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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-13 and 18-20 in the reply filed on 6/29/2026 is acknowledged.
Claims 14-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected product, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 6/29/2026.
Specification
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
The abstract of the disclosure is objected to because the relevant process steps (dissolving, adding phenol end capper, removing impurities, precipitation) are not set forth. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
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 applicant regards as his invention.
Claims 7 and 8 are 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.
Claim 7 recites “cyclic ether-based solvent” and “linear or cyclic carbonate-based solvent”. It is unclear what is meant or implied by the term “based” in addition to the otherwise definition expressions. Therefore, the intended scope of the claim is unclear.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The accepted meaning of the term “hydrocarbon” is a compound consisting solely of carbon and hydrogen. See IUPAC and Hawley; attached. However, claim 7 indicates the “hydrocarbon solvent” further comprises one or more halogens and claim 8 indicates a hydrocarbon can contain various functional groups such as alcohol, ketone, ether, carboxylic acid, or nitrile. Since these claims use the term “hydrocarbon” in a manner inconsistent with its plain and ordinary meaning and neither the claims nor the specification clearly re-defines the term, the intended scope of the claims is unclear.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 3, and 7-12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Varajarajan (U.S. Pat. No. 6,034,142).
Regarding Claims 1 and 3, Varajarajan teaches methods of recycling polycarbonates comprising dissolving polycarbonate in a solvent, removing impurities, precipitating polycarbonate via addition of non-solvent to the mixture from which impurities have been removed, and then collecting polycarbonate (Abstract). During the dissolution phase, it is preferred to add dihydroxy compound as a modifying agent to produce hydroxy end groups (Col. 3, Lines 1-12; Example 3) whereby examples are taught where bisphenol A polycarbonates are recovered (Example 1). Thus, such modifying agents are construed as “phenol end-cappers”.
Varajarajan teaches embodiments where removing impurities comprises contacting the solution with a solid that absorbs color bodies, such as activated carbon (Col. 2, Lines 53-67).
Regarding Claims 7 and 8, Varajarajan teaches examples where 1,2-dichloroethane is used as solvent (Example 1), construed as halogenated hydrocarbon solvent with 2 carbons. Ethyl acetate (ester) is used as non-solvent.
Regarding Claims 9 and 10, Varajarajan teaches embodiments where 100 mg catechol is used relative to roughly 100 g of polycarbonate/solvent (based on a density of 0.9 for ethyl acetate) (Example 3), equivalent to 0.1 pbw relative to 100 pbw of solution. 1 mg of tetramethylammonium maleate is included, construed as basic catalyst.
Regarding Claim 11, Varajarajan teaches separating precipitated solids via filtration, washing the solids, and then drying (Example 1).
Regarding Claim 12, Varajarajan teaches examples where 100 g of polycarbonate is used relative to 982 g of polycarbonate/solvent (based on a density of 1.26 for dichloroethane), equivalent to 10.2 pbw polycarbonate relative to 100 pbw solution.
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.
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) 4, 13, 18, and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Varajarajan (U.S. Pat. No. 6,034,142).
Varajarajan teaches methods of recycling polycarbonates comprising dissolving polycarbonate in a solvent, removing impurities, precipitating polycarbonate via addition of non-solvent to the mixture from which impurities have been removed, and then collecting polycarbonate (Abstract). During the dissolution phase, it is preferred to add dihydroxy compound as a modifying agent to produce hydroxy end groups (Col. 3, Lines 1-12; Example 3) whereby examples are taught where bisphenol A polycarbonates are recovered (Example 1). Thus, such modifying agents are construed as “phenol end-cappers”.
Varajarajan teaches embodiments where removing impurities comprises contacting the solution with a solid that absorbs color bodies, such as activated carbon (Col. 2, Lines 53-67).
Regarding Claim 4, Varajarajan teaches contacting the solution with a solid that absorbs color bodies, such as activated carbon. Varajarajan differs from the subject matter claimed with respect to the exact quantity of adsorbent used. In this regard, it is implied the amount of adsorbent used is a result effective variable subject to routine optimization by one of ordinary skill in the art since a necessary quantity is needed to effect decolorization while excess is avoided to save on costs associated with adsorbent. See MPEP 2144.05(II). Case law holds that “discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In view of this, it would have been obvious to one of ordinary skill in the art to discover optimal/workable adsorbent quantities within the scope of the present claims by routine experimentation so as to produce desired end results.
Regarding Claim 13, Varajarajan teaches contacting the solution with a nonsolvent that precipitates polycarbonate. Varajarajan differs from the subject matter claimed with respect to the exact quantity of nonsolvent used. In this regard, it is implied the amount of nonsolvent used is a result effective variable subject to routine optimization by one of ordinary skill in the art since a necessary quantity is needed to effect precipitation while excess is avoided to save on costs associated with nonsolvent. See MPEP 2144.05(II). Case law holds that “discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In view of this, it would have been obvious to one of ordinary skill in the art to discover optimal/workable nonsolvent quantities within the scope of the present claims by routine experimentation so as to produce desired end results.
Regarding Claim 18, the particular embodiments of Varajarajan differ with respect to the identity of the solvent/nonsolvent used. In this regard, Varajarajan describes wide ranging solvent options, inclusive of methylene chloride (synonymous with dichloromethane) for solvent and acetone for nonsolvent (Col. 2, Lines 35-36; Col. 3, Line 26). It would have been obvious to one of ordinary skill in the art to utilize dichloromethane and acetone as solvent/non-solvent, thereby predictably affording recycled polycarbonate materials in accordance with the teachings of Varajarajan.
Regarding Claim 20, Varajarajan teaches mixing polycarbonate with solvent to effect dissolution. Varajarajan differs from the subject matter claimed with respect to the exact timeframe of dissolution. In this regard, it is implied the timeframe used is a result effective variable subject to routine optimization by one of ordinary skill in the art since a necessary time is needed to effect dissolution while excess time is avoided to save on costs associated with heating/stirring. See MPEP 2144.05(II). Case law holds that “discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In view of this, it would have been obvious to one of ordinary skill in the art to discover optimal/workable dissolution timeframes within the scope of the present claims by routine experimentation so as to produce desired end results.
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Varajarajan (U.S. Pat. No. 6,034,142) in view of Hsu (Ind. Eng. Chem. Res. 2006, 45, 2672-2676) and Alberti (ChemistrySelect 2019, 4, 2639-2643).
The discussion regarding Varajarajan within ¶ 22-27 is incorporated herein by reference.
Regarding Claim 19, Varajarajan differs from the subject matter claimed with respect to the use of DMAP as catalyst. In this regard, it was known in the art DMAP is effective as a catalyst to promote trans-esterification within polycarbonates (Abstract of Hsu; Abstract/Scheme 1 of Alberti). It would have been obvious to one of ordinary skill in the art to utilize catalysts such as DMAP within the methods of Varajarajan, thereby achieving the predictable result of catalyzed trans-esterification of bisphenols.
Allowable Subject Matter
Claims 2, 5, and 6 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHEN E RIETH whose telephone number is (571)272-6274. The examiner can normally be reached Monday - Friday, 8AM-4PM Mountain Standard Time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached at (571)272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEPHEN E RIETH/Primary Examiner, Art Unit 1759
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