DETAILED ACTION
Notice of Pre-AIA or AIA Status
As previously set forth: The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
As previously set forth: The claims have an effective date of the filing of the provisional application 4/4/19
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 4/6/26, 1/21/26, 11/4/25 have been considered by the examiner.
Response to Arguments
Applicant argues [0040] supports zeolite as a catalyst material, not merely as a support for another catalytic compound. Applicant argues H-mordenite is a type of zeolite thus zeolites are meant to serve alone as catalysts.
The Examiner disagrees. In [0040] it is unclear what “catalyst material” is. A catalyst material could be a support. A catalyst material could be a catalyst. [0040] does not describe a zeolite as a catalyst, [0040] discloses a zeolite to be a catalyst material. Regarding the H-mordenite, this does not clarify what is meant by catalyst material since it is merely an example of one. As above, [0040] is confusing as to what “catalyst material” means (for reasons above) and does not support the language of “wherein said catalyst is a zeolite”. The Examiner is not convinced by Applicant’s arguments and the position stands.
Applicant argues [0091] of Yeager merely describes suitable polystyrenes, not a standalone composition of at least 75% polystyrene. Applicant argues Yeager does not teach depolymerization and thus the claimed polymer is structurally distinct. Applicant argues styrenic polymers contain specific structural or chemical properties and distinct olefin content that Yeager would lack. Applicant argues the Examiner has ignored the inherent structural differences created by the depolymerization and offers NMR evidence of such. Applicant argues the color of recycled polystyrene is different than virgin material and these differences would not be obtained even if depolymerized polystyrene was purified. Applicant argues the Tg and MW of the claims is distinct from Yeager as is the solubility.
The Examiner disagrees. First, the Examiner reminds Applicant that any data should be attached in Affidavit form. The data of the remarks is commented on below but is not officially considered since it is not in affidavit form. Yeager embraces (and renders prima facie obvious) all of the structural requirements of the claims. The MW is embraced, the olefin content is embraced, the MW is embraced. These are disclosed explicitly in Yeager. Applicant argues that these are elements that give a distinct product, however, Yeager embraces such. Thus, the depolymerized polystyrene of the claims is properly met as a product by process limitation. Applicant’s NMR shows a different result, but does not show this to be distinct (e.g. unexpected). Slight differences between polymerized polystyrene are expected (as would slight differences between depolymerized polystyrene). That is Applicant’s burden. There are no color properties claimed nor quantitative evidence of what color requirements would or would not be found in different polystyrene compositions. The polystyrene of [0091] of Yeager itself is just polystyrene and meets the claims. As such Arguments to Yeager are not found persuasive.
Applicant argues Leclerc is drawn to polymerizing catalysts, not depolymerization catalysts nor does Leclerc make up for the deficiencies of Yeager.
The Examiner disagrees. Yeager is not deficient for reasons above. Yeager is drawn to polymerized polystyrene, thus combination with polymerization catalysts of Leclerc is proper. These meet the claim requirements. Applicant’s arguments herein are thusly not persuasive.
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.
Claims 3, 21, and their dependents, 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. “catalyst is a zeolite” is deemed new matter. The specification [0040] supports wherein the catalyst may comprise a zeolite supported system but the zeolite itself is not disclosed as a catalyst. The catalyst is another compound supported on said zeolite
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 Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 4, 11-15 is/are rejected under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Jurek (WO2017/139333, US 2019/0062518 is used as an equivalent document for the citations below).
Jurek discloses depolymerized polystyrene resins (abstract). Said resins have a MW greater than 5000 Da [0008], and exemplified to be 50,000 Da.
The “wherein said styrenic polymer is derived from a catalytic depolymerization” is a product by process limitation. The process not being pertinent unless Applicant shows a distinct product is produced. The limitation “is not purified after said catalytic depolymerization” is also product by process and treated as discussed above. There is no disclosure or evidence nor features in claim 1 of what is or isn’t in styrene before/after polymerization and/or depolymerization.
Claim 1 is thusly anticipated in light of elements above. Alternatively, claim 1 is prima facie obvious over Jurek because the claimed product may be slightly different than the product of the prior art.
The polystyrene may be post consumer material [0016], as required by claim 4. Alternatively such is a product by process limitation, where the material is derived from is not pertinent unless Applicant shows a distinct product is produced. The styrene product of Jurek may be grafted with acrylic acid (example 1 [0083]), as required by claim 12, since the composition requirements are met the polystyrene of Jurek must be soluble in organic or aqueous mediums, meeting claim 13, 100% of the polystyrene may be from post consumer material [0016], as required by claim 14. No other polymers are required therein, meeting claim 15.
Claim(s) 2, 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jurek in view of Tippet (US 2012/0108863).
