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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 06/26/2026 has been entered.
Claim Rejections - 35 USC § 103
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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 10, 12-13, 17-22, 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bernardo et. al., “Characterization of chars produced in the co-pyrolysis of different wastes: Decontamination study,” Journal of Hazardous Materials 207–208 (2012) 28–35, hereinafter ‘Bernardo’, in view of Mikulova et al. (Study of carbon black obtained by pyrolysis of waste scrap tyres, Journal of Thermal Analysis and Calorimetry, 2012), hereinafter ‘Mikulova’.
Regarding Claim 10 and 19, Bernardo discloses a method of purifying carbon black, the method comprising performing a heat treatment in an inert atmosphere – particularly, Bernardo discloses pyrolysis of used tires to generate char (i.e., carbon black) in a nitrogen atmosphere (an inert atmosphere), and subsequent extraction of the char: “The char samples were obtained in the co-pyrolysis of a waste mixture composed of 30% (w/w) pine biomass, 30% (w/w) used tyres and 40% (w/w) plastics”; “Pyrolysis experiments were carried out in a 1 L autoclave (Parr Instruments) with an initial nitrogen pressure of 0.41MPa during 15 min at a temperature of 420oC”; “The pyrolysis chars were submitted to a soxhlet extraction according to an adaptation of the EPA 3540C method [28]. Several organic solvents with different polarities were used: hexane, dichloromethane, a mixture of 1:1 (v/v) of hexane:acetone and ethanol. Also, a sequential extraction of hexane, mixture of 1:1 (v/v) hexane:acetone and ethanol was performed with the aim of achieving a higher extraction yield” (p.29, Materials and methods, sections 2.1 and 2.2).
Further, while Bernardo discloses the pyrolysis of used tires to generate char (i.e., carbon black) and subsequent extraction of the char as discussed above, Bernardo discloses a pyrolysis temperature of 420 °C (2.1. Pyrolysis chars) – accordingly, Bernardo does not disclose the instant claimed method, in which heat treatment is performed between 500 and 750 C.
Mikulova discloses a study of carbon black obtained by pyrolysis of waste scrap tyres (title). A person of ordinary skill in the art would have recognized Mikulova as analogous to Bernardo, as both references are drawn to the same field of endeavor as the claimed invention, the pyrolysis of tires to obtain carbon black - a reference is analogous art to the claimed invention if the reference is from the same field of endeavor as the claimed invention, In re Bigio, 381 F.3d at 1325, 72 USPQ2d at 1212.
Further, Mikulova shows the results of the varying pyrolysis temperature from 380 to 1,200 °C under a nitrogen atmosphere, and shows that pyrolysis of tires begins at 290 °C, and the rate of pyrolysis continues to increase until 570 °C at which pyrolysis is considered “complete” (Pg. 1478, Col. 1). Further, Mikulova discloses that, as the temperature of pyrolysis increased, so did the surface area of the resulting carbon black, up to a temperature of about 600 °C, a temperature which is disclosed by Mikulova as “allow[ing] total pyrolysis of this material and formation of porous carbon black with attractive textural properties” (pg. 1481, Col. 1).
Accordingly, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to perform pyrolysis in the method of Bernardo at a temperature of 600 °C – as it has been disclosed in Mikulova that pyrolysis of tires at this temperature results in total pyrolysis of tires and carbon black with enhanced physical features, such as improved surface area, pore volume, and “attractive textural properties”, it would be obvious to one of ordinary skill in the art to modify the disclosed pyrolysis temperature of Bernardo in order to fully pyrolyze said tires and to produce carbon black with enhanced features. Further, such a temperature falls directly within the claimed range.
