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 .
DETAILED ACTION
Claim Status
Claims 47-64 and 66-71 are pending. Claim 71 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Claims 47-64 and 66-70 are under examination. Claims 47-64 and 66-70 are rejected. No claims allowed.
Filing Receipt
PNG
media_image1.png
138
1000
media_image1.png
Greyscale
PNG
media_image2.png
86
994
media_image2.png
Greyscale
PNG
media_image3.png
154
996
media_image3.png
Greyscale
Information Disclosure Statement
The information disclosure statements filed 12/09/2025 and 03/02/2026 comply with 37 CFR 1.97(c) because of the supplied timing statements according to 37 CFR 1.97(e).
Response to Amendments/Arguments
Applicant's amendments and arguments filed 03/02/2026 are acknowledged and have been fully considered. The Examiner has re-weighed all the evidence of record. Any rejection and/or objection not specifically addressed below in original or modified form is herein withdrawn.
Withdrawn Rejections
The 112(b) rejection of claim 65 and 70 in the non-final mailed 12/01/2025 is withdrawn. The claim amendments have overcome the rejection.
The 112(d) rejection of claim 65 in the non-final mailed 12/01/2025 is withdrawn. The claim amendments have overcome the rejection.
Response to Arguments
Applicant's arguments filed 03/02/2026 have been fully considered but they are not persuasive.
Applicant argues claim 47 requires depolymerization of the polyester to form a regenerated composition including a regenerated diacid and a polymerization catalyst. In this regard, the polymerization catalyst present in the regenerated composition is the same catalyst that was utilized in the initial polymerization for formation of the polyester.
From the above statement by applicant, the polymerization catalyst must be present in the polyester starting material for the polymerization catalyst to be present in the regenerated composition. However, the specification exemplifies the starting polyester material in paragraph [0008] as “The polyester that is depolymerized may include any form of polyester and is not necessarily limited by the present invention”.
From the above, the polyester starting material is open ended. No requirements for the polyester starting material are stipulated.
The current rejection utilizes case law wherein substantially identical methods yield substantially identical products. The current rejection of record argues the waste PET of the prior art is the current polyester undergoing depolymerization.
Due to the current definition of the claimed polyester being opened ended and allowing for any form of polyester having no established requirements, it is not understood how the depolymerization of the polyester of the prior art would not yield the regenerated composition as currently claimed.
Moreover the original rejection recites “Due to the prior art and the current invention having substantially identical methods of depolymerization and isolation, the regenerated composition product of the prior art would have been substantially identical to the current regenerated composition product”.
Additionally, current claim 1 has no requirement for an addition of the claimed
polymerization catalyst or presence thereof prior to the depolymerization. A
person practicing the current invention having no limitation on the polyester starting waste material would choose any polyester waste material. However applicant argues the polyesters from the prior art can be excluded all the while the claimed waste polyester remains open ended.
Next, applicant argues the prior art of record makes no reference or mention of the presence of antimony, which was utilized in forming the PET prior to depolymerization, with the terephthalic acid upon depolymerization.
The claims are directed to a “polymerization catalyst” and not just antimony or as presumably suggested a single metal. Polymerization catalyst are just that, a polymerization catalyst. Examples are found in the current specification paragraph [0020].
“antimony trioxide, antimony acetate (e.g., antimony triacetate aka
antimony(III) acetate), antimony glycolate, an antimony/metal composite, or a
mixture thereof. For instance, the antimony/metal composite may comprise
antimony and a transition metal and/or an alkali metal. In one embodiment, the
antimony/metal composite may comprise both a transition metal and an alkali
metal. The transition metal may comprise, but is not limited to, cobalt,
manganese, zinc, or a mixture thereof. The alkali metal may comprise lithium,
sodium, potassium, cesium, or a mixture thereof. In one embodiment, the
antimony catalyst may comprise antimony acetate (e.g., antimony triacetate),
antimony glycolate, an antimony/metal composite, or a mixture thereof. In one
particular embodiment, the antimony may comprise antimony trioxide. In another
particular embodiment, the antimony may comprise an antimony acetate, such as
antimony triacetate”.
