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 .
Status of Claims
Claims 1 – 10 are pending.
Claims 3, 5,7 and 8 are objected.
Clams 1, 2, 4, 6, 9 and 10 are rejected.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1, 2, 4, 6, 9 and 10 are rejected under 35 U.S.C. 112(a), because the specification, while being enabling for a disposal method for recyclate, comprising: providing recyclable containing polyester; performing a first depolymerization step, comprised of mixing the recyclable, oligo-bis(2-hydroxyethyl) terephthalate (o-BHET) and a catalyst for reaction and extrusion depolymerization to at least obtain or produce poly-bis(2-hydroxyethyl) terephthalate (p-BHET); and performing a second depolymerization step, comprised of mixing the p-BHET and a depolymerization solution for chemically depolymerization to at least obtain or produce monomer-bis(2-hydroxyethyl) terephthalate (m-BHET); wherein the depolymerization solution is comprised of ethylene glycol and a weight ratio of the ethylene glycol in a total weight of the mixture in the second depolymerization step is 30 wt.% to 80 wt.%; heating in the first depolymerization is 200°C to 280°C; and heating in the second depolymerization is 190°C to 240°C. The claim as set out does not reasonably provide enablement for
disposal method for recyclate, comprising: providing recyclable containing polyester; performing a first depolymerization step, comprising mixing the recyclable and oligo-bis(2-hydroxyethyl) terephthalate (o-BHET) for reaction and extrusion depolymerization to at least obtain or produce poly-bis(2-hydroxyethyl) terephthalate (p-BHET); and wherein the first depolymerization reaction and extrusion is able to produce the p-BHET without heating or a catalyst. Nor is there enablement for preforming a second depolymerization step, comprising mixing the p-BHET and a depolymerization solution for chemically depolymerization wherein the depolymerization solution could be any solution other than what is disclosed, and heating is not present. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention commensurate in scope with these claims.
The test for enablement is whether one skilled in the art could make and use the claimed invention from the disclosures in the specification coupled with information known in the art without undue experimentation (United States v. Telectronice, 8, USPQ2D 1217 (Fed. Cir, 1988). Whether undue experimentation is needed is not based upon a single factor but rather in a conclusion reached by weighing many factors. The factors to be considered in determining whether a disclosure meets the enablement requirements of 35 U.S.C. 112, first paragraph, have been described in In re Wands, 858 F.2d 731, 8 USPQ2d 1400 (Fed. Cir., 1988). The court in Wands states, “Enablement is not precluded by the necessity for some experimentation, such as routine screening. However, experimentation needed to practice the invention must not be undue experimentation. The key word is ‘undue’, not ‘experimentation’” (Wands, 8 USPQ2sd 1404). Clearly, enablement of a claimed invention cannot be predicated on the basis of quantity of experimentation required to make or use the invention. “Whether undue experimentation is needed is not a single, simple factual determination, but rather is a conclusion reached by weighing many factual considerations” (Wands, 8 USPQ2d 1404). Among these factors are: (1) the nature of the invention; (2) the breadth of the claims; (3) the state of the prior art; (4) the predictability or unpredictability of the art; (5) the relative skill of those in the art; (6) the amount of direction or guidance presented; (7) the presence or absence of working examples; and (8) the quantity of experimentation necessary.
The Federal Circuit has repeatedly held that "the specification must teach those skilled in the art how to make and use the full scope of the claimed invention without ‘undue experimentation’." (In re Wright, 999 F.2d 1557, 1561, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993)).
While all of these factors are considered, a sufficient amount for a prima facie case is discussed below.
(1) The nature of the invention and (2) the scope of the claims:
The nature of the claims are drawn to: a disposal method for recyclate, comprising: providing recyclable containing polyester; performing a first depolymerization step, comprising mixing the recyclable and oligo-bis(2-hydroxyethyl) terephthalate (o-BHET) for reaction and extrusion depolymerization to at least obtain or produce poly-bis(2-hydroxyethyl) terephthalate (p-BHET); and performing a second depolymerization step, comprising mixing the p-BHET and a depolymerization solution for chemically depolymerization to at least obtain or produce monomer-bis(2-hydroxyethyl) terephthalate (m-BHET).
