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 .
Abstract
Applicant is reminded of the proper language and format of an Abstract of the Disclosure. The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 250 words.
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 obviousness-type 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); and 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 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.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims of copending Application No. 18703825, 18703837 and 18703849 (reference applications). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Copending Application No. 18703837 and Copending Application No. 18703849 claim a process that includes depolymerizing a polyester with one or more glycols, subjecting the resulting liquid component to alcoholysis to produce one or more dialkyl terephthalates and separating the dialkyl terephthalates by solid-liquid separation. Similarly copending Application No. 18703825 claims depolymerizing a polyester using one or more glycols and methanol cooling the resulting mixture, subjecting at least a part of the mixture to alcoholysis to produce one or more dialkyl terephthalates, and separating the dialkyl terephthalates by solid liquid separation. The claimed temperature and pressure ranges overlap the corresponding ranges recited in claim 1 of the present application. Although claim 1 of the present application further specifies a TMCD-containing polyester, ethylene glycol and or methanol, catalysts, and particular reaction conditions, these limitations represent obvious selections of the polyester reactants and operating conditions for carrying out the same recovery process.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over USP5236959 see abstract, cols 1-4, Examples and claims; in view of WO2013025186 see paragraphs [0002], [0006], and [0034].
With regard to claim 1, USP5236959 discloses a process for recovering dimethyl terephthalate from a polyester composition. See abstract. The reference teaches exposing a polyester and cotton component and a liquid component containing ethylene glycol and polyester depolymerization products. The reaction is conducted at approximately atmospheric pressure and 195C to 200C for five hours. See claim 32. The mixture is then cooled and filtered to separate the solid cotton component from the liquid component containing ethylene glycol and BHET. See col. 3 lines 49-60, Examples and claims 1-7. The reference further teaches exposing the recovered liquid component to methanol and sodium carbonate. See col. 3 lines 34-38, 51, and col. 4 line 66. The recovered liquid component is brought to the lower temperature used for the methanolysis reaction, thereby cooling it below 150C. the methanolysis reaction is conducted at approximately 40C to the reflux temperature of methanol, at atmospheric pressure, for approximately 30 minutes. The reaction produces DMT which is separated from the liquid by suction filtration. See Example.
USP5236959 does not disclose that the polyester composition comprises a TMCD containing polyester.
WO2013025186 discloses that TMCD was a known monomer used in preparing terephthalate copolyesters. See paragraph [0002]. The reference further teaches that polyester includes copolyesters, paragraph [0034], that polyester depolymerization methods can accept a broad range polyester waste materials, paragraph [0005], and that methanolysis and glycolysis techniques used for PET are also useable for other polyester materials. See paragraph [0006].
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use a known TMCD containing terephthalate copolyester as the polyester component in the process of USP5236959 because WO2013025186 discloses that the same depolymerization techniques are useable for polyester materials other than PET. One of ordinary skill in the art would have had a reasonable expectation of recovering dimethyl terephthalate from the terephthalate component of the TMCD containing copolyester.
With regard to claim 2, USP5236959 discloses using an amount of alcohol that is about three to four times the weight to the polyester containing feedstock which overlaps the claimed range of 2:1 to 4:1. See col. 3 lines 30-55. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use this ratio with the TMCD containing polyester because it provides the appropriate amount of alcohol for depolymerization.
With regard to claim 3, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention since USP5236959 discloses that the first alcohol may be ethylene glycol, methanol or another dialcohol, preferably ethylene glycol and falls within the ratio of 10 to 0.10. See col. 3 lines 1-30.
With regard to claim 4, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention since USP5236959 discloses selecting the amount of alcohol that is about three to four times the weight of the feedstock. See col. 3 lines 30-55. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use an alcohol to polyester ratio within the claimed range of 2:1 to 10:1 because the amount of alcohol is routinely selected to provide sufficient alcohol for the reaction.
With regard to claim 5, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention since USP5236959 discloses processing polyester feedstock containing cotton and also shows other polymers and metallic materials as foreign materials hat may be present in the feedstock. See col. 3 lines 5-18. The reference also discloses filtering the first mixture to separate the cotton from the liquid containing the polyester oligomers. See col. 3 line 60- col. 4 lines 4-5 and Examples ( col. 4 lines 43-54).