From the above exemplification, at least composites are required for a
polymerization catalyst to be present and not just the presence of a single metal for
example antimony as applicant suggests. Applicant has not supplied evidence that just antimony is a polymerization catalyst.
Moreover, the specification more broadly exemplifies a “catalyst” as originally claimed as being “antimony, germanium, titanium, cobalt, molybdenum, or a mixture thereof (par. [0020] of the current specification). Applicant appears to be arguing the presence of the originally claimed “catalyst” and not the currently claimed “polymerization catalyst”.
Concerning the double patenting rejections applicant suggested submitting terminal disclaimers upon the claims being otherwise found in condition for allowance.
Newly Applied Rejections
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.
Claims 66-67 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. This rejection was necessitated by amendment.
Claims 66-67 improperly depend from cancelled claim 65.
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.
Maintained/Modified Rejections
The modifications to the below rejections were necessitated by amendment.
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.
Claim(s) 47, 49-57, 59-61, 66, 70 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Coismbescu et al. (Simple But Tricky: Investigations of Terephthalic Acid Purity Obtained from Mixed PET Waste, I&EC, 60, pp. 12792-12797, Published 08/27/2021) as evidence by Filella (Antimony and PET bottles: Checking facts, Chemosphere, 261 pp. 1-13, Published 2020).
Coismbescu et al. disclose the following (bridging pages 12793 to 12794).
PNG
media_image4.png
148
548
media_image4.png
Greyscale
PNG
media_image5.png
196
542
media_image5.png
Greyscale
The PET starting material disclosed by Coismbescu et al. in Table 1 page 12793 is cleaned PET and mixed waste PET. The cleaned and mixed waste PET is the current polyester in a waste material. The depolymerization vessel containing the waste PET is the disclosed two-neck flask and the current supplying. Upon depolymerization, the current diol (ethylene glycol, EG) would necessarily have been produced as well as the
regenerated diacid.
The addition of the HCl is the current precipitating. During the precipitation, the regenerated diol would have been separated from the regenerated diacid (terephthalic acid, TPA).
As for the polymerization catalyst, the catalyst would have been present as evidence by Filella (p. 2. Left column). Wherein “significant concentrations of antimony in bottled waters and linked them to the use of antimony in the production of PET bottles. Antimony trioxide (Sb2O3)-together with antimony acetate and antimony glycolate- is the most frequently used catalyst in the production of PET resin and antimony remains in the objects produced”.
Concerning the precipitation of the polymerization catalysts, due to the methods of the prior art and the current invention being substantially identical the Sb2O3, antimony acetate, and antimony glycolate would have precipitated. Additionally, Due to the prior art and the current invention having substantially identical methods of depolymerization and isolation, the regenerated composition product of the prior art would have been substantially identical to the current regenerated composition product.
Substantially identical methods yield substantially identical products. See MPEP 2112.01 I. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
The current separating is the disclosed filtration.
Concerning claims 52-53 and the concentration of the polymerization catalyst in
the regenerated composition, substantially identical methods yield substantially identical products. The methods of the prior art and the current methods both involve the depolymerization of the waste PET with subsequent substantially identical precipitation methods involving an acid. Thus, the precipitated product after the disclosed filtration would have had the current concentration of the polymerization catalyst in the regenerated composition.
Concerning claim 70, Coismbescu et al. disclose “no metal catalysts” page 12793, bottom of right column.
This anticipates the claims.
Claim(s) 47, 49-57, 59-61, 66-67, 70 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Karayannidis et al. (Poly(ethylene terephthalate) Recycling and Recovery of Pure terephthalic Acid by Alkaline Hydrolysis, Adv. Polym. Tech., 21, No. 4, pp. 250-259, Published 2002) as evidence by Filella (Antimony and PET bottles: Checking facts, Chemosphere, 261 pp. 1-13, Published 2020).
