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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 07 July 2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
Status of the Claims
Claims 12-24 are currently pending.
Claims 15-24 are new.
Claims 12-14 are currently amended.
Claims 1-11 are currently cancelled.
Response to Amendments
Applicant’s amendments filed on 25 June 2026 are acknowledged.
Claim Objections
Applicant’s cancellation of claims 1 and 4 are sufficient to overcome the
objections of the claims. The objections are withdrawn.
Applicant’s amendment to claim 12 is sufficient to overcome the objection of the claim. The claims has been amended to the English language for clarity. The objection is withdrawn.
Claim Rejections - 35 USC § 102
Applicant’s cancellation of claims 1-4 and 6-9 and amendment to claim 12 specifically incorporating the catalyst preparation into the process steps not taught by Parrott are sufficient to overcome the rejection of claims 1-4, 6-9, and 12-14 under 35 U.S.C. 102(a)(1) as being anticipated by Parrott (US20180319950, published 08 November 2018). The rejection is withdrawn.
Applicant’s cancellation of claims 1, 10, and 11 are sufficient to overcome the rejection of claims 1, 10, and 11 under 35 U.S.C. 102(a)(1) as being anticipated by Pilati et al. (EP0723951, published 31 July 1996, hereinafter Pilati). The rejection is withdrawn.
Claim Rejections - 35 USC § 103
Applicant’s cancellation of claims 1-10 and amendment to claim 12 specifically incorporating the catalyst preparation into the process steps not taught by Parrott are sufficient to overcome the rejection of claims 1-10 and 12-14 under 35 U.S.C. 103 as being unpatentable over Parrott (US20180319950, published 08 November 2018) in view of Phillips et al. (US20160229981, published 11 August 2016, hereinafter Phillips). The rejection is withdrawn. Due to the amendments to the claims and the new claims, a new ground(s) of rejection is/are provided below.
Applicant’s cancellation of claims 2-4, 6, and 7 and amendment to claim 12 specifically incorporating the catalyst preparation into the process steps not taught by Parrott are sufficient to overcome the rejection of claims 2-4, 6, 7, and 12-14 under 35 U.S.C. 103 as being unpatentable over Parrott (US20180319950, published 08 November 2018) in view of Phillips et al. (US20160229981, published 11 August 2016, hereinafter Phillips), as applied in the 35 USC 103 rejection of claims 1-10 and 12-14 above, in further view of Nakajima (JP2008266359, published 06 November 2008, see machine translation). The rejection is withdrawn. Due to the amendments to the claims and the new claims, a new ground(s) of rejection is/are provided below.
Response to Arguments
Applicant’s arguments filed on 25 June 2026 have been fully considered but they are either moot or not persuasive.
Applicant’s argue that Parrott, Pilati, Phillips, and Nakajima do not disclose the limitations as recited in the amended claims. These arguments have been considered but are either moot or not persuasive for the reasons set forth in the new grounds of rejection below and the response to arguments below.
Applicant’s arguments throughout the remarks filed on 25 June 2026 with respect to Parrott and Pilati have been considered but are moot because the new ground of rejection does not rely on Parrott and Pilati applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
In response to Applicant’s arguments on pages 7-10 of the remarks filed on 25 June 2026 that “the Applicant would like to underline that the preparation in situ of the catalyst is a crucial step of the process as currently claimed, as mentioned above. As illustrated in the specification (pp. 9-11), the use of a catalyst prepared in situ is accompanied by advantageous technical effects compared to the conventional use of catalysts prepared ex situ. The in situ preparation exploits reagents having a low environmental impact, easily available and at low cost, thus allowing to overcome the drawbacks of the prior art associated with supply of the catalysts. … in Example 1 in Nakajima, cited by the Examiner, the catalyst is added to the mixture, rather than prepared in situ. In particular, the catalyst is obtained according to Preparation Example 1 (see [0211]), wherein an ethylene glycol solution of basic aluminum acetate is obtained and then used in the PET preparation process. … wherein aluminum acetate in EG solution is obtained; this catalyst is then used in the process of preparation of PET of Example 7 (see [0225]), which is carried out as per Example 1, i.e., by adding the previously obtained catalyst to the BHET mixture to promote BHET polycondensation … On the contrary, the already formed catalyst aluminum acetate in EG solution is added to a BHET mixture to promote formation of PET, as explained above.”