Jurek includes elements as set forth above. Jurek discloses the use of depolymerized polystyrene (abstract) wherein the depolymerization may be catalytic [0018]. Jurek does not disclose the catalysts used to depolymerize polystyrene.
Tippet discloses depolymerization of plastic materials (title). The plastic material may be polystyrene (abstract). For the depolymerization thereof, aluminas or zeolites may be used [0063]. Tippet thusly discloses suitably known catalysts used for catalytic depolymerization of polystyrene.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include in Jurek the use of aluminas or zeolites, as taught by Tippet, since these are known in the art as suitable depolymerization catalysts for polystyrene. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), wherein the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination. See also MPEP 2143E wherein it is obvious to try an identified known solution (a known depolymerization catalyst), with a reasonable expectation of success.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jurek.
Jurek includes elements as set forth above. Jurek discloses the MW to be above 5000 Da, embracing and rendering claim 11 prima facie obvious. See In re Wertheim.
Claim(s) 1, 4, 6-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yeager (US 2003/0215588).
Elements of this rejection are as previously set forth, reiterated below in its entirety in italics. Claims 2-3 are removed due to the amendment to claim 1
Yeager discloses the use of a polystyrene polymer in a curable resin (abstract). The polystyrene polymer may have a MW range from about 10,000-400,000 amu [0092]. This embraces and thusly renders obvious the MW of claim 1. See In re Wertheim.
The limitation “derived from a catalytic depolymerization of a polystyrene feedstock” is a product by process limitation. The process of making the styrenic polymer is not pertinent unless Applicant shows a distinct product is produced. Herein, there could be any number of purification steps after a depolymerization reaction, wherein the end product may solely be polystyrene, just like the native/virgin polystyrene of Yeager.
The polystyrenes (alone) of [0091] meet claim 1. Claim 4 is drawn to the process of making and, as above, these are not pertinent unless a distinct (unexpected) product is shown (and properly claimed). The polystyrene may have up to 10 wt% butadiene [0092], as required by claim 6. Zinc stearate may be used in the overall final composition in an amount of 1 wt% [0155]. The order of mixing is prima facie obvious See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.), thus mixing the zinc stearate first with the polystyrene is prima facie obvious and meets claim 7. Titanium dioxide is added in amounts of 15 wt% (table 11) and iron oxide is another filler disclosed in [0108], its use in amounts about the same as titanium dioxide or any other filler (e.g. 15 wt%) is prima facie obvious. Additionally iron fiber fillers may be used in amounts of 5-80 wt% [0113]. Again, the order of mixing is prima facie obvious so mixing any of the above with polystyrene before making the final composition is prima facie obvious.
Elements above meet claims 7-10. The MW of Yeager meets that of claim 11, also the styrene polymer discussed above embraces that of the claims/specification. Thus, the Tg of claim 11 is found to be embraced by the reference. if there is any difference between the above composition and the composition of the instant claims the difference would have been minor and obvious. "Products of identical chemical composition can not have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I) , In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985), In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Warren Corp v D F Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY 1934).
Elements above meet claim 11. The styrene polymer may be a maleic anhydride-styrene copolymer (abstract), some of which would implicitly have maleic anhydride endgroups, meeting the grafted acid requirements of claim 12. Since the composition requirements are met, the solubility requirements of claim 13 must be embraced. Since any amount of purification can be done to a depolymerized polymer, claims 14-15 are met by the product by process discussion above. The polymerization of polystyrene in Yeager would implicitly have catalyst residue therein, since purity won’t reach 100% even if it is purified. There are no concentrations and/or species of catalyst, thus elements above further meet claims 16-20 wherein no non-polystyrene materials are claimed in the final product, thus, the 100% polystyrene discussed above meets claim 19.
Claim(s) 2, 3, 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yeager in view of Leclerc (US 20060135713).
Elements of this rejection are as previously set forth, reiterated below in its entirety in italics. Claims 2 and 3 are added, due to amendment. The rejection is modified below to include aluminia, which is disclosed by Leclerc in [0241]
Yeager includes elements as set forth above. Yeager discloses using polystyrene but does not disclose how it was made.
Leclerc discloses ligands, compositions and complexes used to polymerize styrene to polystyrene (abstract). These ligands, complexes and catalysts may be supported on zeolite or alumina supports [0241], amongst other supports. Supports such as alumina and zeolites are thusly suitably known as catalyst supports in the polymerization of polystyrene.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include in Yeager the use of zeolite or alumina supported catalysts/ligands/complexes, as taught by Leclerc, since this is a suitably known way to produce polystyrene in the art.
It is the Examiner’s position that even if the polystyrene is purified after (which is not disclosed in Yeager-but could happen), purity of 100% would not be reached and some catalyst and zeolite support would be therein. If not purified certainly some catalyst and zeolite support would be present in the final product.
Conclusion
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/ALICIA BLAND/ Primary Examiner, Art Unit 1759
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