DETAILED ACTION
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 .
Status of the Claims
Amendment to the claims has not been filed. Thus claims 1-29 filed on 04/28/2023 are currently pending.
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-20 in the reply filed on 01/16/2026 is acknowledged.
The traversal is on the ground(s) that the restriction requirement does not provide any evidence or technical explanation to support the assertion that the methods are mutually exclusive or do not overlap subject matter; and
This is not found persuasive because each Groups I-VI are drawn to methods that are distinct and are drawn to methods that produce different products, and employ different reaction steps and elements (starting materials, catalysts, reagents and/or solvents) to produce the products, and as such the different methods would require different design, mode of operation and effect; are mutually exclusive; and are not obvious from one another.
The requirement is still deemed proper and is therefore made FINAL.
Applicant further notes that Groups II-VI depend from or include the limitations of claims of the elected Group I and requests rejoinder if the subject matter of the elected group is found allowable.
The examiner disagrees as Groups II-VI are not subject for a rejoinder. The restriction/election requirement 11/18/2025 does not include the rejoinder form paragraph as the limitation “producing a bisphenol according to claim 1” in Groups II-VI is a product by process claim language as a result of the catalyst product. The product by process limitation is not limited to the manipulations of the recited steps for preparing bisphenol, but only to the structure implied by the steps, in this case, only to bisphenol. See MPEP § 2113:
"[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) (Claim was directed to a novolac color developer. The process of making the developer was allowed. The difference between the inventive process and the prior art was the addition of metal oxide and carboxylic acid as separate ingredients instead of adding the more expensive pre-reacted metal carboxylate. The product-by-process claim was rejected because the end product, in both the prior art and the allowed process, ends up containing metal carboxylate. The fact that the metal carboxylate is not directly added, but is instead produced in-situ does not change the end product.). Furthermore, "[b]ecause validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes." Amgen Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d 1340, 1370 n 14, 92 USPQ2d 1289, 1312, n 14 (Fed. Cir. 2009). See also Purdue Pharma v. Epic Pharma, 811 F.3d 1345, 117 USPQ2d 1733 (Fed. Cir. 2016). However, in the context of an infringement analysis, a product-by-process claim is only infringed by a product made by the process recited in the claim. Id. at 1370 ( "a product in the prior art made by a different process can anticipate a product-by-process claim, but an accused product made by a different process cannot infringe a product-by-process claim" ).
Furthermore, because the process step does not appear to impart distinctive structural characteristic to the final bisphenol, the limitation “producing a bisphenol according to claim 1” is not given patentable weight. See MPEP § 2113:
The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. See, e.g., In re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979) (holding "interbonded by interfusion" to limit structure of the claimed composite and noting that terms such as "welded," "intermixed," "ground in place," "press fitted," and "etched" are capable of construction as structural limitations). See also In re Nordt Dev. Co., 881 F.3d 1371,1375-76, 125 USPQ2d 1817, 1820 (Fed. Cir. 2018)(holding "the specification demonstrates that ‘injected molded’ connotes an integral structure," and discussing several cases since Garnero that held "limitations to convey structure even when they also describe a process of manufacture").
As such, Groups II-VI, even though expressed as being dependent on claim 1 by the product by process claim language, are rendered distinct from Group I and cannot be rejoined if Group I is found allowable.
Claims 21-29 are withdrawn by the examiner 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.
Claim Objections
Claims 7-9, 13-14 and 17-20 are 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 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 11 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.
The term “like” in the term “slurry-like” renders claim 1 vague and indefinite because the term does not limit the claim to the recited specie, slurry, and thus is unclear as to how much variation of the recited specie are tolerated by the use of term “like”.
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.
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.
Claims 1-3, 10-12 and 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Patent application publication number US2004/0054238A1 (US’238 hereinafter).
Regarding claim 1, US’238 teaches a method for obtaining an aromatic bisphenol by an aromatic polycarbonate depolymerization method comprising reacting an aromatic polycarbonate with at least one hydroxy compound selected from the group consisting of water, an aliphatic alcohol having 1 to 6 carbon atoms and a phenol which may be substituted by a hydrocarbon group having 1 to 10 carbon atoms (equivalent to the claimed aromatic monoalcohol) in the critical fluid of carbon dioxide ([0009]-[0010] and [0014]). The reference further teaches that the depolymerization reaction may be carried out in the presence of a catalyst to accelerate the reaction rate and increase selectivity ([0033]).
