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 II, claims 7-18 in the reply filed on 1/8/2026 is acknowledged.
Claims 1-6, 19, and 20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 1/8/2026.
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 7-18 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.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). Claim 7 requires that water be added to “extract an aromatic diol compound”. To “extract” a substance ordinarily means transferring a solute from one liquid phase from another (i.e. liquid-liquid extraction) or selectively dissolving a solid substance (solid-liquid extraction; also called leaching). See IUPAC; attached. In the present case however, the specification details a process where dichloromethane solution of bisphenol A is combined with water to induce crystallization/precipitation of solid bisphenol A at the liquid-liquid interface (see for instance Page 27 and Figure 1 of the specification). Bisphenol A is not being “extracted” by water in the ordinary sense of the word (since bisphenol A is not being transferred/dissolved into the aqueous solvent) and an express re-definition of the term is not found within the specification. Accordingly, the intended scope of the claim is unclear as the metes and bounds of what does or does not constitute an “extraction” within the scope of the disclosure is undefined.
As claims 8-18 depends from claim 7, they are rejected for the same issue discussed above. This issue can be re
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) 7-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takemoto (JP2005-162675A). As the cited JP publication is in a non-English language, a machine-translated version of the publication will be cited to.
Regarding Claim 7, Takemoto teaches methods for preparing bisphenol A (Abstract; Examples) and describes examples where 264 pbw of a 14.2 wt% polycarbonate solution is depolymerized (37.5 pbw) for form bisphenol A salt, after which the obtained salt is treated with 337.5 water, acid, and organic solvent to form bisphenol A (aromatic diol compound) (reading on a first aromatic diol “extraction” step), and then two more “extractions” involving adding 45 pbw pure water to the aromatic diol compound is performed (¶ 78-82). The example of Takemoto is therefore seen to add 11.4 times the weight of polycarbonate resin.
The particular embodiment of Takemoto’s example differs from the subject matter claimed in that the present claims require 12 times or more of water relative to polycarbonate resin. In this regard, the 45 pbw water steps take place with respect to roughly 28.2 pbw of bisphenol A (¶ 82). Takemoto teaches each water addition step individually can use 50-1000 pbw of water relative to 100 pbw of aromatic dihydroxy compound (¶ 58), which in the context of Takemoto’s example equates to roughly 14-282 pbw of water for each step. Note also Takemoto indicates the water washings are performed “twice or more” (¶ 56), suggesting that there is no particular upper limit in terms of the amount of water used. It is therefore evident Takemoto describes overlapping water quantities. 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 Takemoto suggests the claimed range. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Takemoto. See MPEP 2123.
Regarding Claims 8 and 9, Takemoto’s example is seen to add water 3 times. Takemoto expressly teaches extracting/removing each 45 pbw of water in a centrifuge in sequence (¶ 82), reading on steps of removing water between steps of adding water.
Regarding Claims 10 and 11, Takemoto’s example uses 45 pbw of water in two different steps (1.2 times the weight of polycarbonate). Thus, the particular embodiment of Takemoto’s example differs from the subject matter claimed in that 2x or 4x quantities of water is not used and with respect to the number of steps performed.
Takemoto teaches the steps individually can use 50-1000 pbw of water relative to 100 pbw of aromatic dihydroxy compound (¶ 58), which in the context of Takemoto’s example equates to roughly 14-282 pbw of water for each step (i.e. 0.4x to 7.5x based on 37.5 pbw polycarbonate). Takemoto indicates the water washings are performed “twice or more” (¶ 56), which overlaps 6 to 10 and 3 to 5. Therefore, Takemoto teaches 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 Takemoto suggests the claimed range. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Takemoto. See MPEP 2123.
Regarding Claim 12, Takemoto teaches after the washings, the solids are collected and dried (¶ 82), construed as a further purification step.
Regarding Claims 13-17, Takemoto teaches purification via water and organic solvent washings performed alternatively (¶ 78-82). Takemoto indicates such washings are performed “twice or more” (¶ 56). Thus, any additional washings beyond that required by independent claim 7 is seen to read as an additional purification steps involving organic solvent (first solvent) washings and water (second solvent) washings.
Takemoto teaches the organic solvent washings are performed at 5-40 degrees C and the water washings are performed at 5-80 degrees C (¶ 57-58), which overlaps the ranges of claim 14. The ranges of Takemoto also infer overlaps in terms of temperature differences between the two solvents (e.g. 70 degrees for water and 30 degrees for organic solvent is a 40 degree difference). 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 Takemoto suggests the claimed range. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Takemoto. See MPEP 2123.
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takemoto (JP2005-162675A) in view of Takemoto-2 (JP2005-179460A). As the cited JP publications are in a non-English language, machine-translated versions of the publications will be cited to. The Negishi machine translation was received on 4/14/2023.
The discussion regarding Takemoto within ¶ 12-19 is incorporated herein by reference.
Regarding Claim 18, Takemoto differs from the subject matter claimed in that adsorption purification is not described.
Takemoto-2 also pertains to the depolymerization of polycarbonates (Abstract) and teaches after reaction, an adsorbent can be added to the aqueous mixture of bisphenol A salts and then removed so as to remove organic impurities such as dyes/pigments (¶ 9; Examples). It would have been obvious to one of ordinary skill in the art to treat the alkali solutions of bisphenol A of Takemoto with the adsorbents of Takemoto-2 because doing so would remove organic impurities such as dyes/pigments as taught by Takemoto-2. As Takemoto-2 teaches treatment of aqueous alkali bisphenol A mixtures, such treatment would logically take place prior to acidification/precipitation of bisphenol A and subsequent extractions.
Conclusion
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/STEPHEN E RIETH/Primary Examiner, Art Unit 1759