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 with traverse of Group I, claims 1-5, 9-11, 13-15, 17-22, 24 and 25 in the reply filed on 6/23/2026 is acknowledged. The traversal is on the ground(s) that Coupard does not describe a series of depolymerization reactors. This is not found persuasive as Coupard explicitly requires the use of depolymerization reactors in series. In Coupard’s step a (“dissolution step”), PET, glycol, and catalyst are reacted in reactor(s), potentially in “several reactors in series” in a preferred arrangement (¶ 24). In Coupard’s step c (“glycolysis step”), PET, glycol, and catalyst are reacted yet again in a different reactor that is “in series” with respect to those of step a. Step c itself is also “at least one” reactor (¶ 35) alluding to the possibility of a plurality of reactors. The examiner is unpersuaded by Applicant’s argumentation concerning ¶ 35. The description of “higher conversion than a single or a set of stirred reactors in series” (emphasis added) in ¶ 35 merely alludes to a preference for the use of fixed/fluidized bed reactors at step c as opposed to stirred reactors.
The requirement is still deemed proper and is therefore made FINAL.
Claim 28 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected apparatus, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 6/23/2026.
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 2-5, 9, 11, 13-15, 18-22, and 25 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.
Regarding claims 2, 4, 13, 14, and 19, the phrases "preferably" and “more preferably” render the claim indefinite because it is unclear whether the limitation(s) following the phrases are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 3, the phrase "for instance" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 5, the phrases "preferably", “more preferably”, and “such as” render the claim indefinite because it is unclear whether the limitation(s) following the phrases are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 9, the phrases "preferably", “more preferably”, and “most preferably” render the claim indefinite because it is unclear whether the limitation(s) following the phrases are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 11, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 15, the phrases "preferably", “for instance”, “such as”, and “e.g.” render the claim indefinite because it is unclear whether the limitation(s) following the phrases are part of the claimed invention. See MPEP § 2173.05(d).
Claim 15 refers to an exchange bed of “the same type”. The addition of the word "type" to an otherwise definite expression (e.g., Friedel-Crafts catalyst) extends the scope of the expression so as to render it indefinite. Ex parte Copenhaver, 109 USPQ 118 (Bd. Pat. App. & Inter. 1955). See MPEP 2173.05(b)(E). Accordingly, the intended scope of the claim is unclear.
Regarding claim 18, the phrases "preferably", “more preferably”, and “e.g.” render the claim indefinite because it is unclear whether the limitation(s) following the phrases are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 20, the phrases "preferably" and “e.g.” render the claim indefinite because it is unclear whether the limitation(s) following the phrases are part of the claimed invention. See MPEP § 2173.05(d).
As claims 21 and 22 depend from claim 20, they are rejected for the same issue discussed above.
Regarding claim 21, the phrases "preferably" and “such as” render the claim indefinite because it is unclear whether the limitation(s) following the phrases are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 25, the phrases "preferably", “more preferably”, and “e.g.” render the claim indefinite because it is unclear whether the limitation(s) following the phrases are part of the claimed invention. See MPEP § 2173.05(d).
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) 1, 2, 4, 9-11, 13-15, and 18-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ekart (U.S. Pat. No. 5,635,584) in view of Coupard (WO 2016/096768 A1). As the cited WO publication is in a non-English language, a machine-translated version of the publication will be cited to.
Regarding Claims 1 and 11, Ekart describes methods/apparatus for depolymerizing PET whereby a) PET is depolymerized with EG/catalyst in a depolymerization reactor to form BHET, b) volatiles/EG are removed in vacuum to form BHET solids, c) dissolving the BHET solids in solvent such as alcohol or water to form BHET solution, d) filtering the BHET solution to remove insoluble impurities, and e) cooling/crystallizing/precipitating the BHET from the purified solution (Abstract; Examples; Col. 4, Lines 2-3 and 23-28). Since BHET solids are formed via vacuum removal of EG, which is substantially similar if not identical to what is described within the specification, it stands to reason crystallization would naturally occur over the course of solids formation. Ekart differs from the subject matter claimed in that a single depolymerization reactor is described whereas the instant claims require a series of depolymerization reactors. Coupard also pertains to the depolymerization of PET into BHET followed by crude BHET isolation and purification via recrystallization (Abstract; ¶ 9-13; Examples). Coupard teaches the use of a series of reactors, whereby at step a) at least one reactor is fed with PET, EG, catalyst, and effluents from future steps, at step b) solid-liquid separation occurs, the solid effluent feeding step a), and at step c) further glycolyzing the liquid stream of step b) to form crude BHET a fraction of which is fed to step a) (¶ 9-13, 23-34). Coupard teaches the use of the series of reactors allows for minimizing loss of undissolved PET and improving conversions than with a single stirred reactor (¶ 14-15). It would have been obvious to one of ordinary skill in the art to utilize the series of reactors of Coupard within the protocol of Ekart because doing so would minimize loss of undissolved PET and improve conversions as taught by Coupard.
