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 .
DETAILED ACTION
Claim Status
Claims 1 and 3-15 are pending. Claims 1 and 3-15 are under examination. Claims 1 and 3-15 are rejected. No claims allowed.
Filing Receipt
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Response to Amendments/Arguments
Applicant's amendments and arguments filed 11/12/2025 are acknowledged and have been fully considered. The Examiner has re-weighed all the evidence of record. Any rejection and/or objection not specifically addressed below in original or modified form is herein withdrawn.
The 112(b) rejection of claims 1 and 3-15 in the non-final mailed 08/12/2025 is withdrawn. The claim amendments have overcome the rejection of record.
The 103(a) rejection of claims 1, and 3-13 over Cruz-Gomez et al. (US Patent 5,948,934, Patent date 09-1999), Sun et al. (KR20200046198, Published 05-2020. Cited in IDS filed 07/08/2024) and Toida et al. (USPGPub 2010/0298524, Published 11-2010) in the non-final mailed 08/12/2025 is modified. The modifications were necessitated by amendment.
The 103(a) rejection of claims 14-15 over Cruz-Gomez et al. (US Patent 5,948,934, Patent date 09-1999), Sun et al. (KR20200046198, Published 05-2020. Cited in IDS filed 07/08/2024) and Toida et al. (USPGPub 2010/0298524, Published 11-2010) as applied to claims 1, and 3-13 and in further view of Sim et al. (Hydrolysis of Dimethyl Terephthalate for the Production of Terephthalic Acid, J. Chem. Engineering of Japan, Volume 39 Issue 3, pp. 327-333, Published 2006) in the non-final mailed 08/12/2025 is modified. The modifications were necessitated by amendment.
The nonstatutory double patenting rejection of claims 1, and 3-15 over allowed claims 1, 3-9, and 11-17 of 18/726,819 in view of Cruz-Gomez et al., Sun et al., Toida et al. and Sim et al. in the non-final mailed 08/12/2025 is modified. The modifications were necessitated by amendment.
Note: the terminal disclaimer filed 11/12/2025 was disapproved for not supplying the correct filing date for the reference application.
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The following modified 103(a) and nonstatutory double patenting rejections
constitute the complete set of rejections and/or objections presently being applied to the
instant application.
Response to Arguments
Applicant's arguments filed 11/12/2025 have been fully considered but they are not persuasive.
Applicant argues the differences/comparisons between the prior art and between the prior art and the invention. Table A in the remarks summarizes the differences/comparisons of the prior art and invention.
Applicant states Cruz-Gomez relates to a process using methanol and zinc.
Examiner’s Response:
It has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case,
Cruz-Gomez teach the following (column 3, lines 10-30).
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Reactions involving methanol and other alcohols are suggested. These teachings are reasonably pertinent to the particular problem with which the inventor was concerned.
Applicant argues:
Sun is directed to a method for manufacturing dioctyl terephthalate (DOTP), a
plasticizer, in high yield, and thus, Sun produces a completely different product than Cruz-Gomez or the present invention.
Examiner’s Response:
Sun et al. teach the isolation of liquid bis(2-ethylhexyl terephthalate) (DOTP) from an alcoholysis reaction mixture of PET (Examples 1-7). R1 is 8. These teachings are reasonably pertinent to the particular problem with which the inventor was concerned.
Sun and Cruz-Gomez both deal with the alcoholysis of waste PET which results in esters of PET. Which is pertinent to the particular problem with which the inventor was concerned.
Concerning the method employed by Cruz-Gomez to prepare dioctylterephthalate (DOTP) being different from Sun and as instantly claimed, the teachings of Cruz-Gomez is not a teaching away from the claimed synthesis and the synthesis taught Sun. Moreover, Cruz-Gomez invites alterations of cited examples (column 6, lines 45-65). For example, Cruz-Gomez teach the following.
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Additionally, the inventor, Cruz-Gomez and Sun were interested in DOTP and the
alcoholysis of PET.
