Prosecution Insights
Last updated: April 19, 2026
Application No. 18/259,159

ENZYMATIC RECYCLING OF POLYURETHANES BY A COMBINATION OF CUTINASES AND LIPASES

Non-Final OA §103§112
Filed
Jun 23, 2023
Examiner
ROSEBACH, CHRISTINA H.W.
Art Unit
1766
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Société des Produits Nestlé S.A.
OA Round
1 (Non-Final)
59%
Grant Probability
Moderate
1-2
OA Rounds
3y 1m
To Grant
23%
With Interview

Examiner Intelligence

Grants 59% of resolved cases
59%
Career Allow Rate
260 granted / 443 resolved
-6.3% vs TC avg
Minimal -36% lift
Without
With
+-36.1%
Interview Lift
resolved cases with interview
Typical timeline
3y 1m
Avg Prosecution
37 currently pending
Career history
480
Total Applications
across all art units

Statute-Specific Performance

§101
0.2%
-39.8% vs TC avg
§103
46.2%
+6.2% vs TC avg
§102
19.7%
-20.3% vs TC avg
§112
22.7%
-17.3% vs TC avg
Black line = Tech Center average estimate • Based on career data from 443 resolved cases

Office Action

§103 §112
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. 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 appl icant regards as his invention. Claim 12 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. Regarding claim 12, the phrase "for example" in line 4 renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Information Disclosure Statement In the IDS of 11/12/25 non-patent literature item 1 is not considered as it is not in English. 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. Claim (s) 1, 5-11, 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 6255451 by Koch et al. Koch describes degradation of biologically degradable polymers. Regarding claim 1, Koch describes degrading polyurethane (col 10 ln 49, col 2 ln 18-20) by subjecting it to a mixture of lipase and cutinase in an embodiment (“one or more lipases or cutinases selected from” col 2 ln 23-28). It would be obvious to one of ordinary skill to choose a mixture of lipase and cutinase because Koch describes this as an embodiment. Regarding claim 5, although Koch is silent as to the specific unit ratio of cutinase:lipase , he does emphasize lipase units as a measurement (col 9 ln 14, 22). Koch also describes “one or more lipases or cutinases selected from” a short list in col 2 ln 23-28. When faced with a mixture, one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio, a ratio that falls within the presently claimed amount, absent evidence of unexpected or surprising results. Case law holds that "[h] aving established that this knowledge was in the art, the examiner could then properly rely... on a conclusion of obviousness, 'from common knowledge and common sense of the person of ordinary skill in the art within any specific hint or suggestion in a particular reference.'" In re Bozek , 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969). Since the lipase and cutinase are chosen from a short list and must be added in some ratio, a 1:1 unit ratio is obvious to one of ordinary skill. Regarding claim 6, Koch describes a temperature of 20-70C (col 7 ln 5-7). 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), In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). It would be obvious to one of ordinary skill to arrive at values in the claimed range because Koch describes values overlapping with the claimed range. Regarding claim 7, Koch describes a pH preferably between 5-9 (col 7 ln 3-4). Regarding claim 8, Koch describes an exemplary 164 and 358 hours (6.8 and 14.9 days) (col 10 ln 58). Regarding claim 9, Koch describes treating packaging materials of any type (col 8 ln 36-46) and adhesively bonded materials including coatings (col 7 ln 20-25). Koch describes polyurethane as a polymer (col 2 ln 30-31). Koch describes the other plastic as for example polyethylene (col 7 ln 67-col 8 ln 1). Regarding claim 10, Koch describes treating coated or adhesively bonded materials on which coatings of degradable polymers have been deposited (col 7 ln 20-25, col 7 ln 59-65). Regarding claim 11, Koch describes selectively delaminating a polyurethane layer in multilayer packaging (col 7 ln 20-25; polyurethane as an adhesive or coating col 7 ln 59-65). Regarding claim 13, Koc h describes adding the polymer as a granular material (col 7 ln 18) and com m inuting the material to be treated (col 7 ln 24-25 ) . Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over US 6255451 by Koch et al in view of “Chp.15 Removal of organic micro-pollutants using filamentous fungi ” by Bulkan et al. Koch is described above. Regarding claim 3, Koch describes purifying enzymes (col 6 ln 65-66) and is silent about alternatives. Bulkan describes treating micropolutants with enzymes. Bulkan states that “ Crude enzymes have some advantages over the purified ones. Considering the additional purification step, crude enzymes are less costly and have a higher potential of being applied on a bigger scale because the pure enzyme is not feasible ” (p.385 penultimate paragraph). Thus it would be obvious to one of ordinary skill would be motivated to use crude enzymes where Koch describes purified ones in order to be less costly and have a higher potential of being applied on a bigger scale. Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over US 6255451 by Koch et al in view of “A real case study of mechanical recycling as an alternative for managing of polyethylene plastic film presented in mixed municipal solid waste” by Soto et al. Koch is described above. Regarding claim 12, Koch describes removing biologically degradable adhesive from a multilayer in which another layer is polyethylene (col 7 ln 60-col 8 ln 1); and in which the biologically degradable adhesive is polyurethane (col 2 ln 29-31). However Koch is silent as to the further treatment of the remaining, i.e. polyethylene, layer. Soto describes promoting the mechanical recycling rate of polyethylene plastic film. Soto states that polyethylene is the most abundant material in plastic waste (p.777 col 2 paragraph 2) and describes extrusion molding of waste polyethylene film after delamination (p.778 col 2 paragraph 2 and final paragraph; p.779 Fig.2 ). Soto states that this method prevents landfill disposal (p.778 col 1 paragraph 2) and achieves near-virgin properties of polyethylene (p.786 col 2 penultimate paragraph). Thus it would be obvious to one of ordinary skill to send the polyethylene film of Koch to Soto’s process in order to avoid landfill disposal and achieve near-virgin properties of polyethylene. Claim s 14 , 15 are rejected under 35 U.S.C. 103 as being unpatentable over US 6255451 by Koch et al in view of WO 2019141504 by Luthe et al, represented herein by US 2021 0 122898 . Koch is described above. Regarding claim 14, Koch describes comminuting (col 7 ln 24-25) but is silent as to the specific size. Luthe describes mechanochemical processes for producing valu a ble products. Luthe’s process also involves treatment of plastic by enzymes ( paragraph 201) and he describes a sieve size of 2mm-1 microns (paragraph 175). Luthe states that it is important for the particles to have the same conditions existing everywhere (paragraph 175), hence the narrow particle size distribution (paragraph 66). Thus it would be obvious to one of ordinary skill to shred (comminute) Koch’s polyurethane to a sieve size of 2mm-1micron, i.e. an average lower than this, in order to have the same conditions existing everywhere for further treatment. Regarding claim 15, Luthe describes carrying out the process with, for example, an impact mill which is a closed vessel (paragraph 175). It would be obvious to one of ordinary skill to use a closed vessel to achieve Luthe’s sieve size because Luthe describes it as a possibility. Claims 1, 4-8, 13, 14 are rejected under 35 U.S.C. 103 as being unpatentable over US 20160280881 by Boisart et al. Boisart describes a method for degrading plastic. Regarding claim 1, Boisart describes cleaving chains in non-biodegradable polymers, i.e. degrading them (paragraph 8), including polyurethane (paragraph 15). Boisart describes optionally cutinases and lipases (paragraph 42). It would be obvious to one of ordinary skill to choose to degrade polyurethane with a combination of cutinase and lipase because Boisart describes these as embodiments. Regarding claim 4, Boisart describes using the enzyme in an amount that is preferably more than 5 wt % of the plastic (paragraph 58), i.e. preferably more than 50 µg/mg. Regarding claim 5, Boisart describes lipases and cutinases in a short list (paragraph 42). When faced with a mixture, one of ordinary skill in the art would be motivated by common sense to select a 1:1 ratio, a ratio that falls within the presently claimed amount, absent evidence of unexpected or surprising results. Case law holds that "[h] aving established that this knowledge was in the art, the examiner could then properly rely... on a conclusion of obviousness, 'from common knowledge and common sense of the person of ordinary skill in the art within any specific hint or suggestion in a particular reference.'" In re Bozek , 416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969). Since the lipase and cutinase are chosen from a short list and must be added in some ratio, a 1:1 unit ratio is obvious to one of ordinary skill. Regarding claim 6, Boisart describes a temperature between 20-80C (paragraph 57). Regarding claim 7, Boisart describes a pH between 5.5 and 8 (paragraph 59). Regarding claim 8, Boisart describes an incubation time of 3 days (paragraph 64), for example. Regarding claims 13 and 14, Boisart describes grinding the plastic using a cutting mill to achieve a powder of 500 microns (paragraph 78). Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over US 20160280881 by Boisart et al in view of Rhizopus oryzae Lipase, a Promising Industrial Enzyme: Biochemical Characteristics, Production and Biocatalytic Applications ” by Lopez-Fernandez et al. Boisart is described above. Regarding claim 2, Boisart describes the specific enzyme coded by Thc_Cut2 (paragraph 82) as well as lipases in general (paragraph 13), but is silent as to specifically RoL . Lopez-Fernandez describes the specific lipase Rhizopus oryzae. Lopez-Fernandez states that R.oryzae is employed in industry because it can carry out many reactions and is a highly studied enzyme which is commercially available (p.1277 paragraph 2). Thus it would be obvious to one of ordinary skill to choose RoL ( R.oryzae lipase) where Boisart merely states “lipase” because it can carry out many reactions and is a highly studied enzyme which is industrially available. Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over US 20160280881 by Boisart et al in view of “Chp.15 Removal of organic micro-pollutants using filamentous fungi” by Bulkan et al. Boisart is described above. Regarding claim 3, Boisart describes purification of enzymes (paragraph 72) and is silent about alternatives. Bulkan describes treating micropolutants with enzymes. Bulkan states that “ Crude enzymes have some advantages over the purified ones. Considering the additional purification step, crude enzymes are less costly and have a higher potential of being applied on a bigger scale because the pure enzyme is not feasible ” (p.385 penultimate paragraph). Thus it would be obvious to one of ordinary skill would be motivated to use crude enzymes where Boisart describes purified ones in order to be less costly and have a higher potential of being applied on a bigger scale. Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over US 20160280881 by Boisart et al in view of in view of WO 2019141504 by Luthe et al, represented herein by US 2021 0 122898 . Boisart is described above. Regarding claim 15, Boisart describes a “cutting mill” (paragraph 78) without describing further alternatives. Luthe describes mechanochemical processes for producing valuable products. Luthe’s process also involves treatment of plastic by enzymes (paragraph 201). Luthe describes carrying out the process with, for example, an impact mill which is a closed vessel (paragraph 175). Luthe describes this as an alternative to a cutting mill (paragraph 175). Luthe states that it is important for the particles to have the same conditions existing everywhere (paragraph 175). It would be obvious to one of ordinary skill to choose the closed vessel of an impact mill to achieve “the same conditions everywhere” for the plastic and because Luthe describes it as an alternative for a cutting mill. Also, i n view of Luthe ' s recognition that cutting mills and impact mills are equivalent and interchangeable, it would have been obvious to one of ordinary skill in the art to substitute an impact mill for a cutting mill and thereby arrive at the present invention. Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958). An express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout , 675 F.2d 297, 213 USPQ 532 (CCPA 1982). Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to FILLIN "Examiner name" \* MERGEFORMAT CHRISTINA W ROSEBACH whose telephone number is FILLIN "Phone number" \* MERGEFORMAT (571)270-7154 . The examiner can normally be reached FILLIN "Work Schedule?" \* MERGEFORMAT 8am-3:30pm . 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, FILLIN "SPE Name?" \* MERGEFORMAT Randy Gulakowski can be reached at FILLIN "SPE Phone?" \* MERGEFORMAT 5712721302 . 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. /CHRISTINA H.W. ROSEBACH/ Examiner, Art Unit 1766
Read full office action

Prosecution Timeline

Jun 23, 2023
Application Filed
Mar 27, 2026
Non-Final Rejection — §103, §112 (current)

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
59%
Grant Probability
23%
With Interview (-36.1%)
3y 1m
Median Time to Grant
Low
PTA Risk
Based on 443 resolved cases by this examiner. Grant probability derived from career allow rate.

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