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 .
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.
Claim(s) 1-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Amit Kumar ET AL: "Hydrogenative Depolymerization of Nylons",
Journal of the American Chemical Society, vol. 142, no. 33, 19 August 2020 (2020-08-19), pages 14267-14275; in view of Eric M. Krall, Controlled hydrogenative depolymerization of polyesters and polycarbonates catalyzed by ruthenium(II) PNN pincer complexes; Chem. Commun., 2014, 50, 488, 2014.
.
Amit Kumar ET AL discloses the hydrogenative depolymerization of polyamide polymers and further demonstrates , in an example, hydrogenative cleavage of a polyurethane resin using a homogeneous Ru pincer catalyst under molecular hydrogen at elevated temperatures to yield amine and alcohol containing products. In this example, the polyurethanes is hydrogenated in a hydrogen atmosphere in the presence of at least one homogeneous transition metal catalyst complex, wherein the
transition metal is a ruthenium pincer complex, to obtain a polyamine and a
polyol, characterized in that the hydrogenation is carried out at a reaction
temperature of 150 °C in dimethylsulfoxide (DMSO) as solvent (Tables 1 and 2 (#9), pages 14267-14275 ,polyurethane resin).
Amit Kumar ET AL does not disclose conducting the reaction in a non-reducible solvent. However, the reference does teach the use of different alternative organic solvents like diglyme or meta-cresol which provide similar results indicating that solvent selection is a routine variable for optimizing the reaction. (pages 14268 and 14269, left column, first paragraph). It is routine optimization for the skilled person to improve the efficiency of existing processes would therefore look to use other solvents as well.
Krall et al. discloses hydrogenative depolymerization reactions conducted under hydrogen gas pressure including 13.6 atm, 47.6 atm and 54.4atm H2 as shown in Table 1 and in Experimental section . See pages 4885-4886. Krall et al. also discloses homogenous R(II) PNN pincer complexes as the hydrogenation catalysts. See abstract, scheme 1 page 4884. (Krall, Table 1, page 4885). Note that Ruthenium is Group 8 transition metal as used through Krall’s catalytic system. See pages 4884-4885. Further Krall discloses hydrogenative depolymerization of condensation polymers to yield diols, glycols and alcohol -containing products including ethylene glycol, propylene glycol and aliphatic diols. See Table 1, Scheme 1 pages 4884-4886. Krall expressly discloses reaction temperatures of 120C and 160C for reactions. See table 1. Krall discloses conducing hydrogenative depolymerization in hydrogen inert organic solvents including THF (table 1) Anisol(table 1) and mixtures thereof. These solvents are nonreducible under hydrogenation conditions and possess low molecular dipole moments consistent with the claimed solvent property. See Table 1 pages 4885-4886.
Accordingly, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the process of Kumar et al. to employ an ether solvent such as THF as taught by Krall et al. in order to provide a solvent that maintains catalyst activity and stability under hydrogenation conditions. Selection of a known solvent based on its recognized suitability for hydrogenation reactions would be routine optimization and is obvious to one of ordinary skill in the art. Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended purpose. See Sinclair & Carroll Co. v. Interchemical Corp., 325 US 327, 65 USPQ 297 (1945). (Selection of solvent having boiling point and vapor pressure properties recognized as being ideal for printing inks into printing ink compositions found obvious on its face). See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960). (Selection of a known plastic to make a plastic container found obvious on its face).
With regard to claim 2, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to employ a non-reducible solvent comprising an electron pair donor since Krall teaches ethers such as THF which possess electron pair donating functions.
With regard to claim 3, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to select the solvent from ethers, alcohols or amines since ethers are expressly taught by Krall and alcohols and amines are closely related solvent classes routinely used in homogeneous hydrogenation chemistry.
With regard to claim 4, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use an aromatic solvent since Krall discloses aromatic solvents such as anisole.
With regard to claim 5, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to select benzene, toluene , xylene mesitylene or anisole as the aromatic solvent since they are well-known members of the same solvent class disclosed by Krall.