Applicant argues:
The dimethylterephthalate (DMT) of the prior art is a solid, whereas the dialkyl terephthalates of the current invention are hydrolyzed in liquid form at room temperature.
Examiner’s Response:
The hydrolysis step of current claim 1 does not require a temperature or the dialkylterephthalate in liquid form.
Moreover, the invention of Cruz-Gomez houses the butyl esters of terephthalic acid. Properties of a compound are inseparable from the compound. As written in the rejection of record, “it would have been prima facie obvious for an ordinary artisan to have utilized n-butanol in place of methanol in the process taught Cruz-Gomez et al. to arrive at the current invention wherein R1 is 4 carbons”. The dibutyl terephthalate (DBT) arrived at by the ordinary artisan would have the properties of the claimed DBT.
Applicant argues:
Since Cruz-Gomez and Toida do not recognize any differences in the process or effects associated with the alcohols having 4 to 14 carbon atoms of the subject invention. As such, a POSITA would not combine the teachings of Cruz-Gomez, Sun, and Toida.
Examiner’s Response:
Cruz-Gomez strongly suggest preparing dibutylterephthalate (DBT). See below.
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Upon doing so, the DBT would have the same properties of the current DBT. Moreover, longer chained esters of terephthalate are known to be in liquid form (Sun et al. Examples). Additionally, Toida et al. teach the following diesters of terephthalic acid (par. 29).
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Upon utilizing the above diesters, the physical properties thereof would be apparent.
Applicant argues:
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Examiner’s Response:
Concerning the claimed pressures and yields, to expect identical yields from non-
identical reactants would not be forefront in the mind of the ordinary artisan. Additionally, the pressures are expected for the reasons below.
Sun et al. teach room pressure when performing alcoholysis on PET when using 2-ethylhexanol which has a boiling point of 183C. Room pressure is approximately 1 bar.
Note: the boiling point of methanol is lower than 2-ethylhexanol as evidence by Ashenhurst (page 4 of 33). Ashenhurst teach lower molecular weight alcohols have lower boiling points (page 4 of 33). Hence, methanol has a lower boiling point than 2-ethylhexonal.
Note: high pressures occur during the use of methanol due to the low boiling point of methanol and the reaction temperature employed as evidence by Pham et al. “However, current commercial technologies still favor high reaction temperatures, which lead to high pressure due to the low boiling point of methanol” (p. 514 left column). Thus, boiling point and reaction pressures are inversely related.
The low pressures articulated by applicant are expected.
Pham et al. (Low-energy catalytic methanolysis of poly(ethyleneterephthalate), Green Chemistry, 23, pp. 511-525, Published 2021)
Ashenhurst (Master Organic Chemistry, pp. 1-33, Published 03-2021)
Concerning the higher pressures when preparing dimethylterephthalate (DMT), these pressure are expected due to the boiling points of the alcohol (Pham et al.).
Concerning the high yields, See Sun et al. Example 5, 98% yield. 98% is well within the yields of 92.3-99.8% in Table 1 of applicant’s PGPub. Expectation of high yields associated with longer chains is warranted.
For the reasons stated above the obviousness rejection is modified as set forth below.
Claim Interpretation
Per the specification page 5,
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Therefore, unless otherwise indicated the newly added numerical value of 28 bar is interpreted to be about 28 bar. Values above 28 bar are encompassed by 28 bar.
The specification does not define “about” nor the verbiage to designate the negative proviso of “about”. The negative proviso of “about” is only exemplified by the phrase “unless otherwise indicated”. Meaning the phrase “at a pressure of 1 bar to 28 bar” in claim 1, does not explicitly or implicitly imply hard boundaries so that numerical values outside of the claimed range are excluded.
Modified Rejections
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) 1, and 3-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cruz-Gomez et al. (US Patent 5,948,934, Patent date 09-1999), Sun et al. (KR20200046198, Published 05-2020. Cited in IDS filed 07/08/2024) and Toida et al. (USPGPub 2010/0298524, Published 11-2010) as evidence by Pham et al. (Low-energy catalytic methanolysis of poly(ethyleneterephthalate), Green Chemistry, 23, pp. 511-525, Published 2021) and Ashenhurst (Master Organic Chemistry, pp. 1-33, Published 03-2021).
