DETAILED ACTION
STATUS OF THE APPLICATION
Receipt is acknowledged of Applicants’ Amendments and Remarks, filed 20 December 2023, in the matter of Application No. 18/572,353. Said documents have been entered on the record. The Examiner further acknowledges the following:
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-30 are pending.
Claims 4, 6-8, 10-17, 19, 21, 25, and 27-30 have been amended.
No claims have been cancelled.
Thus, claims 1-30 represent all claims currently under consideration.
Priority
Acknowledgment is made of Applicants’ claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in the present application filed on 20 December 2023 and in parent Application No. PCT/NL2022/050347, filed on 20 June 2022. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. Applicant claims foreign priority to Application No. NL2028500, filed on 21 June 2021.
Domestic Priority data as claimed by applicant:
This application is a 371 of PCT/NL2022/050347 (06/20/2022)
Foreign Applications:
KINGDOM OF THE NETHERLANDS 2028500 (06/21/2021)
Information Disclosure Statement (IDS)
The information disclosure statements submitted on 20 December 2023, 16 September 2024, and 18 March 2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the Examiner.
Claim Objections
Claim 1 is objected to because of the following informalities:
In line 3, “…the steps of…” should read “…the steps of:…”
In line 17, “…step e),…” should read “…step e);…
In line 19, “…the reactor,…” should read “…the reactor;…”
Claim 1 is missing a period at the end of the claim. See MPEP § 608.01(m).
Claims 2-21 are objected to because of the following informalities:
In line 1, “Method…” should read “The method…”
Claim 9 is objected to because of the following informalities:
In line 7, “step f)” should read “step g)”.
Claim 14 is objected to because of the following informalities:
In line 2, “step d.” should read “step d)”.
In line 3, “30 sec.-3 hours” should read “30 sec. to 3 hours”
Claim 15 is objected to because of the following informalities:
In line 2, “step d.” should read “step d)”.
Claim 22 is objected to because of the following informalities:
In line 10, “…bis (2-hydroxyethyl) terephthalate…” should read “…bis-(2-hydroxyethyl)-terephthalate…”
In line 13, the word “and” should be deleted.
In line 16, “…the reactor,…” should read “…the reactor;…”
In line 17, “…means…” should read “…a means…”
Claims 23-29 are objected to because of the following informalities:
In line 1, “Reactor system…” should read “The reactor system…”
Appropriate correction is required.
Claim Interpretation
The phrase “A solid BHET composition obtainable by the method according to claim 1...” as recited in instant claim 30 is being interpreted as a product-by-process claim. Although the process steps are not interpreted as actively required, they are considered to the extent that they limit the structure of the composition. See MPEP § 2113.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitations recite sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitations are: “means for monitoring and adjusting a mass fraction of BHEET” in claim 22, and “controller unit configured to control” in claim 24.
Because these claim limitations are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, they are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If Applicant intends to have these limitations interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, Applicant may: (1) amend the claim limitations to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitations do not recite sufficient structure, materials, or acts to perform the claimed function.
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 1-21, 27-30 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 1, the phrase “such as” renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claims 2-21, these dependent claims do not resolve the indefiniteness of claim 1 detailed above.
Claim 7 recites “wherein the predetermined limit value of the BHEET-mass fraction in the depolymerized product stream defined relative to the BHET-mass fraction in the depolymerized product stream ranges from 0.1 wt.% to 10 wt.%.” in lines 2-4. However, the upper limit of the recited range is above the range of “lower than 10 wt.%” recited in claim 1 on which the instant claim depends, thus rendering instant claim 7 indefinite.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 8 recites the broad recitation “wherein the depolymerized product stream is cooled”, and the claim also recites “preferably by adding water to the depolymerized product stream, to decrease the temperature from the temperature of the degrading step d) to below 160 ºC” which is the narrower statement of the range/limitation. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Regarding claims 9-10, these dependent claims do not resolve the indefiniteness of claim 8 detailed above.
Claim 10 recites “…said part of the mother liquor stream.” In line 4. There is insufficient antecedent basis for this limitation in the claim. The Examiner notes that correcting any suspected typographical error(s) regarding the claim language would ameliorate this claim rejection. For examination purposes, “…said part of the mother liquor stream.” will be read as “…part of the mother liquor stream.”
