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 Arguments
Applicant argued that as disclosed in the present specification, recycling PET trays and blisters presents entirely different technical challenges than recycling PET bottles. PET bottle material is highly semi-crystalline (stretched) and is highly resistant to alkaline stress cracking. In contrast, PET trays and blisters typically consist primarily of amorphous, thin-walled regions which are extremely brittle and sensitive to alkaline solutions .
Examiner maintains the rejection as the Nichols (US 5876644) reference clearly states that recycling of food containers and bottles both are taught in the disclosure (Col 1 line 1-5, line 61-65), also as known in the art that PET (polyethylene terephthalate) trays and blister packaging are clear, rigid, and lightweight plastic containers widely used to safely store, protect, and display food product.
Applicant stated that claimed invention requires gentle washing and immediate sorting The claimed invention solves this problem through a highly specific sequence of steps: Gentle Washing: A first washing step (c) is carried out under very mild conditions (< 62 C. in basic medium or < 85° C. in acidic medium) with minimal mechanical energy so that the flakes still have a size greater than 2 mm.
Examiner maintains that Nicholas teaches that preferred combination of basic solution is needed but also indicates that different form of rinsing washing with solvents and techniques to wash the flakes. Hence Nichols didn’t prevent gentle washing cannot be performed, moreover claim didn’t disclose the exact size of the flakes.
Regarding the newly amended claim applicant stated that sorting directly after washing and drying: Crucially, as now explicitly defined in Claim 1, the flake sorting is performed directly after the first gentle washing step and drying . At this stage, because the washing was gentle, the flakes still have a size greater than 2 mm and can be sorted with high precision by conventional polymer sorters; and Nichols does not disclose a flake sorting step using a polymer/optical sorter.
Examiner maintains that flake size were not mentioned in Claim, the only requirement in the claim that performing polycondensation on the sorted PET flakes and extruding the PET flakes. Nicholes did disclose that flakes-12 are poly condensate by heating and then extruding as pellets-25 (Figure 2). Further re: the flake sorting is performed directly after the first gentle washing step. Nicholas discloses the flakes are dried in a drying facility 14 at a temperature that is sufficient to remove volatile organic compounds and water without otherwise substantially changing the chemical characteristics of the comminuted pieces of polyester (Col 3 line 63-67, Col 4 line 1-5). As it’s known sorting also means separating from other chemicals while drying. The claim didn’t particularly disclose a flake sorting step using a polymer/optical sorter. DeBruin (US 20230183439 ) discloses that optical sorter are common in the field of PET containers ([0105]).
Further, applicant notes that most inventions arise from a combination of old elements, and each element may be found in the prior art. Therefore, to establish and maintain a prima facie case of obviousness based on a combination of elements disclosed in the prior art, the examiner must articulate the basis on which he or she concludes that it would have been obvious to make the claimed invention
The applicant’s argument with regard to the references Nichols (US 5876644) and EP’873 both teach PET recyclates and combining they teach comminuiting the sorted PET articles to PET flakes and washing the PET after sorting the flakes , the obviousness of combining these features is discussed in the rejection. The references didn't specifically disclose that the time for washing is 5 to 50 minutes though if claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. It is well-settled that one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). As a result of this applicant’s arguments are considered to not add any persuasion to the amendments.
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.
Claim(s) 1,4,8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nichols (US 5876644) as evident by Solid state polymerization, attached.
Claim 1, Nichols discloses Method for recycling PET articles in the form of trays and blistersat a temperature below 62°C in a basic medium (Figure1`, Col 3 line 53-58),inert gas to control the pressure and to remove the by-products as evident by Solid State Polymerization similar to as disclosed by Nichols and extruding the PET flakes (Col 4 line 10-12).
Regarding Claim 4, Nichols disclose wherein the performing the solid-state polycondensation on the sorted PET flakes performed before extruding (Col 4 line 9-10, the flakes-12 are polycondensated by heating).
Regarding Claim 8, Nichols discloses a method according wherein the drying thermal drying via air flow (Col 4 line 7-8).
Regarding Claim 9, Nichols discloses wherein the drying the PET flakes comprises drying the PET flakes are dried so that there is no water in the flakes that meets the claim limitation (Col 4 line 1-2).
Claim(s) 2-3,5-7,10-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nichols (US 5976644) as evident by Solid state polymerization, attached as applied in Claim 1 further in view of EP’2384873 hereinafter EP’873 listed in IDS, translation attached.
Regarding Claim 2, Nichols discloses method for recycling PET articles but didn’t specifically disclose that intensely washing the PET flakes after the sorting of the PET flakes,-and performed with increased particle friction (EP’2384873, translated, [0044], particles are washed organic solvent which can acidic or basic depends on their chemical structure, [0036]).
EP’873 didn’t teach the temperature of the washing step to be -70 -deg C , however, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). See MPEP 2144.05.1. Therefore it would be obvious for one ordinary skilled in the art to operate the temperature at 70-deg-C for the purpose of proper removal of the solvent.
Regarding Claim 3, Nichols discloses method for recycling PET articles but didn’t specifically disclose that pre-washing the PET articles after the pre- sorting the PET article. In the related field of endeavor pertaining to the art, EP’873 discloses further comprising pre-washing the PET articles after the pre- sorting the PET articles (EP’2384873, translated, [0039]).
