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 with traverse of Group I claims 1, 3-14 in the reply filed on 1/12/26 is acknowledged. The traversal is on the ground(s) that examination of the claims would not be a serious burden. This is not found persuasive because a search for the method involves terms not present for the composition, including tanks, a liquid state, etc. The composition does not require the same states and is open to more combinations of PET, plastics and decomposition products thereof. As such a search for either the method or the product is not coextensive, and a search burden exists for searching the entirety of the claims.
The requirement is still deemed proper and is therefore made FINAL.
Claims 15-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 1/12/26.
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 4, 6, 13 and 14 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 4 recites “step (c)” in multiple places, however it is not clear if each instance refers to step 1)(c) or step 2)(c) in claim 1. For compact prosecution and under broadest reasonable interpretation, each reference to “step (c)” will be considered as applicable to step 2)(c), which avoids a 112(d) rejection.
Claim 6 recites the limitation "said base" in line 1. There is insufficient antecedent basis for this limitation in the claim. For the purposes of compact prosecution it will be assumed that “said catalyst comprises a base comprising sodium, potassium, or combinations thereof” is intended.
Claims 13 and 14 recite the limitation “said solvolysis facility” in line 2. There is insufficient antecedent basis for this limitation in the claim. Claims 13 and 14 depend on claim 1 which describes “solvolysis” in at least four places- “in a solvolysis dissolving tank” in step 1)(a) and 2)(a), “in a solvolysis reactor” in step 1)(c) and 2 (b) and (d). It is unclear from claim 13 and 14’s context if “said solvolysis facility” refers to any, all or none of the previous mentions of solvolysis in claim 1. For the purposes of compact prosecution it will be assumed that “said solvolysis facility” refers to the facility where all of steps 1) and 2) described in claim 1 take place in claim 13. This would require, for example, an amendment to claim 1 designating such a facility. In claim 14, since the method also can depend on claim 3 which does describe a solvolysis facility, art reading on claim 1 only will also apply to claim 14, which appears to only modify claim 3. Appropriate correction is required.
Claim Rejections - 35 USC § 103
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.
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) 1, 4, 5, 7, 9-11, 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 6706843 by Ishihara et al.
Ishihara describes a method for separating and recovering products from polyester waste.
Regarding claim 1, Ishihara describes a method for processing waste PET (col 1 ln 6-10) comprising:
1) (a) combining a waste plastic comprising PET (“polyester waste”) and at least one non-PET plastic (“foreign materials” col 3 ln 38, col 4 ln 36-45) with a solvent which melts the polyester waste (ethylene glycol) (col 3 ln 46-50, col 7 ln 15-20).
(b) adding a catalyst to the waste plastic comprising PET comprising optionally manganese (col 4 ln 22-27, col 14 Table 1 Example 4) or alkali metals which includes lithium (col 6 final line-col 7 ln 1). This also reads on combinations of the two (combination of listed catalysts exemplified in col 14 Table 1 Example 6).
(c) depolymerizing the PET (col 6 ln 38-43) to form three coproduct streams (col 7 ln 35-45 floating solid foreign materials, col 7 ln 48-61 non-floating solid foreign materials, col 8 ln 7-15 colorants) as well as oligomers (reads on principal terephthalyl) and ethylene glycol (reads on principal glycol) (col 8 ln 15-21).
Although Ishihara describes melting simultaneously with adding a catalyst (instant steps 1)(a) and (b)), selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results, i.e. the choice of melting and then adding the catalyst as claimed is obvious because Ishihara describes melting and adding a catalyst.
Regarding claim 4, Ishihara meets the claim at least by describing the steps in method 1) where claim 4 is a further description of method 2).
Regarding claim 5, Ishihara describes 0.1 to 10 wt%, which is 1000-100,000 ppm (col 4 ln 21) based on the weight. This overlaps with the claimed range. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). It would be obvious to one of ordinary skill to arrive at values in the claimed range because Ishihara describes values overlapping with the claimed range.
Regarding claim 7, Ishihara describes optionally manganese (col 4 ln 22-27).
Regarding claim 9, Ishihara does not require the presence of zinc, tin, or titanium (col 4 ln 22-27).
Regarding claim 10, Ishihara exemplifies 10 parts by weight vinyl chloride, i.e. 10 wt% (col 13 ln 30-35).
Regarding claim 11, Ishihara exemplifies greater than 45% pure polyethylene terephthalate (col 13 ln 30-40).
Regarding claim 14, Ishihara meets this claim at least by describing the content of claim 1, wherein the “solvolysis facility” is not present in claim 1 and therefore reference thereto is assumed to be restrictive of claim 3 only. See also 112(b) rejection above.
