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 .
Claims 1-9, 12-20 are pending.
Claims 7-9, 12-18 are under examination on the merits.
Claims 7, 8, 12 are amended.
Claims 10 and 11 are newly canceled.
No claims are newly added.
Claim Rejections - 35 USC § 112
The rejection in the previous action of the phrasing “relative to 1 mole of the polycarbonate-based resin” in claims 11 and 12 is withdrawn in view of applicant’s amendment to “relative to 1 mole of a repeating unit of the polycarbonate-based resin”.
Claim Objections
The objection set forth in the previous action over claim 7’s “adding acid so that the pH of the depolymerization reaction product is 2 to 8 to form a depolymerization reaction product” is withdrawn in view of applicant’s amendment of the phrase.
Double Patenting
The provisional rejection in the previous action of claims 7, 8 and 12 on the ground of nonstatutory double patenting as being unpatentable over claim 7, 10-13 of copending Application No. 18/032,117 (reference application) is amended below.
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.
Claim 7 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of copending Application No. 18/032,117 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the range of pH overlaps at pH 2.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 7-9, 12-16, 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 2006022183 by Takemoto et al.
Regarding claim 7, Takemoto describes a method of obtaining aromatic dihydroxy compounds (monomers) from waste aromatic polycarbonate (waste plastic) (translation p.1 final paragraph). Takemoto describes:
depolymerizing the polycarbonate by depolymerization reaction (“(A)…decomposing…by transesterification” translation paragraph 9)
adding acid so that the pH of the depolymerization is optionally acidic (paragraph 9 step (B); paragraph 32 middle of p.28), where “acidic” is commonly known to encompass pH below 7
removing impurities (step (C) paragraph 9 separating organic solvent, dialkyl carbonate and aromatic dihydroxy compound to obtain aromatic dihydroxy compound paragraph 9; paragraph 33 removing water)
separating a carbonate precursor (aromatic dihydroxy compound) from the depolymerization product (paragraph 9 step (C)); paragraph 34-36)
Takemoto describes the presence of solvent ethanol in an embodiment (paragraph 21) present in terms of “per mole of carbonate bonds in the aromatic polycarbonate” (paragraph 22), describing a range of 2.4 to 7 moles per mole of carbonate bonds (paragraph 22). Since the instant claim is to “a repeating unit of the polycarbonate-based resin” that can be, for example a dimer or trimer instead of a single carbonate bond, Takemoto’s range overlaps with the claimed range. For example 5 moles of ethanol per single carbonate bond is equal to 10 moles ethanol per two carbonate bonds.
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 Takemoto describes values overlapping with the claimed range.
Regarding claim 8, Takemoto describes the same reaction, stating that adding water without acid causes dihydroxy compounds to form salts due to metal hydroxides (paragraph 32 p.28 final paragraphs). Both Takemoto and the instant describe the dihydroxy and metal hydroxides as present prior to the addition of acid (Takemoto paragraph 23, paragraph 30- metal hydroxide catalyzes depolymerization; instant submitted specification p.13 final paragraph -p.14 paragraph 1, p.16 paragraph 2- metal hydroxide catalyzes depolymerization into aromatic diol, where diol is synonym to dihydroxy). Thus by adding acid in both instances, the salts of aromatic diol are converted into an aromatic diol.
Regarding claim 9, Takemoto describes removing impurities after acid addition (paragraph 9) which includes separating a water layer (paragraph 33 “aqueous solution phase”) containing impurities from an organic solvent layer containing aromatic diol and carbonate precursor (paragraph 34 organic solvent, dialkyl carbonate and aromatic dihydroxy present in organic phase).
Regarding claim 12, Takemoto describes 0.002-0.4 mole per mole of the carbonate bond (paragraph 24), which falls within the claimed range.
Regarding claim 13, Takemoto describes adding an antioxidant to the reaction (paragraph 30).
Regarding claim 14, Takemoto describes reduced pressure distillation (paragraph 35).
Regarding claim 15, Takemoto describes purifying the aromatic dihydroxy compound via dissolving and contact with activated carbon (paragraph 9 step (D)).
Regarding claim 16, Takemoto describes a washing step of the aromatic dihydroxy compound (paragraph 42).
Regarding claim 18, Takemoto describes an adsorption purification step (contact with activated carbon ); paragraph 9 step (D).
Allowable Subject Matter
Claim 17 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 17 describes a recrystallization step. JP 2006022183 by Takemoto, used above in rejection and the closest prior art, teaches away from recrystallization in the background section (paragraph 5 in describing Patent Document 4). Therefore altering Takemoto to include recrystallization is not obvious to one of ordinary skill.
Non-finality
This action is made nonfinal as the previous action did not address the patentability of claims 15-18.
Response to Arguments
Applicant’s argument p.11 paragraph 2 of Remarks submitted 6/26/26 has been considered but is not persuasive. Applicant states that Takemoto fails to teach the newly claimed pH range because he prefers a pH range of 6-8. This is not found convincing because Takemoto also teaches “acidic” pH and calls out the pH 6-8 range as preferential, not limiting.
Applicant further states that Takemoto provides no indication that a substantially lower pH would improve color characteristics. This is not found convincing because first, color characteristics are not in the claims currently examined. Second, should applicant be arguing unexpected results, overcoming a §103 rejection based on unexpected results requires the combination of three different elements: the results must fairly compare with the prior art, the claims must be commensurate in scope and the results must truly be unexpected. (See MPEP §716.02) Applicant's showing of allegedly unexpected results does not satisfy these requirements. The improved color characteristics are at least not commensurate in scope with the claims, since the claims are to any polycarbonate-based resin, i.e. with any additives, not just those present in examples. The mode of removing impurities from the depolymerization reaction product is not specified in claim 7, and would have effect on the color of the resulting product. These are merely examples of how the claims are not commensurate with the examples proffered. Furthermore, instant Example 2 (pH 7) arrives at better purity and yield than instant Example 3 (pH 5), indicating that applicant’s unexpected results are not exclusive to the claimed pH range (pH 2-5).
Applicant’s argument p.12 paragraph 2 and p.13 final paragraph has been considered but is not persuasive. Applicant states that Takemoto’s description of ethanol per mole of carbonate bonds renders the instantly claimed range patentable. This is not found convincing because the instant claim language is broader than “per mole of carbonate bonds”; the instant “repeating unit” is interpreted under broadest reasonable interpretation to include ANY repeating unit in polycarbonate. This includes for example dimers which, as described above in rejection, meets Takemoto’s disclosed range.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTINA W ROSEBACH whose telephone number is (571)270-7154. The examiner can normally be reached 8am-3:30pm.
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, Randy Gulakowski can be reached at 5712721302. 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.
/CHRISTINA H.W. ROSEBACH/Examiner, Art Unit 1766
Prosecution Insights