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 without traverse of Group I, claims 1-8 and 12-20 in the reply filed on 10/6/2025 is acknowledged.
Claims 9-11 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected product, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10/6/2025.
Information Disclosure Statement
Foreign Ref Cite #3 has been lined through in the IDS received 1/13/2023 because a legible copy of the foreign patent document has not been received. 37 CFR 1.98(a) requires a legible copy of each foreign patent document. In the interest of compact prosecution, the submitted abstract has been considered and the JP document is cited within the attached PTO-892.
Claim Objections
Applicant is advised that should claim 5 be found allowable, claim 15 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Applicant is advised that should claim 5 be found allowable, claim 16 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial 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 1-8 and 12-20 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.
With respect to claim 1, the phrases "preferably" and “more preferably” within step 3) render the claim indefinite because it is unclear whether the limitation(s) following the phrases are part of the claimed invention. See MPEP § 2173.05(d).
Further with respect to claim 1, the terminology “the starting mixture of polyesters” lacks antecedent basis.
As claims 2-8 and 12-20 depend from claim 1, they are rejected for the same issues discussed above.
Claims 5-8 and 14-20 refer to “said biodegradable composition”. Claim 1 refers to “a biodegradable polymer composition” within the preamble (referred to as “said polymer composition in step 1) and “a biodegradable polymer composition” resulting at step 3). It is unclear which biodegradable polymer composition the claims are meant to refer to.
Claim 8 refers to “said polymers of natural origin”, which lacks antecedent basis. Therefore, the intended scope of the claim is unclear.
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) 1, 3, 6, and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka (JP2006-274231A). As the cited JP publication is in a non-English language, a machine-translated version of the publication will be cited to.
Regarding Claim 1, Tanaka teaches methods of recovering lactic acid monomers via depolymerizing biodegradable polyester compositions (Abstract). Examples are taught where a composition comprising polylactic acid (“polyhydroxyalkanoate”) and polyethylene terephthalate (diacid/diol polyester) are reacted with water to result in a depolymerized product of monomeric lactic acid, which is purified via filtration to remove impurities/fillters (¶ 39).
Tanaka teaches the resulting monomers can be subjected to polymerization to give polylactic acid, whereby neat lactic acid monomer (100 wt%) is polycondensed (¶ 43). 0 wt% of additives from the starting mixture of polyesters are fed to the polymerization step, which is within the scope of “up to 5% by weight”.
Tanaka teaches the temperature of the reaction is 150 degrees C (¶ 39). While not indicating the temperature in relation to the melting point of polyester, Tanaka teaches the temperature may range widely of up to 200 degrees C (¶ 14), which overlaps the melting point of polylactic acids (see for instance page 4 of the specification). It would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Tanaka suggests the claimed range. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Tanaka. See MPEP 2123.
Regarding Claim 3, polyethylene terephthalate is construed as an aliphatic-aromatic type diacid diol polyester.
Regarding Claims 6 and 18, there is no perceived difference in structure between “filler” and the polyethylene terephthalate of Tanaka’s starting composition. Accordingly, such additional polyester is seen to constitute a filler in the absence of evidence to the contrary.
Claim(s) 2, 12, and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka (JP2006-274231A) in view of Ajioka (Polymer Degradation and Stability, 1998, 59, 137-143). As the cited JP publication is in a non-English language, a machine-translated version of the publication will be cited to.
The discussion regarding Tanaka within ¶ 18-22 is incorporated herein by reference.
Regarding Claim 2, Tanaka teaches methods whereby lactic acid is first polymerized neat to form prepolymer, which is then further reacted in solution to form polylactic acid (¶ 43-45). To the extent Tanaka differs from the subject matter claimed by specified contents of monomer in solution, Ajioka teaches it was known in the art polylactic acid can be created via direct polycondensation of lactic acid monomer such as where roughly 36.2 g / 436.3 g ~ 8 wt% is used (Abstract; Section 2.2). Ajioka notes the polyactic acids obtained are of sufficient strength/toughness for practical use (Introduction). It would have been obvious to one of ordinary skill in the art to apply the direct polycondensation methods of Ajioka to the recycled monomers of Tanaka because doing so would provide polyactic acids sufficient strength/toughness for practical use as taught by Ajioka.
Regarding Claim 12, polyethylene terephthalate is construed as an aliphatic-aromatic type diacid diol polyester.
Regarding Claims 17, there is no perceived difference in structure between “filler” and the polyethylene terephthalate of Tanaka’s starting composition. Accordingly, such additional polyester is seen to constitute a filler in the absence of evidence to the contrary.
