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 .
Claim Status
Claims 1-6, 8-14 and 16-25 are currently pending.
Response to Arguments
Applicant's arguments filed on 04/27/2026 have been fully considered but they are not persuasive.
The applicant argues that the rejection does not establish a prima facie case of obviousness because it does not identify any disclosure or provide evidence that the cited references teach or suggest deinking plastic material comprising the claimed ink composition, not that Nakayama’s binder-specific mechanism applies to such ink systems.
This argument is not passive. The reference of Nakayama teaches a method for removing multiple layers from a substrate such as plastics (column 1, lines 62-63, and column 6, lines 48-56), wherein the layers comprise at least one cured binder layer adjacent to the substrate, the binder comprising a cured binder resin (column 1, lines 62-66, and column 2, lines 36-47) comprising alkyd resins (column 3, line 28) and including pigments such as coloring pigments (column 5, lines 58-66). In addition, Nakayama teaches the step of contacting the substrate with an acid compound, wherein the acid can be an oxidizing inorganic acid such as nitric acid, sulfuric acid, and/or phosphoric acid (column 2, lines 24-34, column 7, lines 48-51 and 58-60, and column 9, lines 17-21).
The reference of Peters teaches a method for separating a coating from a base plastic (column 1, lines 44-56), wherein the coating comprises ink (column 2, lines 55-58 of Peters), and the steps of contacting the plastic material with an acid compound (column 1, lines 44-52 of Peters), wherein the acid can be an oxidizing inorganic acid such as nitric acid, sulfuric acid, and/or phosphoric acid, and separating the plastic material from the oxidizing inorganic acid (column 5, lines 52-54 of Peters).
As disclosed in the precious Office Action, the combination of Nakayama and Peters references does not explicitly teach that the method is for deinking a plastic material, the plastic material comprising or provided with an ink selected from the group consisting of alkyd-based. However, it would have been obvious to one of ordinary skill in the art to perform the method disclosed by Nakayama/Peters for deinking a plastic material, the plastic material comprising or provided with an ink selected from the group consisting of alkyd-based resins, with a reasonable expectation of success, since Nakayama teaches that the method is effective for removing multiple layers from a substrate such as plastics (column 1, lines 62-63, and column 6, lines 48-56 of Nakayama), wherein the layers comprise at least one cured binder layer adjacent to the substrate, the binder comprising a cured binder resin (column 1, lines 62-66, and column 2, lines 36-47 of Nakayama) comprising alkyd resins (column 3, line 28 of Nakayama) and including pigments such as coloring pigments (column 5, lines 58-66 of Nakayama), and Peters teaches that it was known in the art to separate a coating from a base plastic, wherein the coating comprises ink (column 2, lines 55-58 of Peters) by contacting the coating with an acid compound (column 1, lines 44-52 of Peters), wherein the acid can be an oxidizing inorganic acid such as nitric acid, sulfuric acid, and/or phosphoric acid (column 1, lines 44-52 of Peters).
The applicant argues that the claims require inks selected from specific resin systems, and that the previous Office Action does not cite any passage disclosing the claimed ink system.
This argument is not persuasive. In this case, Peters teaches that it was known in the art that a plastic substrate can comprise an ink layer (column 2, lines 55-58 of Peters), and Nakayama teaches a method for removing multiple layers from a substrate such as plastics (column 1, lines 62-63, and column 6, lines 48-56), wherein the layers comprise at least one cured binder layer adjacent to the substrate, the binder comprising a cured binder resin (column 1, lines 62-66, and column 2, lines 36-47) comprising alkyd resins (column 3, line 28). Therefore, it would have been obvious to one of ordinary skill in the art to perform the method disclosed by Nakayama/Peters for deinking a plastic material, the plastic material comprising or provided with an ink selected from the group consisting of alkyd-based resins, with a reasonable expectation of success, since Nakayama teaches a method for removing a cured binder resin, wherein the cured binder resin comprises alkyd resins (same resin recited in the claims) (column 3, line 28 of Nakayama).
