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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 8/4/2026 has been entered.
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 1-3, 5-13 and 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Maille (US 2017/0114205) in view of Auclair et al. (US 2022/0403422) and further in view of Then et al. (“Ca2+ and Mg2+ binding site engineering increases the degradation of polyethylene terephthalate films by polyester hydrolases from Thermobifida fusca” 2015)
Regarding claims 1-2 Maille discloses a method of degrading polyethylene terephthalate (PET) comprising the step of subjecting the PET to at least one cutinase. (See Maille Abstract, [0016], [0120] wherein PET materials are degraded by subjecting them to cutinase.)
Maille discloses all the claim limitations as set forth above as well as the method wherein the at least one cutinase is used with an enzyme loading of at least 0.65 μg protein per mg polymer. (See Maille [0107] wherein the enzyme is added at 5% weight of polymer, i.e. greater than 0.65 μg/mg. 5% enzyme by weight of plastic is equivalent to 200 µg enzyme protein/mg of polymer)
Maille discloses all the claim limitations as set forth above as well as the method wherein the at least one cutinase is selected from the group consisting of Thf Cut, Thc_Cutl, Thc_Cut2, BC-CUT-013, or combinations thereof. (See Maille [0120] wherein the cutinase of THC_Cut1)
Mallie notes that rPET is a known material used to form PET articles. (See Maille [0004])
Assuming arguendo with respect to the PET being rPET vs virgin PET it is noted that Auclair et al discloses rPET and be used in place of PET for degradation by cutinase (See Auclair Abstract and Tables 5-6) and such a substitution would have required the mere replacement of one source of known PET with another, i.e. replacement of virgin PET with recycled PET, which would have been obvious to one of ordinary skill in the art at the time of filing because a substitution of known equivalent structures is generally recognized as being within the level of ordinary skill in the art and mere substitution of an equivalent 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)
Maille does not specifically disclose providing an additional cutinase including Thf_Cut.
Then et al. discloses a method of degrading PET polymers by using a plurality of cutinases including Thf cutinase. (See then Abstract and Pages 592-598 wherein combinations of cutinases including Thf cutinase are used to degrade and recycle PET)
It would have been obvious to one of ordinary skill in the art at the time of invention to provide additional cutinases including Thf cutinase as described by ??? in the method of Maille because It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
Regarding claim 3 Maille discloses all the claim limitations as set forth above as well as the method wherein the at least one cutinase is used as a crude extract.(See Maille [0017] wherein the cutinase is expressed from a microorganism and added directly to the plastic, i.e. it is a crude extract.)
Regarding claim 5 Maille discloses all the claim limitations as set forth above as well as the method wherein the rPET is subjected to the at least one cutinase at a temperature in the range of 20 – 50 C. (See Maille [0106] wherein the temperature to which the cutinase and rPET is subjected is 25-50 C.)
Regarding claim 6 Maille discloses all the claim limitations as set forth above as well as the method wherein the rPET is subjected to the at least one cutinase at a pH in the range of about 6- 9. (See Maille [0108] wherein the pH is 4-10.)
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 7 Maille discloses all the claim limitations as set forth above as well as the method wherein the rPET is subjected to the at least one cutinase for at least 2 days, for at least 7 days, or for at least 15 days. (See Maille [0112] wherein the process occurs for 72 hours, i.e. at least two days,)
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 8 Maille discloses all the claim limitations as set forth above as well as the method wherein the rPET is present in a packaging. (See Maille [0007] wherein the rPET is present in packaging.)
Regarding claim 9 Maille discloses all the claim limitations as set forth above as well as the method wherein the packaging comprises a multilayer packaging structure comprising at least two polymeric layers, wherein the polymeric layers comprises a rPET-based layer and at least one layer selected from the group consisting of a polyurethane (PU)-based layer, a polyethylene terephthalate (PET)-based layer, a polyethylene (PE)- based layer, or a combination thereof. (See Maille [0007] wherein a layer includes a rPET layer and polyethylene layer.)
Regarding claim 10 Maille discloses all the claim limitations as set forth above as well as the method wherein the method is used for the selective delamination of at least one rPET-based layer in a multilayer packaging. (See Maille [0007] wherein a layer includes a rPET which is treated with cutinase and thus selectively delaminated from the other layers of the multilayer packaging.)
Regarding claim 11 Maille discloses all the claim limitations as set forth above as well as the method wherein the rPET is present in a packaging comprising a multilayer packaging structure, wherein the multilayer packaging structure comprises a base layer that can be recycled, for example a PE-based layer, and at least one rPET layer, wherein the method is used to recycle the multilayer packaging materials by degrading the at least one rPET-based layer and by subjecting the base layer to a recycling stream. (See Maille [0007] wherein a layer includes a rPET layer and a base layey wherein the rPET is subject to degradation and the other base layer is recycled.)
Regarding claim 12 Maille 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 rPET and/or the rPET containing material, for example the rPET containing packaging, before or during subjecting the rPET and/or the rPET containing material to at least one cutinase. (See Maille [0133] wherein the particle size is reduced by mechanical treatment prior to treatment with cutinase.)
