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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on February 23, 2026 has been entered.
Claim Objections
Applicant is advised that should claim 32 be found allowable, claim 41 will be objected to under 37 CFR 1.75 as being a duplicate thereof. When two claims in an application are duplicates, it is proper after allowing one claim to object to the other as being a duplicate of the allowed claim. See MPEP § 608.01(m).
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 28-38 and 41-42 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 28 recites the limitation "the depolymerizing agent." There is insufficient antecedent basis for this limitation in the claim.
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 28-38 and 41-42 are rejected under 35 U.S.C. 103 as being unpatentable over Desrousseaux (WO 2017/198786; paragraph number to corresponding US 2019/0218360) in view of Pawloski (US 2017/0100861).
Claim 28: Desrousseaux discloses a process for degrading a plastic product including at least one polymer (abstract). The process includes a) a pretreatment step to physically change the structure of the plastic so as to increase the surface area of the plastic product (¶¶ 92-93); and b) depolymerizing at least one target polymer of the pretreated plastic product (¶¶ 74-75); wherein the pretreatment step a) is performed at a temperature at which the plastic product is in a partially or totally molten state (¶¶ 46-47); and wherein depolymerizing step b) is performed by contacting the plastic product with a depolymerase able to degrade at least one polymer of the plastic product in a liquid medium including the depolymerizing agent (¶ 94).
Desrousseaux is silent as to the pretreatment being foaming. However, Pawloski discloses a process for degrading a plastic product including at least one polymer (abstract), including a) foaming the plastic product (¶¶ 75-83); and b) depolymerizing a target polymer of the foamed product (¶¶ 39-44), wherein the step of foaming is performed at a temperature at which the plastic product is in a molten state (¶¶ 71, 75-83), and wherein the depolymerizing is performed by contacting the plastic product with a depolymerase able to degrade at least one polymer of the plastic product (¶ 39). As taught by Pawloski, foaming and depolymerizing the plastic breaks the plastic down into a useful substance (¶¶ 39-41). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the application to have chosen foaming as the pretreatment step in Desrousseaux because: i. Desrousseaux expressly teaches that the pretreatment step should increase the surface of contact between the polymers and the enzymes (¶ 93) and foaming, as taught by Pawloski, was a known technique for producing plastics having a large surface area, and ii. foaming and depolymerizing the plastic breaks the plastic down into a useful substance, also taught by Pawloski (¶¶ 39-41).
Claim 29: Desrousseaux discloses the amorphization step being performed at a temperature above the Tc of the target polymer (claim 17); Pawloski discloses the foaming step being performed at a temperature above the Tc of the target polymer (¶¶ 71, 75-83).
Claims 30-31: Pawloski discloses the foaming being implemented with CO2 (¶¶ 71, 75-83).
Claims 32-33: Pawloski discloses the foaming being implemented with citric acid (¶ 51).
Claim 34: Pawloski discloses the foamed plastic product including a blowing agent at 0.05 to 90 % blowing agent, which would be expected to result in the product exhibiting a porosity rate above 20%, or overlapping the claimed range.
Claims 35-37: Pawloski discloses cooling the product to a temperature below the Tc of the target polymer rapidly by skipping the annealing step, to induce rapid crystallization (¶ 71).
Claim 38: Pawloski discloses the foaming being performed in an extruder (¶¶ 75-83).
Claim 41: Pawloski discloses foaming being implemented with a chemical foaming agent (¶ 51).
Claim 42: Pawloski discloses the plastic product including PLA (¶ 48).
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 28-33, 38 and 41-42 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 10,767,026 (‘026) in view of Pawloski (US 2017/0100861).
