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
New claims 21 and 22 are dependent upon method claims 1 and 11, which were previously restricted and are currently withdrawn. As these new claims are directed towards non-elected claims that have been withdrawn, claims 21 and 22 are withdrawn.
Status of Claims
The examiner acknowledges the amendments to claims 16 and 20 as well as the addition of claims 21-23. Applicant has further cancelled previously withdrawn claim 10. While the applicant lists claim 19 as amended, the claim appears identical to the previously submitted claim 19. Claims 1-9, 11-23 are pending with claims 1-9, 11-15, and 21-22 being withdrawn. Claims 16-20 and 23 will be examined.
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.
Claim 3 is 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.
Regarding Claims 23,
The applicant states that a chain extender elongates rPET polymer chains via supramolecular bonding. However, supramolecular bonding is not a term defined in the art and is not further defined in the specification. As a result, it is unclear what bond the applicant intends such a compound to form. As such, it cannot be determined what constitutes such a chain extender, as this term is used in the art to refer to compounds that connect polymer chains via a covalent bond whereas the instant claim language appears to define the interaction as something other than a covalent bond. Therefore, it cannot be determined how the applicant intends for such compounds to function and as such, it cannot be determined what compounds this language intends the chain extender to be. The applicant is required to revise the claim language to define the interaction that is intended to remove the ambiguity. For the purposes of examination, any polyester will be considered to be a chain extender.
It is noted that this language also appears in withdrawn claims 21 and 22.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 16-20 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Hwang (US 20220363817).
Regarding Claim 16,
Hwang teaches a composition that contains polyethylene terephthalate (PET), which can be virgin and/or recycled (Abstract). With regard to the dynamic viscosity, Hwang teaches compositions that are substantially similar to those of the instant application and contain the same components used in overlapping amounts. As such, it would logically follow that compositions of Hwang would have similar properties, including viscosity, as those of the instant application. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01.II.
With regard to the injection molding, the language of the claim represents an intended use, as it does not impose any alterations on the material other than the material be capable of being injection molded to form a hard good and is therefore not given patentable weight. However, Hwang teaches that the composition provides high-quality molded articles (Abstract, Paragraph 1, Paragraph 72). While Hwang does not explicitly teach injection molding, as Hwang does teach the process of molding generally, one of ordinary skill in the art would recognize that as PET is known in the art to be useful for injection molding, it would have been obvious prior to the effective filing date of the instant application to have used the composition taught by Hwang to form an article via injection molding.
Regarding Claims 17 and 23,
Hwang teaches a polyester resin blend that includes a polyester resin (Paragraphs 5-6) as well as polyethylene terephthalate (PET) that can be virgin or recycled (Paragraph 9). Hwang further teaches mixtures of virgin and recycled PET can be used (Paragraph 26). Hwang teaches that waste plastics account for a high fraction of marine pollution and work is being conducted to improve reuse of these waste plastics (Paragraph 2), affording the ordinarily skilled artisan motivation to use recycled PET in the composition. It would therefore have been obvious prior to the effective filing date of the instant application to have incorporated virgin and recycled PET into the composition.
Hwang additionally teaches the use of a polyester resin other than PET (Paragraphs 5-6) and that this polyester serves to improve processability of molded articles (Paragraph 19) and is also valuable in mixtures of virgin and recycled PET (Paragraph 25). As the applicant appears to be using a non-standard definition of a chain extender which involves intermingling as opposed to chemical reaction (Specification Paragraph 43), the polyester resin taught by Hwang would meet the requirement as this polymer interacts with the PET polymer chain to make the composition more easily processable.
Regarding Claims 18 and 19,
Hwang teaches that the ratio between PET and the polyester resin can be from 99:1 to 1:99 (Paragraph 68) and that the inclusion of the polyester resin allows for the manufacture of molded articles that lack blemishes without the need of additional additives, even when incorporating up to 50% recycled PET relative to the total amount of PET in the composition (Paragraph 67). By disclosing the use of up to 50% recycled PET, the composition of Hwang meets the requirements of the instant claims. Hwang teaches the incorporation of a polyester resin in a range that overlaps with the range of the instant claim. One of ordinary skill in the art would recognize that because Hwang teaches the use of this polyester resin to improve the processability of the composition (Paragraph 9), the amount used would be determined based upon obtaining a processability window suitable for the desired purpose. As such, it would have been obvious prior to the effective filing date of the instant application to have used any amount of this polymer required to obtain the desired processability and it would further have been obvious to have selected the overlapping portion of the ranges because the selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
Regarding Claim 20,
Hwang teaches that the composition can have a melting temperature of 220 to 250 °C (Paragraph 69), which overlaps with the range of the instant claim. One of ordinary skill in the art would recognize that different use cases require differing temperatures at which the article would be used and would seek to adjust the melting temperature in order to ensure that the article remains stable at those temperatures. As such, the ordinarily skilled artisan would be motivated to select a melting temperature suitable for the use case. As such, it would have been obvious to have selected a melting temperature that was fit for purpose and further it would have been obvious prior to the effective filing date of the instant application to have selected the overlapping portion of the ranges because the selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
Response to Arguments
Applicant's arguments filed 5/19/2026 have been fully considered but they are not persuasive for the following reasons.
On page 6, the applicant argues that there is a difference between virgin and recycled polyethylene terephthalate (PET). While having no effect on the current rejection, the examiner disagrees. Indeed, the applicant defines virgin PET as having not been previously processed (Paragraph 7). However, simply extruding such material would qualify as processing, thus rendering all PET that has been previously extruded to be “recycled” by this definition. As the applicant’s own specification points out, the virgin PET used is in pellet form and would therefore have been “processed”, it would not be virgin and would instead be recycled.
On page 10, the applicant argues that Hwang teaches blow molding and not injection molding and that Hwang fails to teach that all combinations are suitable for injection molding. As noted in the rejection, the claim language only requires that the material be capable of being injection molded, as there are no alterations made to the composition in order to allow for this. As such, the material of Hwang is capable of being injection molded and therefore meets the requirements. Further, as injection molding is a common technique in the art, the ordinarily skilled artisan would no doubt be aware of the requirements for this process and would use this knowledge in setting the composition to be appropriate for this purpose.
On page 11, the applicant argues that Hwang fails to teach the chain extender. The examiner disagrees. The applicant requires the chain extender to function via supramolecular bonding, which is not a term common in the art nor defined in the applicant’s specification. As such, there is no specific interaction that is required by the claim language and as a result, any polymer blend of PET and another polyester would meet the requirements. Hwang teaches the use of a polyester other than PET to improve the processability of the composition, which would reasonably be interpreted by the ordinarily skilled artisan to meet the requirement of the claims, as polymers contained within a blend would logically interact with one another in some manner, altering the properties of the composition.
Ultimately, the applicant has not defined in what way the polyester chain extender of the instant invention functions that would distinguish it from the existing art in which PET has been blended with other polyesters, particularly in relation to mixing of different PET feedstock. As a result, the rejection is maintained.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM J BERRO whose telephone number is (703)756-1283. The examiner can normally be reached M-F 8:30-5.
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/A.J.B./Examiner, Art Unit 1765
/JOHN M COONEY/Primary Examiner, Art Unit 1765
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