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 .
Information Disclosure Statement
The submitted IDS(s) cite copending applications. Only the filed claims, specification and drawings (if present) were considered. Pursuant to MPEP 609.04(a)(II), any information that is not part of the specification, claims, and drawings (e.g. an Office Action, remarks in an amendment paper, cited references, etc.) that Applicant wishes the Examiner to consider must be specifically cited in an IDS and a legible copy of such material must be provided.
Various foreign references were lined through within the submitted IDS(s) and not considered because either 1) a copy of the foreign reference was not provided or 2) although a description of relevance in the form of translations were provided, 37 CFR 1.98(a)(2)(i) requires a legible copy of each foreign patent as well (the original untranslated versions).
Various non-patent literature references were lined through within the submitted IDS(s) and not considered because either 1) a legible copy of the NPL document was not provided or 2) the NPL document is in a non-English language and a concise description of relevance or translation was not provided.
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 1-20 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.
Claim 1 refers to waste carpet fiber composition comprising 6 wt% or less of ash, which literally suggests compositions containing combustion residues (e.g. ash resulting from burning other materials). However, the terminology appears to refer to the inorganic residues remaining after the waste carpet fiber composition itself is subjected to combustion, more specifically in air at 800 degrees C for 3 hours. The discrepancy between the claim language and specification renders the intended scope of the claim unclear.
As claims 2-20 depend from claim 1, they are rejected for the same issue discussed above.
Attempts to claim a process without setting forth any steps involved in the process generally raises an issue of indefiniteness under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, particularly when a claim merely recites a use without any active, positive steps delimiting how this use is actually practiced. MPEP 2173.05(q). Claim 19 pertains to a process for preparing a polyester, but the only perceived process step is “using” purified EG/DMT or recycled TPA to prepare the polyester without setting for any active, positive steps delimiting how this use is actually practiced. Accordingly, the intended scope of the claim is unclear.
Claims 19 and 20 refer to the purified EG/DMT from the process of claim 15, but the purification of these materials appears to be optional within claim 15. It is therefore unclear whether the relevant process steps within claims 19 and 20 are required or not. For instance, if a process achieves purified EG, but not purified DMT is both the related limitations of claim 19 (option 2 requiring only “purified DMT”) and claim 20 also met?
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.
Claim(s) 1-9 and 12-19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Schmidt (US 2016/0326335 A1).
Regarding Claims 1-6, Schmidt teaches methods for forming aromatic diacid or precursors thereof from waste polyester feedstock (Abstract). Examples are taught where waste with PET content of 90 wt% or more and an inorganic content of less than or equal to 2 wt% is provided, the PET is reacted with methanol to produce DMT and EG, and the DMT and EG are recovered (¶ 60-61). DMT yield is non-quantitative (Tables 2 and 3), implying the presence of oligomeric impurities in the crude reaction mixtures. Since the original material contained less than or equal to 2 wt% of inorganics, the amount of inorganic ash after combustion would be 6 wt% or less. Schmidt teaches the polyester within the feedstock is most preferably post-consumer rigid polyesters, post-consumer polyester carpet, or combination thereof (¶ 30). Thus, Schmidt anticipates a waste mixture that is a carpet fiber composition.
Regarding Claim 7, the terms “post-consumer” and “post-industrial” is seen to be referring to the sourcing of polyester waste material. Since there is no perceivable difference in structure between the “post-consumer” carpeting and “post-industrial” carpeting within the claims, Schmidt’s carpeting material is seen to meet the claim.
Regarding Claims 8 and 9, Schmidt teaches examples where waste has a PET content of 90 wt% or more (Table 1), the PET being poly(ethylene terephthalate (¶ 30). Quantities of polymers with isophthalic acid or 1,3-propanediol residues are not indicated, of which the content of “polymers other than PVC” is less than or equal to 3 wt%. Thus, Schmidt is seen to suggest compositions consistent with the concentration ranges claimed.
Regarding Claim 12, Schmidt teaches the further inclusion of ester exchange catalyst (¶ 44-45).
Regarding Claim 13, Schmidt teaches the use of methanol at 160-200 degrees C under pressure at 17-39 bar (¶ 59), construed as superheated methanol.
Regarding Claim 14, Schmidt describes a batch process (¶ 59-61). Since two moles of methanol is required to produce one mole of DMT, the ratio of consumed methanol to DMT generated at the conclusion of the reaction is roughly 2.
Regarding Claims 15 and 16, Schmidt teaches purification of DMT and EG via distillation (¶ 61). The purified forms of the monomers are deemed to be “virgin-quality”.
Regarding Claims 17 and 18, Schmidt teaches the polyester within the feedstock is most preferably post-consumer rigid polyesters, post-consumer polyester carpet, or combination thereof, the rigids being bottles or thermoforms (¶ 30), the polyester impurities being flake form (¶ 31).
Regarding Claim 19, Schmidt teaches the DMT can be used to create fresh polyester material such as PET, such as via reacting DMT with water to form TPA whcih in turn reacts with EG to form PEG (¶ 50, 54).