Regarding claims 2-3, US’238 teaches the examples of the catalyst include hydroxides and salts of alkali metals and alkali earth metals, and oxides and salts of zinc, germanium, tin, lead, titanium, zirconium, antimony and rare earth metals ([0033]).
Regarding claim 10, US’238 teaches the depolymerization method is carried out at preferably 200° C. and “[w]hen the reaction temperature is lower than 200° C., the reaction becomes slow and it takes long to complete the reaction” ([0031]). Thus, keeping the temperature to lower than 200° C., the reaction would still undergo but just at a slower rate. MPEP § 2144.08 states that obviousness does not require absolute predictability, only a reasonable expectation of success. As such, keeping the reaction temperature to lower than 200° C, including to the claimed temperature of 100° C. or less, there is a reasonable expectation of success that the degradation of polycarbonate to bisphenol would still take place.
Regarding claim 11, the depolymerization of polycarbonate would necessarily undergo under a slurry reaction liquid in US’238 as the reaction is a mixture of polycarbonate resin pellets and at least at least one hydroxy compound selected from the group consisting of water, an aliphatic alcohol having 1 to 6 carbon atoms and a phenol which may be substituted by a hydrocarbon group having 1 to 10 carbon atoms (liquid), in which the solid polycarbonate resin pellets would be suspended in the liquid hydroxy compound that includes phenol.
Regarding claim 12, the reference teaches the amount of water as a reactant is 1 mol or more, preferably 2 mols or more, more preferably 5 mols or more based on 1 mol of the recurring unit of the aromatic polycarbonate ([0030]), and the phenol is used in an amount of preferably 1 to 500 mols, more preferably 2 to 100 mols, particularly preferably 5 to 20 mols based on 1 mol of the recurring unit of the aromatic polycarbonate ([0056]). Thus, when water and phenol are combined in the reaction, the mass ratio of water to phenol when for example 1 mol of each are used, is about 0.19 (based on 18.02 g/mol and 94.11 g/mol of water and phenol, respectively).
Regarding claim 15, US’238 further teaches that examples of the phenol include phenol, orthocresol, metacresol, paracresol, xylenol and isopropylphenol ([0055]).
Regarding claim 16, the bisphenol formed is 2,2-bis(4-hydroxyphenyl)propane ([0023]).
The difference between US’238 and the instant claim is that in the instant claim, the polycarbonate is degraded with the combination of water and aromatic monoalcohol, whereas in the reference, the polycarbonate is degraded in the combination with at least one hydroxy compound selected from the group consisting of water, an aliphatic alcohol having 1 to 6 carbon atoms and a phenol which may be substituted by a hydrocarbon group having 1 to 10 carbon atoms. In other words, the reference’s degradation is with one of water, an aliphatic alcohol and a phenol or any combination of water, an aliphatic alcohol atoms and a phenol.
MPEP § 2143 states that the Supreme Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper “functional approach” to the determination of obviousness as laid down in Graham and discussed circumstances in which a patent might be determined to be obvious. Importantly, the Supreme Court reaffirmed principles based on its precedent that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp and that a combination was obvious to try might show that it was obvious under § 103.”KSR, 550 U.S. at 421, 82 USPQ2d at 1397. Therefore, choosing from a finite number of identified, predictable solutions, is likely to be obvious when it does no more than predictable results and with a reasonable expectation of success.
In this instance, a skilled artisan would have been motivated to degrade polycarbonate using the finite number of any combination of water, an aliphatic alcohol atoms and a phenol that also includes a combination of water and a phenol (monohydric alcohol) as instantly claimed and would have a reasonable expectation of success in obtaining bisphenol.
It would thus have been prima facie obvious to a skilled artisan before the effective filing date of the invention to conduct method for producing a bisphenol, the method comprising degrading a polycarbonate resin in the presence of an aromatic monoalcohol, water, and a catalyst in view of the teachings of US’238.