Regarding Claim 12, Bernardo teaches the extraction solvent is selected from the group consisting of methyltetrahydrofuran (Me-THF), tetrahydrofuran (THF), ethyl acetate (AcOEt), dimethylcarbonate (DMC), methyl acetate (AcOMe), dichloromethane (CH2Cl2), ethyl formate (HCO2Et), 3:1 vol/vol azeotropic compound of ethyl acetate, and ethanol (AcOEt/EtOH) (p. 29, section 2.2: “The pyrolysis chars were submitted to a soxhlet extraction according to an adaptation of the EPA 3540C method [28]. Several organic solvents with different polarities were used: hexane, dichloromethane, a mixture of 1:1 (v/v) of hexane:acetone and ethanol. Also, a sequential extraction of hexane, mixture of 1:1 (v/v) hexane:acetone and ethanol was performed with the aim of achieving a higher extraction yield”
Regarding Claim 13, Bernardo discloses the heat treatment in an inert atmosphere at a temperature between 500 °C and 750 °C is performed before the extracting carbon black with the extraction solvent (as discussed above, the process of Bernardo discloses the pyrolysis chars were submitted to a soxhlet extraction after pyrolysis).
Regarding Claim 17 and 20, Bernardo in view of Mikulova makes obvious the use of a pyrolysis temperature of 600 °C as discussed above.
Regarding Claim 18 and 21, Bernardo discloses said step of heat treatment in an inert atmosphere takes place under an atmosphere of nitrogen gas, as discussed above – this is considered to provide “a current” of an inert gas as claimed.
Regarding Claim 22, Bernardo discloses a step of extracting carbon black with an extraction solvent as discussed above.
Regarding Claim 24, Bernardo discloses the use of dichloromethane as discussed above.
Claim(s) 11 and 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bernardo et. al., “Characterization of chars produced in the co-pyrolysis of different wastes: Decontamination study”, Journal of Hazardous Materials 207–208 (2012) 28–35, hereinafter ‘Bernardo’, in view of Mikulova et al. (Study of carbon black obtained by pyrolysis of waste scrap tyres, Journal of Thermal Analysis and Calorimetry, 2012), hereinafter ‘Mikulova’, as evidenced by Ceron-Carrasco et.al. “Solvent polarity scales: determination of new ET(30) values for 84 organic solvents” (2014) V. 27, Issue 6, pp. 512-518 with supplementary data (hereinafter referred to as Ceron- Carrasco).
Regarding Claim 11 and 23, Bernardo discloses the extraction solvent has a polarity between 36.5≤ ET(30)≤41.6 kcal/mol on the Reichardt scale (see evidentiary reference Ceron-Carrasco, which summarizes the ET(30) values for many organic solvents, including dichloromethane, which has an ET(30) value of 40.7 [entry 58 in the supplementary data].
Claim(s) 14 and 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bernardo et. al., “Characterization of chars produced in the co-pyrolysis of different wastes: Decontamination study”, Journal of Hazardous Materials 207–208 (2012) 28–35, hereinafter ‘Bernardo’, in view of Mikulova et al. (Study of carbon black obtained by pyrolysis of waste scrap tyres, Journal of Thermal Analysis and Calorimetry, 2012), hereinafter ‘Mikulova’, and Ilnicka et.al., “Zinc Regarding the Utilization of Waste Tires by Pyrolysis”, Pol. J. Environ. Stud. V. 25, No. 6 (2016), pp. 2683-2687 (hereinafter referred to as Ilnicka).
Regarding Claim 14 and 25, Bernardo teaches the method of claim 10, which further requires “a step of selectively extracting zinc from the purified carbon black”, to which Bernardo is silent.
Ilnicka teaches a process for the selective removal of zinc from carbon black – particularly, Ilnicka discloses “…zinc and its derivatives were removed effectively by etching the activated (heat-treated) and non-activated (bare) post-pyrolytic chars in acids (HCl and H2SO4. ( p. 2685, right column, Table 2). By such a process, zinc would be removed from the generated carbon black, thus resulting in a more pure char/carbon black product, which is a particular goal of Bernardo (Abstract: the present work is devoted to the study of the decontamination of chars obtained in the co-pyrolysis of plastics, biomass and tyre wastes – the removal of zinc in this case can be considered decontamination).