Karayannidis et al. disclose the following (bridging page 253).
PNG
media_image6.png
160
538
media_image6.png
Greyscale
PNG
media_image7.png
140
526
media_image7.png
Greyscale
PNG
media_image8.png
152
528
media_image8.png
Greyscale
PNG
media_image9.png
192
530
media_image9.png
Greyscale
Concerning the waste PET, Karayannidis et al. disclose the following (p. 253).
PNG
media_image10.png
138
536
media_image10.png
Greyscale
Due to the specification exemplifying waste material as used material, recycled material, pre-consumer sourced material… etc., the bottles disclosed by Karayannidis et al. are considered waste.
The depolymerization vessel containing the waste PET is the disclosed autoclave containing the PET flakes and the current supplying.
Upon depolymerization, the current diol (ethylene glycol, EG) would necessarily have been produced as well as the regenerated diacid.
The addition of the H2SO4 in two steps penultimately, results in the current
precipitating. During the precipitation the regenerated diol would have been separated
from the regenerated diacid (terephthalic acid, TPA). Note: to distinct pH’s were utilized.
As for the polymerization catalyst, the catalyst would have been present as evidence by Filella (p. 2. Left column). Wherein “significant concentrations of antimony in bottled waters and linked them to the use of antimony in the production of PET bottles. Antimony trioxide (Sb2O3)-together with antimony acetate and antimony glycolate- is the most frequently used catalyst in the production of PET resin and antimony remains in the objects produced”.
Concerning the precipitation of the polymerization catalysts, due to the methods the prior art and the current invention being substantially identical the Sb2O3, antimony acetate, and antimony glycolate would have precipitated. Additionally, Due to the prior art and the current invention having substantially identical methods of depolymerization and isolation, the regenerated composition product of the prior art would have been substantially identical to the current regenerated composition product.
Substantially identical methods yield substantially identical products. See MPEP 2112.01 I. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
The current separating is the disclosed filtration.
Concerning claims 52-53 and the concentration of the polymerization catalyst in the regenerated composition, substantially identical methods yield substantially identical products. The methods of the prior art and the current methods both involve the depolymerization of the waste PET with subsequent substantially identical precipitation methods involving an acid. Thus, the precipitated product after the disclosed filtration would have had the current concentration of the polymerization catalyst in the
regenerated composition.
Concerning claim 70, Karayannidis et al. is silent to adding catalysts.
This anticipates the claims.
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.
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.
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.
Claim(s) 47-61, 66, 68 and 70 is/are rejected under 35 U.S.C. 103 as being unpatentable over Coismbescu et al. (Simple But Tricky: Investigations of Terephthalic Acid Purity Obtained from Mixed PET Waste, I&EC, 60, pp. 12792-12797, Published 08/27/2021) as evidence by Filella (Antimony and PET bottles: Checking facts, Chemosphere, 261 pp. 1-13, Published 2020).
Scope of the Prior Art
The disclosure of Coismbescu et al. is written on the above 102 rejection and incorporated by reference. Additional teachings are as follows.
Concerning claim 48, Coismbescu et al. teach the majority of the world’s PET is utilized for synthetic fiber production (over 60%) (p. 12792 left column). Coismbescu et al. teach “polyester” as a textile (p. 12792 right column). Coismbescu et al. teach the recycling of a PET waste stream to prepare TPA as a starting material for further chemistry (p. 12792 right column). Coismbescu et al. teach base hydrolysis of PET results in sodium TPA which is soluble in water and allows for the separation of common contaminants (p. 12793, left column).
Concerning claim 58, Coismbescu et al. teach overlapping temperatures as currently claimed (Table 1, page 12793).
Concerning claim 68, Coismbescu et al. teach basic hydrolysis results in the
formation of TPA sodium salt which allows for the removal of polypropylene and
polyethylene (p. 12793, left column).