Regarding Claim 2, Ekart describes the treatment of waste PET (Col. 1, Lines 6-8; Col. 3, Lines 36-56).
Regarding Claim 4, Coupard describes the use of a depolymerization reactor(s) at step a and step c, whereby at either step, at least one depolymerization reactor is used (¶ 24, 35). Thus, the numerical ranges associated with Coupard overlaps embodiments where PET is depolymerized in a series of two depolymerization reactors. It would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Coupard suggests the claimed range. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Coupard. See MPEP 2123.
Regarding Claim 9, Ekart teaches the use of a thin film evaporator (Col. 4, Lines 12-13), synonymous with a wiped film evaporator. Alternatively, Ekart teaches temperatures below 200 degrees C (Col. 4, Lines 7-8) under vacuum (Examples). The temperature range overlaps that claimed. It would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Ekart suggests the claimed range. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Ekart. See MPEP 2123.
Regarding Claim 10, Ekart teaches evaporated glycol can be recycled to the glycolysis reactor (Col. 4, Lines 9-11).
Regarding Claim 13, Ekart teaches temperatures such as 90 degrees C and ambient pressures with respect to BHET dissolution (Examples).
Regarding Claim 14, Ekart teaches 0.5-20 pbw of solvent relative to monomer solids obtained after evaporation (Col. 4, Lines 23-25). While not expressing solvent content in terms of PET used, 1 pbw of obtained BHET corresponds to roughly 0.75 pbw of PET reactant. Thus, Ekart is seen to imply solvent amounts that would overlap 0.1-1 pbw of solvent relative to 1 pbw of PET. It would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Ekart suggests the claimed range. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Ekart. See MPEP 2123.
Regarding Claim 15, Ekart teaches the resulting solutions can be treated with adsorbent such as activated carbon continuously over a bed of absorbent (Col. 4, Lines 38-44).
Regarding Claims 18 and 19, Ekart teaches insoluble components can be removed from the depolymerization reaction prior to solvent evaporation (Col. 4, lines 4-6). See also steps b and d of Coupard (¶ 27, 37). The removal of insoluble is seen to also result in the removal of quantities of trace water present within the depolymerization mixture. See for instance ¶ 27 of Coupard where the resulting solids may also include up to 60-90 wt% of residual liquid depending on methods of separation.
Regarding Claim 20, Ekart teaches the resulting solution is filtered so as to remove additional insoluble impurities (Col. 4, Lines 50-51).
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ekart (U.S. Pat. No. 5,635,584) in view of Coupard (WO 2016/096768 A1) as evidenced by Guillen-Mallette (Journal of Thermoplastic Composite Materials, 2026, 39(1), 198-232). As the cited WO publication is in a non-English language, a machine-translated version of the publication will be cited to.
The discussion regarding Ekart and Coupard within ¶ 22-31 is incorporated herein by reference.
Regarding Claim 3, Ekart teaches the protocol is effective for treating colored plastic such as green PET, thereby achieving monomers / recycled PET with near-virgin color characteristics (Examples). As evidenced by Guillen-Mallette, green PET has b* upwards of 13.8 (Table 5). It would have been obvious to one of ordinary skill in the art to treat colored PET plastics, such as those with b* in excess of 5, using the protocols of Ekart/Coupard because doing so would facilitate the recovery of BHET monomers of low color for re-use as taught by Ekart.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ekart (U.S. Pat. No. 5,635,584) in view of Coupard (WO 2016/096768 A1) and Wang (Green Chem. 2015, 17, 2473-2479). As the cited WO publication is in a non-English language, a machine-translated version of the publication will be cited to.
The discussion regarding Ekart and Coupard within ¶ 22-31 is incorporated herein by reference.
Regarding Claim 5, Coupard teaches the mass ratio of ethylene glycol to PET ranges from 1-50 (¶ 20) and step a is advantageously conducted with catalyst used at 0.1-10 wt% of PET (¶ 24), the latter equivalent to 0.001-0.1 times the amount of PET. Coupard differs from the subject matter claimed in that transition metal catalyst with urea carrier is not described.
Wang teaches eutectic solvents such as zinc acetate : urea are known effective depolymerization catalysts suitable for the glycolysis of PET into BHET (Abstract; Table 1), construed as zinc acetate with urea carrier. It would have been obvious to one of ordinary skill in the art to utilize the eutectic solvents of Wang within the depolymerization reactor(s) of Coupard because doing so would catalyze the formation of BHET from PET as taught by Wang.
