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
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 1-23 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.
With regard to claim 1, claim 1 recites performing one-step reaction of alcoholysis of a first polyester and transesterification of a second polyol using a first polyol coordinated titanium compound catalyst. It is unclear from this language what materials participate in teach rection and what is meant by the recited “one step reaction”.
In particular, it is unclear whether the recited “transesterification of a second polyol” means that the second polyol itself is being transesterified or that the second polyol is a reactant used to transesterify the first polyester. Moreover, it is unclear how the recited first polyol relates to the second polyol since the first polyol appears in the phrase defining the titanium compound catalyst, whereas the second polyol appears in the recited transesterification.
Consequently, claim 1 does not clearly define the respective roles of the first polyol, the second polyol and the first polyol coordinated titanium compound catalyst. Note claims 2-23 depend upon claim 1, therefore contain the same unclear limitation.
Thus, for purposes of examination, the Examiner is interpreting the claim as broadly requiring a polyester and a polyol undergoing an alcoholysis- transesterification reaction in the presence of a polyol coordinated titanium compound catalysts.
Claim 9 recites the limitation "system" in line 1. There is insufficient antecedent basis for this limitation in the claim. Claim 9 recites “The system of claim 1” although claim 1 is directed to a method and no system is mentioned therein.
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 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/process/file/efs/guidance/eTD-info-I.jsp.
Claim 23 rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. USP11919988.
The claims of USP11919988 are directed to a thermoplastic polyethers ester elastomer composition product. Claim 23 of the present application is directed to regenerated thermoplastic elastomer prepared by the method of claim 1.
Although claim 23 is a product-by-process and thus the claim is not limited to the manipulations of the recited steps of claim 1, only the structure of the implied by the steps. The regenerated thermoplastic elastomer of claim 23 has not been shown to be patentably distinct from the thermoplastic polyether ester elastomer composition product claimed in the related application 17/369,584.
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) 1-23 s/are rejected under 35 U.S.C. 103 as being unpatentable over KR20090108047 see abstract, page 3 lines 3-16 and 29 page 4 lines 25-26, page 5 lines 8-15, page 10 lines 8-30.and Example 1, page 11 lines 33-37 in view of Hyung Kyun Yu et al. see pages 176, 179 and page 181 Scheme 1.
Claim 1 is directed to a method for manufacturing a recycled thermoplastic elastomer, comprising steps: a) performing one-step reaction of alcoholysis of a first polyester and transesterification of a second polyol by using a first polyol coordinated titanium compound catalyst; and b) recovering the second polyester obtained from the one-step reaction of alcoholysis and transesterification.
*As noted in the 112 rejection above, since the claim does not make it clear whether what the “one-step reaction” requires, the Examiner is interpreting it broadly as a reaction process involving alcoholysis of the polyester and transesterification involving the polyol.
KR20090108047 discloses processes for making elastomeric polyether esters from polyesters and polyols are provided. The processes can offer a reduction in manufacturing cost, energy use and a lower environmental footprint than conventional processes, particularly when the processes utilize post-consumer polyesters as starting materials. Specifically, the method comprises contacting a polyester with at least one diol and at least one polyol at elevated temperatures in the presence of a catalyst for a transesterification reaction, wherein the catalyst comprises titanium. See page 3 lines 3-16 and 29 page 4 lines 25-26, page 10 lines 25, 30 and example 1.
Although KR20090108047 discloses titanium catalyst, KR20090108047 does not disclose the polyol coordinated titanium compound catalyst as claimed.
Note however, that Hyung Kyun Yu et al. discloses multi-faceted microstructures of titanium glycolate produced by room-temperature polyol process in which titanium alkoxide and polymethylene glycol is mixed rigorously and then the mixture was aged to settle down as white precipitate. Depending on types of titanium alkoxides and polymethylene glycols, stirring time, and composition, a variety of polygonal microrods were generated. See abstract, On page 176 Yu et al. discloses that titanium alkoxides react with glycols to form the corresponding glycolates, and specifically says titanium glycolates were formed from titanium alkoxides and polyethylene glycols. On page 179 the reference discusses residual ethylene glycol units or alkyl groups “chemically bound to titanium”.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use the polyol-coordinated titanium compound taught by Yu et al. as the titanium catalyst in the process of KR20090108047 since KR20090108047 already uses a titanium catalyst in a polyester/polyol reaction, and Yu et al. discloses a known titanium -polyol complex.
Claim 2 is directed to the method of claim 1, wherein the coordination ratio of the titanium compound catalyst the first polyol to is about 1:1 to about 3:1.
KR20090108047 discloses using molar ratios including polyol and titanium compound on page 10 lines 14-16 which overlaps that which is claimed. Yu et al. discloses the formation of titanium glycolates from titanium alkoxides and glycols. See pages 176 and 181-182. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to employ the ratio as claimed since the relative amount of titanium compound and polyol used falls within or overlaps that which is claimed and the formation of a known titanium glycolate complex would have been a result of routine optimization.
Claim 3 is directed to the method of claim 1, wherein the first polyol is selected from the group consisting of xylitol, sorbitol, maltitol, erythritol and mannitol.
