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
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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).
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Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims of copending Application No. 18703825, 18703829 and 18703849 (reference applications).
Although the claims at issue are not identical, they are not patentably distinct from each other because:
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. Copending Application No. 18703829 claims a process that includes depolymerizing a TMCD containing polyester using ethylene glycol, methanol, or both subjecting 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 and 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.
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) 1-2,4-6,8-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over USP5236959 see abstract, col. 3 lines 5-68 , col. 4 lines 1-17, and claims 4, 12, 14 and 17 col. 5 lines 1-15 and col. 4 lines 1-68 in view of USP4469824 abstract, col. 2 lines 50-65, col. 3 lines 44-col. 4 lines 28 and claims 11,12 and 16; further in view of WO2013025186 , see paragraph [0030].
Claim 1 is directed to a process for recovering one or more dialkyl terephthalates from a polyester composition, comprising: exposing a polyester composition to: a first glycol composition; and one or more glycolysis catalysts, in a reaction vessel under depolymerization conditions to provide a first mixture, the first mixture comprising: one or more depolymerization products; ethylene glycol (EG); and one or more insoluble components, wherein the depolymerization conditions comprise a temperature in a range of about 120 0C to about 260 0C, a pressure in a range of about 0.013 atm (0.2 psig) to about 10.2 atm (150 psig), and a time period in a range of about 0.5 hours to about 10 hours, and wherein the first glycol composition comprises diethylene glycol (DEG), triethylene glycol (TEG), 1,4- cyclohexanedimethanol (CHDM), poly(ethylene glycol) (PEG), neopentyl glycol (NPG), propane diol (PDO), butanediol (BDO), 2-methyl-2,4-pentanediol (MP diol), poly(tetramethylene ether)glycol (PTMG), or a combination thereof; removing at least a portion of the EG from the reaction vessel, during the
exposing of the polyester composition to: the first glycol composition; and the one or more glycolysis catalysts, in the reaction vessel; exposing at least a portion of a first liquid component of the first mixture to one or more alcohols and an alcoholysis catalyst under alcoholysis conditions to provide a second mixture, the second mixture comprising a solid component comprising one or more dialkyl terephthalates and a second liquid component, wherein the alcoholysis conditions comprise a temperature in a range of about 25 0C to about 90 0C, a pressure in a range of about 1 atm (14.7 psig) to about 2 atm (30 psig), and a time period in a range of about 0.5 hours to about 5 hours; and separating at least a portion of the one or more dialkyl terephthalates from the second mixture via solid-liquid separation.
With regard to claim 1, USP5236959 discloses a process for recovering dimethyl terephthalate from a polyester composition. See abstract. The polyester composition is exposed to glycol, including butanediol or propanediol and an alcoholysis catalyst under depolymerization conditions. The first alcoholysis is conducted at atmospheric pressure and about 180C to 210C for four to six hours. The resulting mixture is cooled and filtered to separate the insoluble cotton component from the liquid polyester oligomer moiety. See col. 3 lines 5-68 , col. 4 lines 1-17, and claims 4, 12, 14 and 17. The reference further discloses adding the polyester oligomer to methanol and sodium carbonate at about 65C to 100C and a pressure of 0 to 50psi to make DMT at about 30 minutes and separates the resulting product by suction filtration and is recovered greater than 98% purity. Col. 5 lines 1-15 and col. 4 lines 1-68. Thus, the temperature, pressure and reaction tie ranges overlap the recited ranges in the present claim 1.
However, USP5236959 does not disclose removing at least a portion of ethylene glycol from the reaction vessel during the depolymerization reaction.
USP4469824 discloses recycled PET reacting with diethylene glycol and at least one additional polyalkylene glycol, such as triethylene glycol, while stripping ethylene glycol from the reaction mixture. The reference teaches that the ethylene glycol is derived from the PET during the reaction and forms solids. Removing the ethylene glycol produces a mixture that remains liquid and free from solids upon standing. See col. 2 lines 50-65, col. 3 lines 44-col. 4 lines 28 and claims 11,12 and 16.
Thus, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the process of USP5236959 by removing ethylene glycol during the depolymerization reaction because USP4469824 teaches that removing ethylene glycol keeps the reacting mixture liquid and prevents solids from forming. See col. 2 lines 50-65, col. 3 lines 44 through col. 4 lines 27, claims 11,12 and 16.