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 12 recites the broad recitation “wherein a weight ratio of EG to the polymer in the reaction mixture is in the range of from 20:10 to 100:10”, and the claim also recites “more preferably from 40:10 to 90:10, and most preferably from 60:10 to 80:10” which is the narrower statement of the range/limitation. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 15 recites the broad recitation “wherein the degrading step d. comprises forming the monomer at a temperature higher than 190 ºC”, and the claim also recites “preferably at most 250 ºC” which is the narrower statement of the range/limitation. In addition, claim 15 recites the broad recitation “at a pressure higher than 1.0 bar”, and the claim also recites “preferably lower than 3.0 bar” which is the narrower statement of the range/limitation. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 16 recites the broad recitation “recovering the catalyst”, and the claim also recites “preferably by separation through centrifugation and/or filtration and/or magnetic attraction” which is the narrower statement of the limitation. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 19 recites the broad recitation “wherein the metal is a transition metal”, and the claim also recites “wherein the metal oxide is iron oxide” which is the narrower statement of the limitation. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Regarding claim 20, this dependent claim does not resolve the indefiniteness of claim 19 described above.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 21 recites the broad recitation “wherein the metal is an earth alkali element selected from beryllium, magnesium, calcium, strontium and barium”, and the claim also recites “preferably wherein the metal oxide is magnesium oxide (MgO)” which is the narrower statement of the limitation. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 27 recites “…said part of the mother liquor stream.” In lines 4-5. There is insufficient antecedent basis for this limitation in the claim. The Examiner notes that correcting any suspected typographical error(s) regarding the claim language would ameliorate this claim rejection. For examination purposes, “…said part of the mother liquor stream.” will be read as “…part of the mother liquor stream.”
Claim 28 recites “…the purging unit…” in line 2. There is insufficient antecedent basis for these limitations in the claim. The Examiner notes that correcting any suspected typographical error(s) regarding the claim language would ameliorate this claim rejection. For examination purposes, “…the purging unit…” will be read as “…a purging unit...”
Claim 29 recites “…the catalyst complex…” in lines 2-3 and “…the recovered catalyst complex.” in line 4. There is insufficient antecedent basis for these limitations in the claim. The Examiner notes that correcting any suspected typographical error(s) regarding the claim language would ameliorate this claim rejection. For examination purposes, “…the catalyst complex…” will be read as “…the catalyst...” and “…the recovered catalyst complex.” will be read as “…the recovered catalyst.”
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 30 recites the broad recitation “wherein the solid composition comprises less than 5 wt.% BHEET relative to BHET”, and the claim also recites “more preferably less than 2 wt.% BHEET relative to BHET” which is the narrower statement of the range/limitation. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language 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
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 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.
Claim 30 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shuji et al. (JP2008088096A; English language machine translation; both of record in third-party submission of 03-18-2025; hereinafter “Shuji”).
Regarding claim 30 depending from claim 1, this claim is being interpreted as a product-by-process claim. Although the process steps are not interpreted as actively required, they are considered to the extent that they limit the structure of the composition. See MPEP § 2113.
Further regarding claim 30, Shuji discloses a composition comprising 94 wt% BHET and 0.3 wt% DEG-Ester, wherein DEG-ester is defined as 2-hydroxyethyl[2-(2-hydroxyethoxy)ethyl] terephthalate (BHEET) (Shuji; paragraphs [0065] and [0185]; Example 1; English language machine translation). This composition is further subjected to filtration, evaporation to remove low-boiling components, and distillation to provide a crude BHET that was crystallized to precipitate BHET crystals (Shuji; paragraphs [0186]-[0195]; Example 1; English language machine translation). The purified BHET obtained in Example 1 has a purity of 99.3% as analyzed by liquid chromatography (Shuji; paragraph [0238] and [0240]; Table 1; Original Document and English language machine translation). Thus, the purified crystalline BHET of Shuji with a purity of 99.3% inherently possesses at least 90.0 wt.% BHET and less than 2 wt.% BHEET relative to BHET, and therefore anticipates every limitation of the instant claim. MPEP § 2112.
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 1-15, 17-18, 21-23, 25-28, and 30 are rejected under 35 U.S.C. 103 as being unpatentable over Atkins et al. (WO 2021/028695 A1; published 02-18-2021; IDS of 09-16-2024; hereinafter “Atkins”), in view of Shuji et al. (JP2008088096A; IDS of 03-18-2025; English language machine translation; hereinafter “Shuji”).
Regarding claims 1 and 22, Atkins teaches a method and apparatus for recycling polyethylene terephthalate (PET) to produce bis(2-hydroxyethyl) terephthalate (BHET) comprising depolymerization and the removal of impurities through crystallization (Atkins; Abstract; claim 1).
The method comprises depolymerizing PET in the presence of ethylene glycol and a catalyst system in a series of preferably two depolymerization reactors to form a depolymerized mixture comprising BHET, wherein the reactors are adapted to receive PET, ethylene glycol, and a catalyst system comprising preferably zinc acetate (Atkins; claims 1, 7, and 26). Fig. 3 of Atkins describes an apparatus comprising depolymerization reactors (10) receiving an inlet stream comprising PET (2), a zinc acetate and urea catalyst system (4), and ethylene glycol (6) (Atkins; page 29, lines 17-20; Example 4; Fig. 3).