Claim 28: Claim 1 of ‘026 is directed to a process for degrading a plastic product including at least one polymer including amorphization at least partially the plastic product; and depolymerizing a target polymer of the plastic product, wherein the step of amorphization is performed at a temperature at which the plastic product is in a partially or totally molten state, and wherein the depolymerizing is performed by contacting the plastic product with a depolymerase able to degrade at least one polymer of the plastic product. Claim 1 of ‘026 is silent as to foaming and the depolymerizing being in a liquid medium. However, Desrousseaux discloses a process for degrading a plastic product including at least one polymer (abstract). The process includes a) a pretreatment step to physically change the structure of the plastic so as to increase the surface area of the plastic product (¶¶ 92-93); and b) depolymerizing at least one target polymer of the pretreated plastic product (¶¶ 74-75); wherein the pretreatment step a) is performed at a temperature at which the plastic product is in a partially or totally molten state (¶¶ 46-47); and wherein depolymerizing step b) is performed by contacting the plastic product with a depolymerase able to degrade at least one polymer of the plastic product in a liquid medium including the depolymerizing agent (¶ 94). Pawloski discloses a process for degrading a plastic product including at least one polymer (abstract), including a) foaming the plastic product (¶¶ 75-83); and b) depolymerizing a target polymer of the foamed product (¶¶ 39-44), wherein the step of foaming is performed at a temperature at which the plastic product is in a molten state (¶¶ 71, 75-83), and wherein the depolymerizing is performed by contacting the plastic product with a depolymerase able to degrade at least one polymer of the plastic product (¶ 39). As taught by Pawloski, foaming and depolymerizing the plastic breaks the plastic down into a useful substance (¶¶ 39-41). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the application to have chosen foaming as the pretreatment step in claim 1 of ‘026 because: i. Desrousseaux expressly teaches that the pretreatment step should increase the surface of contact between the polymers and the enzymes (¶ 93) and foaming, as taught by Pawloski, was a known technique for producing plastics having a large surface area, and ii. foaming and depolymerizing the plastic breaks the plastic down into a useful substance, also taught by Pawloski (¶¶ 39-41).
Claim 29: Desrousseaux discloses the amorphization step being performed at a temperature above the Tc of the target polymer (claim 17); Pawloski discloses the foaming step being performed at a temperature above the Tc of the target polymer (¶¶ 71, 75-83).
Claims 30-31: Pawloski discloses the foaming being implemented with CO2 (¶¶ 71, 75-83).
Claims 32-33: Pawloski discloses the foaming being implemented with citric acid (¶ 51).
Claim 34: Pawloski discloses the foamed plastic product including a blowing agent at 0.05 to 90 % blowing agent, which would be expected to result in the product exhibiting a porosity rate above 20%, or overlapping the claimed range.
Claims 35-37: Pawloski discloses cooling the product to a temperature below the Tc of the target polymer rapidly by skipping the annealing step, to induce rapid crystallization (¶ 71).
Claim 38: Pawloski discloses the foaming being performed in an extruder (¶¶ 75-83).
Claim 41: Pawloski discloses foaming being implemented with a chemical foaming agent (¶ 51).
Claim 42: Pawloski discloses the plastic product including PLA (¶ 48).
Response to Arguments
Applicant's arguments filed January 26, 2026 have been fully considered but they are not persuasive.
Applicant argues “in the process disclosed in Desrousseaux, the surface area increased, prior to depolymerization, by micronization. In contrast, the claimed method utilizes a foaming step that increases the surface area of the material.” This argument has been considered but is not persuasive. i. Desrousseaux expressly teaches that the pretreatment step should increase the surface of contact between the polymers and the enzymes (¶ 93) and foaming, as taught by Pawloski, was a known technique for producing plastics having a large surface area, and ii. foaming and depolymerizing the plastic breaks the plastic down into a useful substance, also taught by Pawloski (¶¶ 39-41).
Applicant further argues that utilizing the foaming step of Pawloski as the pretreatment step of Desrousseaux “. . . the skilled person would have expected to obtain the same order of magnitude of acceleration in depolymerization.” And that “depolymerization rates are substantially improved when the micronization step is replaced by a foaming step.” This argument has been considered but is not persuasive for two reasons: First, even assuming, arguendo, that Desrousseaux was limited to only micronization, and that foaming achieved the same order of magnitude of acceleration in depolymerization, the combination would still have been obvious as the simple substitution of one known element for another is obvious. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, USPQ2d 1385, 1395 – 97 (2007) (see MPEP § 2143, B.). Second, the argument is not commensurate in scope with the claims. The instant claims do not require any depolymerization acceleration or rate.
Applicant further argues that “there would have been no motivation to utilize the foaming step disclosed in Pawloski since Desrousseaux does not discuss the ‘composting’ of the plastics materials disclosed within the cited reference.” This argument has been considered but is also not persuasive. As discussed above, Desrousseaux expressly teaches that the pretreatment step should increase the surface of contact between the polymers and the enzymes (¶ 93) and foaming, as taught by Pawloski, was a known technique for producing plastics having a large surface area, and foaming and depolymerizing the plastic breaks the plastic down into a useful substance, also taught by Pawloski (¶¶ 39-41).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LARRY THROWER whose telephone number is (571)270-5517. The examiner can normally be reached 9am-5pm MT M-F.
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/LARRY W THROWER/Primary Examiner, Art Unit 1754
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