The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art, see In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981) and MPEP 2145.
Merely discovering and claiming a new benefit of an old process cannot render the process again patentable, for example reversing the order of the prior art process steps, selection of any order of performing process steps, and selection of any order of mixing ingredients are all prima facie obvious in the absence of new or unexpected results, see MPEP 2144.04 IV.C. and In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990).
In this case, the instant application claims 13 and 14 detailed recitations of the in situ preparation of the catalyst in instant application claim 12 is dependent on the selection of the order of mixing ingredients and overcoming drawbacks associated with the supply of catalysts are not new and/or unexpected results.
Further, claim 13 recites in situ preparation where acetic acid, the metal compound, and EG are first mixed, then the PET is added. Claim 14 recites in situ preparation where EG, acetic acid, the PET, and the metal compound are mixed together. As stated on pages 19-21, of the previous office action dated 20 April 2026, Nakajima teaches “where aluminum hydroxide, aqueous acetic acid solution, ethylene glycol, PET, and BHET are all combined in one reaction medium in one step to prepare oligomers of BHET, see Abstract, Paras. [0003];[0148]-[0149];[0169];[0171]-[0173];[0215];[0222];[0225]; Table 1”. To clarify, Nakajima teaches “[a]luminum hydroxide and aqueous acetic acid solution were charged so that the molar ratio of aluminum hydroxide to acetic acid was 1/3, and the mixture was heated at 70-80 ◦C to obtain a slurry of basic aluminum acetate. Ethylene glycol was added to the above slurry and mixed … to obtain an ethylene glycol solution of basic aluminum acetate”, see Para. [0215], meeting the in situ preparation of the catalyst step of mixing in claim 13. Then this mixture “used as a polycondensation catalyst” may then be added to a BHET mixture “then stirred at 250 ◦C for 10 minutes under atmospheric pressure and a nitrogen atmosphere”, see Paras. [0222];[0225], to obtain BHET oligomers, where “PET is produced by a direct esterification method in which terephthalic acid is directly reacted with ethylene glycol and, if necessary, other co-polycondensation compounds, water is removed by distillation to esterify, and then polycondensation is carried out under reduced pressure”, see Para. [0169], and the “catalyst of the present invention can be added to the reaction system at any stage of a polycondensation reaction, for example, before the start of an esterification reaction or a transesterification reaction, at any stage during the reaction, or immediately before the start of a polycondensation reaction or during the reaction. The catalyst solution of the aluminum compound of the present invention may be added as a pre-mixed mixture with other compounds, or they may be added separately. Furthermore, the catalyst solution of the aluminum compound of the present invention and other compounds may be added to the polycondensation system at the same time, or each component may be added at different times”, see Paras. [0171]-[0173], obviously meeting the adding the in situ prepared catalyst mixture to PET and/or BHET in claim 13 and obviously meeting the in situ prepared catalyst mixture of EG, acetic acid, the PET, and the metal compound in claim 14.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Nakajima to manipulate the differing embodiments of the sequence of adding ingredients and the catalyst in order to manipulate the monomer units of PET and/or BHET with a reasonable predictability of success for the purpose of efficiently and economically producing polyesters with improved productivity by reducing the reaction time and reducing the production of foreign matter; while, maintaining color formation, transparency, thermal stability, storage stability, and high quality of the product polyester, see Nakajima, Abstract; Paras. [0150];[0170]-[0173];[0222]; Table 1.
For the reasons indicated above, all of Applicant’s above arguments are not persuasive.
