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 § 102
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 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) 9-10, 22, 23, 25 and 35 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2006/071214.
WO 2006/071214 discloses an extruded polystyrene foam comprising polystyrene having a molecular weight of at least about 1,000, and according to another aspect, of about 150,000 to about 500,000, and an example of the production of the polystyrene foam using polystyrene with an MW of 154,338 to 172,000 after extrusion and prepared from/comprising foaming agent, along with other additives/assistants {see, abstract, Examples and pages 9-12). Regarding the product-by-process aspects of applicants’ claims, though WO 2006/071214 does not particularly describe that the polystyrene can be obtained by depolymerization difference in the material make-up of the products defined by WO 2006/071214 and the resultant product of the instant claims is not seen as supported by limitation in the patentable sense. Regarding the melt flow index effects of the claims, though not specifically disclosed, owing to the closeness of the material make-ups of the disclosed products and those of the claims it is held that the products of WO 2006/071214 would inherently possess the melt flow index effects defined by the claims.
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) 9-10, 22, 23, 25 and 35 is/are rejected under 35 U.S.C. 103 as being unpatentable over JUREK et al (WO 2017/139333, using US 2019/0062518 as equivalent) in view of MILLER et al (US 6,268,046) and/or FROST et al (US 2014/0107307).
Claims 9-10 and 21-22: JUREK discloses (see entire document) recycled polystyrene that has been depolymerized [as claimed] to a molecular weight of 5,000- 120,000 [encompassing the claimed range 45,000-130,000 of claim 21 with sufficient specificity], with an example of 50,000 [thus meeting the claimed range] (see abstract, [0002], [0008], [0016], [0018], [0022], table 1, claims 1, 4). JUREK is silent regarding the MFI of the depolymerized polystyrene. However, the melt flow index increases as polystyrene is depolymerized to lower molecular weights, as admitted by Applicant in the Remarks of 1/6/2025. Since JUREK discloses the claimed depolymerized polystyrene and the claimed molecular weight of the depolymerized styrene, it would necessarily follow that it has the claimed MFI range.
Case law holds that a material and its properties are inseparable. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir.1990). Since the PTO does not have proper means to conduct experiments, the burden of proof is now shifted to applicants to show otherwise. /n re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977); In re Fitzgerald, 205 USPQ 594 (CCPA 1980).
Additionally, JUREK further discloses that the degree of depolymerization can be controlled ([0019]). Accordingly, it would have been obvious to one of ordinary skill in the art to have varied the degree of depolymerization of the recycled polystyrene to arrive at the desired molecular eight and MFI, and have thus arrived at the claimed range of 50-750 g/10min.
Further, regarding the product-by-process features of applicants’ claims, including new claim 35, though JUREK does concern itself with depolymerized products, applicants’ claims are concern with the finally realized products and difference must be shown based on the material make-up of the resultant product formed for distinction to be evident in the patentable sense. Similarly, regarding new claim 35, though zeolite-supported catalytic depolymerization may not be particularly disclosed by JUREK, difference in the material make-up of the resultant products defined by JUREK and the resultant product of the instant claims is not seen as supported by limitation in the patentable sense.
JUREK discloses that a product can be made from the polystyrene, such as coating, adhesives, or added with other polymers (abstract, [0009]), and discloses that the waste polystyrene to be recycled can be foamed polystyrene which had been expanded with an expansion agent ([0003], [0017]), but does not teach that the product comprising the recycled depolymerized polystyrene is foamed.
However, it is well known to foam polystyrene as taught by MILLER and/or FROST:
MILLER discloses (see entire document) an extruded polystyrene foam product (title, abstract, 1:11-17, 2:50-62, 4:63-5:10) having a molecular weight of 30,000- 150,000. MILLER further discloses talc (6:52-65) [reading on the talc of the withdrawn claims] and foaming/blowing agent (5:41-59) [reading on the claimed foaming agent].
FROST discloses (see entire document) an extruded, foamed polystyrene (PS) product ([0025], [0035], [0037]) comprising recycled polystyrene (title, abstract, [0010]) in amounts of preferably 1-30% ([0011]) [reading the claimed 0.5-30% of claim 23 with sufficient specificity], the remaining being virgin polystyrene.
FROST further discloses that articles made mostly of recycled PS are difficult because of poor processability, low molecular weight, poor performance and poor appearance ([0004]-[0006]); discloses that mixing virgin and recycled PS offsets the relatively poor properties of the recycled PS ([0011]); and discloses that by controlling the reaction between the virgin and recycled PS, one can produce a resin with the desired processability and performance, characterized by the melt flow index and molecular weight ([0012]).
