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 .
DETAILED ACTION
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 1-10 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.
The recited “the temperature” in line 3, “the percent” in line 8 and “the molar ratio” in line 9 of claim 1 should be “a temperature” in line 3, “a percent” in line 8 and “a molar ratio”, respectively, since they would lack an antecedent basis.
In claim 2, the recited “the strain recovery” in line 1, “the initial length” in line 5, “the length of the specimen” in line 7. “the glass transition temperature (Tg)’ in line 9 and “the force” in line 10 should be “a strain recovery”, “a initial length”, “a length of the specimen”. “a glass transition temperature (Tg)’ and “a force”, respectively, since they would lack an antecedent basis.
Other claims depend from the indefinite claim would be also indefinite.
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 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (US 2023/0054241 A1) (Feb. 23, 2023) in view of JP 2016204668 A (Dec. 8, 2016) with Machine translation.
The recited 1,4-cyclohexanedimethanol (CHDM) of claim 1 would encompass a mixture of trans-CHDM and cis-CHDM inherently as evidenced by [0004] of Lee et al.
Lee et al. teach the CHDM comprising 69 to 74 wt.% of trans-CHDM after a reaction step 2 in table 1. Thus, the CHDM taught by Lee et al. would be expected to comprise 26 to 31 wt.% of cis-CHDM. Molecular weights of the trans-CHDM and cis-CHDM are same and thus the wt.% would be equal to the recited % by mole and molar ratio of claim 1.
Lee et al. teach that the 1,4-CHDM is widely used for obtaining environmentally-friendly polyethylene terephthalate in [0003] and thus utilization of the CHDM comprising 69 to 74 wt.% of trans-CHDM and 26 to 31 wt.% of cis-CHDM and ethylene glycol would have been obvious to one skilled in the art.
Lee et al. teach that a higher content of trans-CHDM would be expected to improve property in [0020].
The instant invention further recites Equation 1 regarding an amount of CHDM and a molar ratio of trans-CHDM and CHDM over Lee et al.
Machine translated JP teaches a polyester comprising 83-98 mol% of the CHDM in middle of page 7.
Thus, a polyester comprising 83 mol% of the CHDM comprising 69 wt.% or 71 wt.% of trans-CHDM and 29 wt.% or 31 wt.% of cis-CHDM in examples 2 and 3 of the Table 1, respectively, taught by Lee et al. would make the recited Equation obvious.
For example, 83 mol% of the CHDM comprising 69 wt.% of trans-CHDM and 31 wt.% of cis-CHDM would yield a value of 57.27 (X being 83 mol% of the CHDM x Y (0.69)) falling within scope of the Equation 1.
Thus, it would have been obvious to one skilled in the art before the effective filing date of invention to obtain a polyester a mixture of the trans-CHDM and cis-CHDM taught by the examples 2 or 3 of Lee et al. with the CHDM being 83 mol% taught by JP since polyester comprising 83 mol% of the CHDM is known as taught by JP and since the mixture of the trans-CHDM and cis-CHDM comprising a higher wt.% (i.e., mol%) is known as taught by Lee et al. absent showing otherwise.
Selection of a known material based on its suitability for its intended use is prima facie obvious, see Sinclair & Carroll Co. v. Interchemical Corp., 325 US 327, 65 USPQ 297 (1945). MPEP 2144.07.
The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. KSR Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). MPEP 2141.
Regarding claims 2-3 and 5-6, the above discussed polyester of Lee et al. and JP would be expected to meet the recited properties since it would fall within scope of the Equation 1 of claim 1. Lee et al. teach that a higher content of trans-CHDM would be expected to improve property in [0020].
Regarding claim 4, the CHDM comprising 69 to 74 wt.% of trans-CHDM after a reaction step 2 in table 1 taught by Lee et al. would meet the recited ratio of claim 4.
Further regarding claim 6, English abstract of JP teaches an intrinsic viscosity (IV) of 0.6 to 1.5 dL/g which would make claim 6 obvious.
Regarding claims 7 and 8, Lee et al. teach that the 1,4-CHDM is widely used for obtaining environmentally-friendly polyethylene terephthalate in [0003] and thus further utilization of the recited terephthalic acid of claim 7 and ethylene glycol of claim 8 would have been obvious.