In response to Applicant’s arguments on pages 8-9 of the remarks filed on 25 June 2026 that “the claimed process is a process for depolymerizing PET, i.e., to transform the polymer chains of PET into its starting monomers or oligomers, which can then subsequently be used in new polymerization processes of PET, with the final aim to conveniently recycle PET waste. On the contrary, the process of Nakajima is a process for the polymerization of PET, i.e., for the production of PET.”
In regard to the preamble statement of “for depolymerizing a material”, “[i]f the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020)”, see MPEP 2111.02 II. The preamble statement of “for depolymerizing” is regarded as an intended use of the claimed process; therefore, the preamble statement is not considered a claim limitation and is not given patentable weight.
For the reasons indicated above, Applicant’s above arguments are not persuasive.
In response to Applicant’s arguments on page 10 of the remarks filed on 25 June 2026 that “the claimed process has the aim to recycle waste PET, see e.g., claims 19-20 referring to the depolymerization of material deriving from post-consumer wastes and/or post-industrial scraps, and Nakajima does not provide any useful information in this regard.” Patents are part of the literature of the prior art relevant for all they contain, see MPEP 2123. In this case, Nakajima teaches “waste resin generated during the manufacturing process and polyester resin recovered from the market can also be mixed in” with the polyester produced by the process, see Paras. [0181]-[0182];[0186]-[0187]. For the reasons indicated above, Applicant’s above arguments are not persuasive.
In the Spirit of Compact Prosecution
Throughout prosecution the examiner has attempted to identify all objections and clarity issues amongst the claims, applicant is advised that some objections and clarity issues may still remain. Going forward, the examiner respectfully requests applicant to perform a detailed review of the claims regarding clarity, grammar, antecedent basis, word spacing, and spelling issues.
New Rejections Based on Amendments to the Claims in the reply filed on 25 June 2026
Claim Objections
Claims 14 and 22-24 are objected to because of the following informalities:
Claim 14, line 8 states “and make the reaction take place to obtain …”, which is grammatically incorrect.
Claim 22, line 2 states “from 1:1 to 8:1, 1, wherein …”, which appears to include a typographical mistake.
Claim 24, line 1 states “Claim 24 (New) Claim 23 (New) …”, which appears to include a typographical mistake.
Claims 22-24, lines 1-2 state “a weight ratio EG:PETm is from …”, which is grammatically incorrect.
Appropriate correction is required.
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.
Claims 12-14 are newly rejected and claims 15-24 are rejected under 35 U.S.C. 103 as being unpatentable over Nakajima (JP2008266359, published 06 November 2008, see machine translation) in view of Phillips et al. (US20160229981, published 11 August 2016, hereinafter Phillips).
Nakajima is in the known prior art field of “a polyester polymerization catalyst with fast poly-condensation speed and less production of a foreign matter caused by the poly-condensation catalyst maintaining color formation, transparency and thermal stability, excellent in solubility in a poly-condensation catalyst alkylene glycol solution and storage stability, and making quality and economic property compatible in the poly-condensation catalyst containing a metal component other than antimony, germanium and titanium as a main metal component of the catalyst, a polyester manufactured by using it, a polyester product, and a manufacturing method for the polyester”, see Abstract, where “[p]olyesters, which are typical polyesters, mainly composed of aromatic dicarboxylic acids and alkylene glycols, are manufactured by, for example, polyethylene terephthalate (PET) by producing an oligomer mixture such as bis(2-hydroxyethyl) terephthalate through an esterification or transesterification reaction between terephthalic acid or dimethyl terephthalate and ethylene glycol, and then performing liquid-phase polycondensation using a catalyst under high temperature and vacuum”, see Para. [0003].
