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 .
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 1-12 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 requires not less than 100 ppm of metal hydroxide, but fails to specify what the ppm figure is in relation to. For instance, it could be 100 ppm relative to weight of polycarbonate, relative to weight of reaction liquid, or relative to weight of additives. Accordingly, the intended scope of the claim is unclear.
As claims 2-12 depend from claim 1, they are rejected for the same issue discussed above.
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) 1-6 and 8-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Uchiyama (US 2023/0322653 A1).
Regarding Claims 1, 4, 8, 9, 11, and 12, Uchiyama teaches methods for degrading polycarbonates (Abstract) and describes examples where polycarbonate, aqueous sodium hydroxide, and phenol are combined and reacted in a two step process to form bisphenol A and carbon dioxide (¶ 388-395). 320 g of 25 wt% NaOH is used relative to 650 g of reaction mixture, which suggests an excess of 100 ppm of NaOH is used. While not indicating the same order of addition (adding metal hydroxide to phenol; then adding polycarbonate and water), Uchiyama teaches the order of mixing is not particularly limited (¶ 121). Thus, it would have been obvious to one of ordinary skill in the art that any order of mixing, inclusive of adding metal hydroxide to phenol and then adding polycarbonate and water can be used to afford the predictable result of polycarbonate degradation to bisphenol A.
Further, different quantities of water are used within Uchiyama’s examples than what is indicated within the claims. In this regard, Uchiyama teaches the quantity of water may vary widely so as to avoid decreases in reaction rates if too small and inefficiencies if too large (¶ 97-98). Thus, Uchiyama expressly indicates the quantity of water is a known result effective variables because changing them will clearly affect the type of product obtained. See MPEP 2144.05(II). Case law holds that “discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In view of this, it would have been obvious to one of ordinary skill in the art to discover workable or optimal water contents within the scope of the present claims so as to produce desired end results.
Regarding Claims 2 and 3, Uchiyama teaches reaction temperatures, corresponding to claimed second heating temperatures, spanning 40-110 degrees C (¶ 133-134), which overlaps the range claimed. With respect to first heating temperature, Uchiyama teaches the formation of reaction mixture occurs preferably 20 degrees C or more (¶ 120), which also overlaps the range claimed. It would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Uchiyama suggests the claimed ranges. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Uchiyama. See MPEP 2123.
While it is acknowledged ¶ 120 of Uchiyama also sets forth a preferred range of 40 degrees C or less, Uchiyama explains the concerns of high temperatures are owing to volatilization of the catalyst, leading to difficulties in creating predetermined concentrations and reaction rates (¶ 120). The examiner submits 1) the upper value of 40 degrees C is only “preferred” and therefore not required and 2) one of ordinary skill would readily ascertain metal hydroxide catalysts such as sodium hydroxide are clearly non-volatile and thus, would ascribe Uchiyama’s preferred upper limit solely relevant toward those embodiments involving volatile catalysts.
Regarding Claim 5, claim 5 refers to a contingent limitation operating should the water content in the reaction liquid fall below 0.5 wt%. Per MPEP 2111.04(II), the broadest reasonable interpretation of a method (or process) claim having contingent limitations requires only those steps that must be performed and does not include steps that are not required to be performed because the condition(s) precedent are not met. In the present case, Uchiyama does not indicate water is consumed over the course of reaction (Formula 4 of Page 10). Thus, claim 4 is met since Uchiyama indicates the water content would not drop over the course of reaction.
Regarding Claim 6, the example of Uchiyama utilizes 250 g of phenol relative to 80 g polycarbonate (¶ 388), equivalent to a ratio of 3.125.
Regarding Claim 10, Uchiyama teaches the content of hydroxide catalyst varies widely, such as where the mass ratio of hydroxide to polycarbonate spans 0.01-50 (¶ 101). Uchiyama notes if the content of hydroxide is too low, the degradation time is lengthened while if too high, the production efficiency of bisphenol decreases (¶ 101). Thus, Uchiyama expressly indicates the quantity of hydroxide is a known result effective variables because changing them will clearly affect the type of product obtained. See MPEP 2144.05(II). Case law holds that “discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In view of this, it would have been obvious to one of ordinary skill in the art to discover workable or optimal water contents within the scope of the present claims so as to produce desired end results.
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 1-5, 7, and 10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of copending Application No. 18/903,109. Although the claims at issue are not identical, they are not patentably distinct from each other.
Specifically, claim 2 pertains to a process of depolymerizing polycarbonate using a mixture of phenol, metal hydroxide, and water, the metal hydroxide added is not less than 100 ppm and the water content of the reaction liquid is controlled to be not greater than 10 wt%. Bisphenol A is formed (Claim 1). As there is no perceivable difference in protocol between what is instantly claimed and what is set forth within the claims of ‘109, the generation of carbon dioxide, inclusive of the mechanism of claim 7, is seen to necessarily occur in the absence of evidence to the contrary. Therefore, the ‘109 claims anticipate the instant claims. The remaining limitations of the instant claims are found within the claims of the ‘109 application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claim 7 would be allowable if 1) a terminal disclaimer is filed to overcome the above double patenting rejection and 2) rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Related Art
The cited prior art made of record in the attached PTO-892 and not relied upon is considered pertinent to applicant's disclosure.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHEN E RIETH whose telephone number is (571)272-6274. The examiner can normally be reached Monday - Friday, 8AM-4PM Mountain Standard Time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached at (571)272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEPHEN E RIETH/Primary Examiner, Art Unit 1759
