DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
This is a response to Applicant's amendment filed July 14, 2025.
Status of the Claims
Claims 1 and 29 have been amended. Claims 2-3, 8, 11-17, 19 and 28 have been cancelled. Claims 1, 4-7, 9-10, 18, 20-27 and 29-31 are pending. Claims 1, 4-7, 9-10, 18, 20-27 and 29-31 are examined herein.
Response to Arguments
The Amendments to the Claims filed 07/14/2025 have been entered. Applicant’s arguments, see pages 8-11, filed 07/14/2025, with respect to the rejection(s) of claims 1, 3-10, 18, and 20-28 under 35 U.S.C. 102(a) have been fully considered and are not persuasive. The Applicant has amended claim 1 to require that the depolymerization is aided by a catalyst, wherein said catalyst is [Fe-Cu-Mo-P]/Al2O3. In addition, it is noted that Applicants have presented arguments about differences between “a catalytic depolymerization process” and “a traditional (non-catalytic) depolymerization process”. However, it is the examiner’s assessment that Applicants’ general statement about differences between “a catalytic depolymerization process by using the catalyst [Fe-Cu-Mo-P]/Al2O3” and “a traditional (non-catalytic) depolymerization process” does not necessarily establish a difference between the claimed product and the prior art product.
The prior art of record Gravatt et al. (EP 2,283,094 B1) discloses a polypropylene wax in Table 1 having a melting point of 140-165oC (as recited in claims 7 and 23). The polypropylene wax in Table 1 is also disclosed as having a penetration hardness of less than 0.5 dmm and a viscosity of greater than 20-3000 cps which are within the ranges of the polypropylene wax disclosed by the Applicant as being produced by the claimed process ([0088]). The polypropylene wax disclosed by the prior art reference is therefore considered to anticipate the claimed wax and it is a polypropylene wax having the same properties as the polypropylene wax that are achieved by the claimed process. Moreover, it is well known in the petrochemical art that a catalyst is a substance that speeds up a chemical reaction, or lowers the temperature or pressure needed to start one, without itself being consumed during the reaction.
Consequently, it is the examiner’s assessment that the Applicant has not shown that the claimed process limitations impart or imply any chemical structural and/or compositional limitations to the claimed wax that would differentiate the claimed wax from the wax disclosed by the prior art and therefore, while the wax of the prior art may not be produced by the same method as claimed, the Examiner has provided a showing that the claimed product appears to be the same as that of the prior art and the burden now shifts to the Applicant to come forward with evidence establishing a difference between the claimed product and the prior art product. It is respectfully suggested that if applicants wish to distinguish the claimed wax from one recited in Gravatt et al., the inventive chemical structure and/or physical properties of wax should be explicitly recited in claims.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Upon further consideration and search, a new/modified ground(s) of rejections to claims 1, 4-7, 9-10, 18, 20-27 and 29-31 under 35 U.S.C. 102(a) are provided in the instant Office action.
Claim Interpretation
The examiner notes the claims are set forth as product by process claims. The product will determine patentability. Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps.
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product. See, e.g., In re Garnero, 412 F.2d 276, 279, 162 USPQ 221, 223 (CCPA 1979).
“The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature” than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983). See MPEP § 2113.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 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) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent.
Claims 1, 4-7, 9-10, 18, 20-27 and 29-31 are rejected under pre-AIA 35 U.S.C. 102(a) as being anticipated by Gravatt et al. (EP 2,283,094 B1).
In regards to claims 1, 4-7, 9-10, 18, 20-27 and 29-31, the claims are set forth as product by process claims and the only structure implied by the claims is a polypropylene wax having a melting point between 100 and 170oC.
Gravatt discloses a polypropylene wax in Table 1 having a melting point of 140-165oC (as recited in claims 7 and 23). The polypropylene wax in Table 1 is also disclosed as having a penetration hardness of less than 0.5 dmm and a viscosity of greater than 20-3000 cps which are within the ranges of the polypropylene wax disclosed by the Applicant as being produced by the claimed process ([0088]). The polypropylene wax disclosed by the prior art reference is therefore considered to anticipate the claimed wax and it is a polypropylene wax having the same properties as the polypropylene wax that are achieved by the claimed process.
The Examiner notes that the Applicant has not shown that the claimed process limitations impart or imply any structural limitations to the claimed wax that would differentiate the claimed wax from the wax disclosed by the prior art and therefore, while the wax of the prior art may not be produced by the same method as claimed, the Examiner has provided a showing that the claimed product appears to be the same as that of the prior art and the burden now shifts to the Applicant to come forward with evidence establishing a difference between the claimed product and the prior art product. It is respectfully suggested that if applicants wish to distinguish the claimed wax from one recited in Gravatt et al., the inventive chemical structure and/or physical properties of wax should be explicitly recited.
Conclusion
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YOUNGSUL JEONG whose telephone number is (571)270-1494. The examiner can normally be reached on Monday-Friday 9AM-5PM.
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/YOUNGSUL JEONG/Primary Examiner, Art Unit 1772