Regarding the limitations of instant application claims 12-14, Nakajima teaches a process where “PET is produced by a direct esterification method in which terephthalic acid is directly reacted with ethylene glycol … or by a transesterification method in which dimethyl terephthalate is reacted with ethylene glycol … to transesterify” “to obtain a mixture of bis(2-hydroxyethyl) terephthalate and oligomer (hereinafter referred to as the BHET mixture)” “and then polycondensation is carried out under reduced pressure” to obtain BHET oligomers, see Paras. [0169];[0222], the process comprises reacting with a catalyst, where the “catalyst of the present invention exhibits catalytic activity not only in polycondensation reactions but also in esterification and transesterification reactions”, the “catalyst of the present invention can be added to the reaction system at any stage of a polycondensation reaction, for example, before the start of an esterification reaction or a transesterification reaction, at any stage during the reaction, or immediately before the start of a polycondensation reaction or during the reaction. The catalyst solution of the aluminum compound of the present invention may be added as a pre-mixed mixture with other compounds, or they may be added separately. Furthermore, the catalyst solution of the aluminum compound of the present invention and other compounds may be added to the polycondensation system at the same time, or each component may be added at different times”, see Paras. [0171]-[0173], and the catalyst is prepared by a process where “[a]luminum hydroxide and aqueous acetic acid solution were charged so that the molar ratio of aluminum hydroxide to acetic acid was 1/3, and the mixture was heated at 70-80 ◦C to obtain a slurry of basic aluminum acetate. Ethylene glycol was added to the above slurry and mixed … to obtain an ethylene glycol solution of basic aluminum acetate”, see Para. [0215], meeting:
The process of reacting the PET with an aluminum acetate catalyst and ethylene glycol to obtain BHET or oligomers thereof in instant application claim 12;
As stated above, the catalyst is prepared by mixing aluminum hydroxide, aqueous acetic acid, and ethylene glycol at a temperature of 70-80 ◦C, see Para. [0215], and is fed to the esterification reaction containing the PET mixture that is reacted at a temperature of 250 ◦C, see Para. [0222], meeting:
Preparing the catalysts in instant application claim 12;
Most of the in situ catalyst preparation in instant application claim 12 and in instant application claim 13;
Within the mixing temperature range in instant application claim 13;
As stated above, the catalyst materials of ethylene glycol, acetic acid, and aluminum hydroxide, and the PET and PET synthesis components, “may be added … at the same time, or each component may be added at different times”, see Paras. [0171]-[0173];[0215];[0222], meeting:
Most of the in situ catalyst preparation in instant application claim 14; and,
Within the mixing temperature range in instant application claim 14.
In regard to the instant application claim 12 preamble statement of “for depolymerizing a material”, “[i]f the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020)”, see MPEP 2111.02 II. The preamble statement of “for depolymerizing” is regarded as an intended use of the claimed process; therefore, the preamble statement is not considered a claim limitation and is not given patentable weight.
Regarding the limitations of instant application claims 15-17, Nakajima teaches, as stated above, the catalyst is prepared by mixing aluminum hydroxide, aqueous acetic acid, and ethylene glycol at a temperature of 70-80 ◦C “to obtain an ethylene glycol solution of basic aluminum acetate”, see Para. [0215], meeting:
The aluminum acetate and the aluminum hydroxide in instant application claim 15, in instant application claim 16, and in instant application claim 17.
Nakajima does not specifically teach:
The exact order of the above process mixing steps; and,
The instant application claim 12 limitations of during the process the in situ preparation of the catalyst.
In reference to the above claims, merely discovering and claiming a new benefit of an old process cannot render the process again patentable, for example reversing the order of the prior art process steps, selection of any order of performing process steps, and selection of any order of mixing ingredients are all prima facie obvious in the absence of new or unexpected results, see MPEP 2144.04 IV.C. and In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Nakajima to manipulate the differing embodiments of the sequence of adding ingredients and the catalyst in order to manipulate the monomer units of PET and/or BHET with a reasonable predictability of success for the purpose of efficiently and economically producing polyesters with improved productivity by reducing the reaction time and reducing the production of foreign matter; while, maintaining color formation, transparency, thermal stability, storage stability, and high quality of the product polyester, see Nakajima, Abstract; Paras. [0150];[0170]-[0173];[0222]; Table 1, meeting:
Rearranging the order of the sequence of adding ingredients in the reaction process of Nakajima; and,
During the process the in situ preparation of the catalyst in instant application claim 12.
