DETAILED ACTION
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 .
Status of the Application
Claims 1-15 are pending and under current examination.
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 10, 11 and 14 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claims 10, 11 and 14 are indefinite as these claims recite addition of decolorizing agent to second reaction mixture, however, according to claim 1, decolorizing agent is added to third reaction mixture. Thus, these claims are ambiguous and indefinite. Based on claim 1 and specification, the claims have been interpreted as “addition of decolorizing agent to third reaction mixture.
Appropriate correction required.
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 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 of this title, 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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over Auturo (US20070219339 A1) and Hajek (US20100133088 A1)
Determining the scope and contents of the prior art
Auturo teaches recycling of poly(ethylene terephthalate) (PET) (192.17g/mol of one unit of ET) comprising depolymerization of PET using alkaline hydrolysis with NaOH (40g/mol) or KOH in presence of alcohol, such as methanol (64C), ethanol (~78C) or their mixture at temperature, such as equal to boiling point of the alcohol or temperature such as 59C, at atmospheric pressure (101.325kpa) and for time period, such as 15 min, 20min etc., thereby obtaining salt of terephthalic acid, and ethylene glycol; separation stage wherein salt of terephthalic acid, and ethylene glycol are separated; terephthalic formation stage wherein terephthalic acid is obtained by reacting salt of terephthalic acid with a strong acid, such as HCl to form precipitate, filtration of precipitate and crystallization; ethylene glycol recovery stage wherein ethylene glycol is recovered from the alcoholic reaction media; final stage of obtaining PET from terephthalic acid and ethylene glycol (entire application and examples 6-9):
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768
656
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626
476
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Hajek also teaches recycling of PET using any of the processes, such as alkaline hydrolysis in presence of base, such as NaOH at temperature, such as 106C and atm pressure for time period such as 60min -thereby obtaining salt of terephthalic acid, and ethylene glycol; separation stage wherein salt of terephthalic acid, and ethylene glycol are separated; terephthalic formation stage wherein terephthalic acid is obtained by reacting salt of terephthalic acid with a strong acid, such as HCl to form precipitate, filtration of precipitate; recovery of ethylene glycol stage;
or alcoholysis or glycolysis in the presence of catalyst Zn(OAC)2 and ethylene glycol (boiling point 197.3C) at the boiling point of the reaction mixture, i.e., at least at BP of ethylene glycol at atm pressure for about 60min.
Ascertaining the differences between the prior art and the claims at issue
Auturo teaches recycling of poly(ethylene terephthalate) (PET) (192.17g/mol of one unit of ET) comprising depolymerization of PET using alkaline hydrolysis with NaOH (40g/mol) or KOH in presence of alcohol, such as methanol (64C), ethanol (~78C) or their mixture at temperature, such as equal to boiling point of the alcohol or temperature such as 59C, at atmospheric pressure (101.325kpa), but fails to teach depolymerization with Zn(OAC)2; moles of NaOH to ET moles in the process; time as 0.5hr-2hrs; decolorizing agent.
Hajek also teaches recycling of PET using any of the processes, such as alkaline hydrolysis in presence of base, such as NaOH at temperature, such as 106C and atm pressure for time period such as 60min -thereby obtaining salt of terephthalic acid, and ethylene glycol; separation stage wherein salt of terephthalic acid, and ethylene glycol are separated; terephthalic formation stage wherein terephthalic acid is obtained by reacting salt of terephthalic acid with a strong acid, such as HCl to form precipitate, filtration of precipitate; recovery of ethylene glycol stage;
Or/and alcoholysis or glycolysis in the presence of catalyst Zn(OAC)2 and ethylene glycol (boiling point 197.3C) at the boiling point of the reaction mixture, i.e., at least at BP of ethylene glycol at atm pressure for about 60min but fails to teach moles of NaOH to ET moles in the process; decolorizing agent and it’s amount; time for catalytic reaction 1.5hr-6hrs; moles of ethylene glycol to ET units in PET; amount of catalyst; partial depolymerization mol weight.
Resolving the level of ordinary skill in the pertinent art
Thus, with the guidance provided by Auturo and Hajek, it would have been prima facie obvious to a person of ordinary skill in the art with the reasonable expectation of success that depolymerization of PET may be carried out by combination of catalytic hydrolysis using zinc acetate and alkaline hydrolysis. This is because Hajek teaches that depolymerization of PET may be carried out using catalytic hydrolysis using zinc acetate or/and alkaline hydrolysis and Auturo teaches alkaline hydrolysis of PET for depolymerization.
