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 .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 8 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 1 already requires recovering MHET, and since the purification step is optional, the only required step of Claim 8 is recovering MHET. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-5, and 8-9 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Marty (WO 2021/005198). Regarding Claims 1 and 8, Marty shows a process for producing oligomers from a plastic product comprising PET, comprising submitting the plastic product to an enzymatic depolymerization step performed at a pH between 3 and 6.5 by contacting the plastic product in the reaction medium with at least one enzyme having a PET-degrading activity (PETase), and recovering the oligomers, wherein the oligomers are MHET (pg 25, lines 16-19; pg 26, lines 14-20; pg 27, lines 8-10).
Regarding Claim 2, Marty shows the process of claim 1 above, including one wherein the enzyme having a PET-degrading activity is an esterase (pg 25, line 16).
Regarding Claim 3, Marty shows the process of claim 1 above, including one wherein the pH of the depolymerization step is regulated between 3 and 6 by addition of a base in the reaction medium (pg 27, lines 8-10).
Regarding Claim 4, Marty shows the process of claim 3, including one wherein the base is sodium hydroxide (NaOH) (pg 32, lines 10-15).
Regarding Claim 5, Marty shows the process of claim 1 above, including one wherein the process is implemented at a temperature comprised between 50°C and 72°C (pg 26, lines 27-31).
Regarding Claim 9, Marty shows the process of claim 8 above, including oe wherein the method comprises recovering and purifying the MHET using water (pg 27, lines 19-31; pg 28, lines 1-5: teaching of aqueous solution, i.e. of or containing water).
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.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Marty. Marty shows the process of claim 20 above, including various composition amounts (pg 31, lines 2-7), however he does not specifically disclose the claimed concentration of polyester. It would have been obvious to one of ordinary skill in the art to use any appropriate polyester concentration, such as that which is claimed, because where the general conditions of a claim are disclosed by the art, it is not inventive to discover the optimum or workable ranges by routine experimentation (MPEP 2144.05 (II)(A)).
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Marty, in view of Desrousseaux et al. (U.S. Patent Application Publication 2019/0218360). Marty shows the process of claim 20 above, but he does not show an amorphization step prior to the depolymerization step. Desrousseaux shows that it is known to carry out a method which includes an amorphization step prior to the depolymerization step (0023). It would have been obvious to one of ordinary skill in the art to use Desrousseaux's amorphization step prior to Marty's depolymerization step in order for the material to be appropriately prepared for depolymerization.
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 1-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 20-27, 36, and 37 of copending Application No. 18/560951 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are slightly-differently worded versions of the ‘951 claims and therefore not patentably distinct therefrom, as they are effectively anticipated by the ‘951 claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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MONICA ANNE HUSON
Primary Examiner
Art Unit 1742
/MONICA A HUSON/Primary Examiner, Art Unit 1742
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