Nakajima does not teach:
The instant application claim 12 limitations of a material comprising PET;
The instant application claims 13 and 14 heating temperature to obtain a glycolyzed product of 170-230 ◦C; and,
The limitations of instant application claims 18-24.
Phillips is in the known prior art field of “producing a polyester polyol comprising reacting a recycle stream selected from recycled PET carpet, carpet fiber, containers, textiles, articles or mixtures thereof, with a glycol in a reactor, thereby forming a digested product stream”, see Abstract, where “the shaved carpet fiber is glycolized with a diol to form a raw product stream containing liquid diol with oligomers of PTT or PET such as bishydroxyethyl terephthalate (BHET) and bishydroxypropyl terephthalate (BHPT)” then the “raw product stream” is subjected “to a polycondensation reaction to form a product stream containing the PTT or PET”, see Para. [0122], and “the digestion reaction” conditions depend on the “desired degree of depolymerization, and other factors that are within the skilled person’s discretion”, see Para. [0068], and is applied to teach the same.
Regarding the limitations of instant application claims 12-14 and 18-24, Phillips teaches “[a] recycle stream containing recycled PET and PTT containers, carpet, carpet fiber, textiles or fabric can be reacted to form a polymeric plasticizer. In one embodiment, the plasticizer is produced by reacting: (a) the PET or PTT recycle stream; (b) a glycol; (c) a C4-C36 monocarboxylic acid, ester or anhydride thereof; and (d) a diacid, to form a polymeric plasticizer”, see Para. [0104], where “the recycle stream and glycol are heated within the range of 80° C. to 260° C., alternately 100° C. to 250° C., 130° C. to 240° C., or 160° C. to 230° C., optionally in the presence of a catalyst”, see Para. [0066], the reaction takes place in the presence of metal acetate catalysts, such as zinc acetate, see Paras. [0066]-[0068], the monocarboxylic acid is acetic acid, see Paras. [0107];[0110], the ratio of glycol to PET is 1.0 to 6.0 aka 1:1 to 6:1, the glycol is ethylene glycol, see Paras. [0054];[0069], and the PET carpet contains calcium carbonate in which the reaction also takes place in the presence of metals, such as the calcium carbonate from the PET carpet, and “lead, chrome, zinc, copper, tin and aluminum”, see Paras. [0035]-[0037];[0085]-[0088];[0136], meeting:
The PET material for depolymerization in instant application claim 12;
Within the heating temperature to obtain the glycolyzed product in instant application claim 13 and in instant application claim 14;
The PET material comprises catalytic metals in instant application claim 18;
The PET material is post-consumer waste carpet fibers in instant application claim 19, in instant application claim 20, and in instant application claim 21; and,
Within the EG:PET material weight ratio in instant application claims 22, in instant application claim 23, and in instant application claim 24.
In reference to the above claims, it would have been obvious to one of ordinary
skill in the art, before the effective filing date of the claimed invention, to have modified the origin of the metal in the metal catalyst system and the PET origin of Nakajima to originate from recycled PET and metals already present in the recycled PET as taught by Phillips and it would have been obvious to modify the reaction temperature and reactant concentrations of Nakajima with the reaction temperatures and concentrations as taught by Phillips with a reasonable predictability of success for the purpose of efficiently producing recycled polyesters by applying the optimal reaction conditions with the “desired degree of depolymerization, and other factors that are within the skilled person’s discretion”, such as by using catalyst materials already present in the waste PET “that do not significantly promote isocyanate reaction chemistries”; while, “making the entire process more cost effective, more environmentally friendly and more sustainable, since such streamlining would encourage even greater recycling rates throughout the world” see Phillips, Paras. [0003];[0067]-[0068].