In addition, the applicant argues that the previous Office Action does not establish that the chemical mechanisms relied upon in Nakayama would operate on the structurally distinct ink system recited in the claims. Furthermore, the applicant argues that the combination of references lacks any teaching of deinking plastic material, the claimed ink composition, and applicability of the Nakayama mechanism on the proposed system.
However, these arguments are not persuasive. The combination of references of Nakayama and Peters teaches that it is effective to remove a cured binder resin, wherein the cured binder resin comprises alkyd resins from a plastic substrate (column 1, lines 62-66, and column 2, lines 36-47 of Nakayama). The claim requires the step of contacting the plastic material comprising an ink selected from the group consisting of alkyd-based resins with an oxidizing inorganic acid to deink the plastic material. In this case, since Nakayama teaches a method for removing a cured binder resin from a plastic substrate, wherein the cured binder resin comprises alkyd resins (similar resin recited in the claims) (column 3, line 28 of Nakayama), it would have been obvious to perform the method disclosed by Nakayama/Peters for deinking a plastic material, the plastic material comprising or provided with an ink selected from the group consisting of alkyd-based resins, with a reasonable expectation of success.
Moreover, the applicant argues that there is no motivation for combining the references of Nakayama and Peters.
However, this argument is not persuasive. In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Nakayama teaches a method for removing multiple layers from a substrate such as plastics (column 1, lines 62-63, and column 6, lines 48-56 of Nakayama), wherein the layers comprise at least one cured binder layer adjacent to the substrate, the binder comprising a cured binder resin (column 1, lines 62-66, and column 2, lines 36-47 of Nakayama) comprising alkyd resins (column 3, line 28 of Nakayama) and including pigments such as coloring pigments (column 5, lines 58-66 of Nakayama), and Peters teaches a method for separating a coating from a base plastic (column 1, lines 44-56), wherein the coating comprises ink (column 2, lines 55-58 of Peters), and the steps of contacting the plastic material with an acid compound (column 1, lines 44-52 of Peters), wherein the acid can be an oxidizing inorganic acid such as nitric acid, sulfuric acid, and/or phosphoric acid, and separating the plastic material from the oxidizing inorganic acid (column 5, lines 52-54 of Peters). Therefore, it would have been obvious to one of ordinary skill in the art to modify the method disclosed by Nakayama with the step of separating the plastic material from the oxidizing inorganic acid, with a reasonable expectation of success, for the purpose of reusing the plastic material and/or the acid compound, and since Peters teaches that it is effective to separate the treated plastic material from the oxidizing inorganic acid compound (column 5, lines 52-54 of Peters).
Furthermore, the applicant argues that Nakayama’s binder-specific mechanism is not applicable to the ink disclosed in the claims.
However, the applicant did not support his statement with any factual evidence with regard to such difference.
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.
Claims 1-6, 8-14 and 16-25 are rejected under 35 U.S.C. 103 as being unpatentable over US 6,197,124 to Nakayama (hereinafter “Nakayama”) in view of US 6,090,860 to Peters et al. (hereinafter “Peters”).
Regarding claims 1, 6 and 23, Nakayama teaches a method for removing multiple layers from a substrate such as plastics (reads on “plastic material”) (column 1, lines 62-63, and column 6, lines 48-56), wherein the layers comprise at least one cured binder layer adjacent to the substrate, the binder comprising a cured binder resin (column 1, lines 62-66, and column 2, lines 36-47) comprising alkyd resins (column 3, line 28) and including pigments such as coloring pigments (column 5, lines 58-66). Nakayama teaches the step of contacting the substrate with an acid compound, wherein the acid can be an oxidizing inorganic acid such as nitric acid, sulfuric acid, and/or phosphoric acid (column 2, lines 24-34, column 7, lines 48-51 and 58-60, and column 9, lines 17-21) (reads on the limitation “contacting the plastic material with an oxidizing inorganic acid having a standard electrode potential of at least 0 V”, since the acids disclosed by Nakayama (nitric acid, sulfuric acid, and/or phosphoric acid, column 7, lines 48-51, and 58-60 of Nakayama) are the same acids disclosed in applicant’s specification [0066]). Moreover, Nakayama teaches that the oxidizing inorganic acid contacting the substrate is present in a concentration from about 0.01 wt.% to 99.99 wt.% (column 7, lines 61-64). In the case where the claimed range overlaps or lies inside ranges disclosed by the prior art a prima facie case of obviousness exists. Consult MPEP 2144.05.