“Since the claimed process and article produced therby are no more than a selective combination of prior art teachings, done in a manner obvious to one of ordinary skill in the art, since each step of the process appears to be realtively complete in itself and there is no indication of an interaction between steps of such a type that would lead one of ordinary skill in the art to doubt that a substitution of alternative steps known to the art could be made”. In re Mostovych 144USPQ 38 (1964).
Thus, the combination of Auturo and Hajek teaches instant process.
With regard to limitation of decolorization, decolorization agent, and its amount used in the process-The process of decolorization to obtain colorless products, especially, using activated carbon to adsorb colored impurities is well known and routine in the art. Thus, a person skilled in the art in need of removing colored impurities from the final product would have used well known processes for removing colored impurities.
With regards to limitations in regards to optimization of reaction parameters, such as molar ratio of reactants, reaction temperature, reaction time, and the like, will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature etc., are critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Moreover, it is noted that all of the recited reaction parameters are recognized as result-effective variables, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation. In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977).
Therefore, combination reads applicants claims.
Based on the above established facts, it appears that the combination of teachings of above cited prior art read applicants’ process.
Therefore, all the claimed elements were known in the prior art and one skilled person in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
Considering objective evidence present in the application indicating obviousness or nonobviousness
To establish a prima facie case of obviousness, three basic criteria must be met: (1) the prior art reference must teach or suggest all the claim limitations; (2) there must be some suggestion or motivation, either in the references themselves or in the knowledge generally available to one of ordinary skill in the art, to modify the reference or to combine reference teachings; and (3) there must be a reasonable expectation of success; and (MPEP § 2143).
In this case, Auturo teaches recycling of poly(ethylene terephthalate) (PET) (192.17g/mol of one unit of ET) comprising depolymerization of PET using alkaline hydrolysis with NaOH (40g/mol) or KOH in presence of alcohol, such as methanol (64C), ethanol (~78C) or their mixture at temperature, such as equal to boiling point of the alcohol or temperature such as 59C, at atmospheric pressure (101.325kpa) and Hajek teaches recycling of PET using any of the processes, such as alkaline hydrolysis in presence of base, such as NaOH at temperature, such as 106C and atm pressure for time period such as 60min -thereby obtaining salt of terephthalic acid, and ethylene glycol; separation stage wherein salt of terephthalic acid, and ethylene glycol are separated; terephthalic formation stage wherein terephthalic acid is obtained by reacting salt of terephthalic acid with a strong acid, such as HCl to form precipitate, filtration of precipitate; recovery of ethylene glycol stage; Or/and alcoholysis or glycolysis in the presence of catalyst Zn(OAC)2 and ethylene glycol (boiling point 197.3C) at the boiling point of the reaction mixture, i.e., at least at BP of ethylene glycol at atm pressure for about 60min.
So, the combination of prior art read applicants claims.
In KSR International Vo. V. Teleflex Inc., 82 USPQ2d (U.S. 2007), the Supreme Court particularly emphasized “the need for caution in granting a patent based on a combination of elements found in the prior art,” (Id. At 1395) and discussed circumstances in which a patent might be determined to be obvious. Importantly, the Supreme Court reaffirmed principles based on its precedent that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” (Id. At 1395). See MPEP 2143 - Examples of Basic Requirements of a Prima Facie Case of Obviousness [R-9].
In this case at least prong (E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success would apply.
The rationale to support a conclusion that the claim would have been obvious is that “a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely that product [was] not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103.”KSR, 550 U.S. at ___, 82 USPQ2d at 1397. If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art. It is well within the skill of the organic chemist to recognize the fact that applicants claimed process is nothing but the combination of known individual chemical processes. Further, there is reasonable expectation of success that depolymerization of PET may be carried out by combination of catalytic hydrolysis using zinc acetate and alkaline hydrolysis and can be made by combination of the above cited prior art.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention by taking advantage of the teaching of the above cited references and to make the instantly claimed process with a reasonable expectation of success. Modifying such parameters is prima facie obvious because an ordinary artisan would be motivated to develop an alternative process for economic reasons or convenient purposes from a known individual reaction steps, and to arrive at applicants’ process with a reasonable expectation of success, since it is within the scope to modify the process through a routine experimentation.
Conclusion
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/PANCHAM BAKSHI/Primary Examiner, Art Unit 1623
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