Further regarding step c) of instant claims 1 and 22, Atkins teaches that urea has been surprisingly found to be highly effective at maintaining metals (zinc cation) and other contaminants in solution (Atkins; page 11, lines 6-25). Thus, the skilled artisan would recognize that the process of Atkins teaches a homogeneous solution of the catalyst in the reaction mixture.
The depolymerization step comprises mixing PET, ethylene glycol, and the catalyst system in a reactor or series of reactors at an operating temperature of 197 ºC (Atkins; page 26, lines 5-7; Example 1). Atkins further teaches a depolymerization reactor temperature range of from 150 to 230 ºC (Atkins; claim 5).
Atkins further teaches a method comprising a crystallization unit downstream of the polymerization reactors suitable for crystallizing a precipitate comprising BHET from the depolymerized mixture (Atkins; claims 1 and 26). The depolymerized mixture is filtered, the precipitated BHET is isolated in the crystallization unit, and the filtrate that includes ethylene glycol is preferably recycled to the first depolymerization reactor (Atkins; claims 1 and 18-19).
Fig. 3 of Atkins describes a feedback loop for recycling the residual liquor following the separation and crystallization of BHET comprising passing the residual liquor containing ethylene glycol into a recovery unit (22) and passed through a flash unit (25) where organic waste (34) is removed, before being recycled to the series of depolymerization reactors (10) (Atkins; claim 18; page 30, lines 1-5; Example 4; Fig. 3).
Atkins fails to explicitly teach (1) the presence of 2-hydroxyethyl[2-(2-hydroxyethoxy)ethyl] terephthalate (BHEET) as a byproduct in the depolymerized mixture; (2) monitoring and adjusting a mass fraction of BHEET in the depolymerized product stream and/or in the BHET-depleted stream to below a predetermined limit value of the BHEET mass fraction in the polymerized product stream, as recited in claims 1 and 22; and (3) wherein the predetermined limit value of the BHEET-mass fraction in the depolymerized product stream defined relative to the BHET-mass fraction in the depolymerized product stream is lower than 10 wt.%, as recited in claim 1.
However, Shuji teaches a method for producing bis-(2-hydroxyethyl) terephthalate (BHET) comprising mixing a polyethylene terephthalate (PET)-containing raw material and a catalyst with ethylene glycol to prepare a mixed liquid, depolymerizing PET by a catalytic action in a depolymerization reactor in the mixed liquid to give BHET, recovering BHET from the mixed liquid, and further purifying BHET via crystallization from an aqueous solution (Shuji; Title; Abstract; claim 1; paragraph [0078]; English language machine translation). The catalyst may be added to the reaction mixture by being dispersed or dissolved in ethylene glycol (Shuji; paragraph [0076]; English language machine translation), in a manner consistent with step c) of instant claims 1 and 22. Shuji further teaches a method for producing PET from the recovered BHET (Shuji; Title; Abstract; claim 15; English language machine translation). In one embodiment, the depolymerization reaction was carried out at atmospheric pressure at a temperature of 197-200 ºC, and in general the depolymerization reaction temperature is around 180 to 210 ºC, preferably around 185 to 200 ºC (Shuji; paragraphs [0088] and [0182]; English language machine translation).
Shuji further teaches that while BHET is mainly produced in the mixture (depolymerization solution), it has been found that by-reaction products including unreacted oligomers and 2-hydroxyethyl[2-(2-hydroxyethoxy)ethyl] terephthalate (“DEG-Ester”) is also present (Shuji; paragraph [0065]; English language machine translation). Thus, the DEG-Ester byproduct of Shuji corresponds to BHEET of instant claims 1 and 22.
In addition, Shuji teaches that the amount of by-reaction products and unreacted oligomers changes depending on the water content in the mixture and the oxygen gas content in the atmosphere when carrying out the depolymerization reaction (Shuji; paragraph [0065]; English language machine translation). Reducing the water content in the prepared mixture and the oxygen gas content in the atmosphere reduces the amount of by-products and unreacted oligomers, while increasing the water content in the prepared mixture and the oxygen gas content in the atmosphere increases the amount of by-products and unreacted oligomers (Shuji; paragraph [0065]; English language machine translation). As the water content in the prepared mixture increases, the resulting BHET is more likely to be hydrolyzed by water and converted to mono-(2-hydroxyethyl) terephthalate (MHET) (Shuji; paragraphs [0065] and [0067]; English language machine translation). Since MHET contains a carboxyl group (−COOH) that exhibits acidity upon dissociation, an increase in the amount of MHET leads to a stronger acidity in the reaction system that promotes the formation of diethylene glycol (DEG) from ethylene glycol (EG), and the DEG-Ester is produced by the transesterification between DEG and BHET (Shuji; paragraphs [0065] and [0067]; English language machine translation). Therefore, it is presumed that as the amount of DEG increases, the amount of DEG-Ester produced will inevitably increase as well (Shuji; paragraph [0067]; English language machine translation).
