Prosecution Insights
Last updated: April 19, 2026
Application No. 18/250,066

ENZYMATIC RECYCLING OF POLYURETHANES BY CUTINASES

Non-Final OA §103
Filed
Apr 21, 2023
Examiner
HURST, JONATHAN M
Art Unit
1799
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Société des Produits Nestlé S.A.
OA Round
1 (Non-Final)
53%
Grant Probability
Moderate
1-2
OA Rounds
4y 0m
To Grant
73%
With Interview

Examiner Intelligence

Grants 53% of resolved cases
53%
Career Allow Rate
355 granted / 669 resolved
-11.9% vs TC avg
Strong +20% interview lift
Without
With
+20.2%
Interview Lift
resolved cases with interview
Typical timeline
4y 0m
Avg Prosecution
34 currently pending
Career history
703
Total Applications
across all art units

Statute-Specific Performance

§101
0.8%
-39.2% vs TC avg
§103
52.7%
+12.7% vs TC avg
§102
20.7%
-19.3% vs TC avg
§112
17.6%
-22.4% vs TC avg
Black line = Tech Center average estimate • Based on career data from 669 resolved cases

Office Action

§103
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. Information Disclosure Statement The information disclosure statement filed 11/12/2025 fails to comply with 37 CFR 1.98(a)(3) (i) because it does not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, of each reference listed that is not in the English language. It has been placed in the application file, but the information referred to therein has not been considered. Claim Rejections - 35 USC § 103 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. Claims 1-5 and 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Boisart et al. (US 2016/0280881) in view of Schmidt et al. (“degradation of Polyester Polyurethane by Bacterial Polyester Hydrolases” 2017) and further in view of Maille (US 2017/0114205). Regarding claim 1 Boisart discloses a method of degrading non-biodegradable polyurethane (PU) in mixed polymer packaging material comprising the step of subjecting the packaging material comprising PU to enzymatic treatment and such treatment includes the use of cutinase. (See Boisart Abstract, [0002]-[0003 [0012]-[0015] and [0047] wherein the method utilizes enzymes to degrade non-biodegradable plastics including polyurethane present in mixed polymer packaging material and discloses the use of cutinases.) In regards to specific Polyurethanes being degraded by cutinase Schmidt et al. also discloses subjecting polyurethane materials which do not contain urea linkages to cutinases in order to provide degradation and recycling thereof. (See Schmidt Abstract wherein various cutinase materials are used to degrade PU polymers which are those which do not have urea linkages.) It would have been obvious to one of ordinary skill in the art to degrade a mixed PU polymer lacking urea linkages in the method Boisart using a cutinase as described by Schmidt et al. because such enzymes are known to effectively degrade such polymers and represent specific enzymes capable of degrading polyurethanes as is specifically required by Boisart and one would have a reasonable expectation in so doing. In regards to the specific cutinase used Maille discloses subjecting mixed plastic packaging including PET and PU containing packaging materials cutinase and the cutinase used as a crude extract and said cutinase may come from a variety of sources including Thc_Cut1 as a crude extract because such a cutinase represents and known and effective form. (See Maille [00072], [0073]-[0074] and [0120]) It would have been obvious to one of ordinary skill in the art at the time of filing to utilize Thc_cut1 as the hydrolyzing cutinase enzyme as described by Maille in the method of Boisart because such an enzyme is known to be used in the processing of mixed plastic articles including those with PET and PU and one would have a reasonable expectation of success in utilizing this specific form of cutinase in the method of Boisart as it is shown to be effective for such uses. Additionally, one of ordinary skill in the art at the time of filing would have found replacement of the cutinase from Thermobifibia fusca of modified Boisart with the cutinase Thc_cut1 obvious because the prior art of Maille recognizes the equivalency of cutinase from Thermobifibia fusca and cutinase Thc_Cut1 in the field of mixed polymer degradation and such modification is merely the selection of functionally equivalent cutinase enzymes recognized in the art and one of ordinary skill in the art would have a reasonable expectation of success in doing so. Regarding claim 2 modified Boisart discloses all the claim limitations as set forth above but does not specifically disclose the enzyme loading ratio. Maille discloses adding cutinase at 5% weight of the polymer, i.e. greater than 0.65 µg protein per mg of polymer.(See Maille [0107]) It would have been obvious to one of ordinary skill in the art to have provided greater than 0.65 µg protein per mg of polymer in the method of Boisart as described by Maille because such an amount represents an effective amount such that a polymer is effectively degraded utilizing a cutinase as would be desirable in the method of Boisart which requires such degradation. Regarding claim 3 modified Boisart discloses all the claim limitations as set forth above as well as the method iwherein the PU is subjected to the at least one cutinase at a temperature in the range of 35 to 60 degrees C. (See Boisart [0057]) It would have been obvious to one of ordinary skill in the art at the time of invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. In re Malagari, 182 USPQ 549. Regarding claim 4 modified Boisart discloses all the claim limitations as set forth above as well as the method in accordance with one of the preceding claims claim 1,wherein the PU is subjected to the at least