Nakayama does not explicitly teach the step of separating the plastic material from the oxidizing inorganic acid.
However, Peters teaches a method for separating a coating from a base plastic (column 1, lines 44-56), wherein the coating comprises ink (column 2, lines 55-58), the method comprising the steps of contacting the plastic material with an acid compound (column 1, lines 44-52), wherein the acid can be an oxidizing inorganic acid such as nitric acid, sulfuric acid, and/or phosphoric acid, and separating the plastic material from the oxidizing inorganic acid (column 5, lines 52-54).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method disclosed by Nakayama with the step of separating the plastic material from the oxidizing inorganic acid, with a reasonable expectation of success, since Peters teaches that it is effective to separate the treated plastic material from the oxidizing inorganic acid compound (column 5, lines 52-54 of Peters), and for the purpose of reusing the plastic material and/or the acid compound.
Nakayama/Peters does not explicitly teach that the method is for deinking a plastic material, the plastic material comprising or provided with an ink selected from the group consisting of nitrocellulose-based resins, polyurethane based resins, polyvinylchloride-based resins, ethyl cellulose based resins, cellulose acetate propionate-based resins, cellulose acetate butyrate-based resins, polyvinyl butyral based resins, acrylate-based resins, polyacrylate based resins, polyamide-based resins, maleics based resins, modified rosin-based resins, alkyd-based resins and any combination thereof.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to perform the method disclosed by Nakayama/Peters for deinking a plastic material, the plastic material comprising or provided with an ink selected from the group consisting of alkyd-based resins, with a reasonable expectation of success, since Nakayama teaches that the method is effective for removing multiple layers from a substrate such as plastics (column 1, lines 62-63, and column 6, lines 48-56 of Nakayama), wherein the layers comprise at least one cured binder layer adjacent to the substrate, the binder comprising a cured binder resin (column 1, lines 62-66, and column 2, lines 36-47 of Nakayama) comprising alkyd resins (column 3, line 28 of Nakayama) and including pigments such as coloring pigments (column 5, lines 58-66 of Nakayama).
Regarding claim 2, Nakayama does not teach that shear is applied to the plastic material before or while contacting the plastic material with the oxidizing inorganic acid.
However, Peters teaches that agitation is applied to the plastic material while contacting the plastic material with an oxidizing inorganic acid (column 5, lines 39-46 of Peters).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method disclosed by Nakayama/Peters wherein shear is applied to the plastic material while contacting the plastic material with the oxidizing inorganic acid, with a reasonable expectation of success, since Peters teaches that it is effective to agitate the plastic material while it is contacted with the oxidizing inorganic acid (column 5, lines 39-46 of Peters).
Regarding claim 3, Nakayama does not teach that the plastic material is reduced in size to obtain plastic material having a sieve diameter ranging between 0.01 cm and 20 cm before being contacting the plastic material with the oxidizing inorganic acid.
Peters teaches that the plastic material can be reduced in size before contacting the plastic material with the oxidizing inorganic acid (column 5, lines 7-13 of Peters).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method disclosed by Nakayama/Peters wherein the plastic material is reduced in size before contacting the plastic material with the oxidizing inorganic acid, with a reasonable expectation of success, since Peters teaches that it is effective to reduce the plastic material size before contacting the plastic material with an oxidizing inorganic acid (column 5, lines 7-13 of Peters).
Moreover, the size or diameter of the reduced plastic material is a result effective variable modifying the separating results. For example, if the size or diameter of the reduced plastic material is too small, it risks the reduced plastic material from getting stuck and/or loss during the process, while if the size or diameter of the reduced plastic material is too big, it risks insufficient removal of the multiple layers from the substrate, wherein the layers comprise at least one cured binder resin adjacent to the substrate, and/or increases the process time. Without evidence of unexpected results, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to determine the appropriate size or diameter of the reduced plastic material with predictable results, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. Consult MPEP 2144.05II.