Further regarding claims 1 and 22, Shuji teaches a crude depolymerized composition comprising 94 wt% BHET and 0.3 wt% DEG-Ester, wherein DEG-ester is defined as 2-hydroxyethyl[2-(2-hydroxyethoxy)ethyl] terephthalate (Shuji; paragraphs [0065] and [0185]; Example 1; English language machine translation). The amount of DEG-Ester (i.e., BHEET) in the depolymerized product stream of Shuji resides within range of the predetermined limit value of the BHEET-mass fraction recited in instant claim 1. MPEP § 2144.05(I) states that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” This composition is further subjected to filtration, evaporation to remove low-boiling components, and distillation to provide a crude BHET that was crystallized to precipitate BHET crystals (Shuji; paragraphs [0186]-[0195]; Example 1; English language machine translation). The purified BHET obtained in Example 1 of Shuji has a purity of 99.3% as analyzed by liquid chromatography (Shuji; paragraph [0238] and [0240]; Table 1; Original Document and English language machine translation). Thus, Shuji provides a method for monitoring the amount of impurities including BHEET, in a manner consistent with instant claim 22.
Although the method of Atkins does not explicitly describe the constituents of the impurities in the BHET and is therefore silent regarding the presence of BHEET byproduct, both Atkins and Shuji teach PET depolymerization reaction examples in ethylene glycol solvent at a temperature of about 200 ºC, as detailed above (Atkins; page 26, lines 5-7; Example 1; Shuji; paragraph [0182]; English language machine translation). Furthermore, Atkins teaches that residual water is present from washing the PET prior to the depolymerization step (Atkins; page 12, lines 20-22). Since Shuji teaches that the presence of water contributes to the undesired production of BHEET byproduct, the skilled artisan would reasonably deduce that the method of Atkins intrinsically produces BHEET as an impurity, in a manner consistent with instant claims 1 and 22.
As such, the skilled artisan would be sufficiently motivated to modify Atkins to incorporate the teachings of Shuji to control the reaction conditions (i.e., water and oxygen content in the depolymerization method step) and monitor and adjust the BHEET-mass fraction in the depolymerized product stream to pursue an improved process with reduced byproducts and unreacted oligomers with a reasonable expectation of success. Such an endeavor would result in combining prior art elements according to known methods to yield predictable results, as described in MPEP § 2143(I)(A), use of a known technique to improve similar devices (methods, or products) in the same way, as described in MPEP § 2143(I)(C), and applying a known technique to a known device (method, or product) ready for improvement to yield predictable results, as described in MPEP § 2143(I)(D).
The prior art as taught by Atkins and Shuji reside in the closely overlapping technical field of terephthalate polymer depolymerization in the presence of ethylene glycol solvent and a catalyst. Furthermore, Shuji teaches the importance of controlling the reaction conditions to limit the BHEET-mass fraction of the depolymerized product stream, and provides a means for monitoring the purity of the obtained BHET. Thus, the cited prior art is from the same field of endeavor and reasonably pertinent to the problem faced by the inventor, and is therefore deemed analogous art, as described in MPEP § 2141.01(a). Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Atkins to provide a means to monitor and adjust the mass fraction of BHEET in the depolymerized product stream to obtain a BHEET-mass fraction relative to the BHET-mass fraction of lower than 10 wt.% and arrive at the claimed invention. The motivation to do so would permit the skilled artisan to pursue, with a reasonable expectation of success, an improved terephthalate depolymerization method that limits the production of byproducts and unreacted oligomers, as described above.
Regarding claims 2-3 and 23, Fig. 3 of Atkins describes a feedback loop for recycling the residual liquor from the following the separation and crystallization of BHET comprising passing the residual liquor containing ethylene glycol into a recovery unit (22) and passed through a flash unit (25) where organic waste (34) is removed, before being recycled to the series of depolymerization reactors (10) (Atkins; claim 18; page 30, lines 1-5; Example 4; Fig. 3). Further, as discussed above, Atkins in view of Shuji teaches that the concentration of water present in the reaction of Atkins is a results effective variable for the formation of BHEET, and its amount can be quantitatively measured. Therefore, the skilled artisan would recognize that the removal of organic waste from the residual liquor (i.e., the BHET-depleted stream) prior to refeeding it to the depolymerization reactor as taught by Atkins corresponds to purging a part of the BHET-depleted stream comprising BHEET after each plurality of cycles of steps a) to g). Thus, the amount of BHEET recycled to the reactor would be adjusted by the purging step of Atkins through means of routine optimization. See MPEP § 2144.05.
