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
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.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Quaranta et al. (ASC Omega, 2018).
The claims are drawn to a monomer composition for synthesizing recycled plastics, comprising:
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The claims are also drawn to a method for preparing the monomer composition of claims 1, the method comprising the steps of adding polycarbonate to an organic solvent to prepare a mixed solution; adding a glycol-based compound and an organic base catalyst to the mixed solution and stirring them; and obtaining an aromatic diol compound formed in the stirring step.
Quaranta et al. teach chemical recycling of poly(bisphenol A carbonate) by glycolysis using 1,8-diazabicyclo[5.4.0.]undec-7-ene (DBU) as catalyst. The reference teaches the hydroalkylation of bisphenol A (BPA) with propylene carbonate to form mono-hydroxypropyl BPA (MHP-BPA) and bis-hydroxypropyl BPA (BHP-BPA) (p. 7262, scheme 2).
The glycolysis is conducted by suspending the polycarbonate in 1,2-propanediol (propylene glycol) in a solvent, e.g., tetrahydrofuran, and adding the DBU catalyst, followed by stirring until depolymerization of poly(bisphenol A carbonate) is complete. Bisphenol A, as well as MHP-BPA and BHP-BPA (p. 7263, 2.2, and 2.3).
The reference does not teach the ratio of aromatic diol compound derivative impurity according to equation 1 or the yield according to equation 2; does not teach the color coordinate recited by the instant claims; and does not teach the aromatic diol compound derivative comprising monohydroxyethyl-bisphenol A or bishydroxyethyl-bisphenol A.
With regard to the last difference, the reference teaches glycolysis of poly-BPA carbonate using propylene glycol as the diol that reacts with the polycarbonate, thereby producing mono-hydroxypropyl BPA (MHP-BPA) and bis-hydroxypropyl BPA (BHP-BPA). However, it would have been obvious to a person having ordinary skill in the art that propylene glycol can be substituted with ethylene glycol in the glycolysis process taught by Quaranta et al., such substitution would have resulted in the formation of monohydroxyethyl-bisphenol A and bishydroxyethyl-bisphenol A along with bisphenol according to the process taught by the reference.
The ratio of aromatic diol compound derivative impurities could have readily been derived, and modified by a person having ordinary skill in the art, since the preparation method claimed in the present invention is essentially the same as that which is taught by the reference. Such a person would have been able to adjust the reaction parameters, e.g., temperature, pressure, residence time, etc., in an effort to afford an aromatic diol having a desired, or acceptable concentration of impurities. The same is true of obtaining a monomer composition having a desired color coordinate.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-15 and 17-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 and 8-20 of copending Application No. 18/687,932 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are drawn to a monomer composition for synthesizing recycled plastic, comprising an aromatic diol and a method for preparing the same. The difference is that the instant claims recite an aromatic diol derivative impurity of 2% or less, according to equation 1, and a yield of aromatic diol of 80% or more, according to equation 2, while the reference application recites 0.5% or less, and 99.25% or more, respectively. This is not a patentable distinction since the parameters recited in the instant claims encompass those recited in the claims of the reference application. Therefore, the instant claims are deemed obvious over the claims of the reference application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-6, 19, and 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 15, and 16 of copending Application No. 18/292,301 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are drawn to a monomer composition for synthesizing recycled plastic, comprising an aromatic diol. The difference is that the instant claims recite an aromatic diol derivative impurity of 2% or less, according to equation 1, while the reference application recites 10% or less. This is not a patentable distinction since the parameters recited in the instant claims are encompassed by those recited in the claims of the reference application. Therefore, the instant claims are deemed obvious over the claims of the reference application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SIKARL A WITHERSPOON whose telephone number is (571)272-0649. The examiner can normally be reached M-F 9am-9pm IFP.
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/SIKARL A WITHERSPOON/Primary Examiner, Art Unit 1692
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