Scope of the Prior Art
Cruz-Gomez et al. teach the methanolysis (alcoholysis) of used polyethylene
terephthalate (PET) to prepare a product mixture comprising solids, methanol, glycol and dimethyl terephthalate (DMT). The DMT is more broadly a dialkyl aromatic ester (DAAE) (Examples 1-2).
Cruz-Gomez et al. goes on to teach the preparation of a homogeneous hot solution from the product mixture by adding methanol, heating and stirring the product mixture (Example 2).
Next, Cruz-Gomez et al. teach filtration of the homogeneous hot solution and separating several solid insoluble impurities to obtain a clear solution (Example 2).
The clear solution was concentrated to recover methanol, and cooled to prepare
suspended solids. The solids being pure DMT. The mother liquid from the DMT is
distilled to remove water methanol and monoethylene glycol (Example 2).
Concerning the hydrolysis, Cruz-Gomez et al. teach reacting the solid DMT with water to prepare the current terephthalic acid (TPA) (Example 3).
Concerning currently claimed R1 variable and the number of carbons being 4, Cruz-Gomez et al. teach alcohols useful for the present process can have 4 carbon atoms and can have an alkyl chain of n-butyl (column 3, lines 10-20).
Concerning claim 3, Cruz-Gomez et al. teach 50 to 100 g of crushed bottle PET, 150 to 300g of methanol (Example 1) or 100:300 or 1:3. This overlaps the ratio of 1:1 to 1:10 waste PET to alcohol.
Concerning claim 4, Cruz-Gomez et al. teach 30 to 100 minutes, temperatures from 25 to 240° C and pressures of 6.5 MPa to 5.5 MPa or 65 Bar to 55 Bar (Example 1). Cruz-Gomez et al. teach pressures of 3.0 to 10 MPa or 30 Bar to 100 Bar (claim 4 of Cruz-Gomez et al.).
The immediately above times, temperatures and pressures overlap the claimed ranges. Due to the claimed pressure range allowing for pressures above 28 bar and/or Cruz-Gomez et al. teaching about 30 bar to 100 bar, overlap of the claimed and taught pressures exist.
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Note: high pressures occur during the use of methanol due to the low boiling point of methanol and the reaction temperature employed as evidence by Pham et al. “However, current commercial technologies still favor high reaction temperatures, which lead to high pressure due to the low boiling point of methanol” (p. 514 left column). Thus, boiling point and reaction pressures are inversely related.
Concerning claim 6, Cruz-Gomez et al. teach reuse of the alcohol acquired by distillation. (column 3, lines 55-64).
Concerning claim 8 and 9, Cruz-Gomez et al. teach zinc acetate 0.010 to 0.100 g to 50 to 100g of PET (Example 1). This reads on Zn2+ and acetate ion. 10,000 ppm being 1%, 10 ppm being 0.001%. 0.01% of 100g is 0.01 grams. This overlaps the claimed range.
Concerning claim 12, Cruz-Gomez et al. teach 250C (Example 3). This overlaps the claimed range.
Ascertaining the Difference
Cruz-Gomez et al. does not teach the acid hydrolysis occurring with a liquid composition comprising a compound represented by Formula 1 wherein R is greater than 4 or the purification of a liquid composition.
Secondary Reference
Sun et al. teach the isolation of liquid bis(2-ethylhexyl terephthalate) (DOTP) from an alcoholysis reaction mixture of PET (Examples 1-7). R1 is 8.
Sun et al. teach filtering the unreacted PET component from the reaction result
through a filtration device (p. 4 of 9). This overlaps the filtering teachings of Cruz-Gomez et al.
