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 of Group I, claims 1-25 in the reply filed on 12/17/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 26-37 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected system, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/17/2025.
Specification
The abstract of the disclosure is objected to because “Fig. 1” should be removed. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
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 2, 3, 5-9, 11-18, and 23-25 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 2, the phrases "more preferably" and “even more preferably” 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).
Regarding claim 3, the phrases " preferably" and “more preferably” 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).
Claims 3, 5-8 refer to “the alcoholic solvent separation step”, but claim 1 has two different separation steps involving alcoholic solvent. Accordingly, the intended scope of the claim is unclear. In the interest of compact prosecution, it is presumed the limitation is referring to the separation step involving dye and alcoholic solvent.
As claims 11 and 24 depend from claim 5, they are rejected for the same issue discussed above.
Regarding claim 9, the phrases " preferably" and “more preferably” 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).
Regarding claim 12, the phrases “preferably”, "more preferably" and “even more preferably” 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).
Regarding claim 13, the phrase "more preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 14, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
As claims 15-18 depend from claim 14, they are rejected for the same issues discussed above.
Claim 18 indicates the first and second releasing steps are “configured for” selective release of first and second colorants. Claim 18 is a method claim. It is generally unclear whether claim 18 is actively requiring that first and second colorants be present within waste polymer and that said colorants are selectively released owing to first and second extractions.
Regarding claim 23, the phrase "more preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 25, the phrase "particularly" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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.
Claim 25 is 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.
Claim 1 recites “at conditions preventing a reaction between the dye and the alcoholic solvent”, which requires that any reaction between dye and alcohol solvent not occur. Claim 25, which depends on claim 1, recites “wherein the reaction to be prevented is an esterification or trans-esterification reaction of the dye with the alcoholic solvent”. The limitation broadens the scope of the claim (since claim 25 apparently is now open to other reactions besides esterification/trans-esterification occurring). Accordingly, claim 25 fails to include all of the limitations of the claim upon which it depends.
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
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, 4, 7, 9, 10, 12-21, 23, and 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mukai (US 2009/0133200 A1).
Regarding Claims 1, 19, 23, and 25, Mukai teaches methods of recovering dyes from waste polyester (Abstract, Examples) and describes embodiments where waste polyester is treated with ethylene glycol so as to extract/release dye, the decolorized waste polymer is separated via filtration, and then the polyester is depolymerized using catalyst and ethylene glycol (¶ 77-80). Mukai teaches the ethylene glycol is removed from the dye extracts via distillation to recover the ethylene glycol for re-use (¶ 83) such as in the depolymerization step (¶ 40). Mukai teaches the weight ratio of ethylene glycol to waste polymer can range from 4-10:1 (¶ 34). Thus, while not describing individual solvent:polymer ratios within the range claimed, Mukai clearly suggests overlapping ranges. 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 Mukai suggests the claimed range. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Mukai. See MPEP 2123. Mukai expressly indicates the dye is extracted with ethylene glycol and does not allude to any chemical reaction taking place between dye and solvent such as transesterification.
Regarding Claims 3 and 7, Mukai teaches ethylene glycol is distilled to sufficient purity to enable re-use, such as for extraction, depolymerization solvent, and/or raw material for creating polyesters (¶ 83). While not providing a numerical percentage for purity, Mukai nevertheless indicates the degree of purity is a result effective variable subject to routine optimization by one of ordinary skill in the art. See MPEP 2144.05(II). Case law holds that “discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In view of this, it would have been obvious to one of ordinary skill in the art to discover optimal/workable glycol purities within the scope of the present claims so as to produce sufficient feedstock for the creation of new, relatively pure, polyesters or to facilitate extraction/depolymerization.
Regarding Claim 4, Mukai teaches embodiments where an extraction step occurs solely with ethylene glycol (¶ 77).
Regarding Claim 9, ethylene glycol has a boiling point of roughly 197 degrees C.
Regarding Claim 10, Mukai teaches extraction temperatures ranging from 100-200 degrees C (¶ 35), which overlaps the range claimed. 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 Mukai suggests the claimed range. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Mukai. See MPEP 2123.
Regarding Claim 12, Mukai teaches embodiments where 100 vol% of polyester is waste fabric (¶ 77).
