandez’s disclosure of EG meets the claimed rEG. Applicant is reminded that "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. See MPEP 2113. In the instant case the recycling of EG does not differentiate it chemically from a virgin or unrecycled EG.
Regarding claim 11, since the requirement of CHDM is optional in claim 1, the absence of CHDM in PET, meets the claimed limitation.
Regarding claims 12 and 18, as discussed when addressing claim 1, Salazar Hernandez in view of Bashir, renders the claimed injection molded, reclosable lid with a living hinge, derived from PET which can be recycled, obvious. Salazar Hernandez discloses the required polyester with the required inherent viscosity.
Salazar Hernandez teaches (para [0074]) Tg of the PET to be 81 oC and a haze of less than 15% (para [0079]), reading on the claimed requirements. Salazar Hernandez provides Tm of at least 240 oC (para [0076]), overlapping the claimed requirement. Bashir teaches (page 23, claim 12) hinged container cap to be transparent, meeting the claimed requirement. A lid material derived from PET, would be recyclable in a PET stream.
Salazar Hernandez and Bashir are silent on the average lid thickness, however it would have been obvious to one of ordinary skilled in the art before the effective filing date of the invention to have optimized the lid thickness to the required range in order to decrease the amount of material utilized for the lid, both for minimizing cost and weight and for reducing the future environmental burden.
Regarding claim 13, Salazar Hernandez and Bashir are silent on the strength of the living hinge, however due to closeness of the disclosed monomers, and the intrinsic viscosity of the polymer, it would necessarily follow that the hinge provided by the combination of Salazar Hernandez and Bashir would possess the strength value as defined by the claim.
Regarding claim 14, Salazar Hernandez (reference claim 8) teaches inherent viscosity 0.70 to 0.85 dl/g, overlapping the claimed requirement. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 15, Bashir teaches (page 8, line 26), inclusion of recycled PET in the polyester composition, meeting the claimed requirement.
Regarding claim 16, as discussed when addressing claims 1 and 12, Salazar Hernandez discloses ethylene glycol. Since the claimed recycled EG(rEG) is chemically indistinguishable from EG, Salaza Hernandez’s disclosure of EG meets the claimed rEG. Applicant is reminded that "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. See MPEP 2113. In the instant case the recycling of EG does not differentiate it chemically from a virgin or unrecycled EG.
Regarding claim 17, since the requirement of CHDM is optional in claim 12, the absence of CHDM in PET, meets the claimed limitation.
Regarding claim 19, Salazar Hernandez (reference claim 8) teaches incorporation of 1 to 3 mol% cyclohexanedimethanol residues, meeting the claimed requirement.
Regarding claim 20, Salazar Hernandez teaches (para [0009]) incorporation of 1-10 wt% isophthalic acid to change the crystallization temperature of PET. Since the molecular weight of both terephthalic acid and isophthalic acid are the same, this would lead to 1-10 mol% of isophthalic acid when the acid residues are derived from terephthalic and isophthalic acid, which overlaps the claimed requirement. In the instant case, in the absence of showing of the criticality of the claimed range and owing to the closeness of the disclosed polyester materials, the overlapping range of the prior art is sufficient to support an obviousness rejection.
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 1-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5-6 and 8-11 of U.S. Patent No. 12623420 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because they teach the same reclosable lid with a living hinge derived from identical polyester composition.
Claims 1-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2, 6-8 and 12-19 of copending Application No. 18/708,376 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they teach the same reclosable lid with a living hinge derived from identical polyester composition.
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, 2, 4, 7, 9-11 and 19 of copending Application No. 18/708,370 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they teach the same reclosable lid with a living hinge which is recyclable and is derived from identical polyester compositions.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/S.M.D./
Examiner
Art Unit 1765
/JOHN M COONEY/Primary Examiner, Art Unit 1765
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