DETAILED ACTION
This Office Action is responsive to the amendment filed on 11/25/2025.
The objections and rejections not addressed below are deemed withdrawn.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
The present application is being examined under the pre-AIA first to invent provisions.
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.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 2, and 4-13 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 1: As amended, claim 1 states that the temperature is continuously increased in a range of 120 to 240 °C (see step III); this limitation is not supported by the original disclosure. Increasing the temperature continuously as recited in the instant claim requires that the temperature increases constantly-i.e., there are no pauses at which the temperature remains the same. In contrast, the original disclosure only states that the temperature is raised “gradually” to 240 °C (see specification 0053; Examples). The word “gradually” implies that there is a maximum rate at which the temperature may be raised; but does not necessitate a continuous change. For example, the temperature could be increased in a stepwise manner (e.g., increase the temperature by 1 degree, hold for determined period of time, then repeat as needed). The original disclosure does not support the recitation of a continuous increase in temperature.
Claims 2 and 4-13 depend from claim 1 and do not correct this deficiency. The claims are therefore rejected per the same rationale as claim 1.
Regarding claim 7: As amended, claim 7 states that the additive may be a polyester; note that this limitation reads on all polyesters. In contrast, the original disclosure limits the additive to “fast crystallizing polyesters” (see specification ¶036, 043; original claim 7). The phrase “fast crystallizing” indicates that additive as originally disclosed does not include all polyesters-as allowed by the amended claim-but rather requires that there is a minimum speed at which it must crystallize. The original disclosure therefore does not support the generic recitation of “polyester” as in amended claim 7.
Claims 8-11 and 13 depend from claim 7 and do not correct this deficiency. The claims are therefore rejected per the same rationale as claim 7.
Regarding claim 12: As noted above with respect to claim 7, the original disclosure does not support the recitation that the additive can be any polyester as allowed by the claimed generic species “polyester” (see line 3).
Claim 8-10 and 13 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.
Regarding claim 8: Claim 8 contains multiple recitations of the transitional term “including”. The transitional term “including” is synonymous with “comprising” and is open-ended (MPEP § 2111.03(I). In contrast, a Markush grouping is required to be a closed set of alternatives. If a Markush grouping requires a material selected from an open list of alternatives, the claim is indefinite as it is unclear what other alternatives are intended to be encompassed by the claimed invention (MPEP § 2173.05(h)(I)). The use of the word “including” therefore renders claim 8 indefinite, as it is unclear what other additives are intended to fall within the scope of the instant claim.
Also in claim 8, the phrase “incorporated in an amount up to 20%” in line 11 is unclear because it does not define the type of percentage (i.e., weight percent, mole percent, etc.) required.
Regarding claim 9: Description of examples or preferences is properly set forth in the specification rather than the claims. If stated in the claims, examples and preferences may lead to confusion over the intended scope of a claim. The phrase “preferably branching agents including…”; the claim is therefore indefinite as “preferably” renders it unclear whether the claimed invention is intended to require the use of one of the compounds listed in lines 9-11. Additionally, note that claim 9 recites a Markush group of species of branching agent/chain extenders. The use of the open term “including” therefore renders the scope of the Markush group indefinite per the same rationale as discussed above with respect to claim 8.
Regarding claim 10: Claim 10 includes several limitations stating that types of additives are selected from recited species that include other compounds. For example, see the phrase “the polyalkylene glycols are selected from glycols including…”. The phrase “selected from” indicates that the claim is recites groups from which each one of the polyalkylene glycol, the heat stabilizer, and the triarylphosphate must be chosen-i.e., the claim recites multiple Markush groups. The use of the open term “including” therefore renders the scope of these Markush groups indefinite per the same rationale as discussed above with respect to claim 8.
Regarding claim 13: Claim 13 states that the nucleating agent is selected from the group consisting of recited species -i.e., a Markush group- wherein the recited groups contains multiple instances of the open term “including”. The use of the open term “including” therefore renders the scope of the Markush group indefinite per the same rationale as discussed above with respect to claim 8.