Claim(s) 17 and 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ekart (U.S. Pat. No. 5,635,584) in view of Coupard (WO 2016/096768 A1) and Inada (US 2004/0182782 A1). As the cited WO publication is in a non-English language, a machine-translated version of the publication will be cited to.
The discussion regarding Ekart and Coupard within ¶ 22-31 is incorporated herein by reference.
Regarding Claims 17 and 25, Ekart teaches after isolating solid product from solution, the resulting solids may be melted in order to strip residual solvents (Col. 4, Lines 62-63). Ekart differs from the subject matter claimed in that crystallization from the melt and purity of final product is not described.
Inada teaches methods of purifying BHET produced from the decomposition of PET, entailing removal of low-boiling constituents from molten solutions (Abstract; ¶ 24-28). Inada teaches the protocols give purified BHET while minimizing by-production of impurity components (¶ 14). It would have been obvious to one of ordinary skill in the art to further purify the BHET materials of Ekart using the protocols of Inada because doing so would result in purified BHET while minimizing by-production of impurity components. Inada teaches the protocol gives BHET purities upwards of roughly 99 wt% and oligomer contents not higher than 1 wt% (¶ 28; Table 3). The combination of references suggests forming BHET solution, crystallizing out solids, isolating crystals, and re-melting, which appears to be substantially similar if not identical to that set forth within the specification (Page 30, Lines 12-15). Since Inada describes melting/purifying BHET to produce BHET of high purity (c.a. 99 wt%) it stands to reason such materials would also crystalize upon cooling in the absence of evidence to the contrary.
Claim(s) 21 and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ekart (U.S. Pat. No. 5,635,584) in view of Coupard (WO 2016/096768 A1) as evidenced by Pilati (EP 0723951 A1). As the cited WO publication is in a non-English language, a machine-translated version of the publication will be cited to.
The discussion regarding Ekart and Coupard within ¶ 22-31 is incorporated herein by reference.
Regarding Claims 21 and 22, Ekart teaches the resulting solution is filtered so as to remove additional insoluble impurities (Col. 4, Lines 50-51). While not describing oligomer and IPA impurities, Ekart teaches an express preference for the use of water as solvent (Col. 4, Line 28), which is the same solvent used within the specification. Pilati teaches it was known in the art BHET is solubilized in hot water whereas oligomers are not, thus facilitating oligomer removal by filtration (Page 3, Lines 45-49 of Pilati). Since the prior art suggests creating solutions of crude BHET in water and removing insoluble via filtering, it stands to reason the same insoluble materials such as oligomers and IPA would intrinsically be removed in the absence of evidence to the contrary.
Claim(s) 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ekart (U.S. Pat. No. 5,635,584) in view of Coupard (WO 2016/096768 A1) and Asakawa (U.S. Pat. No. 6,642,350). As the cited WO publication is in a non-English language, a machine-translated version of the publication will be cited to.
The discussion regarding Ekart and Coupard within ¶ 22-31 is incorporated herein by reference.
Regarding Claim 24, Ekart differs from the subject matter claimed with respect to the b* value in the resulting BHET composition. Ekart teaches the resulting solvent/BHET solutions can be treated with adsorbent such as activated carbon continuously over a bed of absorbent (Col. 4, Lines 38-44). Asakawa teaches it was known in the art treatment of BHET with activated carbon and/or ion-exchange resins is an effective means of removing colorants (Col. 3, Lines 3-20) whereby green crude BHET solutions can be rendered colorless (Table 1). Accordingly, it would have been obvious to one of ordinary skill in the art to treat the solvent/BHET mixtures of Ekart using the protocols of Asakawa, thereby predictably affording colorless BHET mixtures as taught by Asakawa. While not describing quantitative b* values, the degree of discoloration via adjustment of adsorbent quantities and treatment conditions are result effective variables subject to routine optimization by one of ordinary skill in the art in view of the teachings of Asakawa. 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 treatment conditions within the scope of the present claims so as to produce desirable degrees of discoloration, such as a b* value of up to 2.
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 1-4, 11, and 25 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 26-31 of copending Application No. 18/277/019. Although the claims at issue are not identical, they are not patentably distinct from each other.
Specifically, claims 1-2 of ‘019 describe the same process steps within instant claim 1 in conjunction with process steps of polymerizing the BHET to form a polymer. Therefore, the copending claims anticipate the instant claims. The limitations of the dependent claims are found within the claims of the ‘019 application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 and 25 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 27 of copending Application No. 18/277/022. Although the claims at issue are not identical, they are not patentably distinct from each other.
Specifically, claim 27 of ‘022 describe the same process steps within instant claim 1 in conjunction with process steps of polymerizing the BHET to form a polymer. Therefore, the copending claims anticipate the instant claims. The limitations of the dependent claims are found within the claims of the ‘022 application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/STEPHEN E RIETH/Primary Examiner, Art Unit 1759
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