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 .
Priority
Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d),
which papers have been placed of record in the file.
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 3-6,8-10 11-15, 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 claim 3-6,8-10 11-15, the phrase "preferably, preference, preferentially, at least, such as, or the like...etc." 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).
In claim 19 the recited “between 0 0.1 and 0.5 MPa needs correction. It is not clear what number applicants are intending.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 12492296.
Although the claims at issue are not identical, they are not patentably distinct from each other because: the claims recite substantially similar processes for depolymerizing PET, including condition, glycolysis, diol separation, separation of heavy impurities, and purification by adsorption. Claim 1 differs by further requiring crystallization following adsorption, which is considered an obvious additional purification step.
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) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP2008088096A See pages 7 lines 1-8, 20-18, page 10 lines 11-20, page 11 lines 9-24 and page 12 lines 31-40 in view of FR3053691A1 See abstract, page 4 lines 20-23, page 6 to page 8 line 37, page 9 lines 38-43.
Claim 1 is directed to:
a process for depolymerization of a polyester feedstock comprising polyethylene terephthalate, the process comprising:
a) a conditioning step fed at least with said polyester feedstock, to produce a conditioned feedstock stream;
b) a step of depolymerization by glycolysis, which is fed at least with the conditioned feedstock stream, and is operated at a temperature of between 150 and 300°C, with a residence time of between 0.1 and 10 h, in the presence of diol with a ratio by weight between the total amount of diol present in step b) and the amount of diester contained in the conditioned feedstock stream of between 0.3 and 8.0, to produce a reaction effluent;
c) a step of separation of the diol, which is fed at least with the reaction effluent obtained from step b), and is operated at a temperature of between 60 and 250°C and at a pressure lower than that of step b), to produce at least a diol effluent and a liquid monomers effluent, said step of separation of the diol being implemented in a gas-liquid separation section or a succession of from two to five successive gas-liquid separation sections, each of the gas-liquid separation sections producing a gas effluent and a liquid effluent, the liquid effluent from the preceding section feeding the subsequent section, the liquid effluent obtained from the final gas- liquid separation section constituting the liquid monomers effluent, the gas effluent(s) being recovered so as to constitute said diol effluent(s);
d) a step of separation of the liquid monomers effluent obtained from step c) into a heavy impurities effluent and a prepurified monomers effluent, which is operated at a temperature of less than 250°C and a pressure of less than 0.001 MPa, with a liquid residence time of less than 10 min; and
e) a step of purification of the prepurified monomers effluent, comprising an adsorption substep
e1) and a crystallization substep
e2), and producing at least one decolorized purified diester monomer effluent, wherein adsorption substep e1) is operated at a temperature of between 50 and 200°C and a pressure of between 0.1 and 1.0 MPa and implements at least one section for mixing with a solvent and at least one section for adsorption in the presence of at least one adsorbent, crystallization substep e2) implements a solids production section, operated at a temperature of between 0 and 100°C and at a pressure of between 0.00001 and 1.00 MPa, followed by a solid-liquid separation section.
JP2008088096A discloses a method for producing bis-(2-hydroxyethyl) terephthalate (BHET), with which high-purity bis-(2-hydroxyethyl) terephthalate is simply produced and a method for producing a polyethylene terephthalate (abbreviated as PET), with which a polyethylene terephthalate having high qualities is produced. The method for producing BHET comprises a process 1 of mixing a PET-containing raw material and a catalyst with ethylene glycol to prepare a mixed liquid, a process of depolymerizing PET by a catalytic action in the mixed liquid to give BHET, processes and of recovering BHET from the mixed liquid, a process of dissolving the recovered BHET in hot water to prepare an aqueous solution, a process of crystallizing BHET in the aqueous solution and a process 9 of separating the crystallized BHET from the aqueous solution. Thus the reference discloses depolymerizing PET with ethylene glycol to produce BHET, removing solid impurities and pigments, evaporating lower boiling components, recovering BHET by reduced pressure and evaporation and distillation and then removing the coloring moiety to obtain a purified BHET.
See pages 7 lines 1-8, 20-18, page 10 lines 11-20, page 11 lines 9-24 and page 12 lines 31-40.
JP2008088096A does not disclose that the polyester feed comprises opaque PET in an amount of at least 10wt% or the particular separation conditions recited in claim 1 for processing an opaque PET.
FR3053691A1 discloses a process for the depolymerization of a polyester filler comprising opaque PET, said process comprising at least the steps of conditioning, depolymerization, separation of the diol and separation of the effluent rich in liquid monomers, followed a fading step. Thus, the reference discloses the missing limitations including processing opaque pigment PET including PET comprising at least 10wt% opaque PET by glycolysis, diol separation, including the separation of heavy impurities from the monomer effluent and adsorbent purification. See abstract, page 4 lines 20-23, page 6 to page 8 line 37, page 9 lines 38-43.
