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).
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, 18703829 and 18703837 (reference applications).
Although the claims at issue are not identical, they are not patentably distinct from each other because:
Copending Application No.18703837 is directed to 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 present claims of Application No.18703849 are directed to 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, separating the dialkyl terephthalates by solid-liquid separating, recovering recycled glycol by distillation, and using the recycle glycol to depolymerize another polyester composition.
Although the claims of the present application further specify recovering the recycle glycol by distillation, 18703837 claims separating recycle glycol from the resulting liquid component and using the recycle glycol to depolymerize another polyester composition. Distillation represents an obvious method of carrying out the claimed glycol separation. Therefore, the claims are not patentably distinct from the claims of the reference applications.
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 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) 1-20 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], [0026]- [0034]; and further in view of USP4469824 abstract, col. 2 lines 50-65, col. 3 lines 44-col. 4 lines 28 and claims 1-16.
Claim 1 is directed to a process for recovering one or more dialkyl terephthalates from a polyester composition, comprising: (a) exposing a first polyester composition to one or more glycols under depolymerization conditions to provide a first mixture, the first mixture comprising a first liquid component and a first solid component, the first liquid component comprising one or more depolymerization products; (b) exposing at least a portion of the first liquid component to a first alcohol composition under alcoholysis conditions comprising a temperature of 90 0C or less to provide a second mixture, the second mixture comprising a second liquid component and a second solid component, the second solid component comprising one or more dialkyl terephthalates; (c) exposing the second liquid component to distillation conditions to provide one or more recycle glycols, the one or more recycle glycols comprising at least a portion of the one or more glycols; and (d) exposing a second polyester composition to at least a portion of the one or more recycle glycols under depolymerization conditions to provide a third mixture, the third mixture comprising a third liquid component and a third solid component, the third liquid component comprising one or more depolymerization product.
USP5236959 discloses a process for recovering dimethyl terephthalate from a polyester composition by depolymerizing polyethylene terephthalate with ethylene glycol to form a liquid component containing depolymerization products, separating the insoluble material form the liquid and subjecting the liquid component to methanolysis at 40C to make dimethyl terephthalate, and recovering the dimethyl terephthalate. See abstract, cols 1-4, Examples and claims.
The reference does not disclose distilling the liquid remaining after recovering dimethyl terephthalate to form a recycle glycol composition and using it to depolymerize a second polyester composition.
WO2013025186 discloses distilling ethylene glycol and diethylene glycol from the process for recycling before recovering the dimethyl terephthalate. The reference further teaches that the recovered dimethyl terephthalate and ethylene glycol may be reused to make polyesters and copolyesters. See paragraphs [0002], [0006], [0030], [0031]and [0034].
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to recovered the glycol using distillation and reuse the recovered glycol to depolymerize another polyester composition since WO2013025186 discloses recovering the glycol may be reused to make polyesters and copolyesters which would reduce the need for new glycol and reduce waste. .
Claim 2 is directed to the process of claim 1, further comprising: (e) exposing at least a portion of the third liquid component to a second alcohol composition under alcoholysis conditions to provide a fourth mixture, the fourth mixture comprising a fourth liquid component and a fourth solid component, the fourth solid component comprising one or more dialkyl terephthalates.
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 a component of liquid polyester oligomer under methanolysis to produce DMT and apply in the same alcoholysis step to the second depolymerization mixture which would repeat the known recovery process. See abstract, cols 1-4, Examples and claims 1-10.
Claim 3 is directed to the process of claim 2, wherein the one or more dialkyl terephthalates in the second solid component comprises dimethyl terephthalate (DMT) that is at least 90 % pure, and wherein the one or more dialkyl terephthalates in the fourth solid component comprises DMT that is at least 90 % pure.
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 abstract, col. 5 line 8, Examples and claims.
Claim 4 is directed to the process of claim 1, wherein the distillation conditions comprise a temperature of from 70 0C to 220 0C, wherein the distillation conditions comprise a pressure of from 1 Torr to 800 Torr, or both.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention since WO2013025186 discloses flash distillation at atmospheric pressure, which is approximately 760Torr and at temperatures from 130C to 160C which fall within the claimed ranges. See paragraphs [0002], [0026], [0030] and [0027].
Claim 5 is directed to the process of claim 1, wherein the one or more recycle glycols obtained from the step (c) are present in a distillation pot residue.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention since WO2013025186 discloses removing the more volatile methanol by flash distillation from a liquid containing ethylene glycol and diethylene glycol, which leaves the glycols in the liquid. See paragraphs [0002], [0026], [0030] and [0027].
Claim 6 is directed to the process of claim 5, further comprising, prior to the step (b), separating the at least a portion of the first liquid component from the first solid component, wherein after the separating, the at least a portion of the first liquid component is directly utilized in the step (b) of the exposing the at least a portion of the first liquid component to the first alcohol composition; or further comprising, prior to the step (b), separating the at least a portion of the first liquid component from the first solid component, wherein after the separating, the at least a portion of the first liquid component is not subjected to a distillation process or further separation process prior to being utilized in the step (b) of the exposing the at least a portion of the first liquid component to the first alcohol composition.
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 solution of polyester oligomer and then subjecting the oligomeric solution to alcoholysis. See abstract, claims 1 and 5.
Claim 7 is directed to the process of claim 1, wherein the first polyester composition and the second polyester composition comprise 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.
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 PET with ethylene glycol. See abstract, claims 1-10 and Example.