The scope of the invention in the claims is that the first wherein the first depolymerization reaction and extrusion is able to produce the p-BHET from a mixture of recyclable and o-BHET without heating or a catalyst. Also, the second depolymerization step is able to chemically depolymerize p-BHET with any depolymerization solution without heating.
(3) The state of the prior art: JPS57108126 (Sakamoto Seini et al.) disclose the production of polyester by depolymerizing a preceding batch polyester remaining in a polycondensation tank with a specified compound and then, after addition of a P compound, polycondensing the mixture. A preceding batch polyester remaining in a polycondensation tank is mixed with at least one component selected from the group consisting of ethylene glycol, bis(beta-hydroxyethyl) terephthalate and a lower polymer thereof and then depolymerized by keeping the mixture at 230-280 °C for 15min-2hr. Next, to this depolymerized mixture is added an esterified or transesterified product from a dicarboxylic acid (lower alkyl ester) and a glycol, and the resulting mixture is polycondensed in the presence of a P compound, e.g., triethyl phosphate, to obtain a polyester. (abstract).
US 2022/0325065 (Wolters et al.) discloses a method for depolymerising a terephthalate polymer into reusable raw material, the method comprising the steps of depolymerizing a terephthalate polymer by using ethylene glycol into a depolymerised mixture comprising at least one monomer and at least one dimer, wherein said at least one monomer comprises bis (2-hydroxyethyl) terephthalate (BHET), and said at least one dimer comprises dimer of bis (2-hydroxyethyl) terephthalate (BHET-dimer); removing solid compounds from said depolymerised mixture to obtain a composition comprising the at least one dimer and the at least one monomer as solutes in a mixture of ethylene glycol and water; crystallizing BHET-dimer from said solution, thereby obtaining a mixture of BHET-dimer crystals and a first mother liquid; separating the crystallized BHET-dimer from the first mother liquid, and thereafter: forming BHET crystals from said first mother liquid, thereby obtaining a mixture of BHET crystals and a second mother liquid; and recovering the BHET crystals. (pp. 1, [0007] – [0013]).
(4) the predictability or unpredictability of the art: Chemistry is unpredictable. In reMarzocchi, 439 F2d 220, 169 USPQ 367 para. 3. However, the "predictability or lack thereof” in the art refers to the ability of one skilled in the art to extrapolate the disclosed or know results to the claimed invention. If one skilled in the art can readily anticipate the effect of a change within the subject matter to which the claimed invention pertains, then there is predictability in the art. MPEP 2164.03.
(5) The relative skill of those in the art: A person of ordinary skill in the art would have had any one of the following: (i) a Ph.D. degree in Chemistry or Chemical Engineering or a related field, and about 3 years total of practical experience; (ii) a Masters degree in Chemistry or Chemical Engineering or a related field, and about 5 years total of practical experience; (iii) a Bachelors degree in Chemistry or Chemical Engineering or a related field, and about 10 years total of practical experience. These descriptions are approximate, and a higher level of education or specific skill might make up for less experience, and vice-versa.
(6) The amount of direction or guidance presented and (7) the presence or absence of working examples:
The specification has provided guidance for a disposal method for recyclate in Example 1.