Regarding claim 9, machine translated JP teaches a polyester comprising 83-98 mol% of the CHDM in middle of page 7 which would make claim 9 obvious.
Regarding claim 10, machine translated JP teaches a polyester film in abstract which would meet the recited article of claim 10.
Claims 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (US 2023/0054241 A1) (Feb. 23, 2023) in view of JP 2016204668 A (Dec. 8, 2016) with Machine translation as applied to claims 1-10 above, and further in view of CA 3116978 A1 (April 30, 2020).
Further regarding alternative diacids and diols of claims 7-8, CA teaches the art well-known diacids and diols for obtaining polyesters in claims 11 and 17, respectively.
Thus, it would have been obvious to one skilled in the art before the effective filing date of invention further to utilize the art well-known diacids and diols for obtaining polyesters taught by CA in Lee et al. and JP thereof since all teach polyesters absent showing otherwise.
Selection of a known material based on its suitability for its intended use is prima facie obvious, see Sinclair & Carroll Co. v. Interchemical Corp., 325 US 327, 65 USPQ 297 (1945). MPEP 2144.07.
The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. KSR Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). MPEP 2141.
Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over KR 10-2018-0129438 (Dec. 5, 2018) with a short machine translation.
KR teaches a polyester comprising 100 mol.% of terephthalic acid and 100 mol.% of 1,4-CHDM in [0025]. Machine translated KR teaches that the polyester contains greater than or equal to 60 mol.% of trans-1,4-cyclohexanedimethanol based on 100 mol.% of 1,4-cyclohexanedimethanol at page 2.
For example, the recited X of the Equation 1 of claim 1 should be 100 % by mole of the 1,4-cyclohexanedimethanol in order to meet the recited Equation 1 of claim 1 based on 60 mol.% of trans-1,4-cyclohexanedimethanol taught by KR. Such situation would yield a value of 60 meeting the Equation 1.
Thus, it would have been obvious to one skilled in the art before the effective filing date of invention to obtain a polyester obtained from 100 mol.% of terephthalic acid and 100 mol.% of 1,4-CHDM comprising 60 mol.% of trans-1,4-cyclohexanedimethanol based on 100 mol.% of 1,4-cyclohexanedimethanol in KR since KR teaches such situation absent showing otherwise.
Regarding claims 2-3 and 5-6, the above discussed polyester of KR would be expected to meet the recited properties since it would fall within scope of the Equation 1 of claim 1.
Regarding claim 4, the 1,4-CHDM comprising 60 mol.% of trans-1,4-cyclohexanedimethanol based on 100 mol.% of 1,4-cyclohexanedimethanol CHDM would meet the recited ratio of claim 4 since the CHDM is known to comprise a mixture of trans and cis isomers inherently.
Regarding claim 7, machine translated KR teaches terephthalic acid at page 2.
Regarding claim 8, machine translated KR teaches a polyester A (SKYPURA 0302HC by SK Chemical) comprising 1,4-CHDM with 70-80 mol.% of trans isomer and ethylene glycol (EG) in [0085] and thus further utilization of ethylene glycol of claim 8 would have been obvious. Regarding the Equation of claim 1, KR teaches a mixture of 1,4-CHDM and EG and thus 75-85 mol.% of 1,4-CHDM with 70-80 mol.% of trans isomer and 15-25 mol.% of EG would yield a value of 60 meeting the Equation 1 for example. When patentability is predicated upon a change in a condition of a prior art composition, such as a change in concentration or in temperature, or both, the burden is on Applicant to establish with objective evidence that the change is critical, i.e., it leads to a new unexpected result. It is not inventive to discover the optimum or workable ranges by routine experimentation when the general conditions of a claim are disclosed in the prior art. See In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); In re Aller, 220 F.2d 454, 456 (CCPA 1955). MPEP 2144.05.
Regarding claim 9, machine translated KR teaches 60 mol.% of trans-1,4-cyclohexanedimethanol based on 100 mol.% of 1,4-cyclohexanedimethanol at page 2
Regarding claim 10, machine translated KR teaches a molded product at page 1.
Claims 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over KR 10-2018-0129438 (Dec. 5, 2018) with a short machine translation as applied to claims 1-10 above, and further in view of CA 3116978 A1 (April 30, 2020).