Regarding Claim 13, Mukai teaches the degree of extraction may vary depending on the amount solvent, temperature used, and extraction method (¶ 34-36). Thus, while not providing exact numerical quantities of degree of extraction, Mukai nevertheless indicates the degree of extraction is a result effective variable subject to routine optimization by one of ordinary skill in the art. See MPEP 2144.05(II). Case law holds that “discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In view of this, it would have been obvious to one of ordinary skill in the art to discover optimal/workable degrees of extraction within the scope of the present claims so as to optimize material costs, temperatures, and degrees of purity in the materials obtained.
Regarding Claim 14, Mukai teaches embodiments where solvent is removed from waste polymer after extraction via centrifugation (¶ 38), which implies embodiments where at least some of releasing occurs within a rotating vessel. Alternatively, it would have been obvious to one of ordinary skill in the art to conduct the releasing step within the centrifuge because doing so would eliminate the need to transfer the solvent/waste polyester mixtures between vessels.
Regarding Claim 15, Mukai teaches solvent is added to vessel and extraction occurs at 170 degrees C for 10 minutes (¶ 77). As no ramp-up temperature is indicated or otherwise an indication that the vessel is heated to 170 degrees, it is readily implied that the solvent is pre-heated to the 170 degrees C temperature prior to addition to the vessel.
Regarding Claim 16, Mukai teaches a plurality of extraction steps can be used (¶ 34; Examples) reading on solvent being refreshed / treated to have the predefined extraction temperature.
Regarding Claim 17, Mukai teaches embodiments where multiple extraction steps are used (¶ 77-79, 84-85). The recovered ethylene glycol can be re-used as an extraction solvent (¶ 83, 88). Alternatively, Mukai teaches first extraction with ethylene glycol and second extraction with xylene (¶ 77-79) with overlapping temperature ranges (¶ 35), implying embodiments where the first extraction takes place at a lower temperature than second extraction.
Regarding Claim 18, Mukai teaches first extraction with ethylene glycol and second extraction with xylene (¶ 77-79), which is seen to allow for selective release of first and second colorants according to polarity/solubility.
Regarding Claims 20 and 21, Mukai teaches embodiments where polyamide is further contained in polyester fibers, which is removed prior to depolymerization reaction step (¶ 44-45). The timeframe described by Mukai suggests embodiments where polyamide is removed subsequent to separating waste polymer from alcohol solvent and prior to depolymerization of polyester.
Claim(s) 5, 8, 11, and 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mukai (US 2009/0133200 A1) in view of Fang (CN110845761A). As the cited CN publication is in a non-English language, a machine-translated version of the publication will be cited to.
The discussion regarding Mukai within ¶ 27-39 is incorporated herein by reference.
Regarding Claims 5 and 8, Mukai differs from the subject matter claimed in that the protocol for removing dye from extractant does not include solvent-solvent extraction or nanofiltration. Fang also pertains to the depolymerization / removal of impurities of polyesters (¶ 1-2). Fang teaches dye/pigment impurities can be removed from crude diol mixtures via solvent-solvent extraction with a hydrocarbon second solvent capable of forming two liquid phases (i.e. immiscible), after which the resulting glycol mixture is subjected to nanofiltration to ultimately yield a clear mixture where dye/pigment is unobservable (¶ 34, 46-47). It would have been obvious to one of ordinary skill in the art to utilize the extraction/nanofiltation protocol of Fang within the methods of Mukai because doing so would predictably and effectively remove extracted dye from the ethylene glycol mixtures of Mukai as taught by Fang.
Regarding Claims 11 and 24, Fang teaches various second solvents such as carbon tetrachloride (¶ 34), construed as halogenated alkane. Such a solvent has lower polarity than ethylene glycol.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mukai (US 2009/0133200 A1) in view of Inada (JP2005-330444A). 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 Mukai within ¶ 27-39 is incorporated herein by reference.
Regarding Claim 6, Mukai differs from the subject matter claimed in that purification of ethylene glycol extract via carbon absorption is not described. Inada also pertains to the extraction of dyes from polyesters using ethylene glycol (Abstract). Inada teaches the extract can also be purified via absorption on activated carbon (¶ 41). Accordingly, it would have been obvious to one of ordinary skill in the art to utilize the activated carbon protocol of Inada within the methods of Mukai because doing so would predictably and effectively remove extracted dye from the ethylene glycol mixtures of Mukai as taught by Inada.
