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 .
DETAILED ACTION
Claims 1-15 of D. Chiche, et al., 18/571,364 (12/18/2023) are pending, under examination on the merits and rejected.
Rejections 35 U.S.C. 112(b)
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.
Pursuant to 35 U.S.C. 112(b), the claim must apprise one of ordinary skill in the art of its scope so as to provide clear warning to others as to what constitutes infringement. MPEP 2173.02(II); Solomon v. Kimberly-Clark Corp., 216 F.3d 1372, 1379, 55 USPQ2d 1279, 1283 (Fed. Cir. 2000). The meaning of every term used in a claim should be apparent from the prior art or from the specification and drawings at the time the application is filed. Claim language may not be ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention. MPEP § 2173.05(a).
Claims 2-6, 8 and 11-14 are rejected under 35 U.S.C. 112(b) as indefinite because each of these claims recites the language of “preferentially”, “preferably” or “more particularly”. These are improper preferences because there is a question or doubt as to whether the feature introduced by preference language such as “preferentially”, “preferably” or “more particularly” is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 4-9,11 and 15 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by D. Y. Hwang, et al, US20230399462A1(2023) (“Hwang”). Hwang is effective prior art under 35 USC § 102(a)(2) respecting the subject matter cited above as of the filing date of Hwang’s priority document KR-10-2020-0154565 (11/18/2020) because: (1) Hwang is U.S. patent application publication; (2) names different inventors with different assignees; and (3) the subject matter of Hwang relied upon in this rejection is disclosed in Hwang’s priority document KR-10-2020-0154565 (11/18/2020). See MPEP § 2154.01; 35 USC § 102(d).
Hwang teaches a method for purifying bis-2-hydroxyethyl terephthalate, including the steps of:
1) mixing bis-2-hydroxyethyl terephthalate and water;
2) adding activated carbon to the mixture of step 1; and
3) recovering bis-2-hydroxyethyl terephthalate from the mixture of step 2.
Hwang at page 1, [0008]-[0011].
Regarding bis-2-hydroxyethyl terephthalate, Hwang teaches that bis-2-hydroxyethyl terephthalate is obtained by depolymerization of polyester or polyester recovered after consumption is used. Hwang at page 1, [0015], therefore, the Hwang bis-2-hydroxyethyl terephthalate is a crude diester monomer feedstock.
Hwang teaches working examples for his method, such as Preparation Example 2 as follows:
[0065] 300 g of distilled water was added to a 3 L vessel, and then heated with stirring at 85° C. When the temperature reached 85° C., 2000 g of BHET was added slowly and completely dissolved. When BHET was completely dissolved, 0.5 wt % of powdered activated carbon based on the added BHET was added, followed by stirring for 1 hour to adsorb impurities. Thereafter, undissolved impurities and activated carbon were removed through a heated filter.
The Hwang Preparation Example 2 method comprising:
(i). a mixing step fed by the crude BHET (2000g) that is diester monomer and water (300g) that is an aqueous solvent, and carried out at a temperature of between 85°C; wherein, the concentration of BHET is 87% by weight; and
(ii). an adsorption step carried out by crude BHET aqueous mixture in contact with activated carbon that is one adsorbent, the contacting is conducted at 85°C under normal air pressure (0.101325 MPa).
Which meets each and every limitation of claims 1, 4-9, therefore, claims 1, 4-9 are anticipated.
Claim 11 and 15 are anticipated because Hwang teaches a step of filtration located downstream of the step of adsorption through which undissolved impurities and activated carbon were removed.
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.
35 U.S.C. 103 Rejection Over D. Y. Hwang, et al, US20230399462A1(2023)(“Hwang”)
Claims 2-3 and 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over D. Y. Hwang, et al, US20230399462A1(2023)(“Hwang”) as applied above for the rejection of claim 1.
D. Y. Hwang, et al, US20230399462A1(2023)(“Hwang”)
As detail discussed above in the 102 rejection that the method of Hwang preparation Example 2 meets each and every limitation of claim 1.
Difference between the of Hwang preparation Example 2 and Claims 2-3 and 12-14
The Hwang preparation Example 2 differs from claims 2-3 in that the concentration of BHET or water in the mixture of the first step is not the claimed concentrations. The Hwang preparation Example 2 differs from claims 12-14 in that the Hwang preparation Example 2 does not comprise a step of crystallization.
Obviousness Rationale of Claims 2-3 and 12-14
Claims 2-3 are obvious because one ordinary skill is motivated to optimize the concentration of BHET and/or water into the claimed ranges as Hwang teaches that in the mixing step, bis-2-hydroxyethyl terephthalate (BHET)and water are preferably mixed in a weight ratio of 20:80 to 90:10. Hwang at page 1, [0018]. Thus, Hwang teaches the concentration of BHET can be 20wt%-90wt% and the concentration of water can be 10wt%-80wt%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP2144.05.I. Herein, the claimed water concentration 50 wt% or more in claim 2 and the claimed BHET concentration 30 wt%-80wt% in claim 3 overlaps or lie inside with the prior art 10wt%-80wt% and 20 wt%-90wt% respectively, therefore, claims 2-3 are obvious.