Further regarding alternative diacids and diols of claims 7-8, CA teaches the art well-known diacids and diols for obtaining polyesters in claims 11 and 17, respectively.
Thus, it would have been obvious to one skilled in the art before the effective filing date of invention further to utilize the art well-known diacids and diols for obtaining polyesters taught by CA in KR since all teach polyesters absent showing otherwise.
Selection of a known material based on its suitability for its intended use is prima facie obvious, see Sinclair & Carroll Co. v. Interchemical Corp., 325 US 327, 65 USPQ 297 (1945). MPEP 2144.07.
The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. KSR Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). MPEP 2141.
Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Oh et al. (KR 20230095526 A (June 29, 2023) (Dec. 5, 2018) with equivalent Oh et al. (EP 4455185 A1) (Oct. 30, 2024) in view of Lee et al. (US 2023/0054241 A1) (Feb. 23, 2023).
Although the instant application was filed within one year of a publication date of KR (June 29, 2023), KR would be available under 35 U.S.C. 102(a) since applicant failed to provide any evidence that Exceptions under 35 U.S.C. 102(b) would apply. Note that the inventive entity of the instant application is different from that of KR due different coinventors.
The front page of KR teaches that KR was also published as EP 4455185 A1 and thus the examiner uses the EP as an English translation of KR.
Oh et al. teach various reactants and % by mole thereof in [0008-0010].
Oh et al. teach a polyester obtained from 12.3 moles of terephthalic acid, 3.1 moles of isosorbide, 8.9 moles of cyclohexanedimethanol and 2.8 moles of ethylene glycol in Example 12 ([0138-0139]) yielding 76 % by mole of CHDM.
Oh et al. do not teach an amount of trans-CHDM.
The recited 1,4-cyclohexanedimethanol (CHDM) of claim 1 would encompass a mixture of trans-CHDM and cis-CHDM inherently as evidenced by [0004] of Lee et al.
Lee et al. teach the CHDM comprising 69 to 74 wt.% of trans-CHDM after a reaction step 2 in table 1.
Thus, utilization of the art known CHDM comprising a mixture of trans- and cis-isomers of Lee et al. in Oh et al. would have been obvious. Selection of a known material based on its suitability for its intended use is prima facie obvious, see Sinclair & Carroll Co. v. Interchemical Corp., 325 US 327, 65 USPQ 297 (1945). MPEP 2144.07.
The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. KSR Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). MPEP 2141.
Thus, utilization of the CHDM comprising 69 to 74 wt.% of trans-CHDM taught by Lee et al. in the Example 2 comprising 76 % by mole of CHDM of Oh et al. would yield a value of the recited Equation 1 of claim 1 being 52.44-56.26.
Thus, it would have been obvious to one skilled in the art before the effective filing date of invention to utilize the art known CHDM comprising a mixture of trans- and cis- isomer taught by Lee et al. in Oh et al. since Oh et al. teaches utilization of the CHDM and since the CHDM is known to comprise a mixture of isomer as taught by Lee et al. absent showing otherwise.
Regarding claims 2-3 the above discussed polyester of Oh et al. and Lee et al. would be expected to meet the recited properties since it would fall within scope of the Equation 1 of claim 1. Lee et al. teach that a higher content of trans-CHDM would be expected to improve property in [0020].
Regarding claim 4, the CHDM comprising 69 to 74 wt.% of trans-CHDM after a reaction step 2 in table 1 taught by Lee et al. would meet the recited ratio of claim 4.
Further regarding claim 5, Oh et al. teach an impact strength of 800 J/m or more for 3.2 mm thickness sample in claim 5.
Regarding claim 6, Oh et al. teach an intrinsic viscosity (IV) of 0.64 to 0.78 dl/g in claim 6.
Regarding claim 7, Oh et al. teach the instant dicarboxylic acids in [0057-0058].
Regarding claim 8, Oh et al. teach the instant diols in claim 7.
Regarding claim 9, Lee et al. teach instanr ratio in Table 1.
Regarding claim 10, Oh et al. teach automobile interior parts in [0002] which would be an article.
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/TAE H YOON/ Primary Examiner, Art Unit 1762
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