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 .
Obviousness-type 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 1,2,3,4,8,10,11,12,13,14,15,18,19,20,21,22, 23,24,25,26 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims of copending Application No.18568877.
Although the claims at issue are not identical, they are not patentably distinct from each other because both applications are directed to recycling polymeric materials through depolymerization followed by recovery of depolymerization products and repolymerization. The instant claims broadly recite polymeric waste products, while the copending application recites polyethylene terephthalate (PET). Broadening the starting polymer from PET to polymeric waste products would have been an obvious variation to one of ordinary skill in the art.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
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.
Claim(s) 1,2,3,4,8,10,11,12,13,14,15,18,19,20,21,22, 23,24,25,26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kamau, S.D., Hodge, P. and Helliwell, M. (2003), Cyclo-depolymerization of poly(propylene terephthalate): some ring-opening polymerizations of the cyclic oligomers produced. Polym. Adv. Technol., 14: pages 492-501 in view of KR100218850B1, see pages abstract, pages 3-8 and 14-16 and Examples 3 and 4.
Claim 1 is directed to a process for preparing a polymer from polymeric waste products, comprising the following steps:
a) partially depolymerizing the polymeric waste product thereby obtaining a solution of polymer and oligomers,
b) purification of the products from step a) and recovery thereof in the form of a solid mixture; and
c) polymerization of the solid mixture from step b), wherein,
in step a) the depolymerization is only partial and results in a mixture of cyclic oligomers, aliphatic oligomers and starting polymer; said step a) is carried out in a polar aprotic solvent simultaneously distilling the reaction solvent.
Kamau, S.D. et al. discloses a method of depolymerizing a polyester oligomer to produce cyclic oligomers. Specifically, Kamau, S.D. et al. discloses dissolving powdered polypropylene terephthalate in hot 1,2 dichlorobenzene, heating the solution under reflux to depolymerize the polymer, and recovering a cyclic oligomer fraction in 94% yield, wherein the cyclic dimer is the major component of the recovered mixture. see abstract, page 492-493 right column and page 494, Table 1, page 495.
However, the Kamau, S.D. et al. reference does not teach performing the depolymerization in a homogenous solution using a polar organic solvent, distilling the cyclic ester with the solvent or recovering it from the distillate.
KR100218850B1 discloses dissolving an α-hydroxycarboxylic acid oligomer in a high boiling polar organic solvent to form a homogeneous solution, heating he solution to depolymerize the oligomer, distilling the cyclic ester with the solvent, and recovering the cyclic ester from the distillate. See pages 7-10. The reference also shows that the solution phase process reduces the formation of tar and improves recovery and prevents clogging. See pages 8, 10 and 14. See pages abstract, pages 3-8 and 14-16.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the process of Kamau, S.D. et al. by using the solution phase depolymerization process as taught by KR100218850B1 in order to improve recovery of the cyclic ester while reducing tar formation and processing.
Claim 2 is directed to the process according to claim 1, wherein the polymeric waste
Kamau, S.D. et al. discloses teaches cyclo-depolymerization of a polyester material to produce cyclic oligomers, and selecting polyester materials as the polymeric waste product would have been obvious because Kamau, S.D. et al. demonstrates that polyester materials are good substrates for cyclo-depolymerization.
Claim 3 is directed to the process according to claim 1, wherein the solvent is selected from a diaryl ether, mono/di/tri-Cl-C3-alkoxy-benzene, aryl-C1-C3-alkyleneoxy- C1-C5-alkane, di-(aryl-Cl-C3-alkylene)-ether, aryl-C1-C3-alkylene-oxo-benzene, C4-C6 cycloalkyl- ketone, in which the aryl is a phenyl or a phenyl substituted with one or more linear or branched Cl-C3 alkyl residues. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention since
KR100218850B1 discloses the use of high boiling organic solvents during depolymerization and selecting appropriate solvents from known solvents would have been a routine optimization to dissolve the polymer and assist the depolymerization reaction. See abstract.
Claim 4 is directed to the process according to claim 3, wherein said aprotic polar solvent is selected from: diphenyl ether, 1,3-dimethoxybenzene, benzyl methyl ether, benzyl butyl ether, di-benzyl ether, cyclohexanone, and benzophenone. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention since KR100218850B1 discloses suitable high boiling solvents including dibenzyl ether and benzyl butyl phthalate. See page 6 lines 6-12 and Examples 3 and 4. Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended purpose. See Sinclair & Carroll Co. v. Interchemical Corp., 325 US 327, 65 USPQ 297 (1945). (Selection of solvent having boiling point and vapor pressure properties recognized as being ideal for printing inks into printing ink compositions found obvious on its face). See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960). (Selection of a known plastic to make a plastic container found obvious on its face).