one cutinase at a pH in the range of about 5.5-8. (See Boisart [0059]) It would have been obvious to one of ordinary skill in the art at the time of invention to have selected the overlapping portion of the ranges disclosed by the reference because selection of overlapping portion of ranges has been held to be a prima facie case of obviousness. In re Malagari, 182 USPQ 549. Regarding claim 5 modified Boisart discloses all the claim limitations as set forth above as well as the method wherein the PU is subjected to the at least one cutinase for at least 3 days. (See Boisart [0087] wherein the treatment occurs for 7 days.) Regarding claim 11 modified Boisart discloses all the claim limitations as set forth above as well as the method wherein the method further comprises the step of reducing the particle size of the PU and/or the PU containing material, for example the PU containing packaging, before or during subjecting the PU and/or the PU containing material to at least one cutinase. (See Boisart [0054] wherein the plastic is reduced in size by mechanical treatment prior to enzymatic treatment.) Regarding claim 12 modified Boisart discloses all the claim limitations as set forth above as well as the method wherein the particle size is reduced by a mechanical treatment to particles but does not disclose the specific size of the particles (See Boisart [0054]) In regards to the particle size of the grind being on average 5mm or less it is noted that such a modification would have required a mere change in size of the ground materials which would have been obvious to one of ordinary skill in the art at the time of filing to optimize enzymatic treatment and because a change in size (dimension) is generally recognized as being within the level of ordinary skill in the art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955). Where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device, and the device having the claimed dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device, Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). It is well known in the art that the thinner the walls in heat exchange vessel the better the heat exchange efficiency and that many design parameters are taken into consideration when determining the thickness of the walls. Claims 6-10 are rejected under 35 U.S.C. 103 as being unpatentable over Boisart et al. (US 2016/0280881) in view of Schmidt et al. (“degradation of Polyester Polyurethane by Bacterial Polyester Hydrolases” 2017) and Maille (US 2017/0114205) as applied to claims above, and further in view of Miller et al. (US 6,592,978). Regarding claims 6-10 Boisart discloses the method being useful recycling of packages of mixed plastics but does not specific the nature of such packages. Miller discloses a plastic multilayer food packaging material formed from a PET base layer which may be recycled and PU-based adhesive layer. (See Miller Abstract Fig. 2 and Col. 3 Line 62- Col 4 Line 65 wherein a food packaging includes a base layer 18,22,24 form recyclable polymers including or PVC held together by a polyurethane adhesive layers 20.) It would have been obvious to one of ordinary skill in the art at the time of invention to subject the packaging materials of Miller to the degradation methods of Boisart because such a material represents a known single use plastic materials which would benefit from such recycling and one would have a reasonable expectation of success in so doing. Furthermore it is noted that when such a material is subject to the enzymatic treatment of Boisart the PU layer will be delaminated from the other layers do to said treatment. Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Boisart et al. (US 2016/0280881 From IDS) in view of Schmidt et al. (“Degradation of Polyester Polyurethane by Bacterial Polyester Hydrolases” 2017 from IDS) and Maille (US 2017/0114205) as applied to claims above, and further in view of Alvarez (US2017/0313998). Regarding claim 13 modified Boisart discloses all the claim limitations as set forth above but does not specifically disclose the method carried out in a closed vessel. Alvarez discloses a method of degrading a polymer using an enzyme wherein the process is carried out in a closed reactor vessel. (See Alvarez Abstract [0136]) It would have been obvious to one of ordinary skill in the art at the time of filing to use a closed vessel as described by Alvarez to carry out the method of modified Boisart because such a vessel is known to be a suitable device to carry out enzymatic polymer degradation such described by Maille and such a reactor allows for containment of materials and controlled conditions thereof as would be desirable in the method of modified Boisart Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to FILLIN "Examiner name" \* MERGEFORMAT JONATHAN M HURST whose telephone number is FILLIN "Phone number" \* MERGEFORMAT (571)270-7065 . The examiner can normally be reached on FILLIN "Work schedule?" \* MERGEFORMAT M-F 7AM-4PM . If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Marcheschi can be reached on FILLIN "SPE Phone?" \* MERGEFORMAT 571-272-1374 . The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /JONATHAN M HURST/ Primary Examiner, Art Unit 1799
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Prosecution Timeline

Apr 21, 2023
Application Filed
Apr 02, 2026
Non-Final Rejection — §103 (current)

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Prosecution Projections

1-2
Expected OA Rounds
53%
Grant Probability
73%
With Interview (+20.2%)
4y 0m
Median Time to Grant
Low
PTA Risk
Based on 669 resolved cases by this examiner. Grant probability derived from career allow rate.

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