DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
2. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on February 20, 2026 has been entered.
Response to Amendment
3. The amendment filed by Applicant on February 20, 2026 has been fully considered. The amendment to instant claim 1 is acknowledged. In light of the amendment, all previous rejections are withdrawn. The new grounds of rejections are set forth below.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
4. Claims 1, 4-7, 11-12 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
5. As currently amended, instant claim 1 recites a limitation of:
“… wherein the depolymerization sensitizer compound is non-homogenously distributed within the thermoplastic composition, such that the depolymerization sensitizer compound is present in at least 10% by volume and less than 90% by volume of one or more zones containing the depolymerization sensitizer compound.
However, instant specification does not provide support for said limitation in its entirety.
Though instant specification teaches the presence of “zones containing the sensitizer” ([0117] of instant specification) and “sensitizer present in certain places in the thermoplastic composition” ([0020] of instant specification) as cited below:
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instant specification does not provide support for the sensitizer being present in at least 10% by volume to less than 90% by volume of one or more zones, as currently claimed in instant claim 1. Instant specification recites the sensitizer being present in at least 10% volume to less than 90% by volume based on the thermoplastic composition, and not based on the one or more zones. For the purpose of prosecution, it is considered that the range “at least 10% by volume to less than 90% by volume” is based on the thermoplastic composition, as cited in instant specification. Further, though instant specification recites the sensitizer being present in certain places, in zones, instant specification does not provide support for the term “non-homogeneously distributed”.
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.
6. Claims 1, 4-7, 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Poree et al (US 6,160,031) in view of Cook et al (US 2009/0286013), Gil et al (US 2017/0327663), Witte (US 2015/0151498) and Gerard et al (US 2015/0218362).
7. Poree et al discloses a composition for depolymerization of polymers by microwave heating (Abstract), wherein
a) the polymers comprise polymethyl methacrylate gel (PMMA) comprising partially polymerized PMMA/MMA mixture (col. 4, lines 62-64) and polytetrafluoroethylene (PTFE), all used in a mixture (col. 2, lines 25-45) and
b) a microwave susceptor comprising a silicon carbide (SiC), ferrites, barium titanate BaTiO3 or carbon (col. 3, lines 1-10, also as to instant claim 11).
8. As to instant claims 1 and 12, the microwave susceptor is used in amount of 0.5-50%mass, preferably 0.5-5%mass of the polymers (col. 5, lines 5-10).
Though Poree et al recites the amount of the microwave susceptor relative to carbon black as the example of used sensitizer, based on the teachings of Poree et al, it would have been obvious to a one of ordinary skill in the art to choose and use other microwave susceptors including SiC, ferrites, barium titanate in amounts of 0.5-50%mass or 0.5-5%mass of the polymers as well, since it would have been obvious to choose material based on its suitability. It would have been further obvious to a one of ordinary skill in the art to choose and use the polymers of the composition (component a) comprising a major amount of PTFE and a very minor amount of partially polymerized PMMA/MMA mixture, since it would have been obvious to choose material based on its suitability. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
9. All ranges in the composition of Poree et al are overlapping with the corresponding ranges of those as claimed in instant invention. It is well settled that where the prior art describes the components of a claimed compound or compositions in concentrations within or overlapping the claimed concentrations a prima facie case of obviousness is established. See In re Harris, 409 F.3d 1339, 1343, 74 USPQ2d 1951, 1953 (Fed. Cir 2005); In re Peterson, 315 F.3d 1325, 1329, 65 USPQ 2d 1379, 1382 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578 16 USPQ2d 1934, 1936-37 (CCPA 1990); In re Malagari, 499 F.2d 1297, 1303, 182 USPQ 549, 553 (CCPA 1974).
10. Since ferrites, SiC, BaTiO3, used in the composition of Poree et al are the same ferrites, SiC, BaTiO3 claimed in instant claims 1 and 11 as the depolymerization sensitizer, and are cited in instant specification as having dielectric constant at 1000 MHz of more than 5, dielectric loss factor of greater than 0.1 (see Table 1 of instant specification), therefore, ferrites, SiC, BaTiO3, used in the composition of Poree et al will inherently have the same properties as disclosed and claimed in instant application (as to instant claims 4-7). “Products of identical chemical composition cannot have mutually exclusive properties” (See MPEP 2112.01). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
11. Poree et al does not teach the sensitizer being present non-homogeneously, in portions/zones and in 10-90%by volume of the composition.
