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 .
Response to Amendment
The amendment to claims 1, 4 and 12, submitted November 5, 2025 is acknowledge and entered.
Response to Arguments
Applicant’s arguments, see page 5, filed November 5, 2025, with respect to the objection of claim 4 have been fully considered and are persuasive ion view of the claim amendment. The objection of claim 4 has been withdrawn.
Applicant’s arguments, see pages 6 - 10 , filed November 5, 2025, with respect to the rejection of claims 1 – 11 under 35 USC 103 have been fully considered and are persuasive ion view of the claim amendment and arguments presented. The rejection of claims 1 – 11 under 35 USC 103 has been withdrawn.
Applicant’s arguments, see pages 6 – 8 and 10 - 12, filed November 5, 2025, with respect to the rejection of claims 1 – 11 under 35 USC 103 have been fully considered and are persuasive ion view of the claim amendment and arguments presented. The rejection of claims 1 – 11 under 35 USC 103 has been withdrawn.
Applicant's arguments filed November 5, 2025 with respect to the rejection of claim 12 - 14 have been fully considered but they are not persuasive. Claims are finally rejected for the reasons set out in the Office Action mailed August 5, 2025 and reproduced below.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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) 12 – 14 are rejected under 35 U.S.C. 103 as being unpatentable over Dong Xingguang et al. (CN 112406148) (Dong) (see English translation) in view of and further in view of Bell et al. (US 9,127,136).
Claim 12, covers a composition having 99.5wt% to 99.997wt% of a compound and the compound is BHET, the Examiner turns to the teaching of Dong. The prior art of Dong discloses in Example 3 a BHET purity of 99.9, which is within the claimed range. 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) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.)
Further, claim 12 covers a composition that is a combination of bis(2-hydroxyethyl) terephthalate and bis(2-hydroxyethyl) terephthalate oligomer; 0.001wt% to 0.25wt% of mono(2-hydroxyethyl) terephthalate; and 0.001wt% to 0.25wt% of 2-hydroxyethyl[2-(2-hydroxyethoxy)ethyl]terephthalate, based on the weight of the composition; and further comprising the catalyst. The Examiner turns to the teaching of Bell. The prior art of Bell discloses during the glycolysis of waste PET that in order to identify the structure of the main product in the depolymerization of PET by ethylene glycol catalyzed by TPT, various characterizations, such as GC-MS, NMR, and HPLC were performed. The HPLC chromatogram showed that the main product was BHET at 7.4 minutes, which compared well with the standard BHET purchased from Sigma Aldrich. The major impurity from the glycolysis was O,O'-ethane-1,2-diylbis(2-hydroxyethyl) di-terephthalate, the dimer of BHET, with the retention time of 13.2 minutes. The GC-MS spectrum showed another byproduct from the glycolysis of PET to be 2-(2-hydroxyethoxyl)ethyl (2-hydroxyethyl) terephthalate, structure provided below, at the retention time of 8.0 minutes. (col. 7, ln 20 – 44). In this instance the Examiner cannot readily determine there exist a difference between the claimed composition and at of Dong. This is an In re Best scenario. It is noted that a prima facie case of obviousness has been established when the reference discloses all the limitations of a claim except for a property and the examiner cannot determine whether or not the reference inherently possesses properties that render obvious the claimed invention but has a basis for shifting the burden of proof to applicant, as per In re Fitzgerald, 619 F.2d 67,205 USPQ 594 (CCPA 1980). See also In re Best, 195 USPQ 430,433 (CCPA 1977) as to the providing of this rejection under 35 USC 103.
Additionally, with regard to the amendment of claim 12, Applicant is reminded that claim 12 is claimed in a Product-by-Process format. The PTO takes the following position with respect to Product- by-Process claims. Even 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). 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). "The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature" than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983).
Allowable Subject Matter
Claims 1- 10 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: the Examiner has considered the amendment filed by Applicant on November 5, 2025 and the arguments therein. Applicant’s arguments were found persuasive; as such, the Examiner has withdrawn the rejections of claims 1 – 10 made in the previous Office Action.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YATE' K. CUTLIFF whose telephone number is (571)272-9067. The examiner can normally be reached Monday-Friday (8:30 - 5:30).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Scarlett Y. 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.
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/YATE' K CUTLIFF/Primary Examiner, Art Unit 1692