Claims 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Patent application publication number US2004/0054238A1 (US’238 hereinafter) as applied to claims 1-3, 10-12 and 15-16 above, and further in view of Patent number US5,391,802 (US’802; cited in IDS 04/28/2023).
The teachings of US’238 have been set forth above.
While US’238 provides examples of catalyst that include hydroxides and salts of alkali metals and alkali earth metals, and oxides and salts of zinc, germanium, tin, lead, titanium, zirconium, antimony and rare earth metals ([0033]), the reference fails to teach or suggest the catalyst as recited in claims 4-6.
The deficiencies are however cured by US’802.
US’802 teaches process for cleaving polycarbonates into bisphenols in the presence of phenols and catalysts.
Suitable catalysts are for example hydrides, oxides, hydroxides, alcohols, amides or salts of alkali metals such as lithium, sodium, potassium, rubidium and caesium, preferably of lithium, sodium and potassium, particularly preferably of sodium and potassium. Salts of alkali metals are those of organic and inorganic acids, such as for example of acetic acid, propionic acid, butyric acid, benzoic acid, stearic acid, carbonic acid, hydrochloric acid, HBr, HI, nitric acid, H2SO4, HF, phosphoric acid, boric acid, tin acids and antimony acids (col. 3, ln. 20-30). The reference further teaches nitrogen-containing bases are also catalysts for the polycarbonate cleavage according to the invention, as for example secondary and tertiary amines such as triethylamine, tributylamine, methyldibenzylamine and dimethylcyclohexylamine, diazabicycloundecane or diazabicyclononane (col. 3, ln. 52-57).
In accordance with MPEP § 2143, the Supreme Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper “functional approach” to the determination of obviousness as laid down in Graham and discussed circumstances in which a patent might be determined to be obvious. In this case, at least prong (B) simple substitution of one known element for another to obtain predictable results applies.
Thus, substituting the catalysts of US’238 with any catalysts of US’802, including the catalysts as claimed, a skilled artisan has a reasonable expectation in yielding nothing more than the predictable bisphenol product.
It would thus have been prima facie obvious to a skilled artisan before the effective filing date of the invention to conduct method for producing a bisphenol, the method comprising degrading a polycarbonate resin in the presence of an aromatic monoalcohol, water, and a catalyst of claims 4-6 in view of the teachings of US’238 and ‘802.
Allowable Subject Matter
The subject matter of claims 7-9, 13-14 and 17-20 is free of prior art. The closest prior art reference, Patent application publication number US2004/0054238A1, and its teachings have been set forth above.
Regarding claims 7-9, while US’238 provides examples of catalyst that include hydroxides and salts of alkali metals and alkali earth metals, and oxides and salts of zinc, germanium, tin, lead, titanium, zirconium, antimony and rare earth metals ([0033]), the reference fails to teach or suggest the catalyst as recited in claims 7-9.
The catalysts taught by Patent number US5,391,802 (US’802; cited in IDS 04/28/2023) have also been set forth above. However, the combination of US’238 and US’802 does not suggest the use of the catalysts as recited in claims 7-9.
Regarding claim 13, while the combination of US’238 and US’802 teaches hydrochloric acid as the catalyst, nowhere in the references teach or suggest the degrading of polycarbonate is conducted in the presence of bromophenol in addition to the aromatic monoalcohol, water and catalyst.
Regarding claim 14, while the reference teaches the use of hydroxides of alkali metals as catalyst, which includes the instantly claimed sodium hydroxide, the reference fails to teach or suggest that the depolymerization reaction is conducted in the presence of sodium chloride and/or carbon tetrachloride in addition to the aromatic monoalcohol, water and the catalyst.
Regarding claims 17-20, nowhere in US’385 teaches or suggests that the depolymerization is conducted in the presence of a neutralized wastewater (claim 17), hydrochloric acid wastewater (claim 19) and sodium hydroxide wastewater (claim 20).
Conclusion
Claims 1-6, 10-12 and 15-16 are rejected and no claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MEDHANIT W BAHTA whose telephone number is (571)270-7658. The examiner can normally be reached Monday-Friday 8am-5pm.
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, Scarlett Goon can be reached at 571-270-5241. 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.
/MEDHANIT W BAHTA/ Primary Examiner, Art Unit 1692