Claim(s) 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mukai (US 2009/0133200 A1) in view of Castillo (US 2018/0371206 A1).
The discussion regarding Mukai within ¶ 27-39 is incorporated herein by reference.
Regarding Claim 22, Mukai differs from the subject matter claimed with respect to the use of a functionalized magnetic particle catalyst. Castillo teaches it was known in the art depolymerization of polyesters can take place via using magnetic nanoparticles with catalyst entity (Abstract; ¶ 57-58). The catalysts provide good degradation yields and are easy to separate/recover using magnets (Abstract; ¶ 18, 60). It would have been obvious to one of ordinary skill in the art to utilize the magnetic nanoparticle catalysts of Castillo within the methods of Mukai because doing so would promote depolymerization effectively and provide removal of catalyst via magnets as taught by Castillo.
Claim(s) 1-4, 6, 7, 9, 10, 12-17, 19-21, 23, and 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Inada (JP2005-330444A) in view of Mukai (US 2009/0133200 A1). 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, 6, 19, 23, and 25, Inada teaches methods of removing dye / depolymerizing polyesters (Abstract; Examples) and describes examples where ethylene glycol and waste polyester are combined at a weight ratio of 1,200 g : 60 g = 20:1, extracting dye from polyester into ethylene glycol solvent, separating polyester and ethylene glycol, and then depolymerizing the polyester using NaOH catalyst and ethylene glycol (¶ 80-83). The extractions containing dye can be subjected to activated carbon treatment to separate dye from the ethylene glycol; the ethylene glycol suitable for use again (¶ 41). Inada expressly indicates the dye is extracted with ethylene glycol and does not allude to any chemical reaction taking place between dye and solvent. Note also Inada expressly teaches conditions are such that esterification/trans-esterification reactions with polyester do not occur during the extraction process (¶ 47).
To the extent Inada differs from the subject matter claimed with respect to re-using the recovered ethylene glycol in the depolymerization process, Mukai also pertains to removing dye / depolymerizing polyesters (Abstract; Examples). Mukai teaches it was known in the art recovered/purified ethylene glycol from dye extractions are suitable for various purposes within the waste polyester treatment process, inclusive of the depolymerization step (¶ 40), being economically effective (¶ 39). It would have been obvious to one of ordinary skill in the art to re-utilize the purified ethylene glycol of Inada within other parts of the waste polyester treatment process such as the depolymerization step, because doing so would be economically effective as taught by Mukai.
Regarding Claims 3 and 7, Inada teaches the ethylene glycol used can be purified via distillation (¶ 41), but differs from the subject matter claimed in that ethylene glycol with dye mixture is not subject to distillation to recover glycol. Mukai teaches it was known in the art alkylene glycol after dye extraction can be purified via distillation to recover glycol in sufficient purity for use in extraction, depolymerization, or polyester synthesis in an economically effective manner (¶ 39-40). It would have been obvious to one of ordinary skill in the art to purify the dye/glycol mixtures of Inada using the distillation methods of Mukai because doing so would provide glycol in sufficient purity for use in extraction, depolymerization, or polyester synthesis in an economically effective manner as taught by Mukai.
While not providing a numerical percentage for purity, Mukai nevertheless indicates the degree of purity is a result effective variable subject to routine optimization by one of ordinary skill in the art. See MPEP 2144.05(II). Case law holds that “discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In view of this, it would have been obvious to one of ordinary skill in the art to discover optimal/workable glycol purities within the scope of the present claims so as to produce sufficient feedstock for the creation of new, relatively pure, polyesters or to facilitate extraction/depolymerization.
Regarding Claim 4, only ethylene glycol is used in the releasing step (¶ 80-81).
Regarding Claim 9, ethylene glycol has a boiling point of roughly 197 degrees C.
Regarding Claim 10, Inada teaches temperatures spanning 100-200 degrees C (¶ 43), which overlaps the range claimed. 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 Miyamoto suggests the claimed range. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Miyamoto. See MPEP 2123.
Regarding Claim 12, Inada teaches examples where 100 vol% polyester fabric is used (¶ 80).