With regard to claim 6, note that Kumar explains that DMSO was used to dissolve nylon (see right col. page 14269) and not to participate in hydrogenation reaction and clearly discloses that other solvents such as diglyme, metacresol, give similar results om pages 14268-14269 which demonstrates that the solvent choice was adjustable and not critical to the reaction outcome. Thus, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to carry out the hydrogenation in the absence of DMSO when substituting the hydrogen inert solvents taught by Krall.
With regard to claim 7, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to conduct the reaction at temperatures discloses as Kumar discloses hydrogenation at 150C and temperatures adjustment is a routine optimization parameter.
With regard to claim 8, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to apply the process toa aromatic isocyanate based polyurethane which are common of polyurethane materials.
With regard to claim 9, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to select the transition metal catalyst complex as claimed as Ru is expressly disclosed and the remaining metals are known hydrogenation active metals.
With regard to claim 10, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to employ manganese in combination with an aromatic solvent as taught by Krall.
With regard to claim 11, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use a ligand as claimed since Krall expressly discloses PNN type pincer ligands
With regard to claim 12, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to select the recited ligand structure as a species within the disclosed PNN ligan genus.
With regard to claim 13, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to employ the recited ligand since it is a routine modification of the known pincer ligand processes.
With regard to claim 14, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to select the claimed ligand species as a predictable variation within the disclosed ligand class.
With regard to claim 15, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to conduct the reaction at a hydrogen pressure of 30-500bar as hydrogen pressure is a result effective variable in hydrogenation reactions.
With regard to claim 16, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to conduct the reaction at the parameters claims since base assisted pincer catalysts is well known in the art.
In conclusion, in view of the above, there appears to be no significant difference between the reference(s) and that which is claimed by applicant(s). Any differences not specifically mentioned appear to be conventional. Consequently, the claimed invention cannot be deemed as unobvious and accordingly is unpatentable.
Obviousness-type 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 1-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims of copending Application No.18031401.
Claim 1 of the instant application differs from the related reference claims in that the spent polymer feedstock is a polyurethane rather than a polyamide and in reciting a minimum hydrogenation temperature of at least 120C. However, both claims are directed to the same inventive concept which is the catalytic hydrogenative depolymerization of nitrogen containing polymers using Group 7-10 transition metal catalyst system under hydrogen in a non-reducible solvent environment to recover amine and alcohol containing products suitable for value chain return. In the absence of additional process limitations tied specifically to the chemical structure of the polyurethane feedstock, the substitution of one nitrogen containing polymer, i.e. polyamide, with another nitrogen containing polymer, i.e. Polyurethane represents an obvious variation of the same invention rather than a patentably distinct process. Furthermore, with respect to the dependent claims, although the related dependent claims are not identical, they are not patentably distinct from one another. Each claim includes limitations that, when read as a whole, encompass the same subject matter as currently claimed, and thus would have been obvious to the skilled artisan. See also claims 2-13 of related application.
This is a provisional nonstatutory double patenting rejection.
As a future response to the rejection above, applicants are advised to not withhold a response, such as, a terminal disclaimer (TD), to the pending ODP rejection. It is noted that the filing of a TD cannot be held in abeyance since that filing “is necessary for further consideration of the rejection of the claims” as set forth in MPEP 804 (I) (B) (1) quoted below:
“As filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application’s claims, is necessary for further consideration of the rejection of the claims, such a filing should not be held in abeyance. Only objections or requirements as to form not necessary for further consideration of the claims may be held in abeyance until allowable subject matter is indicated.”
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.
Claim 6 is 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 6 recites the limitation "DMSO" in line 2. There is a lack of antecedent basis for this limitation in the claim since it introduces “DMSO” for the first time and was not previously introduced nor is dimethyl sulfoxide otherwise defined or referenced in any preceding claim.
Information Disclosure Statement
Note that any future and/or present information disclosure statements must comply with 37 CFR § 1.98(b), which requires a list of the publications to include: the author (if any), title, relevant pages of the publication, date and place of publication to be submitted for consideration by the Office.
Improper Claim Dependency
Prior to allowance, any dependent claims should be rechecked for proper dependency if independent claims are cancelled.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TERRESSA M BOYKIN whose telephone number is (571)272-1069. The examiner can normally be reached M-F 7-5:30.
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, Heidi Kelley can be reached at 571 270-1831. 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.
/Terressa Boykin/Primary Examiner, Art Unit 1765