Ascertain the Differences
The teachings of the prior art are in in various locations of the reference. Thus combining is required.
Obviousness
It would have been prima facie obvious for an ordinary artisan before the effective filing date of the claimed invention to have combined the teachings of Coismbescu et al. to arrive at the claimed invention with a reasonable expectation of success.
For example, the ordinary artisan would have tried to recycle “polyester” textiles to satisfy a source of the waste PET. The ordinary artisan would have done so to achieve the TPA which is a known starting material for further chemistry. The reasonable expectation of success from the teaching that base hydrolysis of PET results in sodium TPA which is soluble in water and allows for the separation of common contaminants.
Concerning claim 58, MPEP 2144.05 I.: “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).”
Claim(s) 62-64 is/are rejected under 35 U.S.C. 103 as being unpatentable over Coismbescu et al. (Simple But Tricky: Investigations of Terephthalic Acid Purity Obtained from Mixed PET Waste, I&EC, 60, pp. 12792-12797, Published 08/27/2021) as evidence by Filella (Antimony and PET bottles: Checking facts, Chemosphere, 261 pp. 1-13, Published 2020) as applied to claims 47-61, 66, 68 and 70 and in further view of Schwartz (US Patent 5,395,858, Patent date 03-1995).
Scope of the Prior Art
The combinational teachings and disclosure of the prior art is written in the above 103 and 102 rejections and incorporated by reference.
Ascertain the Differences
The prior art does not teach the use of activated charcoal.
Secondary References
Schwartz teach overlapping subject matter as currently claimed and collectively taught by the prior art. For example, Schwartz teach depolymerizing PET in aqueous caustic soda and removing ethylene glycol to prepare the disodium salt of TPA, and precipitating TPA with a strong acid (Example 1). These teachings render Schwartz analogous art to the invention and deem the teachings overlapping in nature to the remainder of the prior art.
Schwartz goes on teach activated charcoal is well known and utilized to further purify the aqueous solution (column 9, lines 35-45).
Obviousness
It would have been prima facie obvious for an ordinary artisan before the effective filing date of the claimed invention to have utilized the activated carbon taught by Schwartz to purify the aqueous product containing the depolymerized claimed product arrived at by the ordinary artisan with a reasonable expectation of success. The ordinary artisan would have done so because activated charcoal is well known and
utilized to further purify the aqueous solution.
The ordinary artisan would have looked to Schwartz due to the overlapping subject matter and because Schwartz being analogous art to the invention.
Concerning the decolorization, due to the methods of the current invention being substantially identical to those of the prior art, with respect to but not limiting, depolymerizing waste PET in an aqueous, removing EG and contacting the aqueous solution with activated carbon, the decolorization would have occurred.
Substantially identical methods yield substantially identical products. See MPEP 2112.01 I. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Claim(s) 69 is/are rejected under 35 U.S.C. 103 as being unpatentable over Coismbescu et al. (Simple But Tricky: Investigations of Terephthalic Acid Purity Obtained from Mixed PET Waste, I&EC, 60, pp. 12792-12797, Published 08/27/2021) as evidence by Filella (Antimony and PET bottles: Checking facts, Chemosphere, 261 pp. 1-13, Published 2020) as applied to claims 47-61, 66, 68 and 70 and in further view of Biermann et al. (WO2021/121731, Published 06-2021. Machine translation attached).
Scope of the Prior Art
The combinational teachings and disclosure of the prior art is written in the above
103 and 102 rejections and incorporated by reference.
Ascertain the Differences
The prior art does not teach the use of PET containing a polyamide.
Secondary References
Concerning claims 68-69, Biermann et al. teach PET polymers may have polyamide (par. 23).
The teachings of Biermann et al. are overlapping to the prior art and analogous art to the invention. For example, Biermann et al. teach waste PET polymers are recycled using base hydrolysis to prepare PTA (par. 2, 71, 104).