Claim(s) 4, 5, 7, 8, 15, 16, 19, and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka (JP2006-274231A) in view of Ishihara (JP2007-224113A). As the cited JP publications are in a non-English language, machine-translated versions of the publications will be cited to.
The discussion regarding Tanaka within ¶ 18-22 is incorporated herein by reference.
Regarding Claims 4 and 7, Tanaka teaches the initial biodegradable material can be composites of polylactic acid and other substances (¶ 16), but differs from the subject matter claimed in that the other specified materials of the claims is not described. Ishihara also pertains to the recovery of lactic acid monomer via hydrolysis of waste biodegradable polylactic acid material (Abstract; examples). Ishihara teaches such methods are applicable to waste materials composed of polylactic acid and various other materials, such as aliphatic polyesters and wood/paper (construed as polymers of natural origin). Accordingly, it would have been obvious to one of ordinary skill in the art to treat waste materials with additional materials such as those set forth by Ishihara because doing so would facilitate the recovery of lactic acid monomer from a wider range of waste materials/mixtures as taught by Tanaka/Ishihara. As polyesters are mainly “diacid/diol” or “hydroxyacid” types, one of ordinary skill would at once envisage the addition of aliphatic diacid/diol polyesters in view of the teachings of Ishihara.
Regarding Claim 8, Ishihara teaches the initial materials can comprise wood/paper (polymers of natural origin) and that foreign materials can be removed as much as possible prior to treatment (¶ 9). Accordingly, it would have been obvious to one or ordinary skill in the art to remove various foreign materials such as wood/paper from the materials prior to pre-treatment because doing so would facilitate the processing of waste polylactic acid materials into recovered monomers as taught by Ishihara.
Regarding Claims 5, 15, and 16, Tanaka teaches mixtures of polylactic acid and polyethylene terephthalate (aliphatic-aromatic type diacid diol polyester). Ishihara describes aliphatic polyesters and various vinyl polymers such as polyethylene (¶ 9). As polyesters are mainly “diacid/diol” or “hydroxyacid” types, one of ordinary skill would at once envisage the addition of aliphatic diacid/diol polyesters in view of the teachings of Ishihara. While not describing combinations of these types of resins, the teachings of Ishihara make clear one would nevertheless expect depolymerization of lactic acid to occur despite the presence of such materials individually. it is well settled that it is prima facie obvious to combine two ingredients, each of which is targeted by the prior art to be useful for the same purpose. In re Crockett, 279 F.2d 274, 126 USPQ 186 (CCPA 1960). Ex parte Quadranti, 25 USPQ2d 1071 (Bd. Pat. App. & Inter. 1992). Also, case law holds that “it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). In view of such, it would have been obvious to one of ordinary skill in the art that combinations of other polymeric materials in conjunction with waste polylactic acid can be utilized to predictably afford the depolymerization/recovery of lactic acid for the purposes of recycling in view of Tanaka/Ishihara.
Regarding Claims 19 and 20, there is no perceived difference in structure between “filler” and the polyethylene terephthalate of Tanaka’s starting composition. Accordingly, such additional polyester is seen to constitute a filler in the absence of evidence to the contrary.
Claim(s) 13 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka (JP2006-274231A) in view of Ajioka (Polymer Degradation and Stability, 1998, 59, 137-143) and Ishihara (JP2007-224113A). As the cited JP publications are in a non-English language, machine-translated versions of the publications will be cited to.
The discussion regarding Tanaka and Ajioka within ¶ 25-27 is incorporated herein by reference.
Regarding Claim 13, Tanaka teaches the initial biodegradable material can be composites of polylactic acid and other substances (¶ 16), but differs from the subject matter claimed in that the other specified materials of the claims is not described. Ishihara also pertains to the recovery of lactic acid monomer via hydrolysis of waste biodegradable polylactic acid material (Abstract; examples). Ishihara teaches such methods are applicable to waste materials composed of polylactic acid and various other materials, such as aliphatic polyesters and wood/paper (construed as polymers of natural origin). Accordingly, it would have been obvious to one of ordinary skill in the art to treat waste materials with additional materials such as those set forth by Ishihara because doing so would facilitate the recovery of lactic acid monomer from a wider range of waste materials/mixtures as taught by Tanaka/Ishihara. As polyesters are mainly “diacid/diol” or “hydroxyacid” types, one of ordinary skill would at once envisage the addition of aliphatic diacid/diol polyesters in view of the teachings of Ishihara.