Therefore it would be obvious for one ordinary skilled in the art prior to the time of invention to combine Nichols with the teaching of EP’’873 pre-washing for the purpose of removing the contaminants completely.
Regarding Claim 5, Nichols disclose gently washing the PET flakes in a first washing step (Figure 1, Col 3 line 53) but didn’t specifically disclose that wherein the first washing performed in the basic medium having an alkaline solution with 5 to 50 minutes. In the same field of endeavor pertaining to the art, EP’873 discloses organic solvent can be used for the washing step ([0036], organic solvent and [0040] , same organic solvent which can acidic or basic depends on their chemical structure. EP’873 discloses that the residence time can be controlled by the speed of the rotor; however didn’t specifically disclose that the time for washing is 5 to 50 minutes though if claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art so that the flakes are contaminant free for the next processing step (Col 6 line 37-42). KSR, 550 U.S. at 416, 82 USPQ2d at 1395; B/E Aerospace, Inc. v. C&D Zodiac, Inc., 962 F.3d 1373, 1379, 2020 USPQ2d 10706 (Fed. Cir. 2020); MPEP 2143 .1 A
Regarding Claim 6, Nichols disclose gently washing the PET flakes in a first washing step (Figure 1, Col 3 line 53) but didn’t disclose that the first washing step is performed in the acidic medium for 60 to 600 minutes. In the same field of endeavor pertaining to the art, EP’873 discloses that organic solvent can be used for the washing step (([0036], organic solvent and [0040] , same organic solvent which can acidic or basic, the residence time can be controlled by the speed of the rotor; however didn’t specifically disclose that the time for washing is to 600 minutes though if claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art so that the flakes are contaminant free for the next processing step).
Regarding Claim 7 Nichols discloses the washing step but didn’t specifically disclose the use of stirrer for washing. In the same field of endeavor pertaining to the art, EP’873 discloses use of stirrers in the first washing step ([0019]) and by centrifuges and air flows in the dewatering/and drying ([0047]). However, it didn’t disclose that the that mechanical energy, measured by
Regarding Claim 10, Nichols discloses gently washing the PET flakes in a first washing step (Figure 1, Col 3 line 53) but didn’t disclose the size of the flake. In the same field of endeavor pertaining to the art, EP’873 discloses that the sizes of the flakes are around 20 mm which is close to claimed range ([0035]).
Regarding Claim 11, Nichols disclose gently washing the PET flakes in a first washing step (Figure 1, Col 3 line 53) but didn’t disclose that the wherein greater friction is exerted on the PET flakes in the second washing step than in the first washing step. In the same field of endeavor pertaining to the art, EP’873 discloses that organic solvent can be used for the washing step ([0036], organic solvent); EP’873 discloses specifically that a frictional cleaning is applied after the first cleaning step ([0044]).
Therefore it would be obvious for one ordinary skilled in the art prior to the time of invention to combine Nichols with the teaching of EP’873 frictional cleaning for the purpose of removing the contaminants completely.
Claim(s) 12-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nichols (US 5876644) as evident by Solid state polymerization as applied in Claim1 in view of Christel (US 6730774)
Regarding Claim 12, Nichols discloses wherein the performing the solid-state polycondensation on the sorted PET flakes performed before extruding (Col 4 line 9-10, the flakes-12 are polycondensated by heating) but didn’t disclose that extruding PET flakes into spun fibers. In the same field of endeavor pertaining to the art, Christel discloses that the material is drawn into fiber (Col 1 line 61-63).
Therefore it would be obvious for one ordinary skilled in the art prior to the time of invention to combine Nichols with the teaching of Christel’s drawing the flake form the extruder in the shape of fibers for the purpose of increasing the mean molecular weight or the intrinsic viscosity of the RPET material and thus its tensile strength used in commercial purpose (Col2 line 54-56) .
Regarding Claim 13, Nichols discloses wherein the performing the solid-state polycondensation on the sorted PET flakes performed before extruding (Col 4 line 9-10, the flakes-12 are polycondensated by heating) but didn’t disclose that extruding PET flakes into spun fibers. In the same field of endeavor pertaining to the art, Christel discloses that the material is drawn into film (Col 1 line 61-63).
Therefore it would be obvious for one ordinary skilled in the art prior to the time of invention to combine Nichols with the teaching of Christel drawing the flake form the extruder in the shape of film for the purpose of increasing the mean molecular weight or the intrinsic viscosity of the RPET material and thus its tensile strength as desired for used in commercial purpose (Col 2 line 54-56).
Regarding Claim 14, Nichols/Christel withdrawal of water from the spun fibres a temperature between the claimed range (Col 4 line 4-5, Nichols: Christel disclose the material/flakes could be fibers in Col 1 line 61-63).
Regarding Claim 15 Nichols disclose wherein the solid-state polycondensation is affected by withdrawal of water from the film at a temperature between the claimed range (Col 4 line 4-5).
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 DEBJANI ROY whose telephone number is (571)272-8019. The examiner can normally be reached 9:30-5:30 pm.
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, Alison Hindenlang can be reached on 571-270-7001. 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.
/DEBJANI ROY/ Examiner, Art Unit 1741
/ALISON L HINDENLANG/Supervisory Patent Examiner, Art Unit 1741
Prosecution Insights