Obviousness
It would have been prima facie obvious for an ordinary artisan before the
effective filing date of the claimed invention to have utilized the PET containing
polyamide as a source of recyclable PET with a reasonable expectation of success. The success from the fact that Biermann et al. teach waste PET polymers are recycled using base hydrolysis to prepare PTA.
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 47-64 and 66-70 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 12,331,157 in view of Schwartz (US Patent 5,395,858, Patent date 03-1995). This rejection was necessitated by amendment.
Note: the original rejection stated application 17/946,760 (now US Patent 12,331,157) was allowed but not issued. Hence, this rejection is no longer a provisional rejection.
Although the conflicting claims are not identical, they are not patentably distinct from each other because the instantly claimed subject matter embraces or is embraced by the patented subject matter. For example, 12,331,157 claims the following.
PNG
media_image11.png
118
624
media_image11.png
Greyscale
PNG
media_image12.png
114
626
media_image12.png
Greyscale
PNG
media_image13.png
144
628
media_image13.png
Greyscale
PNG
media_image14.png
174
626
media_image14.png
Greyscale
PNG
media_image15.png
116
622
media_image15.png
Greyscale
PNG
media_image16.png
52
624
media_image16.png
Greyscale
PNG
media_image17.png
88
624
media_image17.png
Greyscale
PNG
media_image18.png
84
628
media_image18.png
Greyscale
PNG
media_image19.png
56
618
media_image19.png
Greyscale
PNG
media_image20.png
122
624
media_image20.png
Greyscale
Claim 16 of 12,331,157 does not claim “precipitating the regenerated diacid and the polymerization catalyst”. However, substituting the isolating step in claim 16 of 12,331,157 with the instantly claimed precipitating step would have been obvious in light of claim 17 of 12,331,157.
12,331,157 does not claim the instant clarifying steps of current claims 62-64. However, these limitations were argued to have been met by Schwartz. The teachings of Schwartz are in the above 103 rejection and are incorporated by reference.
Concerning the currently claimed TPA and ethylene glycol, the ordinary artisan practicing the invention of 12,331,157 would have been in need of the scope and or definition of the claimed polymer to depolymerize, and would have found “polyethylene terephthalate” in column 2 of the specification of 12,331,157.
Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the patented subject matter.
Claims 47-64 and 66-70 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 54-63, 65-67, and 69-74 of copending Application No. 17/946,785.
The modifications to this rejection were necessitated by amendment.
Note: In the original rejection in the nonfinal mailed 06/04/2025 the examiner inadvertently wrote the incorrect application number (17/946,760). However, further along in the rejection the correct application number was written (17/946,785). See line 10 of the original rejection. Moreover, claim 54 of 17/946,785 was depicted in the original rejection. For the above reasons the nonstatutory double patenting rejection is being maintained/modified.
PNG
media_image21.png
194
940
media_image21.png
Greyscale
PNG
media_image22.png
190
926
media_image22.png
Greyscale
PNG
media_image23.png
140
934
media_image23.png
Greyscale
PNG
media_image24.png
88
910
media_image24.png
Greyscale
PNG
media_image25.png
142
906
media_image25.png
Greyscale
PNG
media_image26.png
84
914
media_image26.png
Greyscale
PNG
media_image27.png
86
908
media_image27.png
Greyscale
PNG
media_image28.png
30
904
media_image28.png
Greyscale
PNG
media_image29.png
78
932
media_image29.png
Greyscale
PNG
media_image30.png
136
934
media_image30.png
Greyscale
PNG
media_image31.png
144
928
media_image31.png
Greyscale
PNG
media_image32.png
80
918
media_image32.png
Greyscale
PNG
media_image33.png
84
944
media_image33.png
Greyscale
PNG
media_image34.png
82
936
media_image34.png
Greyscale
PNG
media_image35.png
88
938
media_image35.png
Greyscale
PNG
media_image36.png
90
842
media_image36.png
Greyscale
PNG
media_image37.png
82
800
media_image37.png
Greyscale
PNG
media_image38.png
86
920
media_image38.png
Greyscale
PNG
media_image39.png
90
946
media_image39.png
Greyscale
PNG
media_image40.png
90
934
media_image40.png
Greyscale
PNG
media_image41.png
90
934
media_image41.png
Greyscale
PNG
media_image42.png
100
936
media_image42.png
Greyscale
Claim 54 of 17/946,785 does not contain the precipitation step as required in the current claims. However, claim 69 below has the precipitating step.
