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 .
Election/Restrictions
Applicant’s election without traverse of claims 1-11 in the reply filed on 8/3/2026 is acknowledged. Claim 12 was amended to depend on claim 1, and will be examined herein. Claims 13 and 14 are withdrawn.
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 1-12 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. Dependent claims not rejected separately are rejected due to their dependency.
Claim 1 recites the limitation "pelletizing a polyester obtained..." in line 4. There is insufficient antecedent basis for this limitation in the claim. Is another polyester being produced in claim 1 distinct from the polyester produced by the esterification step?
Claim 1 recites the limitation "a polyester pellet obtained..." in line 5. There is insufficient antecedent basis for this limitation in the claim. Is another polyester pellet being produced in claim 1 distinct from the polyester pellet produced by the pelletizing step?
Claim 8 recites the limitation "pelletizing a polyester obtained..." in line 4. There is insufficient antecedent basis for this limitation in the claim. Is another polyester being produced in claim 8 distinct from the polyester produced by the esterification step?
Claim 8 recites the limitation "a polyester pellet obtained..." in line 5. There is insufficient antecedent basis for this limitation in the claim. Is another polyester pellet being produced in claim 8 distinct from the polyester pellet produced by the pelletizing step?
Claim 10 recites the limitation "a resulting polyester" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim. Is another polyester being produced in claim 10 distinct from the polyester produced by the claim 1?
Claim 12 recites the limitation "producing a polyester..." in line 9. There is insufficient antecedent basis for this limitation in the claim. Is another polyester being produced in claim 12 distinct from the polyester produced by claim 1?
Claim 12 recites the limitation "a polyester pellet" in line 10. There is insufficient antecedent basis for this limitation in the claim. Is another polyester pellet being produced in claim 12 distinct from the polyester pellet produced by claim 1?
Claim 12 recites the limitation "a polyester" in line 10. There is insufficient antecedent basis for this limitation in the claim. Is another polyester being produced in claim 12 distinct from the polyester produced by claim 1?
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 11 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 11 states "the separating is separating cyclic dimers using a separator." Claim 11 depends on claim 3. Claim 3 states "separating at least a part of the cyclic dimer in the contact treatment..."
Claim 11 does not further claim 3 since one would separate something with a separator. A separator is the genus; it is the broadest possible term. Claim 11 is just stating an inherent feature of claim 3 that a separator is used for the separating, thus claim 11 does not further limit claim 3. Claim 11 needs to be more specific to the type of separator to be further limiting.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 1-9 and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Maeda et al (US 2013/0211037; herein Maeda, already of record). Regarding claim 1, Maeda teaches:
Conducting an esterification reaction of reacting a diol component containing 1,4- butanediol, with a dicarboxylic acid component (claim 1 and paragraphs 0038-0039, 1, 4-butanediol is used)
Pelletizing a polyester obtained through the esterification reaction (claim 1)
Conducting a contact treatment by bringing a polyester pellet obtained by the pelletizing into contact with a contact treatment liquid (claim 1)
Wherein in the contact treatment, the contact treatment liquid upon the contact with the polyester pellet has a cyclic dimer concentration of not more than 3500 ppm by mass (paragraph 0090, the cyclic dimer is removed from the contact treatment solution, thus there is 0 ppm. One can also take the first instance of the use of the contact treatment solution, where again there would be 0 ppm cyclic dimer)
Regarding claim 2, Maeda teaches:
Wherein a temperature of the contact treatment liquid upon the contact between the polyester pellet and the contact treatment liquid is not less than 25°C and not more than the melting point of the polyester (claim 2)
Regarding claim 3, Maeda teaches:
further comprising separating at least a part of the cyclic dimer in the contact treatment liquid after the contact treatment (paragraph 0090)
Regarding claim 4, Maeda teaches:
Wherein the contact treatment liquid from which at least part of the cyclic dimer have been separated during the separating is used as a second contact treatment liquid in the contact treatment (paragraph 0090, the contact treatment liquid can be recycled and used again, thus a second contact treatment liquid)
Regarding claim 5, Maeda teaches:
Wherein in the contact treatment, the contact treatment liquid upon the contact between the polyester pellet and the contact treatment liquid contains water at 10% by mass to 99% by mass with respect to the total contact treatment liquid (claim 1)
Regarding claim 6, Maeda teaches:
Wherein in the contact treatment, the contact treatment liquid upon the contact between the polyester pellet and the contact treatment liquid comprises a mixture of an alcohol and water (paragraphs 0080-0084, ethanol and/or isopropanol is used with water)
Regarding claim 7, Maeda teaches:
Wherein in the contact treatment, the contact treatment liquid upon the contact with the polyester pellet has a cyclic dimer concentration of not less than 100 ppm by mass (The first instance of the use of the contact treatment solution there would be 0 ppm cyclic dimer)
Regarding claim 8:
See remarks regarding claims 1, 3, 4, and 6.
Regarding claim 9, Maeda teaches:
Wherein the cyclic dimers separated in the separating are supplied to the esterification reaction (paragraph 0090)
Regarding claim 11, Maeda teaches:
Wherein the separating is separating cyclic dimers using a separator (as previously discussed Maeda separates out the cyclic dimers, this would naturally be accomplished via the use of a separator)
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 10 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Maeda. Regarding claim 10:
Wherein a resulting polyester has a cyclic dimer content of not more than 2000 ppm by mass
Maeda teaches a cyclic dimer content of 1 ppm to not more than 6000 ppm, with specific ranges therein, paragraphs 0115 and 0117.
It would have been obvious to one having ordinary skill in the art at the time the invention was filed that since Maeda teaches overlapping cyclic dimer content values that the claimed range is obvious (see MPEP 2144.05 I).
Regarding claim 12:
See remarks regarding claims 3, 6, and 10.
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, 2, 5, and 6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, and 7-11 of U.S. Patent No. 8680229. Although the claims at issue are not identical, they are not patentably distinct from each other because one cannot perform the process of one without performing the process of the other.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892 for references related to polyester production.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TIMOTHY J KENNEDY whose telephone number is (571)270-7068. The examiner can normally be reached Mon-Fri 8am-5pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Galen Hauth can be reached at 571-270-5516. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TIMOTHY KENNEDY/Primary Examiner, Art Unit 1743
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