It would have been obvious to one of ordinary skill in the art to have made an extruded foamed product from JUREK’s depolymerized polystyrene as taught by MILLER and/or by FROST since JUREK discloses that foamed polystyrene, such as Styrofoam, are known in the art ([0003]), and MILLER and FROST disclose that either or both virgin and recycled polystyrene can be made into a foamed product, and have thus arrived at the present claim with reasonable expectation of success. Further, regarding foaming agent inclusion, MILLER discloses foaming/blowing agent (5:41-59) and FROST discloses foaming agents ([0037]). It would have been obvious to apply a foaming agent to JUREK’s polystyrene if one wanted to foam the polystyrene.
Claim 23: Table 2 in JUREK discloses a formulation comprising 16.99% depolymerized polystyrene [meeting the claimed 0.5-20%]. Additionally, it would have been obvious to one of ordinary skill in the art to have added an amount of recycled polystyrene to JUREK’s composition through routine experimentation as taught by FROST, since FROST discloses preferably 1-30% of the recycled polystyrene ([0011]) and discloses that using only recycled polystyrene to make a product may be difficult because of poor processability, low molecular weight, poor performance and poor appearance ([0004]-[0006]); that mixing virgin polystyrene to the recycled polystyrene offsets the relatively poor properties of the recycled polystyrene ([0011]); and discloses that by controlling the reaction between the virgin and recycled polystyrene, one can produce a resin with the desired processability and performance, characterized by the melt flow index and molecular weight ([0012]).
Claim 25: The source of the waste polystyrene of JUREK to be depolymerized has a molecular weight of greater than 120,000 ([0043}).
Claims 27 and 30-31: MILLER discloses foaming/blowing agent (5:41-59) and FROST discloses foaming agents ([0037]). It would have been obvious to apply a foaming agent to JUREK’s polystyrene if one wanted to foam the polystyrene.
Response to Arguments
Applicants’ arguments on reply have been considered. However, rejections as set forth above are maintained for the reasons as set forth above.
Regarding the rejection under 35USC102, applicants’ arguments have been considered but are unpersuasive. Alleged distinctions referred to on reply are not reflected by limitation in the claims. The claims as they currently stand are not reflective of the alleged terminal unsaturation and longer aliphatic sections near terminal positions that are referred to on reply, and it has not been demonstrated through fact based evidence that process operations commensurate with the process operations as defined by the claims would realize a foam product that distinguishes over the product disclosed by the teachings of WO 2006/071214. The discussion/statements of paragraph [0005] from applicants’ originally filed supporting disclosure are not a suitable substitution for a fact based demonstration of difference in the material make-up of the products defined by the claims that are supported by identified difference in limitations possessed by the claims. Applicants have not demonstrated in fact that the foam products of their claims differ from those of WO 2006/071214 based on the different mechanisms as defined by the claims.
Positions regarding the molecular weight and melt flow index values of the claims are set forth in the body of the rejection above, and positions as set forth have not been sufficiently refuted through fact based demonstration of difference associated with difference in the make-up of the products as currently defined by the claims.
Regarding the rejection under 35USC103, the following previous arguments are maintained to be still applicable:
Regarding arguments directed to the rejection under the heading 35USC103, the cited MILLER and FROST references are appropriately looked to in order to resolve the deficiencies of JUREK identified in the rejection above. Pointing to deficiencies of the secondary reference(s) based on aspects of the invention that these teachings are not looked to in order to resolve is not sufficient to overcome the rejection on its face, nor is it a suitable substitute for a fact based showing of new or unexpected results attributable to difference in the claims that are demonstrated to be commensurate in scope with the scope of the claims as they currently stand defined.
Additionally, in response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Finally, features of new claim 35 are addressed in the body of the rejection above.
It is held and maintained that the cited MILLER and FROST references are appropriately looked to in order to resolve the deficiencies of JUREK identified in the rejection above. The restatement of the deficiencies remedied through the combination are not a suitable substitute for a fact based, commensurate in scope, showing of new or unexpected results attributable to difference in the claims. Each of the differences pointed to in applicants’ reply are directed towards deficiencies, in the case of JUREK, that are resolved through its combination with the other cited prior art of the rejection, and in the case of the cited MILLER and FROST references, claim elements that these references are not looked to in order to provide since they are already provided for through the identified teachings and fair suggestions of the combination. In this regard it is held, maintained and reiterated that one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. Applicants have not demonstrated based on demonstration in fact that the position of obviousness as set forth above fails. Further, no fact based, commensurate in scope, showing of new or unexpected results attributable to difference in the claims has been set forth in order to overcome the rejection as set forth above.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to John Cooney whose telephone number is 571-272-1070. The examiner can normally be reached on M-F from 9 to 6. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Heidi Riviere Kelley, can be reached on 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOHN M COONEY/Primary Examiner, Art Unit 1765
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