PNG
media_image43.png
148
944
media_image43.png
Greyscale
PNG
media_image44.png
148
946
media_image44.png
Greyscale
Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the co-pending subject matter.
Claims 47-64 and 66-70 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 19/238,747 as evidence by Filella (Antimony and PET bottles: Checking facts, Chemosphere, 261 pp. 1-13, Published 2020).
Although the conflicting claims are not identical, they are not patentably distinct from each other because the instantly claimed subject matter embraces or is embraced by the copending subject matter. For example, 19/238,747 claims the following.
PNG
media_image45.png
116
904
media_image45.png
Greyscale
PNG
media_image46.png
114
890
media_image46.png
Greyscale
PNG
media_image47.png
112
890
media_image47.png
Greyscale
Claim 1 of 19/238,747 does not include the current precipitation step. However, claim 8 of 19/238,747 has the precipitation step.
Concerning the currently claimed polymerization catalyst, the ordinary artisan practicing the claimed invention of 19/238,747 would have been in need of the scope of the “catalyst” in line 6 of claim 1.
The ordinary artisan in need of the scope, would have looked to the specification of 19/238,747 and would have found on pages 4-6 of 34 the catalyst may include a antimony trioxide catalyst. Antimony trioxide is a known polymerization catalyst as evidence by as evidence by Filella (p. 2. Left column).
The specification can be utilized as a dictionary to interpret the reference’s claims and to confirm the scope of the reference’s claims. See MPEP 804(II)(B)(1).
The specification can be used as a dictionary to learn the meaning of a term in the claim. Toro Co. v. White Consol. Indus., Inc., 199 F.3d 1295, 1299, 53 USPQ2d 1065, 1067 (Fed. Cir. 1999) ("[W]ords in patent claims are given their ordinary meaning in the usage of the field of the invention, unless the text of the patent makes clear that a word was used with a special meaning."); Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1250, 48 USPQ2d 1117, 1122 (Fed. Cir. 1998) ("Where there are several common meanings for a claim term, the patent disclosure serves to point away from the improper meanings and toward the proper meanings."). "The Patent and Trademark Office (‘PTO’) determines the scope of the claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction ‘in light of the specification as it would be interpreted by one of ordinary skill in the art.’ " Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d 1321, 1329 (Fed. Cir. 2005) (en banc) (quoting In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364, 70 USPQ2d 1827, 1830 (Fed. Cir. 2004); see also MPEP § 2111.01.
Concerning the current waste material being a textile, the scope of the waste material in 19/238,747 is found on page 43 and encompasses textile.
Concerning the remaining claimed limitations, the ordinary artisan in need of the scope of claim 47 of 19/238,747 would have looked to the specification to find the aromatic diacid, terephthalic acid, p. 17 of 34, ethylene glycol p. 20 of 34, temperatures p. 23 and so forth.
Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the co-pending subject matter.
Conclusion
THIS ACTION IS MADE FINAL. 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 BLAINE G DOLETSKI whose telephone number is (571)272-2766. The examiner can normally be reached M-F 7-4 EST.
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, Scarlett Goon can be reached at (571)270-5241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/B.G.D/Examiner, Art Unit 1692 /Andrew D Kosar/Supervisory Patent Examiner, Art Unit 1625
Prosecution Insights