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 Claims
Clams 21 – 40 are pending.
Claims 21 – 40 are rejected.
Priority
Domestic priority data as claimed by applicant
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(filing receipt date 7/29/2024)
The Examiner notes that though the present Application is denoted as a CON of 18/228531, that the instant application appears to contain new subject matter which was not previously disclosed in any of the parent documents. Specifically, the limitation of claims 21 – 27 filed on 7/9/2024 do not appear to be properly support by the priority documents. A process step for comprising admixing “a solvent for swelling the polyester” is discusses in [0007], [0011] - [0015]. [0023], [0024], [0029], [0031] – [0033], [0051], [0069], [00145], [00151], [00158], [00161] and [00166]. Additionally, reference is made to a pre-treating step of the polyester where a solvent for swelling the polyester is discussed in [00146] –[00150]. However, there is no indication in the application for “a swelling solvent”. Therefore, the application as filed only appears to teach that an admixture for the process and the pre-treatment is carried out with “a solvent for swelling the polyester.
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.
Claims 21 – 40 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, regards as the invention.
Claim 21 recites the limitation “transforming a polyester into a terephthalate”, wherein in this instance “terephthalate” is not clearly defined. It is generally understood in the art that terephthalate refers to a salt or ester of terephthalic acid. Applicant’s specification is specifically focused on transformation of a polyester into an ester and not the salt from. With claim 21 not providing any specifics as it relates to the polyester, there is no clarity as to whether a salt or ester of the polyester is the end product of the process. For this reason the claim is indefinite and lacks clarity.
Claim 21 recites the limitation “a swelling solvent” and “an alcoholic solvent”. Dependent claims 22 and 21 defines the swelling solvent as methanol. Dependent claims 35 ad 36 define the alcoholic solvent as methanol. In these instances there is no distinction between the swelling solvent and the alcoholic solvent. For this reason the claim lacks clarity.
Claims 22 – 40 are rejected for being dependent upon a rejected base claim.
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.
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) 21 – 40 is/are rejected under 35 U.S.C. 103 as being unpatentable over Essaddam (US 2017/0008826) in view of Shaw et al. (US 4,057,442) and Balcerzyk Kolloid-Z.u, Z, Polymere, 1973).
The rejected claims cover, inter alia, a process for transforming a polyester into a terephthalate, comprising:(a) pre-treating the polyester with a swelling solvent to generate a swollen polyester; and (b) subsequent to (a), admixing the swollen polyester with (i) an alcoholic solvent and (ii) a sub-stoichiometric amount of an alkoxide to generate the terephthalate ,wherein the sub-stoichiometric amount is less than or equal to about 95% of a stoichiometric amount of the alkoxide, and wherein the process is performed at a temperature from about 25°C to 1000C.
Dependent claims 22 – 27 further limit the swelling solvent. Dependent claims 28 – 29 and 31 – 32 further limit the alkoxide. Dependent claims 35 – 37 further limit the alcoholic solvent. Dependent claims 30, 33 and 38 further limit the process. Dependent claims 39 and 40 further limit the polyester.
However, Essaddam discloses in Example 6 a process for transforming polyethylene terephthalate:
In a 250 mL pyrex flask was introduced polyethylene terephthalate (10 g) and dichloromethane (5 g). Separately sodium hydroxide (2.65 g) and potassium hydroxide (1.5 g) were each dissolved in methanol (50 g). After 20 min., the basic solutions were added to the dichloromethane/PET mixture and the admixing was continued for 3 days at room temperature and atmospheric pressure. Water (200 mL) was added to dissolve all the terephthalic acid salts and terephthalic acid derivatives. The solution was filtered to yield 0.85 g of unreacted starting material or insoluble oligomers. The aqueous solution was acidified and a precipitate formed. The solids were filtered to yield 4.65 g of a mixture of terephthalic acid/4-(methoxycarbonyl)benzoic acid (2.16:1 ratio).
The dichloromethane is a non-polar solvent that is capable of swelling the polymer. (pp. 1, [0009] . the solvents for swelling the polyester of Essaddam can be selected from a halogenated solvent. In some embodiments, the non-polar solvent is a chlorinated solvent. In some embodiments, the non-polar solvent is dichloromethane, dichloroethane, tetrachloroethane, chloroform, tetrachloromethane, trichloroethane, or a combinations thereof. ([0050]). The polyester used in the process of Essaddam and be in the form of polymer flakes. (pp. 3, [0041]).
The difference between the instantly claimed invention and Essaddam is as follows: the swelling solvent is selected from the group consisting of dimethyl sulfoxide, N,N-dimethylformamide, acetone, a halogenated solvent, n- hexane, nitrobenzene, methanol, benzyl alcohol, benzaldehyde, and any combination thereof; the swelling solvent comprises N,N- dimethylformamide; the swelling solvent comprises methanol; the polyester is pre-treated with the swelling solvent for a time period from about 5 minutes to 60 minutes; and polyester flakes polymer size.