Claim 2 is directed to the process of claim 1, wherein, during the exposing a polyester composition to: a first glycol composition; and one or more glycolysis catalysts, in a reaction vessel, a solvent is present.
Thus, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention since USP4469824 does acknowledge in col. 3 lines 18-39 that sometimes the scrap PET may be is mixed with a solvent to make a kind of slurry.
Claim 4 is directed to the process of claim 1, wherein the depolymerization conditions comprise a pressure from 0.013 atm (0.2 psig) to about 1 atm (14.7 psig).
Thus, 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 conducting the first alcoholysis at atmospheric pressure. See col. 4 lines 1-18.
Claim 5 is directed to the process of claim 1, wherein, during the exposing a polyester composition to: a first glycol composition; and one or more glycolysis catalysts, in a reaction vessel under depolymerization conditions, a weight ratio of the first glycol composition to the polyester composition is in a range of about 1:9 to about 9:1.
Thus, 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 about 3 to 4 parts of an ethylene glycol per polyester /cotton blend which falls with the claimed range for depolymerizing the polyester composition. See col. 3 lines 41-48, and col. 4 lines 34-57.
Claim 6 is directed to the process of claim 1, wherein the first glycol composition further comprises EG, and wherein a weight ratio of EG to: diethylene glycol (DEG), triethylene glycol (TEG), 1,4-cyclohexanedimethanol (CHDM), poly(ethylene glycol) (PEG), neopentyl glycol (NPG), propane diol (PDO), butanediol (BDO), 2-methyl-2,4-pentanediol (MP diol), poly(tetramethylene ether)glycol (PTMG), or a combination thereof, is in a range of about 99:1 to about 0:100.
Thus, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention since USP4469824 teaches reacting recycled polyethylene terephthalate with ethylene glycol, including triethylene glycol and states that the exact proportions are not important to prevent solids from settling out. See col. 3 lines 26-50. USP5236959 discloses using ethylene glycol as the preferred alcohol.. See col. 3 lines 21-25.
Claim 8 is directed to the process of claim 1, wherein the polyester composition comprises polyethylene terephthalate (PET), 1,4-cyclohexanedimethanol (CHDM)-modified PET, isophthalic acid (IPA)- modified PET, diethylene glycol (DEG)-modified PET, neopentyl glycol (NPG)-modified PET, propane diol (PDO)-modified PET, butanediol (BDO)-modified PET, hexanediol (HDO)-modified PET, 2-methyl-2,4-pentanediol (MP diol)-modified PET, isosorbide-modified PET, poly(tetramethylene ether) glycol (PTMG)-modified PET, poly(ethylene glycol) (PEG)-modified PET, polycyclohexylenedimethylene terephthalate (PCT), cyclohexanedimethanol (CHDM)-containing copolyester, isosorbide-containing copolyester, or a combination thereof.
Thus, 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 of PET using the same reactants and moieties as claimed. See col. 3 lines 30-44, claims 3,5,9,12, and 20.
Claim 9 is directed to the process of claim 1, wherein the polyester composition comprises one or more foreign materials, wherein the one or more foreign materials are present in the polyester composition in an amount of from 0.01 wt. % to 50 wt. %, relative to the weight of one or more polyesters in the polyester composition, wherein the one or more foreign materials comprise at least one member selected from the group consisting of polyesters other than polyethylene terephthalate, polyvinyl chloride (PVC), polyvinyl acetal, polyvinyl butyral (PVB), polyvinyl alcohol (PVOH), ethylene vinyl alcohol (EVOH), cotton, polyolefins, polyethylene, polypropylene, polystyrene, polycarbonate, Spandex, natural fibers, cellulose ester, polyacrylates, polymethacrylate, polyamides, nylon, poly(lactic acid), polydimethylsiloxane, polysilane, calcium carbonate, titanium dioxide, inorganic fillers, dyes, pigments, color toners, colorants, plasticizers, adhesives, flame retardants, metals, aluminum, and iron.
Thus, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention since the amount of cotton and other foreign materials would vary with the source of the waste polyester feedstock and would have been selected within the claimed range to permit effective depolymerization and separation. See USP5236959 col. 1 lines 1-29, col. 3 lines 1-25, col. 4 lines 1-43.