With regard to claim 6, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention since USP5236959 discloses processing polyester feedstock containing cotton and also shows other polymers and metallic materials as foreign materials that may be present in the feedstock. See col. 3 lines 5-18.
With regard to claim 7, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention since USP5236959 discloses using sodium carbonate, lithium carbonate, sodium hydroxide or lithium hydroxide as the depolymerization catalysts. See col. 3 lines 36-38.
With regard to claim 8, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention since USP5236959 discloses using the depolymerization catalyst in an amount of about 0.25wt% relative to the polyester feedstock which falls within the claimed range 0.1wt% to 10wt%. see col. 3 lies 39-44.
With regard to claim 9, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention since USP5236959 discloses sodium methoxide as an alcoholysis catalyst. See claims 4, 7 and 11.
With regard to claim 10, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention since USP5236959 discloses using sodium carbonate as the catalyst for the second alcoholysis. See col. 4 line 64-col. 5 line 8.
With regard to claim 11, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention since USP5236959 discloses depolymerizing the polyester to oligomers having a degree of polymerization of less than 15 and preferably less than 3, which overlaps the claimed range of 2 to 10. See col. 3 lines 47-51.
With regard to claim 12, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention since USP5236959 discloses cooling the first reaction product to 150C to 170C and then filtering the mixture to separate the liquid oligomer solution from the solid cotton. See col. 3 lines 49-65. The disclosed range includes 150C and therefore overlaps the claimed range of 50C to 150C.
With regard to claim 13, since USP5236959 discloses processing polyester feedstock containing cotton and also shows other polymers and metallic materials as foreign materials that may be present in the feedstock. See col. 3 lines 5-18. The reference also discloses filtering the first mixture to separate the cotton from the liquid containing the polyester oligomers. See col. 3 line 60- col. 4 lines 4-5 and Examples ( col. 4 lines 43-54).
With regard to claim 14, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention since USP5236959 discloses reacting the liquid oligomer solution with methanol to form a second mixture containing solid DMT and a liquid containing methanol and ethylene glycol. The DMT is separated by suction filtration, thereby separating the DMT solid component from the liquid containing methanol and ethylene glycol. See col. 4 line 65-col. 5 line 8 and Examples.
With regard to claim 15, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention since USP5236959 discloses reacting the liquid oligomer solution with methanol to form a second mixture containing solid DMT and a liquid containing methanol and ethylene glycol. The DMT is separated by suction filtration, thereby separating the DMT solid component from the liquid containing methanol and ethylene glycol. See col. 4 line 65-col. 5 line 8 and Examples.
With regard to claim 16, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention since USP5236959 discloses reacting the liquid oligomer solution with methanol to form a second mixture containing solid DMT and a liquid containing methanol and ethylene glycol. The DMT is separated by suction filtration, thereby separating the DMT solid component from the liquid containing methanol and ethylene glycol. See col. 4 line 65-col. 5 line 8 and Examples.
With regard to claim 17, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to include PET with the TMCD polyester because both are known terephthalate polyesters suitable for recycling. Note USP5236959 discloses that the polyester feedstock is preferably PET. See col. 3 lines 10-18. WO2013025186 also discloses TMCD containing copolyesters and the use of PET with copolyesters. Paragraphs [0002]-[0003].
With regard to claim 18, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention since USP5236959 discloses a feedstock containing PET and up to 10 percent copolymer. See col. 3 lines 12-16. When the copolymer is the TMCD-containing copolyester taught by WO2013025186, the resulting PET to TMCD containing polyester ratio is about 9:1 which falls within the clamed range of 10:1 to 1:10.
With regard to claim 19, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention since USP5236959 discloses that the alcohol used during the second alcoholysis is preferably methanol. See col. 4 lines 4-16.
With regard to claim 20, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention since USP5236959 discloses producing DMT, separating the DMT by suction filtration, and obtaining DMT having greater than 98 percent purity which reads on applicants’ claimed purity of at least 90%. See col. 5 lines 1-8.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Terressa Boykin/Primary Examiner, Art Unit 1765
Prosecution Insights