However, with regard to the swelling solvent is selected from the group consisting of dimethyl sulfoxide, N,N-dimethylformamide, acetone, a halogenated solvent, n- hexane, nitrobenzene, methanol, benzyl alcohol, benzaldehyde, and any combination thereof; the swelling solvent comprises N,N- dimethylformamide; the swelling solvent comprises methanol, the Examiner turns to the teaching of Shaw and Balcerzyk. The prior art of Shaw discloses a method for the safe disposal of pyrotechnic compositions. According to Shaw, the pyrotechnic compositions of their process have the chemical nature of the polymeric matrix. (col. 2 ln 51 – 55). The binders for the pyrotechnic compositions include polyurethanes, polyesters, polyethers and polybutadines. (col. 2, ln 62 – 65). Breakdown of the matrices formed by the polymer binder can be accomplished by solvent swelling. A suitable swelling agent, such as, for example, tetrahydrofuran, dimethyl formamide, aromatic hydrocarbons such as benzene or toluene, aromatic amines such as pyridine, chlorinated hydrocarbons such as chloroform, or ethylene dichloride, hydrocarbons such as kerosene, petroleum ether, hexane and cyclohexane and the like, either in the presence or absence of Lewis acid or base catalysis will cause the polymeric matrix to swell allowing solid components enclosed therein to be flushed out. (col 3, ln 1 – 18).
Balcerzyk discloses that a methanolic solution swells poly(ethylene terephthalate) (PET). (pp. 251, left col. 1st para.)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the instantly claimed invention to modify the process of Essaddam any use any of the known solvents, capable of swelling polymers, available in the art such as those disclosed in the teaching of Shaw or Balcerzyk. Specifically, the Shaw and Balcerzyk discloses that both non-polar and polar solvents are capable of swelling polyesters. achieve similar yields of DMT and EG as in runs 2-5 and 8-13. The skilled artisan would have been further motivated to do so in order to produce a more efficient process using less catalyst, which would also produce less waste and simplify the separation of the product from the reaction mixture. Also see MPEP 2144.05.
Therefore, all the claimed elements were known in the prior art and one skilled 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 before the effective filing date of the instantly claimed invention. KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (U.S. 2007).
Regarding the polyester is pre-treated with the swelling solvent for a time period from about 5 minutes to 60 minutes, the Examiner turns to the teaching of Essaddam. The prior art of Essaddam teaches that the transformation (depolymerization) time can vary. In some embodiments, the depolymerization is instantaneous. In some embodiments, the sufficient time to depolymerize at least a portion of the polymer to the starting materials for the production of new polymer is about 0 h to about 24 h. In some embodiments, the sufficient time to depolymerize at least a portion of the polymer to the starting materials for use in the production of new polymers is about 0 h to about 20 h, about 0 h to about 15 h, about 0 h to about 10 h, 0 h to about 5 h, about 0 h to about 4 h, about 0 h to about 3 h, about 0 h to about 2 h, or about 0 h to about 1 h. In some embodiments, the sufficient time to depolymerize at least a portion of the polymer to the starting materials for the production of the polymer is about 0 h, 0.1 h, 0.2 h, 0.3 h, about 0.4 h, about 0.5 h, about 0.6 h, about 0.7 h, about 0.8 h, about 0.9 h, or about 1 h. (pp. 5, [0063]). Where 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).
With regard to polyester flakes polymer size, the Examiner turns to the teaching of Essaddam. The prior art of Essaddam discloses the use of polymer flakes in their process. (col. 3, [0041]). Determining the best flake size so the obtained the desired speed of processing is a matter of routine experimentation. Where 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 21 – 27 and 31 - 38 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3 – 10 and 14 of U.S. Patent No.10,252,976 (‘976) . Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 1 recites an embodiment of the process of claim 1 of ‘976, the alcohol solvent of ‘976 and the solvent for swelling the polyester. Additonally, the ratio of polyester to alkoxide employed in the process of ‘976 falls within the instantly clamed ranges. See MPEP 2144.05.
With respect to claims 22 – 27, see claims 6 and 7 of ‘976. With respect to claims 31 - 33, see claim 10 of ‘976. With respect to claim 34, see claim 14 of ‘976. With respect to claims 35 – 38, see claims 3, 4 and 9..
Double Patenting
Claims 21 – 27, 31 – 32 and 34 - 36 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 4, 9 - 14 and 17 of U.S. Patent No.11,866,404 (‘404) . Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 1 recites an embodiment of the process of claim 1 of ‘976, the alcohol solvent of ‘976 and the solvent for swelling the polyester.
With regard to clams 22 – 27, see claims 2 and 9 – 13 of ‘404. With regard to clams 31 and 32, see clams 3 and 4 of ‘404. With regard to claim 34, see claim 17 of ‘404. With regards to claims 35 and 36, see claims 14.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YATE' K. CUTLIFF whose telephone number is (571)272-9067. The examiner can normally be reached Monday-Friday (8:30 - 5:30).
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/YATE' K CUTLIFF/Primary Examiner, Art Unit 1692
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