Regarding claims 12-14, Hwang teaches that:
[0026] The step 3 of the present disclosure is a step of recovering bis-2-hydroxyethyl terephthalate from the mixture of step 2.
[0027] The recovery is not particularly limited as long as the prepared bis-2-hydroxyethyl terephthalate is separated from the activated carbon, and may preferably be performed by filtration. Therefore, the step 3 may be performed by filtering the mixture of step 2 to recover a filtrate. Since the recovered filtrate contains purified bis-2-hydroxyethyl terephthalate, the recovered filtrate can be used for the preparation of a polyester copolymer to be described later without a separate additional process.
[0028] In addition, in order to further purify bis-2-hydroxyethyl terephthalate, bis-2-hydroxyethyl terephthalate crystals may be induced from the recovered filtrate and the resulting crystals may be recovered.
[0029] Specifically, the filtrate may be cooled to 10 to 40° C. to recover bis-2-hydroxyethyl terephthalate crystals. The produced crystals may be recovered by separating the resulting bis-2-hydroxyethyl terephthalate crystals and solution, preferably by centrifugation.
Hwang at page 2, [0026]-[0029]. Emphasis added.
Claim 12 is obvious because one ordinary skill in the art seeking high purity of BHET is motivated to modify the Hwang preparation Example 2 method by including a step of recyclization using a solid production section with the recovered filtrate as taught by Hwang. One ordinary skill in the art is motivated to do so with a reasonable expectation of success because Hwang teaches that bis-2-hydroxyethyl terephthalate crystals may be induced from the recovered filtrate.
Claim 13 is obvious because Hwang teaches to use the recovered filtrate which comprise the same solvent as that introduced into the mixing step and the concentration of BHET is 20wt%-90wt% that overlaps with the claimed 1wt%-75wt%, therefore, claim 13 is obvious. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP2144.05.I.
Claim 14 is obvious because Hwang teaches to conduct the recrystallization at a temperature of 10-40° C under normal air pressure (0.101325MPa), which anticipates the claimed 0-100° C and 0.00001-1.00MPa.
35 U.S.C. 103 Rejection 0ver D. Y. Hwang, et al, US20230399462A1(2023) (“Hwang”) in view of H. Patel, 9(3) Applied Water Science, 45 (2019) (“Patel”)
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over D. Y. Hwang, et al, US20230399462A1(2023)(“Hwang”) as applied above for the rejection of claim 1 further in view of H. Patel, 9(3) Applied Water Science, 45 (2019)(“Patel”).
D. Y. Hwang, et al, US20230399462A1(2023)(“Hwang”)
As detail discussed above in the 102 rejection that the method of Hwang preparation Example 2 meets each and every limitation of claim 1.
Difference between the of Hwang preparation Example 2 and Claim 10
The Hwang preparation Example 2 differs from claim 10 in that Hwang teaches to conduct the step of adsorption in a batch mode rather the claimed in flow through fixed bed mode.
H. Patel, 9(3) Applied Water Science, 45 (2019)(“Patel”)
Patel teaches that batch, continuous moving bed, continuous fixed bed (upflow or downflow), continuous fluidize bed and pulsed bed are various types of technique by which the contact between adsorbate and adsorbent is mainly occurred in the adsorption system; and each method has merits and demerits. Patel at page 2 of 17, right col., paragraph 2, line 1-6. Per table 1, Patel teaches that both batch sorption and continuous fixed-bed sorption are “very easy and cheap technique”, and continuous fixed-bed sorption is “widely used for industrial purpose, because the adsorbate is continuously in contact with a given quantity of fresh adsorbent in fixed-bed column system”. Patel at table 1, page 3 of 17. Patel further concludes that “fixed-bed column is more preferable and industrially feasible for removal of various contaminations from synthetic as well as real wastewater” and “is better, easy, simple, economical and feasible for industrial for removal of various contaminations including dye, metal and other hazardous waste”. Patel at page 2 of 17, right col., paragraph 2, line 6-9; and at page 13 of 17, right col., line 1-4.
Obviousness Rationale of Claim 10
Claim 10 is obvious because one ordinary skill seeking bis-2-hydroxyethyl terephthalate for industrial purposes is motivated to modify the Hwang Example 2 method by flowing the solution comprising of bis-2-hydroxyethyl terephthalate and water through a column packed with activated carbon at 85ºC, thus arrive at a process meeting each and every limitation of claim 10 and claim 10 is obvious.
