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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 6 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 6 recites “wherein the monomers formed from PET depolymerization comprise dimethyl terephthalate (DMT)”. Claim 1 already requires that the monomer comprises DMT when the method comprises reacting PET. Therefore, claim 6 fails to further limit the subject matter of the claim upon which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
Claim(s) 1, 3, and 5-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Luca (US 2022/0170167 A1).
Regarding Claims 1, 3, 5, and 6, Luca teaches methods of depolymerizing polyesters such as polyethylene terephthalate into monomers via passing a current through a cathode to form methoxide / hydroxide ions from methanol (Table 3; ¶ 78-79). As Luca teaches the presence of methoxide anions and methoxide anions are reactive toward polyesters for depolymerization, the reactive mixtures are seen to necessarily entail the reaction of alkoxides with the polyesters over the course of forming monomers.
While Luca’s examples use high quantities of water resulting in terephthalic acid, Luca indicates only alcohol is required whereby water is present in “some embodiments”, such as about 90:10 alcohol:water (¶ 36-39; Claims 1 and 4). It would have been obvious to one of ordinary skill in the art to substitute such alcohol/water mixtures with alcohol solvent or solvents mixtures with high quantities of alcohol, thereby predictably affording the depolymerization of polyesters via electrolysis in accordance with the teachings of Luca. In the case where only alcohol is present, only methoxide anions would be generated thus intrinsically resulting in the formation of dimethyl terephthalate.
Regarding Claim 7, as discussed above, Luca is suggestive of embodiments where only methanol is present or where water is present in small quantities (e.g. 90:10 alcohol:water). As set forth within the specification at ¶ 76, when PET and methoxide react with low quantities of water, blends of DMT and TPA are produced (¶ 76). Accordingly,
Regarding Claim 8, Luca teaches polyester waste material (¶ 114).
Regarding Claim 9, Luca teaches isolating monomers from the alcohol (see for instance ¶ 107).
Claim(s) 9 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Luca (US 2022/0170167 A1) in view of Robinson (GB 784248A).
The discussion regarding Luca within ¶ 10-14 is incorporated herein by reference.
Regarding Claims 9 and 10, Luca differs from the subject matter claimed in that particular purification methods for dimethyl terephthalate are not described. Robinson is also directed toward the formation dimethyl terephthalate from methanol / waste polyester mixtures (Page 1). Robinson teaches a purification protocol whereby dimethyl terephthalate solids are filtered, dissolved in xylene, the resulting solution filtered to remove unreacted polyester, and then cooled for crystallization (Example 1). It would have been obvious to one of ordinary skill in the art to utilize the purification protocol of Robinson within the protocols of Luca because doing so would achieve removal of residual polyester and purification of dimethyl terephthalate into pure crystals as taught by Robinson.
Allowable Subject Matter
Claims 11, 16, and 18-20 are allowed.
Response to Arguments
Applicant's arguments filed 4/29/2026 have been fully considered but they are not persuasive.
With respect to Luca, Applicant generally argues the examples use relatively high quantities of water, leading to the formation of terephthalic acid. This is not found persuasive as Luca indicates only alcohol is required whereby water is present in “some embodiments”, such as about 90:10 alcohol:water (¶ 36-39; Claims 1 and 4).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 STEPHEN E RIETH whose telephone number is (571)272-6274. The examiner can normally be reached Monday - Friday, 8AM-4PM Mountain Standard Time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached at (571)272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEPHEN E RIETH/Primary Examiner, Art Unit 1759
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