Regarding claims 4-7, Atkins in view of Shuji do not explicitly teach these claim limitations.
However, Atkins in view of Shuji teaches that BHEET is a known and measurable byproduct of the depolymerization of polyterephthalate whose presence in the BHET-depleted stream is predictable and undesired, and the removal of undesired organic waste (34) from the recovery unit of Atkins corresponds to a purging of the depolymerized product stream, as discussed in the rejections of claims 1-2 and 22-23 above. As such, the skilled artisan would recognize that the mass fraction of the BHEET in the BHET-depleted stream can be removed through the purging step prior to its recycling to the depolymerization reactors, as taught by the process of Atkins. Furthermore, Examples 1 and 3-4 of Shuji teach depolymerized product streams comprising DEG-ester (i.e., BHEET) mass fractions of 0.3-4.0 wt% (Shuji; paragraphs [0185], [0216], and [0228]; Examples 1 and 3-4; English language machine translation), values that reside within the range of the predetermined limit value of instant claims 1 and 7. Therefore, the skilled artisan would recognize that when recycling the BHET-depleted stream, the purge percentage could be adjusted to above, about equal to, or below (i.e., from 5-50 wt% ) the BHEET mass fractions taught by Shuji through means of routine optimization with a reasonable expectation to control the amounts of BHEET from the recycle stream prior to its refeeding to the depolymerization reactor. See MPEP § 2144.05.
Regarding claim 8 depending from claim 1 and claim 25 depending from claim 22, Atkins further teaches a method comprising a crystallization unit, as detailed in the discussion of claim 1 above, further comprising a vessel for receiving the precipitate and which is suitable for dissolving the precipitate in a protic solvent to form a solution comprising BHET (Atkins; claims 1 and 26; page 4 lines 21-25). Atkins further teaches that preferably, the protic solvent used is typically methanol or water, is recovered with ethylene glycol from the residual liquid that remains after isolation of the purified product (Atkins; page 15, lines 1-2; page 21, lines 21-23). The initial crystallization may be carried out by reducing the temperature of the depolymerized mixture to a temperature of up to 50 ºC where incomplete crystallization will likely occur (Atkins; page 13, lines 13-14 and 19). Atkins further teaches wherein the method is carried out using cooling crystallization preferably by reducing the temperature of the depolymerized mixture to a temperature of from 5 to 50 °C, preferably from 10 to 40 °C, and more preferably from 15 to 35 °C (Atkins; claim 10). These temperature ranges reside within the range recited in instant claim 8. MPEP § 2144.05(I) states that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.”
Regarding claim 9 depending from claim 8 and claim 26 depending from claim 25, Fig. 3 of Atkins describes a feedback loop for recycling the residual liquor, as detailed in the discussion of claim 1 above. The skilled artisan would recognize that the removal of organic waste from the residual liquor (i.e., the BHET-depleted stream) prior to refeeding it to the depolymerization reactor as taught by Atkins corresponds to purging a part of the BHET-depleted stream after each plurality of cycles of steps a) to g) in a manner consistent with instant claims 9 and 26. Furthermore, when considering the teachings of Atkins in view of Shuji, the skilled artisan would arrive at the claim limitation of a part of the recovered mother liquor stream is purged when a mass fraction of BHEET in the recovered, because the method of Shuji teaches a BHEET content below the predetermined limit value, and the purging step of Atkins is dedicated to the removal of organic waste. As such, the skilled artisan would recognize based on these combined teachings that the BHET-depleted stream contains BHEET, and the amount of BHEET recycled to the reactor would be adjusted by the purging step of Atkins. See MPEP § 2144.05.
Regarding claim 10 depending from claim 8 and claim 27 depending from claim 25, Shuji teaches that following crystallization in a crystallization tank, solid-liquid separation was performed using a vertical centrifuge (Shuji; paragraphs [0195] and [0197]; Example 1; English language machine translation).
Regarding claim 11 depending from claim 4 and claim 28 depending from claim 22, Fig. 3 of Atkins describes a feedback loop for recycling the residual liquor, as detailed in the discussion of claim 1 above. The skilled artisan would recognize that the flash unit of Atkins corresponds to a flash distillation process. Furthermore, Shuji teaches that since ethylene glycol (EG) is extremely absorbent and easily absorbs moisture, it is preferable to thoroughly remove the moisture from the EG using a high-performance distillation column, especially when EG that has been used once in the depolymerization of PET is distilled and reused (Shuji; paragraph [0073]; English language machine translation).
Regarding claim 12 depending from claim 1, Atkins teaches wherein ethylene glycol is used in the depolymerization of PET in an amount of from 2 to 6, preferably from 3 to 4, and more preferably from 3.25 to 3.75 times the amount of PET by weight (Atkins; claims 1 and 6; page 10, lines 15-21). The amount of ethylene glycol in an amount of from 2 to 6 times the amount of PET by weight overlaps with the ranges recited in the instant claim. In addition, Example 1 of Shuji teaches a EG/PET ratio of 5.6 by weight (Shuji; paragraph [0181]; Example 1; English language machine translation). MPEP § 2144.05(I) states that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.”