Claim 8 is directed to the process of claim 1, wherein the first polyester composition and the second polyester composition each contain 0 mole % to 100 mole % CHDM, 0 mole % to 100 mole % DEG, 0 mole % to 100 mole % NPG, 0 mole % to 100 mole % PDO, 0 mole % to 100 mole % BDO, 0 mole % to 100 mole % HDO, 0 mole % to 100 mole % MP diol, 0 mole % to 100 mole % isosorbide, 0 mole % to 100 mole % PTMG, 0 mole % to 100 mole % PEG, and 0 mole % to 30 mole % isophthalic acid, wherein the sum of diol equivalents in each of the first polyester composition and the second polyester composition is about 100 mole %, and wherein the sum of diacid equivalents in each of the first polyester composition and the second polyester composition is about 100 mole %.
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 ethylene glycol residues and terephthalate residues with comonomers listed above and being present at zero mole percent. See abstract, claims 3,10 and Example.
Claim 9 is directed to the process of claim 1, wherein the first polyester composition, the second polyester composition, or both, comprise one or more foreign materials, 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, polysulfane, calcium carbonate, titanium dioxide, inorganic fillers, dyes, pigments, color toners, colorants, plasticizers, adhesives, flame retardants, metals, aluminum, and iron, and wherein, at least a portion of the one or more foreign materials is present in the first solid component of the first mixture.
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 PET and cotton and other materials present in waste polyester feedstock. See abstract, claims 1-10 and Example.
Claim 10 is directed to the process of claim 9, wherein the one or more foreign materials are present in the first polyester composition, the second polyester composition, or both, in an amount of from 0.01 wt. % to 10 wt. %, relative to the weight of polyester in the polyester composition.
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 waste PET containing cotton and other foreign materials and the amount of foreign material would have been routinely selected based on the source of the feedstock and that amount could be effectively separated. . See abstract, claims 1-10 and Example.
Claim 11 is directed to the process of claim 1, wherein the one or more dialkyl terephthalates in the second solid component comprise dimethyl terephthalate (DMT), and wherein the DMT is at least 90 % pure.
See claim 3 above.
Claim 12 is directed to the process of claim 1, wherein the second solid component further comprises: dimethyl isophthalate (DMI) in an amount of 1000 ppm or less, or 500 ppm or less; bisphenol A (BPA) in an amount of 1000 ppm or less, or 500 ppm or less; or both.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention since WO2013025186 discloses recovering and purifying DMT by distillation, crystallization, sublimation and the impurity levels would have been routinely reduced to obtain DMT appropriate for reuse in polyester productions. . See paragraphs [0002], [0026], [0030] and [0031].
Claim 13 is directed to the process of claim 1, wherein the depolymerization conditions include a temperature of from 150 °C to 260 °C and an absolute pressure of from 1 atmosphere (atm) to 15 atm in an agitated reactor for 0.5 h to 10 h.
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 depolymerization at approximately 195C to 200C, atmospheric pressure and for 5 hours which falls within the claimed ranges. See Examples.
Claim 14 is directed to the process of claim 1, wherein the exposing the first polyester composition to one or more glycols occurs in the presence of one or more catalysts, wherein the one or more catalysts are present in an amount of from 0.1 wt. % to 10 wt. %, relative to the weight of the first polyester composition, and wherein the one or more catalysts are added during at least a portion of the step (a), and wherein no additional catalyst is added during the step (d).
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 0.5 grams of sodium carbonate with 160grams of polyester feedstock. See abstract, claims 1-10 and Example. WO2013025186 discloses recovering and purifying DMT by distillation, crystallization, sublimation and the impurity levels would have been routinely reduced to obtain DMT appropriate for reuse in polyester productions. . See paragraphs [0030] and [0031].
Claim 15 is directed to the process of claim 14, wherein the one or more 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.
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 a suitable catalyst for polyester depolymerization . See abstract, claims 4 and 7 and Example.
Claim 16 is directed to the process of claim 1, wherein the one or more glycols comprises ethylene glycol (EG), 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.
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 PET using ethylene glycol. . See abstract, claims 3 and 10 and Example.
Claim 17 is directed to the process of claim 1, wherein a weight ratio of the amount of the one or more glycols relative to the amount of the first polyester composition is from 3:1 to 1:9.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention since in addition to the discussion above, USP4469824 discloses using 3,200 grams of PET with 4,800 grams of diethylene glycol which provides a weight ratio of 1.5 to 1 and falls within the claimed range. See abstract, and Example 1.
Claim 18 is directed to the process of claim 1, wherein the first alcohol composition comprises methanol, and wherein, in the step (b) of exposing at least a portion of the first liquid component to the first alcohol composition, a weight ratio of the amount of the first alcohol composition relative to the amount of the first polyester composition is from 2:1 to 10:1.
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 840 grams of methanol with 160 grams of polyester feedstock which provides a weight ratio of about 5.25:1 and falls within the claimed range. See abstract, claims 1-10 and Example.
Claim 19 is directed to the process of 1, wherein, in the step (b) of exposing at least a portion of the first liquid component to the first alcohol composition occurs in the presence of one or more alcoholysis catalysts, wherein, the one or more alcoholysis catalysts is present in an amount of from 0.1 wt. % to 20 wt. %, relative to the weight of the first polyester composition, and wherein the one or more alcoholysis catalysts comprise 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.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention since discloses using 0.5 grams of sodium carbonate with 160grams of polyester feedstock which is about 0.31 weight percent and falls within the claimed range.. See abstract, claims 4 and 7 and Example.
Claim 20 is directed to the process of claim 1, further comprising, prior to the step (b), separating the at least a portion of the first liquid component from the first solid component, and wherein the separating occurs at a temperature of from 50 0C to 150 °C.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention since discloses cooling the glycolysis product to between 150C and 170C before filtering the cotton from the polyester oligomer solution which overlaps the claimed range of 150C. See abstract, claims 1-10 and Example.
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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