Sun et al. teach the recovery step of dioctyl terephthalate may further include (iv) a process of decolorizing the organic layer distilled in step (iii) using a decoloring agent, wherein the decoloring agent is activated carbon, activated clay, diatomaceous earth or a combination thereof, but is not limited thereto (p. 4 of 9). Sun et al. teach the use of 20 grams of activated carbon (p. 6 of 9). (current purification claims 10-11)
Sun et al. teach isolation steps of distillation and extraction for the recovery of 2-ethylhexanol and ethylene glycol (Examples 1-7).
Sun et al. teach the following benefits of the alcoholysis of PET (p. 1 of 9). Sun et al. teach “The object of the present invention is to obtain dioctyl terephthalate and antifreeze with high added value from PET at the same time in high yields, thereby providing excellent process efficiency and economy, and also recycling PET material waste in the form of films, bottles, and plastic containers. Therefore, it is to
provide an environmentally friendly manufacturing method”.
Concerning the claimed pressures, Sun et al. teach room pressure is utilized when performing alcoholysis on PET when using 2-ethylhexanol which has a boiling point of 183C. Room pressure is approximately 1 bar (Examples).
Note: the boiling point of methanol is lower than 2-ethylhexanol as evidence by
Ashenhurst (page 4 of 33). Ashenhurst teach lower molecular weight alcohols have lower boiling points (page 4 of 33). Hence, methanol/butanol has a lower boiling point than 2-ethylhexonal.
Note: high pressures occur during the use of methanol due to the low boiling point of methanol and the reaction temperature employed as evidence by Pham et al. “However, current commercial technologies still favor high reaction temperatures, which lead to high pressure due to the low boiling point of methanol” (p. 514 left column). Thus, boiling point and reaction pressures are inversely related.
Concerning claim 7, see example 1 wherein ethylene glycol flowed out to the distillation recovery tube.
The above teachings render Sun et al. analogous art to the invention.
Additional teachings of Sun et al. are as follows. Sun et al. teach yields of 98% in Example 5. Example 5 was run as Example 1. Thus room pressures were utilized.
Toida et al. broadly teach “terephthalic acid produced by the hydrolysis of a dialkyl terephthalate (DAT) (par. 18). Toida et al. teach DAT’s having greater than 4 carbon atoms in the alkyl arm of the esters being capable of hydrolysis (par. 29). Toida et al. teach “dialkyl terephthalic acid includes dimethyl terephthalate, diethyl terephthalate, dipropyl terephthalate, dibutyl terephthalate and dihexyl terephthalate”.
This teaching is interpreted to be an open ended listing of DAT’s.
The above teachings render Toida et al. analogous art to the invention.
The teachings of Toida et al. overlap with the teachings of Cruz-Gomez et al. with respect to the hydrolysis of DAT’s having 1-4 carbon atoms.
Obviousness
It would have been prima facie obvious for an ordinary artisan before the effective filing date of the claimed invention to have combined the teachings of Cruz-Gomez et al. and Sun et al. to arrive at the invention with a reasonable expectation of success. For example, it would have been prima facie obvious for an ordinary artisan to have utilized n-butanol in place of methanol in the process taught Cruz-Gomez et al. to arrive at the current invention wherein R1 is 4 carbons. The ordinary artisan would have done so with a reasonable expectation of success because Cruz-Gomez et al. teach the use of n-butanol (column 3, lines 10-20).
The claimed liquid composition (liquid dibutyl terephthalate (DBT)) is a property of the dialkyl terephthalate (DAT). Utilizing longer chain DAT’s allows for the DAT’s to be liquid. See Sun et al. Moreover, isolation of the liquid DAT’s from glycerol and the alcohol are taught by Sun et al.
Upon isolation of the DBT by the methods of Cruz-Gomez et al. and Sun et al., the DBT would have been a liquid at room temperature. NOTE: Reference CAS.org was cited here to establish the melting temperature of DBT but was not supplied nor recited in the original rejection. Thus, the reference CAS.org has been removed from this rejection.