12. However,
1) Cook et al discloses thermoplastic material comprising a thermoplastic polymer having:
- a microwave-sensitive polymeric region comprising microwave-receptor additives including carbides, titanates (Abstract, [0040]), and
- regions consisting of non-absorbing materials which are transparent to the radiation ([0056]);
the thermoplastic polymer includes acryl- and acrylate-based polymers ([0044]),
wherein said microwave-sensitive polymeric region is further exposed to microwaves (Abstract, [0016]) and wherein the microwave-sensitive region is produced by introducing microwave-receptor additives including carbides, titanates in amount of 0.1-15%wt, into the polymer ([0046]-[0046], [0040]-[0041]). Cook et al further teaches that by applying microwave radiation, heat maybe generated locally at a predetermined region of the volume, bulk or part of the polymer specimen ([0056]).
The microwave-sensitive polymer region maybe incorporated as a discrete layer ([0045]) and used either in skin portion and/or core; the concentration of the microwave-receptive components maybe varied in each of the layers ([0076]).
Thus, Cook et al explicitly teaches that the region sensitive to microwave radiation can be formed locally and in part of the thermoplastic material, i.e. non-homogeneously distributed, to allow selective treatment/heating on the specific regions that are specifically sensitive to the microwave radiation.
2) Gil et al discloses a process for depolymerization of polymeric material comprising the use of a catalyst to aid in depolymerizing the material (Abstract), wherein Gil et al explicitly teaches depolymerization of a fraction of the polymeric material effected by the catalyst material ([0081]-[0084]).
Thus, Gil et al teaches depolymerization taking place of a fraction, i.e. a part of the polymer by said catalyst.
3) Witte teaches a method for repairing composite materials by a localized selective depolymerization of affected area of polymeric matrix by heating said local area of the polymer via microwave anergy ([0011]-[0013]).
Thus, Witte explicitly teaches depolymerization of the specific local areas of the polymer by localized application of the microwave energy.
13. Since i) Poree et al discloses a composition for depolymerization of polymers by microwave radiation, the composition comprising the polymer and a sensitizer, but Poree et al does not explicitly teach the sensitizer being present in the polymer non-homogeneously, but in zones, to allow localized depolymerization;
ii) Cook et al explicitly teaches that the region sensitive to microwave radiation can be formed locally and in part of the thermoplastic material, i.e. non-homogeneously distributed, to allow selective treatment/heating on the specific regions that are specifically sensitive to microwave radiation;
iii) Gil et al and Witte explicitly teach depolymerization of the specific local areas of the polymer by localized application of the microwave energy, and in fractions by action of the catalyst affecting said depolymerization,
therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Poree et al, Cook et al, Gil et al and Witte, and to modify, or obvious to try to modify the composition and process of Poree et al by introducing the sensitizer in the polymer composition non-uniformly, but in the specific zone(s)/regions, thereby creating said zone/regions sensitive to the microwave radiations, as taught by Cook et al, so that the composition of Poree et al would be depolymerizable locally, only in those regions/zones where the sensitizer, i.e. catalyst, is present, given such is desired, especially since localized and fractional depolymerization of polymers is taught in the art, as shown by Gil et al and Witte as well. Further, since the presence of the sensitizer in the composition of Poree et al in view of Cook et al, Gil et al and Witte determines the location and level of depolymerization by the microwave radiation, therefore, depending on the specific end-use of the depolymerized product, it would have been obvious to a one of ordinary skill in the art to make variations and optimize by routine experimentation the volume percentage of the sensitizer present in the composition, i.e. introduce the sensitizer in only 10% by volume of the overall composition if depolymerization of a minor and very local specific place is desired (e.g. “skin” area, as cited by Cook et al), up to in as much as 89.9% by volume of the overall composition, if depolymerization of substantially entire composition is desired, and especially since the claimed range of 10%volume to less than 90% volume covers substantially all possible volume content of the sensitizer in the polymer composition. "[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). The key to supporting any rejection under 35 USC 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 USC 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "‘[R]ejections on obviousness cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.’" KSR, 550 U.S. at 418, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include:
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(A) Combining prior art elements according to known methods to yield predictable results;
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(B) Simple substitution of one known element for another to obtain predictable results;
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(C) Use of known technique to improve similar devices (methods, or products) in the same way;
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(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
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(E) "Obvious to try" – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
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(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention. MPEP 2141
14. Though Poree et al disclose the composition comprising polymethyl methacrylate gel (PMMA) comprising partially polymerized PMMA/MMA mixture (col. 4, lines 62-64), Poree et al do not recite the use of a liquid (meth)acrylic composition comprising a (meth)acrylic monomer, a (meth)acrylic polymer and further a radical initiator.