Thus, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to apply the opaque PET processing and pigment removal technique as taught by FR3053691A1 to the PET processing of BHET of JP2008088096A since both references are directed to recovering purified BHET from recycled PET containing pigments, colorants and other impurities. A person of ordinary skill in that would have been motivated to use the teaching of FR3053691A1 for the process of JP2008088096A to provide further removal of coloring impurities and recovery of purified BHET suitable for reuse in PET production..
Claim 2 is directed to the process according to Claim 1, wherein step e) of purification of the prepurified monomers effluent comprises an adsorption substep
e1) followed by a crystallization substep
e2), producing at least one decolorized purified diester monomer effluent and a spent solvent effluent, wherein adsorption substep e1) is operated at a temperature of between 50 and 200°C and a pressure of between 0.1 and 1.0 MPa and implements at least one section for mixing the prepurified monomers effluent obtained from step d) with a solvent and at least one section for adsorption in the presence of at least one adsorbent, to obtain an adsorption-pretreated monomer effluent, crystallization substep e2) implements a solids production section, fed at least with the adsorption-pretreated monomer effluent and operated at a temperature of between 0 and 100°C and at a pressure of between 0.00001 and 1.00 MPa, followed by a solid-liquid separation section, to produce the decolorized purified diester monomer effluent and the spent solvent effluent.
JP2008088096A discloses solvent purification of BHET by adsorption followed by crystallization and solid-liquid separation of BHET. See page 3 lines 11-23, page 4 lines 1-18, 33-38, page 12 lines 15-34. FR3053691A1 discloses purification of the prepurified monomer effluent with an adsorbent under elevated temperature and pressure. See pages 7-8, page 9 lines 38-44 and page 10 lines 1-10, Example 1 and page 12 lines 3-4 and claims 1-4 and 14.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine these known purification steps to further remove pigments and coloring impurities and obtain purified BHET.
Claim 3 is directed to the process according to Claim 1, wherein the amount of solvent introduced into the mixing section of substep
e1) is adjusted such that the prepurified monomers effluent obtained from step d) or a solid produced on conclusion of substep
e2) represents between 20% and 90% by weight, preferentially between 30% and 80% by weight, preferably between 50% and 75% by weight and more preferably still between 40% and 60% by weight, of the total weight of the mixture of said mixing section.
JP2008088096A discloses dissolving crude BHET in hot water at a ratio of about 3-10 parts water to 1 part BHET which overlaps the claimed concentration range.
See page 12 lines 15-30. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to select an overlapping concentration facilitates crystallization and purification. Generally, it is well-established that merely selecting proportions and ranges is not patentable absent a showing of criticality. In re Becket, 33 U.S.P.Q. 33 (C.C.P.A. 1937). In re Russell, 439 F.2d 1228, 169 U.S.P.Q. 426 (C.C.P.A. 1971).
Claim 4 is directed to the process according Claim 1,wherein the solvent which feeds the mixing section of substep e1) is chosen from water, alcohols, diols, for example ethylene glycol and mixtures thereof, and preferably diols, for example ethylene glycol, water and mixtures thereof.
JP2008088096A discloses water as the solvent for dissolving BHET before crystallization on page 2 lines 30-34, page 12 lines 15-30 and the abstract. FR3053691A1 discloses mixing prepurified monomer with a diol. See page 8 lines 17-23 and page 10 lines 3-4.
Claim 5 is directed to the process according to claim 1,wherein substep e1) is operated at a temperature of between 70 and 170°C, preferably between 80 and 150°C.
FR3053691A1 discloses adsorption at 100C to 250C preferably 110-200C which overlaps the claimed 70-170C range. See page 9 lines 24-26. Generally, it is well-established that merely selecting proportions and ranges is not patentable absent a showing of criticality. In re Becket, 33 U.S.P.Q. 33 (C.C.P.A. 1937). In re Russell, 439 F.2d 1228, 169 U.S.P.Q. 426 (C.C.P.A. 1971).
Claim 6 is directed to the process according to claim1, wherein substep e1) is operated at a pressure of between 0.1 and 0.8 MPa, preferably between 0.1 and 0.5 MPa.
FR3053691A1 discloses a pressure range of 0.1-1.0 MPa which overlaps the claimed pressure range. See page 4 lines 13-14 and page 9 lines 24-43.Generally, it is well-established that merely selecting proportions and ranges is not patentable absent a showing of criticality. In re Becket, 33 U.S.P.Q. 33 (C.C.P.A. 1937). In re Russell, 439 F.2d 1228, 169 U.S.P.Q. 426 (C.C.P.A. 1971).
Claim 7 is directed to the process according to claim1, wherein at least one adsorbent of the adsorption section of substep e1) is an activated carbon.
FR3053691A1 discloses activated carbon on page 10 line 2. 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 the solids production section is operated at a temperature of between 5 and 80°C, preferably between 10 and 70°C. JP2008088096A discloses crystallizing BHET by cooling the aqueous solution and adjusting the cooling conditions to obtain purified BHET crystals. See page 4 lines 19-30.
Claim 9 is directed to the process according to claim 1, wherein the solids production section is operated at a pressure of between 0.0001 and 0.50 MPa, preferably between 0.001 and 0.20 MPa.