Regarding claim 13 depending from claim 1, the teachings of Atkins (Atkins; page 11, lines 6-25) and Shuji (Shuji; paragraph [0076]; English language machine translation) render obvious the use of either homogenous or heterogeneous reaction systems, as detailed in claim 1 above. Further regarding claim 13, this claim limitation only appears to limit heterogeneous catalysts. Example 4 of Shuji teaches a dispersion comprising 30 kg of PET flakes, 170 kg of EG (EG/PET = 5.61 by weight), and 108 grams of Mg(OH)2 as catalyst to obtain a mixed solution (Shuji; paragraph [0224]; Example 4; English language machine translation). This corresponds to a polymer concentration in the dispersion of about 18 wt.% of the total weight of the reaction mixture, and this value resides within the range recited in the instant claim. MPEP § 2144.05(I) states that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.”
Regarding claims 14-15 depending from claim 1, Atkins teaches wherein each of the depolymerization reactors used is operated at a temperature of from 150 to 230 °C, preferably from 170 to 220 °C, and more preferably from 190 to 210 °C; at atmospheric pressure; for a period of from 20 minutes to 4 hours, preferably from 1 to 3 hours, and more preferably from 1.5 to 2.5 hours (Atkins; claim 5). Atkins further describes atmospheric pressure as 101,325 Pa (Atkins; page 9, lines 11-12), which corresponds to 1.01325 bar. Thus, the depolymerization reaction temperature, pressure, and times of Atkins overlap with or reside within the ranges recited in claims 14-15. MPEP § 2144.05(I) states that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.”
Regarding claim 17 depending from claim 1, claim 18 depending from claim 17, and claim 21 depending from claim 18, Shuji teaches that examples of depolymerization catalysts include alkaline earth metal oxides, wherein examples of alkaline earth metals include Mg and Ca (Shuji; paragraphs [0060]-[0061]; English language machine translation). The metal oxide catalysts of Shuji are consistent with the definition of a metal-containing particle as described in the written description (Specification; page 11, lines 21-29).
Regarding claim 30 depending from claim 1, Shuji discloses a composition comprising 94 wt% BHET and 0.3 wt% DEG-Ester, wherein DEG-ester is defined as 2-hydroxyethyl[2-(2-hydroxyethoxy)ethyl] terephthalate (Shuji; paragraphs [0065] and [0185]; Example 1; English language machine translation). This composition is further subjected to filtration, evaporation to remove low-boiling components, and distillation to provide a crude BHET that was crystallized to precipitate BHET crystals (Shuji; paragraphs [0186]-[0195]; Example 1; English language machine translation). The purified BHET obtained in Example 1 has a purity of 99.3% as analyzed by liquid chromatography (Shuji; paragraph [0238] and [0240]; Table 1; Original Document and English language machine translation).
Although Shuji does not explicitly teach the composition of the crystalline form of BHET obtained from the crude composition (i.e., 94 wt% BHET and 0.3 wt% DEG-Ester), it would have been prima facie obvious before the effective filing date of the claimed invention to have modified the amount of water in the process of Atkin to predictably arrive at other compositions meeting the limitations of the instant claim. Therefore, as with claim 1, it would have been prima facie obvious to arrive at the claimed invention based on Atkins in view of Shuji.
Claims 16, 19-20, and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Atkins et al. (WO 2021/028695 A1; published 02-18-2021; IDS of 09-16-2024; hereinafter “Atkins”), in view of Shuji et al. (JP2008088096A; IDS of 03-18-2025; English language machine translation; hereinafter “Shuji”) as applied to claims 1-15, 17-18, 21-23, 25-28, and 30 above, and further in view of Castillo et al. (WO 2018/143798 A1; IDS of 12-20-2023; hereinafter “Castillo”).
Regarding claims 16, 19-20, and 29, claims 1, 17, and 22 are rendered obvious over Atkins in view of Shuji as detailed above.
Atkins and Shuji fail to teach (1) a step of recovering the catalyst, preferably by separation through centrifugation and/or filtration and/or magnetic attraction, as recited in instant claim 16; (2) wherein the metal is a transition metal, preferably wherein the metal oxide is iron oxide, as recited in instant claim 19; (3) wherein the iron oxide is magnetite (Fe3O4), as recited in instant claim 20; and (4) a reactor system further comprising a separator unit for separating and recovering the catalyst complex from the depolymerized product stream and, optionally, a feedback loop to the reactor for reusing the recovered catalyst complex, as recited in instant claim 29.