Claim 8 is directed to the process according to claim 1, wherein step b) comprises a step bl.1) or b2.1) or b3.1) of eliminating the insoluble impurities, by filtration, centrifugation, pressing or decanting of the reaction mixture from step a) at the solvent boiling temperature wherein:- the reaction mixture from step bl.1) is subjected to a treatment comprising the following steps:b1.2) in which said reaction mixture is subjected to cooling of the reaction mixture to the temperature at which the unreacted polymer precipitates, which is recovered by filtration; in the case of PET, this temperature is between 140 and 180°C;b1.3) after the removal of the polymer, the permeate is subjected to further cooling to room temperature, temperature at which the low and medium molecular weight cyclic oligomers precipitate, which are recovered by filtration, centrifugation, pressing or decanting; and possibly:b1.4) in which the filtered solution from step b1.3) is added with a hydrocarbon solvent, to allow the precipitation of the lower molecular weight oligomers; - the reaction mixture from step b2.1) is subjected to a cooling step b2.2) at a temperature between 20 and 40°C, at which both the unreacted polymer and the oligomers precipitate, which are separated from the solvent by filtration and subsequently washed with pure solvent, preferably at temperatures between 90 and 120°C, to eliminate the coloration of the polymers and further impurities- the filtrate from step b3.1) is subjected in step b3.2) to cooling to a temperature between 20 and 40°C; the precipitate thus obtained is washed in counter- current in step b3.3) with ketone solvent at temperatures between 20°C and the solvent boiling temperature, to remove both the dyes and the contaminants.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention since purification by precipitation with a nonsolvent followed by filtration and washing is a conventional method for recovering cyclic oligomers and removing residual polymer and contaminants after depolymerization.
Claim 10 is directed to the process according to claim 8, wherein the filtrate from step b3.1) is subjected in step b3.2) to cooling to a temperature between 25 and 30°C; the precipitate thus obtained is washed in counter-current in step b3.3) with preferably acetone at temperatures between 20°C and the solvent boiling temperature, to remove both the dyes and the contaminants. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention since optimizing the cooling temperature and washing conditions during purification would have been a routine process optimization to improve recovery and purity of the oligomeric product.
Claim 11 is directed to the process according to claim 8, wherein by using one of the following products or a mixture thereof:(i) high molecular weight polymers from step b 1.2),(ii) low/medium molecular weight oligomers from step bl.3),(iii) lower molecular weight oligomers from step bl.4),(iv) the polymeric-oligomeric mixture from purification method b2-2),(v) the polymeric-oligomeric mixture from purification process b3-3), the mass polymerization (step c)) is carried out at temperatures between 240 and 280°C for a time between 10 and 30 minutes. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention since purified oligomers are known starting materials for repolymerization.
Claim 12 is directed to the process according to claim 11, wherein, by using one or more of the products (i)-(v) in mixture with virgin PET, a mass polymerization (step c)) is carried out at temperatures between 240 and 280°C, for a time between 10 and 30 minutes. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention since blending recovered oligomers with virgin polyester before polymerization is a known method for producing recycled polyester materials while maintaining desired product properties.
Claim 13 is directed to the process according to claim 12, wherein the polymerization is carried out in an extruder for a time between 10 and 15 minutes at 240-280°C. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention since extruders are conventional equipment for carrying out polyester melt polymerization and selecting an extrusion process would have been an obvious selection.
Claim 14 is directed to the process according to claim 11, wherein stabilizers, dyes and performers customarily used in this type of polymerization are added in step c). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention since stabilizers, dyes, pigments and other additives are incorporated during polyester polymerization to obtain the desired characteristics.
Claim 15 is directed to the process according to claim 1, wherein at least one of the steps a)-c) is carried out continuously. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention since continuous processing is a well-known method to batch processing and provides improved production efficiency.
Claim 18 is directed to the process according to claim 1, wherein the polymeric waste product has a starting concentration of 10 to 800 g/1. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention since selecting the concentration of polymer in the reaction mixture is known and would have been routinely optimized to balance the reaction efficacy and product recovery.
Claim 19 is directed to the process according to claim 1, wherein the depolymerization is performed at or about the solvent boiling temperature. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention since KR100218850B1 discloses heating the reaction mixture at temperatures that correspond to the boiling range of the high-boiling solvent to help with depolymerization and distillation of the cyclic oligomer product.
Claim 20 is directed to the process according to claim 1, wherein the depolymerization is performed in the presence of a catalyst. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention since KR100218850B1 discloses performing the cyclo-depolymerization reaction in the presence of a depolymerization catalyst. See page 7 lines 10-31.
