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 § 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 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over Maille (US 2017/0114205) and further in view of Auclair et al. (US 2022/0403422).
Regarding claim 1 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)
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)
Regarding claim 2 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)
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 15 Maille discloses all the claim limitations as set forth above as well as the method wherein the at least one cutinase comprises Thermobifida fusca, Thermobifida cellulosilytica, or Thermobifida alba (See Maille [0072] wherein cutinase is from such.)
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) 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 4/2/2026 have been fully considered but they are not persuasive.
Applicant argues that “Maille does not disclose the amount of enzyme used in the method of degrading PET. As disclosed in the 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 µg protein/mg polymer."4”
It is noted that 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 reads on the claims. Applicant’s arguments are not persuasive.
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 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.
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
Prosecution Insights