The rationale to support a conclusion that the claim would have been obvious is that a particular known technique was recognized as part of the ordinary capabilities of one skilled in the art. One of ordinary skill in the art would have been capable of modifying the origin of the metal in the metal catalyst system, the PET origin, the reaction temperatures and the concentrations of Nakajima by applying the known technique of applying the metals already present in the waste PET, reaction temperatures, and reactant concentrations, as taught by Phillips with a reasonable predictability of success for the purpose of efficiently producing recycled polyesters by applying the optimal reaction conditions with the “desired degree of depolymerization, and other factors that are within the skilled person’s discretion”, such as by using catalyst materials already present in the waste PET “that do not significantly promote isocyanate reaction chemistries”; while, “making the entire process more cost effective, more environmentally friendly and more sustainable, since such streamlining would encourage even greater recycling rates throughout the world” see Phillips, Paras. [0003];[0067]-[0068]; and, MPEP 2143 I. B-D.
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense”, see MPEP 2143 I.E. Since patents are part of the literature of the prior art relevant for all they contain, see MPEP 2123, and Nakajima and Phillips both teach the catalytic manipulation of the monomer units of PET and/or BHET, a person of ordinary skill in the art has good reason to modify Nakajima by relying upon Phillips before the effective filing date of the claimed invention for knowledge generally available within the metals within waste PET carpet fibers and the catalytic manipulation of the monomer units of PET and/or BHET, see MPEP 2143 B & G and 2141, for the benefit of efficiently producing recycled polyesters by applying the optimal reaction conditions with the “desired degree of depolymerization, and other factors that are within the skilled person’s discretion”, such as by using catalyst materials already present in the waste PET “that do not significantly promote isocyanate reaction chemistries”; while, “making the entire process more cost effective, more environmentally friendly and more sustainable, since such streamlining would encourage even greater recycling rates throughout the world” see Phillips, Paras. [0003];[0067]-[0068]; and, MPEP 2141 and 2143 I. B-D.
As stated in Sakraida v. Ag Pro, Inc., 425 U.S. 273, 189 USPQ 449, reh’g denied,
426 U.S. 955 (1976), “[w]hen a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it, either in the same field
or a different one. If a person of ordinary skill can implement a predictable variation, §
103 likely bars its patentability. For the same reason, if a technique has been used to
improve one device, and a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the technique is obvious unless its
actual application is beyond his or her skill”, see MPEP 2141.
In addition, “[t]he normal desire of scientists or artisans to improve upon what is
already generally known provides the motivation to determine where in a disclosed set
of percentage ranges”, such as the concentration of the PET and EG, “is the optimum combination of percentages.” In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969), see MPEP 2144.05.
Selection of a known material, such as waste PET carpet fiber containing metals, based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), see MPEP 2144.07.
“It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions,” such as the concentration of the PET and EG, “or degree,”, such as reaction temperatures, “or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions. In re Williams, 36 F.2d 436, 438, 4 USPQ 237 (CCPA 1929)”, see MPEP 2144.05.
In addition, “[w]here applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103.”, see MPEP 2112 III. In this case, if the starting PET of Nakajima is the waste carpet fiber PET as taught by Phillips, the reaction mixture as claimed in instant application claims 12 and 18 will inherently also contain catalytic metals, such as calcium carbonate.
Conclusion
No claims are allowed.
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 Y. Lynnette Kelly-O'Neill whose telephone number is (571) 270-3456. The examiner can normally be reached Tuesday-Friday, 8:30 a.m. - 6:30 p.m., EST, with Flex Time.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Scarlett Yen-Ye Goon can be reached at (571) 270-5241. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/YO/Examiner, Art Unit 1692
/FEREYDOUN G SAJJADI/Supervisory Patent Examiner, Art Unit 1699
Prosecution Insights