Thus, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to advantageously modify the method of Bernardo in view of Ilnicka to extract zinc from the carbon black / char. The teaching or suggested motivation for doing so being to “eliminate zinc from the products of waste tire pyrolysis and avoid its environmental circulation” (Abstract of Ilnicka)
Claim(s) 11 and 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bernardo et. al., “Characterization of chars produced in the co-pyrolysis of different wastes: Decontamination study”, Journal of Hazardous Materials 207–208 (2012) 28–35, hereinafter ‘Bernardo’, in view of Mikulova et al. (Study of carbon black obtained by pyrolysis of waste scrap tyres, Journal of Thermal Analysis and Calorimetry, 2012), hereinafter ‘Mikulova’, and Ilnicka, and further in view of Larba et.al., “Citric acid as an alternative lixiviant for zinc oxide dissolution”, Hydrometallurgy 134–135 (2013) 117–123 (hereinafter referred to as Larba).
Regarding Claim 15 and 26, Bernardo and Ilnicka teach the method of claim 14, which further requires “wherein the step of selectively extracting zinc is performed using an aqueous solution comprising a carboxylic acid selected from the group consisting of citric acid and tartaric acid.”, to which Bernardo and Ilnicka are silent.
Larba teaches “Zinc is among the most prevalent and valuable metals used in industry. It is widely used as oxide, sulfide, and chloride. The oxide is used in rubber tires, white paint pigment, ceramic glaze, opaque base in cosmetics and in catalysis”; “However, mineral acids cause environmental pollution and may dissolve undesired impurities. Organic acids are not usually used as leechant due to their low dissolution efficiencies, but they are attractive due to the ease of biodegradation. They can be used at mildly acidic conditions (pH 3–5).” ([p. 117, left column]).
Thus, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to advantageously modify the method of Bernardo in view of Ilnicka to extract zinc using an acid such as citric acid as disclosed by Larba. The teaching or suggested motivation for doing so being to perform extraction with an acid such as citric acid since it is “attractive due to the ease of biodegradation” (p. 117, Introduction section).
Claim(s) 11 and 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bernardo et. al., “Characterization of chars produced in the co-pyrolysis of different wastes: Decontamination study”, Journal of Hazardous Materials 207–208 (2012) 28–35, hereinafter ‘Bernardo’, in view of Mikulova et al. (Study of carbon black obtained by pyrolysis of waste scrap tyres, Journal of Thermal Analysis and Calorimetry, 2012), hereinafter ‘Mikulova’, Ilnicka and Larba, and further in view of Lou et al., “The influence of acid demineralization on surface characteristics of black carbon and its sorption for pentachlorophenol”, Journal of Colloid and Interface Science 361 (2011) 226–231 (hereinafter referred to as Lou).
Regarding Claim 16 and 27, Bernardo in view of Ilnicka and Larba teach the method of claim 15, which further requires “wherein the aqueous solution comprises hydrofluoric acid in combination with the carboxylic acid selected from the group consisting of citric acid and tartaric acid.”, to which Bernardo and Ilnicka are silent. Larba teaches the use of citric acid for zinc extraction. Larba does not teach the use of hydrofluoric acid in combination with the carboxylic acid selected from the group consisting of citric acid and tartaric acid.
Lou teaches the effects of acid demineralization, including treatment using HCl or HCl/HCl–HF, on the surface areas, elemental compositions, surface acidity, surface functional groups, and PCP adsorption characteristics of laboratory-produced rice residue chars (prepared under 400 and 600 oC), fly ash, and soot black carbon.” (p. 226, right column); particularly, “[t]o obtain pure BC [(black carbon)] fractions, each source of BC precursors was treated with HCl and HCl–HF” ([p. 227, left column]). Further, Lou shows that samples treated with HCl-HF exhibited vastly improved surface area, pore volume, and mean pore size compared to those samples treated with only HF (Table 2).
Thus, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to advantageously modify the method of Bernardo in view of Ilnicka and Larba, in further view of Lou and Al-Harbi to extract zinc using aqueous solutions of hydrofluoric acid in combination with the carboxylic acid selected from the group consisting of citric acid and tartaric acid. The teaching or suggested motivation for doing so being improved surface area, pore volume, and mean pore size, which are advantageous for applications of carbon black such as use as a sorbent (1. Introduction of Lou).
Response to Arguments
Applicant’s arguments, filed 02/26/2026, are acknowledged.