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.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schmidt (US 2016/0326335 A1).
Schmidt teaches methods for forming aromatic diacid or precursors thereof from waste polyester feedstock (Abstract). Examples are taught where waste with PET content of 90 wt% or more and an inorganic content of less than or equal to 2 wt% is provided, the PET is reacted with methanol to produce DMT and EG, and the DMT and EG are recovered (¶ 60-61). DMT yield is non-quantitative (Tables 2 and 3), implying the presence of oligomeric impurities in the crude reaction mixtures. Since the original material contained less than or equal to 2 wt% of inorganics, the amount of inorganic ash after combustion would be 6 wt% or less. Schmidt teaches the polyester within the feedstock is most preferably post-consumer rigid polyesters, post-consumer polyester carpet, or combination thereof (¶ 30). Thus, Schmidt anticipates a waste mixture that is a carpet fiber composition.
Regarding Claim 10, while not describing particular nitrogen contents, the mere purity of a product, by itself, does not render an otherwise known product nonobvious, particularly where the same utility/process is described. MPEP 2144.04(VII) and 2116.01. In the present case, Schmidt pertains to the depolymerization of waste polyesters such as PET and further purification of obtained monomers (Abstract; Examples). Thus, it would have been obvious to one of ordinary skill in the art to utilize purer forms of PET (i.e. 0 ppm nitrogen) or slightly impure forms (trace quantities of nitrogen) with the general expectation that one would still obtain workable purified monomers for re-use.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schmidt (US 2016/0326335 A1) in view of Sharpe (WO 2021/126661 A1).
The discussion regarding Schmidt wtihin ¶ 26-27 is incorporated herein by reference.
Regarding Claim 11, Schmidt differs from the subject matter claimed in that densified carpet fibers are not described. Sharpe also pertains to the chemical recycling of waste materials, inclusive of carpet fibers (Abstract; Examples; ¶ 15). Sharpe teaches carpet fibers can be pelletized and subsequently ground to powder prior to methanolysis treatment (¶ 15), construed as densified carpet fibers. It would have been obvious to one of ordinary skill in the art to pelletize/grind the fibers of Schmidt prior to methanolysis treatment, thereby creating a handleable feedstock material with a relatively large surface area for reaction/treatment.
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schmidt (US 2016/0326335 A1) in view of Yang (CN112646135A). As the cited CN publication is in a non-English language, a machine-translated version of the publication will be cited to.
The discussion regarding Schmidt wtihin ¶ 26-27 is incorporated herein by reference.
Regarding Claim 20, Schmidt teaches the DMT can be used to create fresh polyester material such as PET. Schmidt differs from the subject matter claimed in that a particular process where purified DMT is reacted with EG to form BHET/oligomers, which are subsequently polycondensed to form PET is not described.
Yang also pertains to methanolysis of waste polyester materials and subsequent polymerization to PET (¶ 4, 15). Yang teaches it was known obtained DMT can be transformed into recycled PET via combining purified DMT with virgin EG, reacting to form BHET/oligomers, and subsequently polycondensing to PET (¶ 39). It would have been obvious to one of ordinary skill in the art to utilize known re-polymerization protocols such as those taught by Yang using the materials of Schmidt, thereby predictably affording recycled polyesters for re-use as taught by Yang.
Claim(s) 1-10, 12-14, and 16-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Corbin (U.S. Pat. No. 5,538,776) in view of Essaddam (US 2020/0299481 A1).
Regarding Claims 1-3, Corbin teaches methods of recycling polyester carpets (Abstract), whereby the carpets are entirely made of polyester to facilitate recycling (Col. 2, Lines 59-61). The polyesters used include polyethylene terephthalate, copolymers of polyethylene terephthalate, and polybutylene terephthalate (Col. 3, Lines 10-19; Col. 3, Lines 64 to Col. 4, Line 6), all of which are within the scope of PET in the claims (¶ 18 of the specification) and thus, the carpets are construed as roughly 100 wt% “PET” and roughly 0 wt% of ash.
Corbin teaches the carpets are recyclable via methanolysis to DMT and glycol (Col. 6, Lines 18-20). Corbin differs from the subject matter claimed with respect to particular methanolysis protocol claimed. Essaddam teaches methods of forming DMT and EG from polyester wastes (Abstract; ¶ 3-11). The protocols are high yielding and cost effective to produce DMT and EG from waste PET (¶ 56). It would have been obvious to one of ordinary skill in the art to apply the recycling protocols of Essaddam toward the carpets of Corbin because doing so would provide DMT and EG In high yields in a cost effective manner as taught by Essaddam. Essaddam teaches reacting PET with methanol to provide DMT and EG, the former being provided in non-quantitative yield (¶ 111-112), implying the presence of oligomeric impurities in the crude reaction mixtures.