Claims 6 and 12 are 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.
Regarding claim 6: As amended, claim 6 depends from claim 5 and states that the oxide/acetate compound is chosen from a list of recited species. Note, however, that the recited group contains several species that are neither a metal oxides nor a metal acetate. Claim 6 therefore impermissibly broadens the scope of the parent claim to include compounds that are not an oxide or acetate of one of the recited metals.
Regarding claim 12: Claim 12 depends from claim 7, and states that the polyester is selected from a list of named species. Note, however, that the recited list includes the generic species “polyester” (see line 3). Claim 12 therefore requires that the polyester is chosen from a group that includes all polyesters. As such, there is no species of polyester that would fall within the scope of the parent claim that would not also fall within the scope of claim 12. Claim 12 therefore does not further limit the scope of the parent claim as required.
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 § 103
Claims 1, 4, 7, and 9-13 are rejected under 35 U.S.C. 103 as being unpatentable over Lin et al, CN107189044 (of record), in view of Awaja et al, published in European Polymer Journal vol. 41 (2005).
The examiner notes that Lin et al, US2020/0190280, is part of the same patent family as CN107189044 and has been used as an equivalent English translation thereof.
Lin discloses a process of manufacturing textile waste into fiber grade polyester chips that can be used in textile processing (abstract). Said process comprises the steps of
Steps 1-7: forming a cake of recycled bis(2-hydroxyethyl)terephthalate (rBHET);
Step 8: heating the processed rBHET so that it becomes a melt, corresponding to claimed step I (for claim 1);
Step 9: combining the rBHET with catalyst and stabilizer, and heating to 200 °C, corresponding to claimed steps II and III (for claim 1);
Step 10 placing the rBHET in a pre-polycondensation reactor to obtain a low polymer;
Step 11 performing polycondensation reaction with the rBHET in a reactor at 270 °C under high vacuum; and
Step 12: extruding the polyester and using an underwater granulator to cool and crush the polymer, corresponding to claimed steps VI and VIII (for claim 1) (¶0045-0057).
Regarding the claimed additive (for claims 1, 7): Note that claim 7 states that the claimed additive reads on catalysts: The catalyst added in Lin’s step 9 therefore corresponds both to the catalyst (for claim 1) and the additive (for claims 1, 7).
Regarding claims 9-13: Claims 9-13 each depend from claim 7 and recite additional limitations describing various claimed embodiments of the additive. Note, however, that none of claims 9-13 contain any language requiring that the additive is chosen from the recited species. The prior art process therefore corresponds to the claimed process wherein the additive is a catalyst as recited in parent claim 7.
Lin is silent regarding the performance of steps IV and V.
Awaja teaches that it was known in the art that polymerization of polyethylene terephthalate is performed via a process comprising the steps of pre-polymerization and polycondensation. In the pre-polymerization step, BHET is reacted with a monoethylene glycol, corresponding to the claimed diol (for claim 1), , corresponding to claimed step (IV) (for claim 1). The polycondensation step, the oligomer prepared in the pre-polymerization step undergoes condensation polymerization at a temperature of 280 to 290 °C to prepare the final polymer having a degree of polymerization (DP) up to 100, corresponding to claimed step (V) (for claim 1) (page 1455: 1.1 PET Synthesis; page 1456: Fig. 2).
Regarding claim 4: Claim 4 depends from claim 1 and recites further limitations regarding the comonomer; however, the claimed invention does not contain any language requiring that one of the recited compounds is present. Note that the independent claim states that “diols and/or comonomers” are added; the term “and/or” indicates that only one of the two is required. As noted above, the prior art oligomerization step is performed using a diol, corresponding to the claimed invention.
Regarding the claimed additive: Awaja further teaches that it was known in the art to add a chain extender, corresponding to the claimed additive (for claims 2, 8), to rejoin broken polyester chains that form during processing. As taught by Awaja, the concentration of chain extender was a known result effective variable, with the reaction rate being dependent on its concentration (page 1462: 2.3.4 Chain extension). It therefore would have been obvious to vary the concentration of chain extender through routine experimentation to adjust the reaction rate as desired (for claims 2, 8).