Regarding Claim 14, Tanaka teaches mixtures of polylactic acid and polyethylene terephthalate (aliphatic-aromatic type diacid diol polyester). Ishihara describes aliphatic polyesters and various vinyl polymers such as polyethylene (¶ 9). As polyesters are mainly “diacid/diol” or “hydroxyacid” types, one of ordinary skill would at once envisage the addition of aliphatic diacid/diol polyesters in view of the teachings of Ishihara. While not describing combinations of these types of resins, the teachings of Ishihara make clear one would nevertheless expect depolymerization of lactic acid to occur despite the presence of such materials individually. it is well settled that it is prima facie obvious to combine two ingredients, each of which is targeted by the prior art to be useful for the same purpose. In re Crockett, 279 F.2d 274, 126 USPQ 186 (CCPA 1960). Ex parte Quadranti, 25 USPQ2d 1071 (Bd. Pat. App. & Inter. 1992). Also, case law holds that “it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). In view of such, it would have been obvious to one of ordinary skill in the art that combinations of other polymeric materials in conjunction with waste polylactic acid can be utilized to predictably afford the depolymerization/recovery of lactic acid for the purposes of recycling in view of Tanaka/Ishihara.
Claim(s) 1, 2, 4, 6-8, 13, 17, and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ishihara-2 (JP2007-023176A) in view of Ajioka (Polymer Degradation and Stability, 1998, 59, 137-143). As the cited JP publication is in a non-English language, a machine-translated version of the publication will be cited to.
Regarding Claims 1, 2, 4, and 13, Ishihara-2 teaches methods of recovering lactic acid monomers via depolymerizing biodegradable polyester composition (Abstract). The initial biodegradable compositions contain polyesters such as polylactic acid (polyhydroxyalkanoate) or polyalkylene adipate/succinate (aliphatic polyester from diacid/diol) (¶ 10). The initial compositions can contain various additives, whereby in some embodiments foreign materials are removed prior to depolymerization (¶ 10). Depolymerizing occurs with water at temperatures in which polyesters such as polylactic acid is in a molten state to yield lactic acid/lactide monomers and oligomers (¶ 11-12). After which, the desired depolymerization products are separated out from impurities and unreacted materials (¶ 15). The recovered lactic acid raw materials can be subjected to polymerization reaction to produce recycled polylactic acid (¶ 3). The disclosure of Ishihara-2 suggests 0 wt% of removed additives being fed to monomers/oligomers in polymerization step 3), which falls within the scope of “up to 5% by weight”.
With respect to the combination of polylactic acid and diacid/diol polyester being used, Ishihara-2 suggests the initial compositions are mixtures of various materials from recovered waste materials (¶ 10). It is well settled that it is prima facie obvious to combine two ingredients, each of which is targeted by the prior art to be useful for the same purpose. In re Crockett, 279 F.2d 274, 126 USPQ 186 (CCPA 1960). Ex parte Quadranti, 25 USPQ2d 1071 (Bd. Pat. App. & Inter. 1992). Also, case law holds that “it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). Given Ishihara-2 describes polylactic acid and various diol/diacid polyesters as being suitable for the same purpose, namely being capable of being depolymerized to yield starting materials suitable for recycle, it would have been obvious to one of ordinary skill in the art to utilize combinations of polyester waste materials, such as combinations of polylactic acid with diol/diacid polyesters, and predictably afford starting materials suitable for use for the very same purpose taught by Ishihara-2.
Ishihara-2 differs from the subject matter claimed in that particular re-polymerization mixtures/protocols are not described. Ajioka teaches it was known in the art polylactic acid can be created via direct polycondensation of lactic acid monomer such as where roughly 36.2 g / 436.3 g ~ 8 wt% is used (Abstract; Section 2.2). Ajioka notes the polyactic acids obtained are of sufficient strength/toughness for practical use (Introduction). It would have been obvious to one of ordinary skill in the art to apply the direct polycondensation methods of Ajioka to the recycled monomers of Ishihara-2 because doing so would provide polyactic acids sufficient strength/toughness for practical use as taught by Ajioka.
Regarding Claims 6-8, 17, and 19, Ishihara-2 teaches the compositions can comprise various additional materials such as paper, soil, dust, metals, and wood (¶ 10), broadly construed as “fillers”. Paper/wood is construed as polymers of natural origin. Ishihara-2 teaches embodiments where foreign materials are removed prior to treatment (¶ 10), suggesting embodiments where materials such as paper/wood are removed prior to treatment.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHEN E RIETH whose telephone number is (571)272-6274. The examiner can normally be reached Monday - Friday, 8AM-4PM Mountain Standard Time.
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, Duane Smith can be reached at (571)272-1166. 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.
/STEPHEN E RIETH/Primary Examiner, Art Unit 1759