With respect to arguments in regard to prior art rejections, Applicant’s arguments have been fully considered but are not persuasive. These rejections, as repeated above, are maintained.
Applicant argues that 1), Bernardo is not drawn to the same field of endeavor as that of the instant claims; 2), Bernardo and Mikulova are not in the same field of endeavor and address fundamentally distinct and unrelated technical problems; and 3), the claimed method would not have been obvious due to the achievement of unexpected and synergistic results.
Regarding 1), it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). Particularly, Bernardo utilizes used tires as feedstock to produce a char, i.e., carbon black, and subjects the char to solvent extraction. This process is clearly directed to the same general field of endeavor as the instant claims, i.e., post-treatment or purification of tire-derived pyrolysis solids. Applicant’s arguments regarding the end use of such solids are not commensurate in scope with the invention as claimed. The claims do not recite any limitation regarding carbon black originating from tires, or being used in high-specification rubber compounds. The obviousness inquiry is based on the claimed method steps and their recited conditions, not on unclaimed objectives or intended uses.
Regarding 2), it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). Further, “In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls. What matters is the objective reach of the claim.” KSR 550 U.S. 398, 419 (2007). In the instant case, the argument is not persuasive, as Applicant’s characterization of the field of endeavor of the references is unreasonably narrow and does not consider the actual teachings of the references as applied in the rejection. Namely, Bernardo is drawn to pyrolysis of used tires to generate a char, i.e., carbon black. Mikulova teaches, regarding pyrolysis of used tires to produce a char, that temperature affects the properties of the produced char. Looking to MPEP 2141.01(a), a reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). Note that "same field of endeavor" and "reasonably pertinent" are two separate tests for establishing analogous art; it is not necessary for a reference to fulfill both tests in order to qualify as analogous art. See Bigio, 381 F.3d at 1325, 72 USPQ2d at 1212. Additionally, the Federal Circuit reads KSR as "direct[ing] us to construe the scope of analogous art broadly" because "familiar items may have obvious uses beyond their primary purposes, and a person of ordinary skill often will be able to fit the teachings of multiple patents together like pieces of a puzzle." Wyers v. Master Lock Co., 616 F.3d 1231, 1238, 95 USPQ2d 1525, 1530 (Fed. Cir. 2010) (quoting KSR, 550 U.S. at 402, 127 S. Ct. at 1727). Therefore, following the guidance of the federal circuit and construing the scope of analogous art broadly in this case, these references are clearly and reasonably pertinent to one another, as they both broadly pertain to the pyrolysis of used tires to generate a char, and therefore satisfy the “reasonably pertinent” test to qualify as analogous art.
Regarding 3), as set forth in MPEP 716.02(d), whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support”. In other words, the showing of unexpected results must be reviewed to see if the results occurred over the entire claimed range, In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). Applicants have not provided data to show that the unexpected results do in fact occur over the entire claimed conditions, and that the unexpected results do NOT occur outside the claimed conditions. Further, to the extent that Applicant asserts synergy from the claimed method, attorney arguments alone are not evidence of synergy. Applicant has provided no technical comparison to show that the alleged effects are attributable to the claimed method specifically, as opposed to known effects of temperature and extraction conditions taught in the art.
Conclusion
As set forth in MPEP 706.07(b), “claims may be finally rejected in the first Office action when (A) the new application is a continuing application of, or a substitute for, an earlier application, and (B) all claims of the new application (1) are identical to, patentably indistinct from, or have unity of invention with, the claims in the earlier application (in other words, restriction (including lack of unity) would not have been proper if the new or amended claims had been entered in the earlier application), and (2) would have been properly finally rejected on the grounds and art of record in the next Office action if they had been entered in the earlier application”. In the instant case, the application is a continuing application of an earlier application, the claims of the new application are identical to the claims in the earlier application, and would have been properly finally rejected on the grounds and art of record in the next Office action if they had been entered in the earlier application.
As such, THIS ACTION IS MADE FINAL. 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.
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/L.E.L./Examiner, Art Unit 1738
/ANTHONY J ZIMMER/Supervisory Patent Examiner, Art Unit 1736