However, Castillo teaches the use of particles of a transition metal catalyst for depolymerization of condensation polymers in alcohol (Castillo; Abstract; claim 1). The catalyst particles include iron oxide or other oxide, more particularly a ferrite such as hematite, magnetite, or maghemite (Castillo; page 8, lines 6-7; claim 7). Castillo further teaches that an object of the present invention is to provide further depolymerization catalysts that can efficiently be separated from the solution with monomer product, and is thus suitable for reuse and to provide an improved depolymerization method for condensation polymers (Castillo; page 2, lines 11-13). In addition, Castillo teaches that removal of the catalyst composition from a product stream involves a solid-liquid separation wherein the catalyst particles may be separated from the liquid by means of magnetic separation, centrifugation, filtration, or membrane filtration (Castillo; page 6, lines 4-8).
Example 1 of Castillo describes the use of iron catalysts including Catalyst 1 that comprises magnetite nanoparticles and Catalyst 2b-2 that comprises commercially available iron oxide (Fe3O4) particles of ~500 nm in diameter (Castillo; page 9, lines 5-14; Example 1; Table 1). The catalysts were used to depolymerize polyethylene terephthalate (PET) flakes in a dispersion of ethylene glycol at a reaction temperature of 190-200 ºC, and a conversion to the monomer bis-(2-hydroxyethyl) terephthalate (BHET) of 80-85% was reached after approximately 2 hours (Castillo; page 9, lines 19-32; Example 1; Figure 1). Furthermore, the catalysts of Castillo provide the added advantages over the disclosed catalysts of Atkins and Shuji, such as the benefit of magnetic separation to aid catalyst removal and improve the efficiency of the purification, and that the catalysts are suitable for reuse which offers sustainability and economical advantages (Castillo; ; page 2, lines 11-12 and 30-34; page 6, lines 4-8).
The prior art as taught by Atkins, Shuji, and Castillo reside in the closely overlapping technical field of terephthalate polymer depolymerization in the presence of ethylene glycol solvent and a catalyst. Furthermore, Castillo teaches that iron oxide catalysts including magnetite are very effective catalysts, can be effectively separated from a solution with monomer and any soluble oligomer, are suitable for reuse, and catalyze the rate-limiting step in the depolymerization (Castillo; page 2, lines 11-12 and 30-34). Thus, the cited prior art is from the same field of endeavor and reasonably pertinent to the problem faced by the inventor, and is therefore deemed analogous art, as described in MPEP § 2141.01(a). As such, the skilled artisan would be sufficiently motivated to substitute the catalyst of Atkins and Shuji with the reusable magnetite catalyst of Castillo to pursue an improved depolymerization method for PET with a reasonable expectation of success. Such an endeavor would result in the simple substitution of one known element for another to obtain predictable results, as described in MPEP § 2143(I)(B).
Further regarding claim 29, Castillo teaches that in a preferred embodiment, the process is configured so as to remove the transition metal particles from the reaction mixture in the crystallization step prior to adding water (Castillo; page 6, lines 27-28). In addition, Castillo teaches that ethylene glycol is a preferable carrier liquid for the transition metal particles, and oxidation of the iron particles is inhibited or entirely stopped while dispersed in this solvent (Castillo; page 7, lines 12-19). Furthermore, Atkins teaches that the depolymerized mixture is passed through a filter to remove insoluble components after the depolymerization method step and prior to the precipitation of BHET, and after the precipitated BHET is isolated, the filtrate is preferably recycled to the first depolymerization reactor (Atkins; claims 17-18). Thus, when considering incorporating the magnetite catalyst of Castillo into the reactor system of Atkins in view of Shuji to arrive at an improved method with a reusable catalyst, as detailed above, the skilled artisan would be sufficiently motivated to modify the reactor system of Atkins and Shuji to further include a separator for catalyst recovery (e.g., by filtration as taught by both Atkins and Castillo) prior to the BHET crystallization method step to facilitate catalyst recovery and reuse in the process. Finally, since Atkins teaches the recovery and recycling of ethylene glycol in the depolymerization method step (Atkins; Fig. 3), and the reusable catalysts of Castillo form a stable composition in ethylene glycol, the skilled artisan would also be sufficiently motivated to modify the reactor system of Atkins and Shuji to incorporate the recovered reusable catalyst of Castillo into the solvent feedback loop of Atkins and Shuji to improve the overall efficiency of the reactor system with a reasonable expectation of success. Such an endeavor would result in in combining prior art elements according to known methods to yield predictable results, as described in MPEP § 2143(I)(A).
Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method and reactor system of Atkins and Shuji to incorporate the catalyst of Castillo to arrive at the claimed invention. The motivation to do so would permit the skilled artisan to pursue, with a reasonable expectation of success, a method and reactor system for depolymerization of terephthalate polymer with improved efficiency that implements the use of a very effective catalyst that can be effectively separated and reused, as described above.