Lin and Awaja are both directed towards the recycling polyesters and production of polyesters based on BHET. Further note that the process of Lin comprises steps of polymerizing the rBHET (see step 11 ¶0056). As taught by Awaja, it was conventional in the art that polyethylene terephthalate is prepared via a process of pre-polymerization in which BHET is reacted with monoethylene glycol to form oligomers, corresponding to claimed step IV, followed by polycondensation to form the final polymer, corresponding to claimed step V. It therefore would have been obvious to modify the prior art process by performing a combination of pre-polymerization and polycondensation steps in the polymerization step 11 of the process of Lin, with the reasonable expectation of obtaining a final polyethylene terephthalate.
Regarding the claimed limitations of pressure and continuous increase in temperature in steps (III)-(V): Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP 2144.05(II)(A). The prior art renders obvious a process wherein the same compounds are polymerized at the same temperature in order to produce the same product-i.e., a polyester derived from BHET-as desired by applicant. Barring a showing of evidence demonstrating the criticality of the claimed ranges, it therefore would have been obvious to perform the prior art steps using the recited pressure and temperature parameters.
Claim(s) 2, 5, 6 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Lin et al, CN107189044 (of record), in view of Awaja et al, published in European Polymer Journal vol. 41 (2005), as applied to claims 1, 4, 7, and 9-13 above, and further in view of Hirokane et al, US2005/0209435 (of record).
The disclosures of Lin and Awaja are discussed earlier in this Action.
Lin and Awaja are silent regarding the use of the required metal compound and additive.
Hirokane discloses the production of polyester resins via a process comprising the steps of 1) reacting an ester such as BHET and diol(s) in the presence of a titanium compound to form an oligomer, followed by 2) polycondensation of the oligomer to form the final polyester (¶0016-00018, 0020, 0023, 0045). As taught by Hirokane, it was known in the art to use 0.0001 to 5% (for claims 2, 5) of a titanium compound such as titanium acetate (for claim 5) and tetrabutyl titanite (for claim 6), to catalyze such oligomerization reactions. Hirokane further teaches that it was known to add 0.005 to 0.1% (for claims 2, 8) of a heat stabilizer such as triphenyl phosphite (for claim 8) to such reactions to reduce discoloration (¶0060-0061).
Lin, Awaja, and Hirokane are all directed towards the production of polyesters from monomer mixtures comprising BHET and diol(s). It has been held that the 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 U.S. 327, 65 USPQ 297 (1945) (MPEP 2144.07). As taught by Hirokane, titanium acetate and tetrabutyl titanite were known in the art to be suitable for use as catalysts to catalyze the oligomerization of BHET with diols. Furthermore, it was known to add a heat stabilizer such as triphenyl phosphite to reduce discoloration. It therefore would have been obvious to modify the process of Lin by adding these compounds to the oligomerization reaction in order to catalyze the reaction and reduce discoloration, as taught by Hirokane.
Response to Arguments
Applicant’s arguments, see page 9, filed 11/25/2025, with respect to the rejection of claim 1 over the combination of Lin et al, CN107189044, in view of Hirokane et al, US2005/0209435, have been fully considered and are persuasive. Applicant argues that Hirokane requires the use of a diol comprising a cyclic acetal structure which does not fall within the scope of the claimed invention which requires the diol to be chosen from the group consisting of the recited species. Therefore, the rejection has been withdrawn.
However, upon further consideration, a new ground(s) of rejection is made in view of Lin et al, CN107189044, in view of Awaja et al, published in European Polymer Journal vol. 41 (2005), as discussed earlier in this Action.
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 JEFFREY S LENIHAN whose telephone number is (571)270-5452. The examiner can normally be reached Mon.-Fri. 5:30-2:00PM.
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/JEFFREY S LENIHAN/Primary Examiner, Art Unit 1765