KR20090108047 discloses the use of sorbitol as a usable polyol. See page 6 line 24. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention since the reference teaches sorbitol as a known polyol for the polyester process.
Claim 4 is directed to the method of claim 1, wherein the first polyol coordinated titanium compound catalyst is prepared by adding an alkali metal salt for reaction. KR20090108047 discloses the use of metal salts on page 7 lines 41-42.It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention since 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 5 is directed to the method of claim 1, wherein the first polyol coordinated titanium compound catalyst is prepared in alcohol/water solvent system for reaction.
KR20090108047 discloses the use of an organic solvent including 1,3, propane diol with titanium catalysts. See page 10 lines 17-28.
Claim 6 is directed to the method of claim 1, wherein the first polyol coordinated titanium compound catalyst is prepared by reacting at a reaction temperature of about 0°C to about 1000C.
KR20090108047 discloses the preparing of titanium compound at about 0-150C which overlaps the claimed range. See page 10 lines 8-9.
Claim 7 is directed to the method of claim 1, wherein the first polyol coordinated titanium compound catalyst is prepared by reacting in a reaction time of about 2 hours to about 8 hours. Although neither reference gives the reaction time for preparing the catalysts. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to employ particular parameters as known in the art, since 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 8 is directed to the method of claim 1, wherein the first polyol coordinated titanium compound catalyst is added in an amount of about 0.01 mmol to about 1 mmol.
KR20090108047 discloses titanium catalyst amounts of about 2-400ppm. See page 10, Example 1 and page 11.
Claim 9 is directed to the system of claim 1, wherein the first polyester is selected from the group consisting of polyethylene terephthalate (PET), polytrimethylene terephthalate (PTT), polybutylene terephthalate (PBT), polycyclohexylenedimethylene terephthalate (PCT), poly(ethylene 2,6-naphthalate) (PEN) and polyethylene-1,2-bis(2-chlorophenoxy)ethane-4,4'- dicarboxylate.
KR20090108047 discloses the use of polyethylene terephthalate, polytrimethylene terephthalate and polybutylene terephthalate and other polyesters therein. See page 5 lines 8-15.
Claim 10 is directed to the method of claim 1, wherein the second polyol is selected from the group consisting of ethylene glycol, propylene glycol and butylene glycol.
KR20090108047 discloses ethylene glycol, propylene glycol and butylene glycol. See page 5 lines 33-37 and page 6 lines 8-24.
Claim 11 is directed to the method of claim 1, wherein the first polyester is selected from the group consisting of polyethylene terephthalate (PET), polytrimethylene terephthalate (PTT) and polybutylene terephthalate (PBT).
KR20090108047 discloses on page 5 lines 8-15 discloses PET, PTT and PBT.
Claim 12 is directed to the method of claim 1, wherein the reaction temperature of step a) is about 190°C to about 240°C.
See KR20090108047 page 10 lines 39-42 and Example 1, page 11 lines 33-37.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention since the ref3enre c teaches a transesterification temperature that overlaps the claimed range and specifically 240C.
Claim 13 is directed to the method of claim 1, wherein the reaction pressure of step a) is about 1 atm to about 2.5 atm.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to employ particular parameters as known in the art, since 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 14 is directed to the method of claim 1, wherein the reaction time of step a) is about 2 hours to about 8 hours.
See KR20090108047 example 1 page 11 lines 33-37.
Claim 15 is directed to the method of claim 1, further comprising a step: c) adding about 20 to about 80wt.% of a polyol polymer for reaction to obtain a regenerated thermoplastic elastomer.
See KR20090108047 page 7, lines 30-40, example 1 page 11 lines 26 -37.
Claim 16 is directed to the method of claim 15, wherein the carbon number of the polyol polymer in step c) is 2 to 7.
See KR20090108047 page 8 lines 26-31.
Claim 17 is directed to the method of claim 15, wherein the molecular weight of the polyol polymer in step c) is about 200 to about 10,000 g/mol.
See KR20090108047 page 8 lines 37-42.
Claim 18 is directed to 18 the method of claim 15, wherein the reaction temperature of step c) is about 220 to about 280°C.
See KR20090108047 page 8 lines 37-42.
Claim 19 is directed to the method of claim 15, wherein the reaction pressure of step c) is less than about 1 atm.
See KR20090108047 page 8 lines 37-42.
Claim 20 is directed to 20 the method of claim 15, wherein the reaction time of step c) is about 2 hours to about 6 hours.
See KR20090108047 Example 1.
Claim 21 is directed to the method of claim 15, wherein step c) further comprises adding about 0.5 wt.% to about 5 wt.% of an additive.
See KR20090108047 page 8 lines 13-17.
Claim 22 is directed to 22 the method of claim 15, wherein the additive is selected from the group consisting of an antioxidant, an ultraviolet absorber and a cross-linking agent.
See KR20090108047 page 8 lines 13-17.
Claim 23 is directed to a regenerated thermoplastic elastomer prepared by the method according to claim 1.
See KR20090108047 abstract and Example 1.
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.
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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.
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/Terressa Boykin/Primary Examiner, Art Unit 1765
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