Claim 21 is directed to a process for partially depolymerizing a polymeric waste product, wherein the depolymerization is performed by cyclo-depolymerization, and at least 5% of the polymeric waste product is converted to cyclic oligomers.
Kamau, S.D. et al. discloses a method of depolymerizing a polyester oligomer to produce cyclic oligomers. Specifically, Kamau, S.D. et al. discloses dissolving powdered polypropylene terephthalate in hot 1,2 dichlorobenzene, heating the solution under reflux to depolymerize the polymer, and recovering a cyclic oligomer fraction in 94% yield, wherein the cyclic dimer is the major component of the recovered mixture. see abstract, page 492-493 right column and page 494, Table 1, page 495.
However, Kamau, S.D. et al. does not teach performing the process in a homogenous solution using a high boiling polar organic solvent.
KR100218850B1 discloses dissolving an α-hydroxycarboxylic acid oligomer in a high boiling polar organic solvent to form a homogeneous solution, heating he solution to depolymerize the oligomer, distilling the cyclic ester with the solvent, and recovering the cyclic ester from the distillate. See pages 7-10. The reference also shows that the solution phase process reduces the formation of tar and improves recovery and prevents clogging. See pages 8, 10 and 14. See pages abstract, pages 3-8 and 14-16.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the process of Kamau, S.D. et al. by using the solution phase depolymerization process as taught by KR100218850B1 in order to improve recovery of the cyclic ester while reducing tar formation and processing.
Claim 22 is directed to a process for partially depolymerizing a polymeric waste product, wherein the depolymerization is performed by distilling a reaction mixture of the polymeric waste product in a polar aprotic solvent and affords a mixture of cyclic oligomers, aliphatic oligomers, and polymer.
Kamau, S.D. et al. discloses dissolving polypropylene terephthalate in 1,2 dichlorobenzene, a polar aprotic solvent heating the reaction mixture under reflux to depolymerize the polymer, and revering cyclic oligomers while separating unreacted polymer from the reaction mixture. See page 492, Figure 1 and page 494 Figure 2 and Table 1 page 495.
Kamau, S.D. et al. does not teach recovering the cyclic oligomers by distilling the cyclic moiety with the solvent.
KR100218850B1 teaches heating a homogeneous solution of oligomer in a polar organic solvent, distilling the cyclic ester with the solvent and recovering the cyclic ester from the distillate. The reference shows that co-distillation improves recovery while reducing tar formation. See pages 7-10.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Kamau, S.D. et al. by using co distillation process by KR100218850B1 since KR100218850B1 shows that the co-distillation improves the recovery while reducing tar.
Claim 23 is directed to a product prepared according to the process of claim 1. As a product-by-process claim, the claim is not limited to the manipulations of the recited steps of claim 1, only the structure of the implied by the steps. In re Thorpe, 777 F.2d 695 (Fed. Cir. 1985); MPEP §2113. Kamau, S.D. et al. does not teach recovering the cyclic oligomers by distilling the cyclic moiety with the solvent.
Kamau, S.D. et al. teaches cyclic oligomer products produced by cyclopolymerization including cyclic dimers and oligomers. See abstract, page 492;Figure 1, page 494, Figures 2 and Table 1 page 495. KR100218850B1 discloses recovering the cyclic ester products by solution phase depolymerization and co-distillation. See pages 7-10. Since the claimed product has not been shown to be structurally different from the products taught or rendered obvious by Kamau, S.D. et al. in view of KR100218850B1, claim 23 would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention.
Claim 24 is directed to the process according to claim 1, wherein step c) affords polymer having a molecular weight approximately equal to that of the polymeric waste product. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention since
Claim 25 is directed to the process according to claim 1, further comprising separating a non-volatile contaminant. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention since
Claim 26 is directed to the process according to claim 1, wherein distilling removes one or more by- products and/or volatile contaminants.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention since
In conclusion, in view of the above, there appears to be no significant difference between the reference(s) and that which is claimed by applicant(s). Any differences not specifically mentioned appear to be conventional. Consequently, the claimed invention cannot be deemed as unobvious and accordingly is unpatentable.
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 8, 10 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 8 and 10, 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). Moreover, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) is considered indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP §2173.05(c).
Information Disclosure Statement
Note that any future and/or present information disclosure statements must comply with 37 CFR § 1.98(b), which requires a list of the publications to include: the author (if any), title, relevant pages of the publication, date and place of publication to be submitted for consideration by the Office.
Improper Claim Dependency
Prior to allowance, any dependent claims should be rechecked for proper dependency if independent claims are cancelled.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TERRESSA M BOYKIN whose telephone number is (571)272-1069. The examiner can normally be reached M-F 7-5:30.
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/Terressa Boykin/Primary Examiner, Art Unit 1765
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