The ordinary artisan would have had a reasonable expectation of success trying
the ever-increasing alkyl lengths of 4 and greater for two reasons: 1) isolation of the
DAT from the PET alcoholysis compositions comprising glycol and alcohol are shown to
occur and 2) hydrolysis of the DAT’s having alkyl groups of 4 and/or more carbons are shown to occur (Toida et al. par. 18 and 29). The ordinary artisan would have looked to the teachings of Sun et al. because both prior art references teach alcoholysis of PET and Sun et al. teach the benefits of the alcoholysis of PET. The ordinary artisan would have looked to the teachings of Toida et al. because Sun et al. and Toida et al. teach the hydrolysis of DAT’s having 1-4 carbon atoms.
Concerning the claimed pressures, these would have occurred due to the boiling points of the alcohol. Lower boiling point alcohols necessarily create higher pressures in the claimed alcoholysis with a constant temperature. Moreover, lower molecular weight alcohols having lower boiling points necessarily generate higher pressures with a constant temperature. This relationship establishes molecular weight of the alcohol to be a result effective variable. The ordinary artisan understanding the above relationships would have arrived at the current pressures through routine experimentation.
Additionally, the ordinary artisan knowing that the room pressure leads to yields of 98% in Example 5 of Sun et al., would have adjusted the temperature and pressures of the alcoholysis reactions to arrive at optimal yields.
Concerning claims 3 and 4, MPEP 2144.05 I.: “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).”
Additionally, the ordinary artisan would have arrived at the claimed ranges through routine experimentation. Too little of an amount of alcohol would not lead to the diester of the terephthalic acid. Too little of temperature, pressure and time would not allow for a reaction to take place.
MPEP 2144.05 II. A. and B. “[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).
Concerning claims 5, the liquid composition is arrived at by the ordinary artisan due to the methods of the prior art being substantially identical to the methods of the current invention. Substantially identical methods yield substantially identical products. See MPEP 2112.01 I. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that
they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
The methods of the prior art and those of the instant invention both perform
alcoholysis of PET with an alcohol of 4 or more carbons. Due to methods of the prior art and the current invention being substantially identical, the products would have been substantially identical.
Concerning claim 6-7, the discharging is being interpreted as a distillation
discharge. See page 7 of the specification. Cruz-Gomez et al. teach distillation of the mother liquor to generate alcohol and glycol. The ordinary artisan combining the teachings of Cruz-Gomez et al. and Sun et al. would have arrived at the discharging of the unreacted alcohol and/or ethylene glycol via distillation with a reasonable expectation of success. The reason being both Cruz-Gomez et al. and Sun et al. teach distillation to remove the alcohol and glycol.
Concerning claim 7, recovering ethylene glycol by distillation is taught by both Cruz-Gomez et al. and Sun et al. Due to both Cruz-Gomez et al. and Sun et al. teaching substantially identical methods of distillation, the product of the distillation would have been substantially identical. Thus, the recovery rate of 65% or more would have been
achieved by the ordinary artisan.
Concerning claims 8-9, MPEP 2144.05 I.: “In the case where the claimed ranges
“overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).”
Concerning claims 10 and 11, purification is taught by both Cruz-Gomez et al.
and Sun et al. Both at least teach filtration. Sun et al. teach activated carbon and the
use of 20 grams of activated carbon.
To arrive at the 0.1 to 20% by weight of the total weight of the liquid composition
of the activated carbon, the ordinary artisan knowing the composition is to be purified by activated carbon would have started with the 20 grams taught by Sun et al. and would have found the claimed ranges via routine experimentation. Too little and the composition would not be purified. Too much, the law of diminishing returns.
MPEP 2144.05 II. A. and B. “[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).
Concerning claim 12, MPEP 2144.05 I.: “In the case where the claimed ranges
“overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).”
Concerning claim 12 and the time of the reaction, the ordinary artisan knowing a hydrolysis reaction was to take place at the claimed temperatures would have allowed enough time for the reaction to take place and would have found the workable ranges of time via routine experimentation. MPEP 2144.05 II. A. and B. “[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).”