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Atkins et al. (WO 2021/028695 A1; published 02-18-2021; IDS of 09-16-2024; hereinafter “Atkins”), in view of Shuji et al. (JP2008088096A; IDS of 03-18-2025; English language machine translation; hereinafter “Shuji”) as applied to claims 1-15, 17-18, 21-23, 25-28, and 30 above, and further in view of Hooghoudt et al. (US 2019/0375910 A1; hereinafter “Hooghoudt”).
Regarding claim 24, claim 23 is rendered obvious over Atkins in view of Shuji, as detailed above.
Atkins and Shuji fail to teach wherein the reactor system comprises at least one controller unit configured to control the purging such that the mass fraction of BHEET in the BHET-depleted stream is about equal to a purge percentage of the predetermined limit value.
However, Hooghoudt teaches an improved method of degrading polyethylene terephthalate in a heated reactor in a dispersion of ethylene glycol solvent and a catalyst complex (Hooghoudt; Abstract; claims 1 and 20). Hooghoudt further teaches that the reactor may further comprise at least one of a controller, such as a pressure controller, a temperature controller, a regulator, a valve, a pump, a heater, a cooler, and a sensor (Hooghoudt; paragraph [0087]). In a PET depolymerization reaction example, Hooghoudt teaches that the reaction was followed in time by taking in-process-control samples to measure the concentration of BHET produced as a function of time by HPLC (Hooghoudt; paragraph [0135]).
Thus, the process of Hooghoudt is analgous to the PET depolymerization process of Atkins and Shuji, and Hooghoudt teaches that the reactor system may further comprise a controller, as recited in the instant claim. Furthermore, Hooghoudt also teaches the monitoring of BHET over time during the depolymerization reaction, and Atkins in view of Shuji teaches that the amount of BHEET recycled to the reactor could be monitored and adjusted by the purging step of Atkins through means of routine optimization, as discussed in the rejections of claims 22-23 above.
Therefore, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Atkins and Shuji to incorporate the teachings of Hooghoudt to implement a controller unit that measures the BHEET-mass fraction relative to the BHET-mass fraction in the depolymerized product stream, and a controller unit configured to control the purging the mass fraction of BHEET in the recycle stream (the BHEET-depeleted) stream to arrive at a reactor system that can control the BHEET impurity levels in real time with improved efficiency with a reasonable expectation of success. See MPEP § 2143(I)(A). Furthermore, as detailed in claim 23 above, the purge percentage can be adjusted through means of routine optimization based on the amount of BHEET present in the depolymerized product stream. See MPEP § 2144.05.
Based on the combined teachings of the references, the Examiner submits that a person of ordinary skill in the art would have had a reasonable expectation of success of arriving at the instantly claimed method and reactor system. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, and absent a clear showing of evidence to the contrary.
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 1-16 and 22-30 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 and 24-32 of copending Application No. 18/572,470.
Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding instant claim 1, claim 1 of copending Application No. 18/572,470 teaches every limitation of instant claim 1, the only difference being the catalyst is further limited as a reusable catalyst complex that is capable of catalyzing degradation of the polymer into oligomers and/or monomers, wherein the catalyst complex comprises a catalyst entity, a metal containing nanoparticle, and a bridging moiety connecting the catalyst entity to the metal containing nanoparticle. However, examined claims which are generic to (broader than) a claim in the potential reference patent or copending application are anticipated by the reference claim. See MPEP § 802(II)(B)(2) and MPEP § 2131.
Regarding instant claims 2-7, claims 2-7 of copending Application No. 18/572,470 teaches every limitation of instant claims.
Regarding instant claim 8, claim 8 of copending Application No. 18/572,470 teaches every limitation of instant claim, with the exception of decreasing the temperature to below 160 ºC. Instead, claim 8 of copending Application No. 18/572,470 teaches decreasing the temperature to below 85 ºC. However, this temperature range overlaps with the instantly claimed range. MPEP § 2144.05(I) states that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.”
Regarding instant claims 9-16, claims 9-16 of copending Application No. 18/572,470 teaches every limitation of instant claims.
Regarding instant claim 22, claim 24 of copending Application No. 18/572,470 teaches every limitation of instant claim 1, the only difference being the catalyst is further limited as a reusable catalyst complex. However, examined claims which are generic to (broader than) a claim in the potential reference patent or copending application are anticipated by the reference claim. See MPEP § 802(II)(B)(2) and MPEP § 2131.
Regarding instant claims 23-30, claims 25-32 of copending Application No. 18/572,470 teaches every limitation of instant claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/D.R./Examiner, Art Unit 1692
/AMY C BONAPARTE/Primary Examiner, Art Unit 1692
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