DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 112
Claims 1-15 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.
In claim 1, lines 6-7 and 9-10, it is unclear whether the term “recycled” is qualifying only the “post-industrial” PET, and not also the antecedently-recited “post-consumer” PET and “pre-consumer” PET.
In claim 1, it is unclear what is meant by a “pre-consumer” PET.
In claim 1, lines 7 and 10, it is unclear what is meant by “PCR”.
In claim 1, the recitation “wherein the PBT moiety comprises PBT derived from post-consumer, pre-consumer or post-industrial recycled (PCR) polyethylene terephthalate (PET)” is indefinite in that it is unclear whether the PBT moiety also includes a PET moiety.
In claims 3 and 12, it is unclear how the depolymerization of PCR PET yields the amide group-containing component bis (2-hydroxy ethylene)terephthalamide (BHETA).
In claim 10, it is unclear if “about” 9 wt.% can be greater than 9 wt.%, in which case it would not have express antecedent basis from claim 1.
In claim 11, PBT is not defined.
In claim 11, line 6, it is unclear whether the term “recycled” is qualifying only the “post-industrial” PET, and not also the antecedently-recited “post-consumer” PET and “pre-consumer” PET.
In claim 11, line 6, it is unclear what is meant by “PCR”.
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.
Claims 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over US 2008/0023887 (Vollenberg ‘887) as evidenced by US 2010/0168321 (Cahoon-Brister) in view of WO 2020/144644 A1 (Vollenberg ‘644).
Initially, it is noted that product claims 1-10 are claimed in a product-by-process claim format. Thus, the patentability of the claimed products would not appear to depend on the various “formed according to a process” and “derived from” process limitations. Case law holds that “If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 227 USPQ 964.
Vollenberg ‘887 discloses a composition comprising:
a copolyetherester comprising a polybutylene terephthalate (PBT) block and a polyalkylene oxide block such as polybutylene oxide (PTHF), wherein the PBT is preferably derived from recycled polyethylene terephthalate (PET);
a polyester; and
additives such as titanium dioxide (e.g., abstract, [0021], [0038-0044], examples, Table 2, claims).
Vollenberg ‘887 does not disclose the purity of the terephthalic moiety used in the formation of the PBT but discloses that the recycled PET is “processed to remove impurities…and other contaminants” [0036].
In Table 2, Vollenberg ‘887 sets forth compositions (Example 2 and Comparative Example 2) comprising, inter alia:
“TPEE derived from PCR-PET” or “Hytrel 4056” copolyetherester comprising PBT and PTHF blocks (note - Hytrel 4056 is a PBT/PTHF copolymer as evidenced by Cahoo-Brister [0135]) (either structurally meets Applicants’ copolyester elastomer comprising a PBT moiety and an elastomer moiety derived from PTHF);
0.25 wt.% titanium dioxide colorant (meets Applicants’ brightening agent and content thereof).
Notably, the terephthalic moiety of the “TPEE derived from PCR-PET” is derived from recycled PET and that of the “Hytrel 4056” is derived from pre-consumer PET.
In essence, Vollenberg ‘887 differs from product-by-process claim 1 in neither defining the purty of the terephthalic moiety forming the PBT nor the L* color value of the composition. With respect to the first difference, given that Vollenberg ‘887 prescribes the use of PET components wherein the impurities and contaminants have been removed [0036], it would have been obvious to one having ordinary skill in the art to use a terephthalic moiety of high purity (inclusive of that presently claimed) for its expected additive effect and with the reasonable expectation of success. In this regard, Vollenberg ‘644 teaches the conventionality of depolymerizing PCR PET to form a high purity terephthalic moiety with a purity of at least about 95% [0035], i.e., bis(2-hydroxyethyl)terephthalate (BHET), for producing a PBT composition having a bright white color, i.e., a L* color value of at least about 94 [0005]. Notably, Vollenberg ‘644 (Table 1) shows that compositions comprising virgin PBT or PBTs from PCR PET with a low and high purity (30-36%, 60-80% or greater than 95%) and titanium dioxide all exhibit a L* value of at least 91.6. Thus, it would have been within the purview of one having ordinary skill in the art to formulate compositions per Vollenberg ‘887 wherein the terephthalic moiety of the PBT has a purity of at least about 95% and the compositions exhibit a L* color value falling within the presently claimed scope with the reasonable expectation of success.
As to product-by-process claim 2, Vollenberg ‘644 (Table 1) shows that compositions comprising virgin PBT or PBTs from PCR PET with a low and high purity (30-36%, 60-80% or greater than 95%) and titanium dioxide all exhibit a L* value of at least 91.6. Thus, it would have been within the purview of one having ordinary skill in the art to formulate compositions per Vollenberg ‘887 wherein the terephthalic moiety of the PBT has a purity of at least about 95% and the compositions exhibit a L* color value falling within the presently claimed scope with the reasonable expectation of success.
As to product-by-process claims 3 and 4, Vollenberg ‘644 discloses PBT formed by polymerizing BHET and butane diol, wherein the BHET is derived by depolymerizing PCR PET.
As to product-by-process claim 5, Vollenberg ‘887 discloses the butane diol can also be derived from a biomass [0045].
As to product-by-process claim 6, Vollenberg ‘644 teaches BHET with a purity of at least about 95%.
As to product-by-process claims 7 and 8, Vollenberg ‘887 expressly uses PTHF for producing the polyalkylene oxide (elastomeric) block.
As to product-by-process claim 9, Vollenberg ‘887 discloses the PTHF can also be derived from a biomass [0045].
As to product-by-process claim 10, Vollenberg ‘887 expressly exemplifies titanium dioxide (Table 2).
As to process claim 11, Vollenberg ‘887 discloses forming a copolyetherester comprising (1) forming a PBT moiety and (2) polymerizing the PBT moiety with a polyalkylene oxide to give rise to a copolyetherester comprising a PBT block and a polyalkylene oxide (elastomeric) block, wherein the terephthalic moiety of the PBT is derived from PET. Given that Vollenberg ‘887 prescribes the use of PET components wherein the impurities and contaminants have been removed [0036], it would have been obvious to one having ordinary skill in the art to use a terephthalic moiety of high purity (inclusive of that presently claimed) for its expected additive effect and with the reasonable expectation of success. In this regard, Vollenberg ‘644 teaches the conventionality of depolymerizing PCR PET to form a high purity terephthalic moiety with a purity of at least about 95% [0035] to obtain a composition with good color properties.
As to process claims 12-14, Vollenberg ‘877 discloses BHET is obtained by depolymerizing recycled PET [0015-0016]. The BHET is polymerized with butane diol to form the PBT moiety.
As to process claim 15, Vollenberg ‘887 expressly uses PTHF for producing the polyalkylene oxide block.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ana L Woodward whose telephone number is (571)272-1082. The examiner can normally be reached M-F 8am-5pm.
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/ANA L. WOODWARD/Primary Examiner, Art Unit 1765
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