15. However, Gerard et al discloses a composition comprising:
A) a liquid (meth)acrylic syrup comprising a (meth)acrylic polymer such as methyl methacrylate ([0058]), a (meth)acrylic monomer such as methyl methacrylate ([0069], [0070]) and at least one initiator ([0033]-[0036], as to instant claims 1), and
B) up to 20%wt of a filler ([0120]-[0121], [0116], [0117]).
The composition is used for impregnating fibrous substrates (Abstract).
16. Since both Gerard et al and Poree et al are related to compositions comprising a mixture of partially polymerized PMMA with monomeric MMA further in combination with mineral substances, and thereby belong to the same field of endeavor, wherein Gerard et al discloses a liquid (meth)acrylic syrup comprising a polymethyl methacrylate ([0058]), a (meth)acrylic monomer such as methyl methacrylate, further comprising at least one initiator, therefore, it would have been obvious to a one of ordinary skill in the art to combine the teachings of Gerard et al and Poree et al and to include, or obvious to try to include, at least partially and at least in a very minor amount the liquid acrylate syrup of Gerard et al as the PMMA/MMA-based thermoplastic matrix component a) in the thermoplastic composition of Poree et al, since such syrup includes both an MMA-based polymer and a MMA monomer, as required by Poree et al, and it would have been obvious to choose material based on its suitability, or substitute one equivalent for another, thereby arriving at the present invention. Case law holds that the selection of a known material based on its suitability for its intended use supports prima facie obviousness. Sinclair & Carroll Co vs. Interchemical Corp., 325 US 327, 65 USPQ 297 (1045). Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See In re Ruff 118 USPQ 343 (CCPA 1958).
17. Thus, the composition of Poree et al in view of Gerard et al comprises a combination of a liquid (meth)acrylic syrup comprising:
- a (meth)acrylic polymer such as polymethyl methacrylate (PMMA) (in amount of 10-60%wt [0109], [0110], [0123] of Gerard et al),
- a (meth)acrylic monomer such as methyl methacrylate (MMA) (in amount of 40-90%wt, [0111] of Gerard et al);
- 0.001%wt of at least one initiator ([0033]-[0036] of Gerard et al),
- PTFE and
- 0.5-50 %wt of silicon carbide SiC as the microwave susceptor (col. 5, lines 5-10 of Poree et al).
18. It is further noted that instant specification does not provide any evidence of criticality or unexpected results in using SiC, BaTiO3, SrTiO3, MgTiO3, CaTiO3, LaAlO3, ferrites, basalt, or marble in amount of 0.1-10%wt or 0.5-5%wt, in the specific liquid (meth)acrylic composition comprising a (meth)acrylic monomer or a mixture of (meth)acrylic monomers, a (meth)acrylic polymer, and at least one radical initiator. No examples of using such composition are presented in instant specification. Rather, a variety of possible polymers, including those containing carbonate, styrene, sulfone or vinyl acetate groups ([020], [025] of instant specification) and a variety of various depolymerization sensitizers ([020] of instant specification). Further, no any examples showing the presence of the sensitizer in zones in at least 10% by volume or less than 90% by volume are presented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IRINA KRYLOVA whose telephone number is (571)270-7349. The examiner can normally be reached 9am-5pm EST M-F.
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/IRINA KRYLOVA/Primary Examiner, Art Unit 1764