Concerning claim 13 and the weight ratios of liquid composition to water, at least two moles of water to the DAT would be required. Starting from that point the ordinary artisan would have experimented with different amounts of water and DAT to arrive at the current ratios. MPEP 2144.05 II. A. and B. “[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).”
Claim(s) 14-15 is/are rejected under 35 U.S.C. 103 as being unpatentable
over Cruz-Gomez et al. (US Patent 5,948,934, Patent date 09-1999), Sun et al. (KR20200046198, Published 05-2020. Machine translation attached) and Toida et al. (USPGPub 2010/0298524) as evidence by Pham et al. (Low-energy catalytic methanolysis of poly(ethyleneterephthalate), Green Chemistry, 23, pp. 511-525, Published 2021) as applied to claims 1, and 3-13 and in further view of Sim et al. (Hydrolysis of Dimethyl Terephthalate for the Production of Terephthalic Acid, J. Chem. Engineering of Japan, Volume 39 Issue 3, pp. 327-333, Published 2006).
Scope of the Prior Art
The combinational teachings Cruz-Gomez et al. and Sun et al. are in the above 103 rejection and are incorporated by reference.
Ascertaining the Difference
Cruz-Gomez et al., Sun et al. and/or Toida et al. do not teach the use of a hydrolysis catalyst nor the amounts as in claims 14 and 15.
Secondary Reference
Sim et al. teach the hydrolysis of DMT to TPA using a Zn acetate catalyst was increased by 20% (Figure 9, p. 327 right column).
Sim et al. teach overlapping subject matter compared to Cruz-Gomez et al. For example, Sim et al. teach hydrolysis of DMT to TPA.
The above teachings render Sim et al. analogous art to the invention.
Obviousness
It would have been prima facie obvious for an ordinary artisan before the
effective filing date of the claimed invention to have utilized the Zn acetate catalyst in the hydrolysis reactions arrived at by the ordinary artisan. The ordinary artisan would have done so with a reasonable expectation of success because Sim et al. teach the catalyst promotes the hydrolysis reaction by 20%. The ordinary artisan would have looked to Sim et al. because Sim et al. and Cruz-Gomez et al. teach overlapping subject matter, the hydrolysis of DMT to prepare TPA.
Concerning the ppm of the catalyst to the liquid composition, Sim et al. teach the catalyst concentrations (Figure 9, p. 331). Figure 9 shows a direct relationship between catalyst concentration and yield. The ordinary artisan armed with this knowledge would have arrived at the claimed concentrations via routine experimentation. MPEP 2144.05 II. A. and B. “[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).”
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 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); 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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 1, and 3-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over allowed claims 1, 3-9, and 11-17 of 18/726,819 (US Patent 12,441,675) in view of Cruz-Gomez et al. (US Patent 5,948,934, Patent date 09-1999), Sun et al. (KR20200046198, Published 05-2020. Machine translation attached), Toida et al. (USPGPub 2010/0298524) and Sim et al. (Hydrolysis of Dimethyl Terephthalate for the Production of Terephthalic Acid, J. Chem. Engineering of Japan, Volume 39 Issue 3, pp. 327-333, Published 2006). 18/726,819 was allowed 06/30/2025.Although the conflicting claims are not identical, they are not patentably distinct from each other because the instantly claimed subject matter embraces or is embraced by the patented subject matter. For example, 18/726,819 claims the following.
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Although claim 1 of 18/726,819 does not claim the compound which is liquid at room temperature, claim 6 of 18/726,819 does.
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Concerning the remaining limitations, these limitations are either met by the current claims and/or the combinational teachings of Cruz-Gomez et al., Sun et al., Toida et al. and Sim et al. The combinational teachings of Cruz-Gomez et al., Sun et al., Toida et al. and Sim et al. are incorporated by reference.
Consequently, the ordinary artisan would have recognized the obvious variation of the instantly claimed subject matter over the patented subject matter.
Conclusion
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/B.G.D/Examiner, Art Unit 1692 /Andrew D Kosar/Supervisory Patent Examiner, Art Unit 1625