Regarding Claim 13, Inada teaches optimum conditions for extraction treatment may vary and one can test/optimize according to the degree of extraction required (¶ 46-47). Thus, Inada indicates the degree of extraction is a result effective variable subject to routine optimization by one of ordinary skill in the art. See MPEP 2144.05(II). Case law holds that “discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In view of this, it would have been obvious to one of ordinary skill in the art to discover optimal/workable degrees of extraction within the scope of the present claims so as to optimize material costs, temperatures, and degrees of purity in the materials obtained.
Regarding Claim 14, Inada teaches embodiments where rotating vessel such as Rotocel extraction devices are used (¶ 34-35).
Regarding Claim 15, Inada teaches ethylene glycol is at predefined temperatures upon contact with fibers in extraction vessel (¶ 43, 80).
Regarding Claim 16, Inada teaches embodiments where ethylene glycol is continuously supplied and treated to predefined temperatures (¶ 80), construed as solvent being refreshed.
Regarding Claim 17, Inada teaches embodiments where a multi-stage extraction process is utilized (¶ 34), reading on first and second releasing steps. Inada teaches purified/recovered ethylene glycol can be re-used in extractions (¶ 41).
Regarding Claim 20, Inada teaches embodiments where the waste polymer further comprises polyamide/nylon (¶ 7, 71).
Regarding Claim 21, although Inada does not describe embodiments where polyamide is separated from waste polymer before catalytic decomposition of polyester, Mukai teaches separation of polyamides is difficult after the depolymerization reaction step, and notes polyamide can be removed via dissolution and removal prior to the depolymerization step (¶ 44). It would have been obvious to one of ordinary skill in the art to utilize the polyamide removal protocol of Mukai within the methods of Inada because doing so would result in easier and effective means of polyamide removal as taught by Mukai. The timeframe described by Mukai suggests embodiments where polyamide is removed subsequent to separating waste polymer from alcohol solvent and prior to depolymerization of polyester.
Claim(s) 5, 8, 11, and 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Inada (JP2005-330444A) in view of Mukai (US 2009/0133200 A1) and Fang (CN110845761A). As the cited CN and JP publications are in a non-English language, machine-translated versions of the publications will be cited to.
The discussion regarding Inada and Mukai within ¶ 51-65 is incorporated herein by reference.
Regarding Claims 5 and 8, Inada differs from the subject matter claimed in that the protocol for removing dye from extractant does not include solvent-solvent extraction or nanofiltration. Fang also pertains to the depolymerization / removal of impurities of polyesters (¶ 1-2). Fang teaches dye/pigment impurities can be removed from crude diol mixtures via solvent-solvent extraction with a hydrocarbon second solvent capable of forming two liquid phases (i.e. immiscible), after which the resulting glycol mixture is subjected to nanofiltration to ultimately yield a clear mixture where dye/pigment is unobservable (¶ 34, 46-47). It would have been obvious to one of ordinary skill in the art to utilize the extraction/nanofiltation protocol of Fang within the methods of Inada because doing so would predictably and effectively remove extracted dye from the ethylene glycol mixtures of Inada as taught by Fang.
Regarding Claims 11 and 24, Fang teaches various second solvents such as carbon tetrachloride (¶ 34), construed as halogenated alkane. Such a solvent has lower polarity than ethylene glycol.
Claim(s) 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Inada (JP2005-330444A) in view of Mukai (US 2009/0133200 A1) and Castillo (US 2018/0371206 A1). 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 Inada and Mukai within ¶ 51-65 is incorporated herein by reference.
Regarding Claim 22, Inada differs from the subject matter claimed with respect to the use of a functionalized magnetic particle catalyst. Castillo teaches it was known in the art depolymerization of polyesters can take place via using magnetic nanoparticles with catalyst entity (Abstract; ¶ 57-58). The catalysts provide good degredation yields and are easy to separate/recover using magnets (Abstract; ¶ 18, 60). It would have been obvious to one of ordinary skill in the art to utilize the magnetic nanoparticle catalysts of Castillo within the methods of Inada because doing so would promote depolymerization effectively and provide removal of catalyst via magnets as taught by Castillo.
Conclusion
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/STEPHEN E RIETH/Primary Examiner, Art Unit 1759