FR3053691A1 discloses a pressure range of 0.12-0.001 MPa which overlaps the claimed pressure range. See page 4 lines 13-14 and page 9 lines 24-43.Generally, it is well-established that merely selecting proportions and ranges is not patentable absent a showing of criticality. In re Becket, 33 U.S.P.Q. 33 (C.C.P.A. 1937). In re Russell, 439 F.2d 1228, 169 U.S.P.Q. 426 (C.C.P.A. 1971).
Claim 10 is directed to the process according to claim 1, wherein the solids production section is fed with a crystallization solvent which is identical to or different from the solvent introduced into the mixing section of substep e1), and wherein the amount of crystallization solvent introduced into the solids production section is adjusted such that the prepurified monomers effluent which feeds substep c1) represents between 1% and 75% by weight, preferentially between 5% and 45% by weight, preferably between 15% and 35% by weight, of the total weight of the mixture in said solids production section.
JP2008088096A discloses using water as the crystallization solvent and about 3-10 parts water per part crude BHET providing concentrations overlapping the claimed ranges. See page 12 lines 15-30.
Claim 11 is directed to the process according to one of the claim 1, wherein the polyester feedstock comprises at least 50% by weight, preferably at least 70% by weight, with preference at least 90% by weight, of polyethylene terephthalate, and in particular comprises opaque PET, colored PET, multilayer PET, or mixtures thereof.
FR3053691A1 discloses opaque, dark and multilayered PET, page 5 lines 6-9 JP2008088096A discloses raw materials that may comprise essentially 100% PET. See page 6 lines 17-24.
Claim 12 is directed to the process according to claim 1, wherein the polyester feedstock comprises between 0.1% and 10% by weight of pigments, preferably between 0.1% and 5% by weight of pigments, and preferably between0.005% and 1% of dyes, in particular between 0.01% and 0.2% by weight of dyes.
FR3053691A1 discloses 0.1%-10wt% pigment and dye concentrations that overlap those claimed . see page 5 lines 10-12.
Claim 13 is directed to the process according to claim 1, wherein step a) is implemented at a temperature of between 200 and 300°C, preferably between 250 and 290°C, and preferably at a pressure of between 0.1 MPa and 20 MPa. with preference between 0.15 MPa and 10 MPa. See claims
FR3053691A1 discloses conditioning the polyester feed at 225-275C directly within the claimed temperature range and heating and pressurizing the feed for depolymerization. See page 5 lines 20-27.
Claim 14 is directed to the process according to one of the claim 1, wherein step a) is fed with a diol stream with a ratio by weight of the diol stream in relation to the polyester feedstock of between 0.03 and 6.00, preferably between 0.05 and 5.00, preferentially between 0.10 and 4.00, with preference between 0.50 and 3.00.
FR3053691A1 discloses contacting the polyester feed during conditioning with a recycled diol effluent to initiate depolymerization. See page 6 lines 5-11.
Claim 15 is directed to the process according to claim 1, wherein the ratio by weight between the total amount of diol present in step b)and the amount of diester contained in the conditioned feedstock stream is between 1.0 and 7.0,preferably between 1.5 and 6.0.
FR3053691A1 discloses glycolysis using 1-20 moles of diol per mole of diester which appears to corresponds to the diol to diester weight relationship. See page 6 lines 15-19.
Claim 16 is directed to the process according to Claim 1, wherein the amount of solvent introduced into the mixing section of substep e1) is adjusted such that the prepurified monomers effluent obtained from step d) or a solid produced on conclusion of substep e2) represents between 30% and 80% by weight of the total weight of the mixture of said mixing section.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to adjust the amount of solvent to obtain a suitable concentration for purifying and recovering the BHET a since determining an amount that produces the claimed limitation concentration would have been a matter of routine optimization to the skilled artisan.
Claim 17 is directed to the process according Claim 1, wherein the solvent which feeds the mixing section of substep e1) is selected from ethylene glycol, water, and mixtures thereof.
FR3053691A1 discloses the use of diol including ethylene glycol on page 10 lines 3-4. JP2008088096A discloses the use of water on page 12 line s15-30.
Claim 18 is directed to the process according to Claim 1, wherein substep e1) is operated at a temperature of between 80 and 150°C.
FR3053691A1 discloses adsorption at 100-250C which overlaps the claimed invention. See page 9 lines 38-43.
Claim 19 is directed to the process according to Claim 1, wherein substep e1) is operated at a pressure of between 0.1 and 0.5 MPa.
FR3053691A1 discloses adsorption at 0.1MPa including preferred 0.3-0.5MPa which overlaps the claimed invention.
Claim 20 is directed to the process according to Claim 1, wherein the solids production section is operated at a temperature of between 10-70C.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to select a temperature within the claimed range, since crystallization temperature is a conventional process condition that would ordinarily be adjust to increase BHET crystallization and recovery.
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.
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.
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, Heidi Kelley can be reached at 571 270-1831. 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.
/Terressa Boykin/Primary Examiner, Art Unit 1765
Prosecution Insights