Claim 10 is directed to the process of claim 1, wherein the one or more dialkyl terephthalates in the solid component comprise dimethyl terephthalate (DMT), and wherein the DMT is at least 90 % pure.
Thus, 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 the recovering DMT having a purity greater than 98%. See col. 5 lines 1-15.
Claim 11 is directed to the process of claim 1, wherein the one or more glycolysis catalysts comprise a member selected from the group consisting of Li2CO3, K2CO3, CaCO3, Na2CO3, Cs2CO3, ZrCO3, LiOH, NaOH, KOH, tetrabutylammonium hydroxide (TBAH), sodium methoxide (NaOMe), lithium methoxide (LiOMe), magnesium methoxide (Mg(OMe)2 potassium t-butoxide, ethylene glycol monosodium salt, ethylene glycol disodium salt, tetra isopropyl titanate (TIPT), butyltin tris-2-ethylhexanoate (FASCAT 4102), 1,8- Diazabicyclo[5.4.0]undec-7-ene (DBU), zinc acetylacetonate hydrate (Zn(acac)2), zinc acetate (Zn(OAc)2), manganese (II) acetate (Mn(OAc)2), hydrotalcite, zeolite, and lithium chloride.
Thus, 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 these catalysts, e.g. sodium carbonate , lithium carbonate, sodium hydroxide or lithium hydroxide, for polyester depolymerization in an amount of about 0.25%. See claim 4 and claim 11.
Claim 12 is directed to the process of claim 9, further comprising: prior to the exposing at least a portion of a first liquid component of the first mixture to one or more alcohols and an alcoholysis catalyst, separating at least a portion of the one or more insoluble components from the first liquid component of the first mixture, and wherein at least a portion of the foreign materials are present in the one or more insoluble components.
Thus, 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 filtering the cotton and other insoluble material from the polyester oligomer solution before methanolysis. See col. 4 lines 6-68.
Claim 13 is directed to the process of claim 1, wherein the one or more alcohols comprises methanol, wherein, the alcoholysis catalyst is present in an amount of from 0.1 wt. % to 20 wt. %, relative to the weight of the polyester composition, and wherein the alcoholysis catalyst comprises K2CO3, Na2CO3, Li2CO3, Cs2CO3; KOH, LiOH, NaOH; NaOMe, Mg(OMe)2 KOMe, KOt-Bu, ethylene glycol monosodium salt, ethylene glycol disodium salt, or a combination thereof.
Thus, 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 methanolysis using sodium carbonate in an overlapping amount. See Examples and col. 4 line 6 -col. 5 line 8.
Claim 14 is directed to the process of claim 1, further comprising: separating at least a portion of the first glycol composition from the second liquid component to form a recycle glycol composition; and depolymerizing one or more polyesters in a second polyester composition in the presence of the recycle glycol composition.
Thus, in addition to the discussions above, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention since USP4469824 discloses using theses glycols for PET depolymerization and recycling the glycol components to reduce the amount glycol required and reduce process waste is known to the skilled artisan. See col. 3 lines 44- col. 4 line 68. WO2013025186 , see paragraph [0030] and USP5236959 col. 3 lines 21-25.
Claim 15 is directed to a process for recovering one or more dialkyl terephthalates from a polyester composition, comprising: exposing a polyester composition to a first glycol composition and one or more glycolysis catalysts in a reaction vessel under depolymerization conditions to provide a first mixture, the first mixture comprising a first liquid component and one or more insoluble components, wherein the first glycol composition comprises diethylene glycol (DEG), triethylene glycol (TEG), 1,4-cyclohexanedimethanol (CHDM), poly(ethylene glycol) (PEG), neopentyl glycol (NPG), propane diol (PDO), butanediol (BDO), 2-methyl-2,4- pentanediol (MP diol), poly(tetramethylene ether)glycol (PTMG), or a combination thereof, wherein the first liquid component comprises one or more depolymerization products and ethylene glycol (EG), wherein the depolymerization conditions comprise a temperature in a range of about 120 °C to about 260 °C, a pressure in a range of about 0.013 atm (0.2 psig) to about 10.2 atm (150 psig), and a time period in a range of about 0.5 hours to about 10 hours; exposing at least a portion of the first liquid component to one or more alcohols and an alcoholysis catalyst under alcoholysis conditions in an alcoholysis reaction vessel to provide a second mixture, the second mixture comprising a solid component comprising one or more dialkyl terephthalates and a second liquid component, wherein the alcoholysis conditions comprise a temperature in a range of about 25 °C to about 90 °C, a pressure in a range of about 1 atm (14.7 psig) to about 2 atm (30 psig), and a time period in a range of about 0.5 hours to about 5 hours; separating at least a portion of the one or more dialkyl terephthalates from the second mixture; and exposing at least a portion of the second liquid component to distillation conditions to separate at least a portion of the EG, and to provide a recycle glycol composition, wherein the recycle glycol composition comprises at least a portion of the first glycol composition.