Approximately 90 kilograms (kg) of recyclate containing polyester (e.g., waste PET fabrics, may be referred as “PET” in [Table 1]) is provided. The aforementioned recyclate containing polyester is mixed with about 10 kg of o-BHET and about 0.3 kg of zinc acetate (which may be referred as a catalyst), and then fed into a twin-screw extruder for extrusion and pre-depolymerization. The heating temperature of the extruder is set at about 260°C. The extruded p-BHET (may be referred as “ext-PROD” in [Table 1]) then enters a stirring tank, and an additional about 400 kg of EG and about 0.2 kg of zinc acetate (which may be referred as a catalyst) are added, and the reaction continues at about 190°C to 200°C (e.g., about 195°C to 198°C) for about 180 minutes to depolymerize into a crude product. The crude product comprises o-BHET and m-BHET. After depolymerization, the crude product is cooled to about room temperature (e.g., denoted as: 198↘25°C), and the o-BHET and m-BHET are crystallized and filtered out. Subsequently, after mixing the aforementioned filtered crystals with hot water at 90°C, the o-BHET is essentially insoluble and may be filtered out for reuse of extrusion and pre-depolymerization; the m-BHET, which is essentially soluble in 90°C hot water, may be purified by removing impurities using activated carbon or another suitable adsorbent material. Afterwards, the purified 90°C solution containing m-BHET is cooled to about 5°C, causing the m-BHET dissolved therein to crystallize and precipitate, and after filtration and drying, the corresponding m-BHET is obtained. Finally, based on the weight of the polyester in the original recyclate containing polyester, the weight ratio of the m-BHET product is approximately 80.6 wt.%. That is, the recycling rate of polyester is approximately 80.6 wt.%.
However, the specification does not provide a method wherein the first depolymerization reaction and extrusion is able to produce the p-BHET from a mixture of recyclable and o-BHET without heating or a catalyst. Also, the second depolymerization step is able to chemically depolymerize p-BHET with any depolymerization solution and without heating.
(8) The quantity of experimentation necessary:
Considering the state of the art as discussed by the references above, particularly with regards to the lack of depolymerization conditions and the high unpredictability in the art as evidenced therein, and the lack of guidance provided in the specification, one of ordinary skill in the art would be burdened with undue experimentation to practice the invention commensurate in the scope of the claims.
Allowable Subject Matter
Claims 3, 5,7 and 8 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.
The following is a statement of reasons for the indication of allowable subject matter: None of the prior art of record teaches or suggest a method for
for a disposal method for recyclate, comprising: providing recyclable containing polyester; performing a first depolymerization step on a mixture of the recyclable, oligo-bis(2-hydroxyethyl) terephthalate (o-BHET) and a catalyst via reactive extrusion depolymerization, at temperatures of 200°C to 280°C, obtaining or producing poly-bis(2-hydroxyethyl) terephthalate (p-BHET); and performing a second depolymerization step, where the p-BHET is mixed with ethylene glycol for chemically depolymerization at temperatures to 140°C to240°C to at least obtain or produce monomer-bis(2-hydroxyethyl) terephthalate (m-BHET).
A close prior art is US 2022/0325065 (Wolters et al.). Wolters discloses a method for depolymerising a terephthalate polymer into reusable raw material, the method comprising the steps of depolymerizing a terephthalate polymer by using ethylene glycol into a depolymerised mixture comprising at least one monomer and at least one dimer, wherein said at least one monomer comprises bis (2-hydroxyethyl) terephthalate (BHET), and said at least one dimer comprises dimer of bis (2-hydroxyethyl) terephthalate (BHET-dimer); removing solid compounds from said depolymerised mixture to obtain a composition comprising the at least one dimer and the at least one monomer as solutes in a mixture of ethylene glycol and water; crystallizing BHET-dimer from said solution, thereby obtaining a mixture of BHET-dimer crystals and a first mother liquid; separating the crystallized BHET-dimer from the first mother liquid, and thereafter: forming BHET crystals from said first mother liquid, thereby obtaining a mixture of BHET crystals and a second mother liquid; and recovering the BHET crystals. (pp. 1, [0007] – [0013]).
However, Wolters does not teach the first depolymerization via reactive extrusion of a mixture of the recyclable and o-BHET to produce p-BHET that is chemically depolymerized in a second depolymerization.
Art of Made of Record
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 2003/0134915 ( Scantleburt et al.) In the broadest sense, the present invention relates to a process for making polyester containing transparent waste polyester comprising the steps of providing a stream containing oligomers, feeding transparent polyester waste to an extruder, melting in said extruder said waste polyester, extruding said molten polyester into said stream containing oligomers, completing the esterification creating a prepolymer mixture, and polymerizing said prepolymer mixture thereby producing polyester containing waste transparent polyester suitable for food grade applications. (pp. 1, [0014]).
Conclusion
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/YATE' K CUTLIFF/Primary Examiner, Art Unit 1692