One ordinary skill has a motivation to do so with a reasonable expectation of success because Patel teaches that fixed-bed column is more preferable and industrially feasible for removal of various contaminations from synthetic as well as real wastewater” and “is better, easy, simple, economical and feasible for industrial for removal of various contaminations including dye, metal and other hazardous waste. Patel at page 2 of 17, right col., paragraph 2, line 6-9; and at page 13 of 17, right col., line 1-4. And batch sorption is scarcely found in the majority of practical (industrial) applications. Patel at Table 1, disadvantages of batch sorption.
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).
Provisional Nonstatutory Double Patenting Rejection over US20240287279A1
Claims 1, 3-7, 9, 11-12 and 14-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of copending Application No. 18/571,049 (published as US20240287279A1) in the claim set filed on 12/15/2023. Although the claims at issue are not identical, they are not patentably distinct from each other. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
The conflicting claim 1 claims a process for depolymerization of a polyester feedstock comprising polyethylene terephthalate, the process comprising (a) to (e) steps and the claimed step (e) is claimed as follows:
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.
The conflicting claim 3 further claims:
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.
The conflicting claim 4 further claims:
The process according to 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.
The combination of the conflicting claims 1, 3-4 meets each and every limitation of the instant claims 1 and 3 except the conducting temperature of the substep e1) in the conflicting claims is 50-200°C rather the claimed 60-150°C. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP2144.05.I. Herein, the claimed the claimed 60-150°C lie inside ranges 50-200°C claimed by the conflicting claims 1, 3-4, therefore, the instant claims 1 and 3 are obvious.
Claims 4-6 are also obvious for the same reason as given above for the rejection of claims 1 and 3.
Claims 7 and 9 are obvious because the conflicting claim 7 further claims the least one adsorbent of the adsorption section of substep e1) in claim 1 is an activated carbon.
Claim 8 is obvious because one ordinary skill is motivated to conduct the conflicting claims 1, 3-4 and 7 by election activated carbon as the only one adsorbent.
Claims 11-12 and 14-15 are also obvious because the conflicting claim 1 also claims a step of 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; and the crystallization substep e2) is located downstream of the adsorption substep e1).
Nonstatutory Double Patenting Rejection over US12492296B2
Claims 1 and 3-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 7-10 of U.S. Patent No:US12492296B2 (2025). Although the claims at issue are not identical, they are not patentably distinct from each other.
The conflicting claim 1 claims a process for depolymerizing a polyester feedstock comprising opaque polyethylene terephthalate (PET), the process comprising (a) to (e) steps and the claimed step (e) is claimed as follows:
e) a step for decolorizing the prepurified monomers effluent, comprising at least a mixing section for mixing the prepurified monomers effluent obtained in step d) with a solvent to form a mixture wherein the prepurified monomers effluent represents between 20% and 90% by weight of the total weight of the mixture, and an adsorption section conducted at a temperature of between 10° and 200° C. and at a pressure of between 0.1 and 1.0 MPa in the presence of at least one adsorbent selected from activated carbons, alumina and clays, to obtain a purified monomers effluent.
The conflicting claim 7 further claims:
7. The process according to claim 1, wherein the solvent in decolorizing step e) comprises a fraction of the diol effluent obtained from step c), a supplement of diol external to the process, or mixtures thereof.
The conflicting claim 7 meets each and every limitation of the instant claims 1 and 7-8 except the conducting temperature in the conflicting claims is 10-200°C rather the claimed 60-150°C. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP2144.05.I. Herein, the claimed the claimed 60-150°C lie inside ranges 10-200°C claimed by the conflicting claim 7, therefore, the instant claims 1 and 7-8 are obvious.
Claim 3 is obvious because the conflicting claim 8 further claims the prepurified monomers effluent represents between 30% and 80% by weight of the total weight of the mixture in step e).
Claims 4-6 are also obvious for the same reason as given above for the rejection of claims 1 and 7.
Claim 9 is obvious because the conflicting claim 8 further claims:
The process according to claim 1, wherein at least one adsorbent in step e) is an activated carbon.
Claim 10 is obvious because the conflicting claim 13 further claims:
The process according to claim 1, wherein the adsorption section of step e) is implemented in fixed bed adsorption mode.
Note on Additional Prior Art Not Relied Upon
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. CN110590551A (2019) discloses a process for making of bis(2-hydroxyethyl)terephthalate (hereinafter referred as 'BHET') with the high purity and the process comprises preparing a water solution of BHET in heated water; the BHET is subjected to crystal separation in the water solution; and the crystalline BHET is separated from the water solution. See Abstract of CN110590551A. US20230085243A1 (priority to TW110133988A·2021-09-13) discloses a method for improving the hue of recycled BHET. The method includes: dissolving BHET in water to form a aqueous phase liquid; adding an activated carbon material to the aqueous phase liquid to adsorb impurities; and cooling the aqueous phase liquid to crystallize the BHET from the aqueous phase liquid to obtain a recycled BHET. See abstract of US20230085243A1.
Conclusion
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/FRANK S. HOU/Examiner, Art Unit 1692
/ALEXANDER R PAGANO/Primary Examiner, Art Unit 1692
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