Regarding claim 13 Maille 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 with an average diameter of less than about 5 mm, less than about 1 mm, or less than about 0.5 mm diameter. (See Maille [0133] wherein the particle size is reduced by mechanical treatment to a diameter of 500-250 microns, i.e. less than about 5mm.)
Regarding claim 16 Maille discloses all the claim limitations as set forth above as well as the method wherein the at least one cutinase is in a pure form. (See Maille [0075] wherein the enzyme is in purified form.)
Regarding claims 17-18 Maille discloses all the claim limitations as set forth above as well as the method wherein the rPET is subjected to the at least one cutinase at a pH of about 7-9 or 7.5-8.5. (See Maille [0108] wherein pH is in the range of 4-10.)
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 claims 19 and 20 Maille discloses all the claim limitations as set forth above as well as the method wherein the time rPET is subjected to the at least one cutinase is known to be adjusted according to use but does not specifically disclose for at least 7 days or at least 15 days.
As the reactor cost of operation and level of degradation are variables that can be modified, among others, by adjusting said time of rPET and cutinase exposure, with said opeation cost and level of degradation both increasing as the time of rPET and cutinase exposure is increased, the precise time of rPET and cutinase exposure would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the time of rPET and cutinase exposure cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the time of rPET and cutinase exposure in the method of Maille to obtain the desired balance between the operation cost and the level of degredation(In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Maille (US 2017/0114205) in view of Auclair et al. (US 2022/0403422) and Then et al. (“Ca2+ and Mg2+ binding site engineering increases the degradation of polyethylene terephthalate films by polyester hydrolases from Thermobifida fusca” 2015) as applied to claims above, and further in view of Alvarez (US 2017/0313998).
Regarding claim 14 Maille 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 Maille 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 Maille.
Response to Arguments
Applicant's arguments filed 7/2/2026 have been fully considered but they are not persuasive.
Applicant argues that “Contrary to Maille and Auclair alone or in combination, amended independent Claim 1 recites a method of degrading recycled polyethylene terephthalate (rPET), the method comprising subjecting the rPET to at least one cutinase with an enzyme loading of at least about 0.65 pg protein/mg polymer, wherein the at least one cutinase comprises a first cutinase selected from the group consisting of ThfCut, BC-CUT-013, and combinations thereof.
Notably, page 3 of the Office Action cites paragraph [0120] of Maille for the purported disclosure of "the cutinase of THC_Cutl." This purported disclosure does not teach any of the specific cutinases recited by amended independent Claim 1.
Auclair does not remedy this deficiency of Maille. For example, the Patent Office merely relies on Auclair for the alleged disclosure that rPET can be used instead of PET for degradation by cutinase (Office Action, page 3). This alleged disclosure does not suggest modification of Maille to use any of the specific cutinases recited by amended independent Claim 1.”
It is noted that in response to applicant’s claim limitations an additional reference and rational have been provided to teach and/or render obvious the amended claim limitations. As such applicant’s arguments are moot in view of this.
Applicant also argues that “Furthermore, Maille and Auclair alone or in combination do not render obvious "subjecting the rPET to at least one cutinase with an enzyme loading of at least about 0.65 pg protein/mg polymer" as required by amended independent Claim 1.
this claim element by asserting that Maille teaches an overlapping range. However, even if indeed Maille teaches an overlapping range (to which Applicant does not acquiesce), nevertheless a prima facie case of obviousness based on an overlapping range can be rebutted by showing the criticality of the claimed range. In this regard, "[t]he law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims [...] In such a situation, the applicant must show that the particular range is critical." 1
Here, Applicant's specification establishes the criticality of the currently claimed enzyme loading of at least about 0.65 pg protein/mg polymer: as disclosed in Applicant's specification, "[t]he amount of enzyme used...is...important for the speed of the degradation. The inventors have obtained good results when the degradation was carried out with an enzyme loading of at least about 0.65 pg protein/mg polymer..." Therefore, Maille and Auclair alone or in combination do not render obvious "subjecting the rPET to at least one cutinase with an enzyme loading of at least about 0.65 pg protein/mg polymer" as required by amended independent Claim 1.”
The examiner notes that Maille does not teach an overlapping range. Maille teaches a value within the claimed range. Maille specifically discloses at [0107] that the amount of enzyme is 5% by weight of the plastic articles. Enzyme added at 5% of the weight of plastic particles means the enzyme is added at 200 µg enzyme protein/mg of polymer which is greater than 0.65 µg protein/mg polymer and is within and reads on the claims. Thus applicant’s supposed demonstration of criticality, which examiner does not agree with, is immaterial as such is not sufficient to overcome the specific teaching of a value within applicant’s range and not an overlapping range. Applicant’s arguments are not persuasive as they are based upon an improper understanding of the teachings of the cited art.
Furthermore applicant’s arguments with respect to unexpected results are not commensurate in scope with the claimed invention and it is noted that applicant merely alleges “good results” not unexpected results.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JONATHAN M HURST whose telephone number is (571)270-7065. The examiner can normally be reached on M-F 7AM-4PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Marcheschi can be reached on 571-272-1374. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JONATHAN M HURST/ Primary Examiner, Art Unit 1799
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