Claims 3, 12 are rejected under 35 U.S.C. 103 as being unpatentable over US 6706843 by Ishihara et al in view of “Pyrolysis of plastic packaging waste: A comparison of plastic residuals from material recovery facilities with simulated plastic waste” by Adrados et al.
Ishihara is described above.
Regarding claim 3, Ishihara describes
(a) combining a waste plastic comprising PET (“polyester waste”), adding a catalyst to the waste plastic comprising PET comprising optionally manganese (col 4 ln 22-27, col 14 Table 1 Example 4) or alkali metals which includes lithium (col 6 final line-col 7 ln 1). This also reads on combinations of the two (combination of listed catalysts exemplified in col 14 Table 1 Example 6). Ishihara describes depolymerizing the PET (col 6 ln 38-43) to form three coproduct streams (col 7 ln 35-45 floating solid foreign materials, col 7 ln 48-61 non-floating solid foreign materials, col 8 ln 7-15 colorants) as well as oligomers (reads on principal terephthalyl) and ethylene glycol (reads on principal glycol) (col 8 ln 15-21).
Ishihara is silent as to the fate of the three coproduct streams, focusing on the depolymerized PET.
Adaros describes pyrolysis of plastic waste.
Adaros states that pyrolysis is an attractive option for recycling the residue from the separation and classification of packaging waste at material recovery facilities (p.831 col 2 paragraph 2). Adaros states that non-recyclable residues – including PVC (p.826 col 2 paragraph 1)- yield high conversions to liquids and gases in the pyrolysis process, wherein the gases can supply energetic demand for power generation (p.831 col 2 paragraph 2). Thus it would be obvious to one of ordinary skill to send the residue from Ishihara’s plastic separation to a pyrolysis plant because it can supply energetic demand for power generation.
Regarding claim 12, Ishihara is silent as to the fate of the three coproduct streams, focusing on the depolymerized PET.
Adaros describes pyrolysis of plastic waste.
Adaros states that pyrolysis is an attractive option for recycling the residue from the separation and classification of packaging waste at material recovery facilities (p.831 col 2 paragraph 2). Adaros states that non-recyclable residues – including PVC (p.826 col 2 paragraph 1)- yield high conversions to liquids and gases in the pyrolysis process, wherein the gases can supply energetic demand for power generation (p.831 col 2 paragraph 2). Thus it would be obvious to one of ordinary skill to send the residue from Ishihara’s plastic separation to a pyrolysis plant because it can supply energetic demand for power generation.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over US 6706843 by Ishihara et al in view of US 20090318579 by Ikenaga.
Ishihara is described above.
Regarding claim 6, Ishihara broadly describes “alkali metals” as one of the catalysts in combination (col 6 final line-col 7 ln 1), but is silent as to specifically a base comprising sodium or potassium.
Ikenaga also describes depolymerization of polyethylene terephthalate.
Ikenaga describes alkali metal compounds for the depolymerization of polyethylene terephthalate and states that specifically sodium hydroxide is a preferable component because “the reaction is rapidly carried out, impurities are not included in the monomer recovered after the reaction, and the production cost is low” (paragraph 79). Thus it would be obvious to one of ordinary skill to use sodium hydroxide where Ishihara more broadly describes “alkali metal” as a catalyst in combination because the reaction is rapidly carried out, impurities are not included in the monomer recovered after the reaction, and the production cost is low.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over US 6706843 by Ishihara et al in view of “Pyrolysis of plastic packaging waste: A comparison of plastic residuals from material recovery facilities with simulated plastic waste” by Adrados et al in further view of “Waste Management” in Environmental Mangement by Caccavale et al.
Ishihara and Adrados are described above.
Regarding claim 13, while Adrados describes pyrolyzing the coproduct streams including PVC, he is silent as to where the pyrolysis facility is located relative to the initial separation of plastics (i.e. Ishihara’s process).
Caccavale describes waste management.
Caccavale states that “when the waste from one operation can be used as fuel for another and those operations colocated to minimize transportation, significant energy savings can be achieved” (p.490 col 1 final paragraph- col 2 paragraph 1). Thus it would be obvious to one of ordinary skill to colocate the pyrolysis of Adrados -which uses fuel from Ishihara’s separation- with the plastics separation of Ishihara in order to achieve significant energy savings.
Allowable Subject Matter
Claim 8 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 8 describes a specific amount of sodium hydroxide with a specific amount of manganese acetate that is beyond the combination of US 6706843 by Ishihara et al in view of US 20090318579 by Ikenaga, the closest art, used in rejection of claim 6 above. For example, the total is less than Ishihara’s 0.1% catalyst.
Conclusion
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/CHRISTINA H.W. ROSEBACH/Examiner, Art Unit 1766