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 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.
Claims1-8 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 wherein the inert solvent is added “in an amount of 2.5-100 wt % with regard to the total weight of diols and dicarboxylic acids…” However, this appears indefinite because if there is 100 wt% solvent, then there would be 0% of the monomers. Thus, it is unclear if the 100 wt% inert solvent is meant to be in regard to a total of the solvent or to a total of the solvent, diols and dicarboxylic.
Regarding claim 4, the phrase "in particular" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 5, the phrases of "in particular,” “preferably,” and “especially,” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 6, the phrase "preferred" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claims 2, 3, and 8, are dependent claims which fail to alleviate the issues above.
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.
Claim(s) 1, 3, 5-7, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wu et al., “Lipase-Catalyzed Fully Aliphatic Copolyesters Based on Renewable Isohexide Isomers,” ACS Sustainable Chemistry and Engineering, vol. 9, pp. 1599-1612 (2021). (hereinafter Wu).
Regarding claims 1, 3, 5-7, Wu teaches a polymerization process of polymerizing diethyl succinate, isosorbide, isomannide, and 1,4-butandiol in a solvent by an enzyme CALB-catalyzed esterification (Lipase immobilized from Candida antarctica) with a condensor (page 1601 and 1604), wherein the solvent is diphenyl ether (b.p. 258 deg C), and forms a polyester (See Table1, entry 4, page 1603), with a Mn of 15000 g/mol or more with longer reaction times and/or enzyme amount. (See Fig. 1, page 1603). The reaction occurs at temperature of 80-95 deg C (page 1601), and a high vacuum is used to remove condensation byproducts. (Table 1, note b, page 1603).
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.
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) 1-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 5,959,066 A to Charbonneau et al., (hereinafter Charbonneau).
Regarding claims 1-7, Charbonneau teaches a polyester polymer and method for making the polyester prepared by combining in a reactor a monomer with a terephthaloyl moiety, a monomer with an ethylene glycol moiety, a monomer with an isosorbide moiety, and a monomer containing a diol moiety (See abstract). The monomers are combined and heated gradually with mixing with a catalyst to a temperature in the range of 260-300 deg C (col 2, ln 58-67). Specifically, in Example 5, dimethyl terephthalate, isosorbide, ethylene glycol, catalysts and additives, are mixed together in a reactor with a condenser, heated to 250-275 deg C and reacted for 60 minutes. (col 13, ln 20-34). The dimethyl terephthalate mets the aromatic dicarboxylic diester of claim 4, isosorbide meets the secondary diol of claims 1 and 3, and ethylene glycol meets further diol. After reaching 275 deg C, the pressure inside the reactor is reduced over a period of 240 minutes and a polymer is formed and collected. (col 13, ln 34-54). Charbonneau teaches an ester interchange reaction occurs in the first part of the reaction (col 7, ln 35 to col 8, ln 7), and a polycondensation occurs in the second part of the reaction (col 8, ln 23-55). The above meets the claimed polymerization process. Charbonneau further teaches the additive added has a boiling point of 170-240 deg C to aid in the heat transfer within the reaction medium and to help retain volatile components in the vessel, is inert and does not react with the alcohols, and examples of the additives include diphenyl ether or diphenyl sulphone, and is further used in an amount of 0.05 to 10 wt% of the reaction mixture (col 8, ln 8-22), which meets the claimed inert solvent and overlaps and meets the claimed range. (See MPEP 2144.05, “where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists”). Charbonneau also teaches that a high molecular weight polyester is obtained with an inherent viscosity of 0.8 dL/g or higher (col 4, ln 39-55), wherein the inherent viscosity is calculated from the equation log(IV)=0.5856xlong(Mw)-2.9672 (col 4, ln 66). This correlates to a Mw of 78,432.8 g/mol or higher for the polyester which meets the claimed range. Charbonneau further teaches the diols may further include diethylene glycol monomer units (col 3, ln 58-67), which meets claim 5.
It would have been obvious to one ordinarily skilled in the art before the effective date of the claimed invention to use the diphenyl ether or diphenyl sulphone as additives in the Examples of Charbonneau because Charbonneau teaches the additive added aids in the heat transfer within the reaction medium and helps retain volatile components in the vessel and does not react with the alcohols. (col 8-23).
Allowable Subject Matter
Claim 8 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The above prior art does not teach wherein the inert solvent (d) is added from the start of the (trans)esterification reaction, and in addition, more of the inert solvent (d) is continuously supplied to the reaction mixture during the (trans)esterification step.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HA S NGUYEN whose telephone number is (571)270-7395. The examiner can normally be reached Mon-Fri, Flex schedule 7:30am-4:00pm.
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/HA S NGUYEN/Primary Examiner, Art Unit 1766
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