Thus, in addition to the discussions above, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention since USP4469824 discloses using theses glycols for PET depolymerization in col. 3 lines 44- col. 4 line 27 and WO2013025186 discloses distilling EG and DEG from a process stream for recycling to reduce process waste is known to the skilled artisan. See paragraph [0030].
Claim 16 is directed to the process of claim 15, it wherein, during the exposing a polyester composition to a first glycol composition and one or more glycolysis catalysts in a reaction vessel under depolymerization conditions to provide a first mixture, a weight ratio of the first glycol composition to the polyester composition is in a range of about 1:9 to about 9:1.
In addition to the discussion for 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 an overlapping ratio for depolymerizing the polyester composition. See col. 3 lines 45-50, col. 4 lines 34-43.
Claim 17 is directed to the process of claim 15, wherein the one or more dialkyl terephthalates in the solid component comprise dimethyl terephthalate (DMT), and wherein the DMT is at least 90 % pure.
In addition to the discussion for 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 recovering DMT having a purity greater than 98%. See col. 5 lines 10-15.
Claim 18 is directed to the process of claim 15, wherein the polyester composition comprises one or more foreign materials in an amount of from 0.01 wt. % to 50 wt. %, relative to the weight of one or more polyesters in the polyester composition, wherein the one or more foreign materials comprise at least one member selected from the group consisting of polyesters other than polyethylene terephthalate, polyvinyl chloride (PVC), polyvinyl acetal, polyvinyl butyral (PVB), polyvinyl alcohol (PVOH), ethylene vinyl alcohol (EVOH), cotton, polyolefins, polyethylene, polypropylene, polystyrene, polycarbonate, Spandex, natural fibers, cellulose ester, polyacrylates, polymethacrylate, polyamides, nylon, poly(lactic acid), polydimethylsiloxane, polysilane, calcium carbonate, titanium dioxide, inorganic fillers, dyes, pigments, color toners, colorants, plasticizers, adhesives, flame retardants, metals, aluminum, and iron.
In addition to the discussion for 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 the amount of cotton and other foreign materials would vary with the source of the waste polyester feedstock and could have been routinely selected to permit effective depolymerization and separation. See USP5236959 col. 1 lines 15-29, col. 3 lines 5-25, col. 4lines 34-43.
Claim 19 is directed to the process of claim 18, further comprising: prior to the exposing at least a portion of the first liquid component to one or more alcohols and an alcoholysis catalyst, separating at least a portion of the one or more insoluble components from the first liquid component of the first mixture, and wherein at least a portion of the foreign materials are present in the one or more insoluble components.
In addition to the discussion for 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 filtering the cotton and other insoluble material from the liquid polyester oligomer composition before methanolysis. See col. 4 lines 6-68, claims 14, 22 and 23.
Claim 20 is directed to the process of claim 15, wherein, the exposing at least a portion of the second liquid component to distillation conditions to separate at least a portion of the EG further provides a recycle alcohol composition, and wherein the process further comprises, providing at least a portion of the recycle alcohol composition to the alcoholysis reaction vessel.
In addition to the discussion for 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 in USP5236959 discloses the recovered alcohol is the same reactant used in the alcoholysis process and its reuse would reduce the amount of fresh methanol required and reduce process waste. See col. 4 lines 51-68.
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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/Terressa Boykin/Primary Examiner, Art Unit 1765
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