Regarding Claim 4, the all-polyester carpets of Corbin are seen to have 0 wt% of inorganic residue ash. Thus, Corbin differs from the subject matter claimed with respect to being just out of the ranges claimed. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close to the extent similar properties or characteristics would be expected. MPEP 2144.05(I). It would have been obvious to one of ordinary skill in the art that waste carpets of Corbin containing trace quantities of inorganic ash residues would nonetheless be capable of being recycled by the process of Essaddam. See for instance ¶ 58 of Essaddam.
Regarding Claims 5-7, the terms “post-consumer” and “post-industrial” is seen to be referring to the sourcing of polyester waste material. The waste carpet structures of Corbin are seen to be no different in structure than what is set forth within the claims with respect to “post-industrial” or “post-consumer” fiber compositions. Corbin teaches carpet structures through stages of manufacture as well as the final carpet structure. It would have been obvious to one of ordinary skill in the art that any of such waste carpet materials can be subject to the recycling protocol of Essaddam, thereby affording DMT/EG for re-use.
Regarding Claims 8 and 9, Essaddam teaches the polyester feedstocks may comprise between about 5% to about 30% of contaminates (¶ 58), which suggests overlapping ranges. It would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Essaddam suggests the claimed range. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Essaddam. See MPEP 2123.
Regarding Claim 10, while not describing particular nitrogen contents, the mere purity of a product, by itself, does not render an otherwise known product nonobvious, particularly where the same utility/process is described. MPEP 2144.04(VII) and 2116.01. In the present case, Essaddam pertains to the depolymerization of waste polyesters such as PET and further purification of obtained monomers (Abstract; Examples). Thus, it would have been obvious to one of ordinary skill in the art to utilize purer forms of PET (i.e. 0 ppm nitrogen) or slightly impure forms (trace quantities of nitrogen) with the general expectation that one would still obtain workable purified monomers for re-use.
Regarding Claim 12, Essaddam teaches the use of ester exchange catalysts (¶ 69, Examples).
Regarding Claim 13, Essaddam teaches embodiments where methanol mixtures are heated to temperatures in excess of methanol’s boiling point (c.a. 65 degrees C) (¶ 110, 16-18), construed as superheated methanol.
Regarding Claim 14, since two moles of methanol is required to produce one mole of DMT, the ratio of consumed methanol to DMT generated at the conclusion of the reaction is roughly 2.
Regarding Claim 16, DMT and EG can be obtained with less than 0.1 wt% impurities (¶ 61, 66), construed as virgin-quality materials.
Regarding Claims 17 and 18, Essaddam teaches the depolymerization protocols are applicable toward various PET products such as bottle containers, carpets, and films (¶ 3-5). While not describing combinations of materials, it is well settled that it is prima facie obvious to combine two ingredients, each of which is targeted by the prior art to be useful for the same purpose. In re Crockett, 279 F.2d 274, 126 USPQ 186 (CCPA 1960). Ex parte Quadranti, 25 USPQ2d 1071 (Bd. Pat. App. & Inter. 1992). Also, case law holds that “it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). It would have been obvious to one of ordinary skill in the art that combinations of PET waste materials can be used within the protocols of Essaddam with the general expectation of obtaining DMT and EG for reuse.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Corbin (U.S. Pat. No. 5,538,776) in view of Essaddam (US 2020/0299481 A1) and Sharpe (WO 2021/126661 A1).
The discussion regarding Corbin and Essaddam within ¶ 36-46 is incorporated herein by reference.
Regarding Claim 11, Corbin/Essaddam differs from the subject matter claimed in that densified carpet fibers are not described. Sharpe also pertains to the chemical recycling of waste materials, inclusive of carpet fibers (Abstract; Examples; ¶ 15). Sharpe teaches carpet fibers can be pelletized and subsequently ground to powder prior to methanolysis treatment (¶ 15), construed as densified carpet fibers. It would have been obvious to one of ordinary skill in the art to pelletize/grind the fibers of Corbin prior to methanolysis treatment, thereby creating a handleable feedstock material with a relatively large surface area for reaction/treatment.
Claim(s) 15, 19, and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Corbin (U.S. Pat. No. 5,538,776) in view of Essaddam (US 2020/0299481 A1) and Yang (CN112646135A). As the cited CN publication is in a non-English language, a machine-translated version of the publication will be cited to.
The discussion regarding Corbin and Essaddam within ¶ 36-46 is incorporated herein by reference.
Regarding Claims 15, 19, and 20, Essaddam differs from the subject matter claimed in that purification via crystallization/distillation and subsequent re-use in polyester resins is not described. Yang also pertains to methanolysis of waste polyester materials and subsequent polymerization to PET (¶ 4, 15). Yang teaches it was known EG/DMT can be purified via distillation/crystallization, whereby the obtained DMT can be transformed into recycled PET via combining purified DMT with virgin EG, reacting to form BHET/oligomers, and subsequently polycondensing to PET (¶ 39). It would have been obvious to one of ordinary skill in the art to utilize known purification / re-polymerization protocols such as those taught by Yang using the materials of Essaddam, thereby predictably affording recycled polyesters for re-use as taught by Yang.
Conclusion
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/STEPHEN E RIETH/Primary Examiner, Art Unit 1759
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