Regarding claim 4, Nakayama/Peters does not teach that the volume of plastic material over the volume of the oxidizing inorganic acid ranges between 0.1 and 10.
However, the volume of plastic material over the volume of the oxidizing inorganic acid is a result effective variable modifying the separating results. For example, if the volume of plastic material over the volume of the oxidizing inorganic acid is too low, it wastes the acid, while if the volume of plastic material over the volume of the oxidizing inorganic acid is too high, it risks insufficient removal of the multiple layers from the substrate, wherein the layers comprise at least one cured binder resin adjacent to the substrate. Without evidence of unexpected results, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to determine the appropriate volume of plastic material over the volume of the oxidizing inorganic acid with predictable results, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. Consult MPEP 2144.05II.
Regarding claim 5, Nakayama/Peters teaches that the oxidizing inorganic acid can be nitric acid, sulfuric acid, and/or phosphoric acid (reads on “oxyacid”) (column 2, lines 24-34, column 7, lines 48-51 and 58-60, and column 9, lines 17-21 of Nakayama).
Regarding claim 8, Nakayama/Peters further teaches that the substrate (plastic) is contacted with the oxidizing inorganic acid at a temperature of 200°C (column 9, lines 28-30 of Nakayama). In the case where the claimed range overlaps or lies inside ranges disclosed by the prior art a prima facie case of obviousness exists. Consult MPEP 2144.05.
Regarding claim 9, Nakayama further teaches the step of contacting the substrate with fatty acids such as acetic acid, formic acid, propionic acid, butyric acid, caproic acid, caprylic acid and/or lauric acid (column 7, lines 4-11, and 56-57 of Nakayama).
Nakayama/Peters does not teach that the step of contacting the substrate (plastic) with the fatty acid is applied before the step of contacting the substrate with the oxidizing inorganic acid.
However, it is noted that there are only three possibilities: a) the step of contacting the substrate with the fatty acid is applied before the step of contacting the substrate with the oxidizing inorganic acid, b) the step of contacting the substrate with the fatty acid is applied after the step of contacting the substrate with the oxidizing inorganic acid, and c) the step of contacting the substrate with the fatty acid is applied at the same time as the step of contacting the substrate with the oxidizing inorganic acid, and the skilled artisan would have found it obvious to try the Nakayama/Peters method wherein the step of contacting the substrate with the fatty acid is applied before the step of contacting the substrate with the oxidizing inorganic acid, with a reasonable expectation of success.
Moreover, the selection of any order of performing steps is prima facie obvious in the absence of new and unexpected results. Consult MPEP 2144.04 IV.
Regarding claim 10, Nakayama/Peters does not teach that during the step of contacting the plastic material with the fatty acid the volume of plastic material over the volume of the fatty acid is at least 0.001.
However, the volume of plastic over the volume of the fatty acid is a result effective variable modifying the separating results. For example, if the volume of plastic material over the volume of the fatty acid is too low, it wastes the fatty acid, while if the volume of plastic material over the volume of the fatty acid is too high, it risks insufficient removal of the multiple layers from the substrate (plastic), wherein the layers comprise at least one cured binder resin adjacent to the substrate. Without evidence of unexpected results, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to determine the appropriate volume of plastic material over the volume of the fatty acid with predictable results, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. Consult MPEP 2144.05II.
Regarding claim 11, Nakayama/Peters teaches that the fatty acid is selected from the group consisting of acetic acid, formic acid, propionic acid, butyric acid, caproic acid, caprylic acid and/or lauric acid (column 7, lines 4-11, and 56-57 of Nakayama).
Regarding claim 12, Nakayama teaches that the fatty acid contacting the substrate can be present in a concentration from about 0.01 wt.% to 99.99 wt.% (column 7, lines 61-64 of Nakayama). In the case where the claimed range overlaps or lies inside ranges disclosed by the prior art a prima facie case of obviousness exists. Consult MPEP 2144.05.
Regarding claim 13, Nakayama/Peters further teaches that the substrate (plastic) is contacted with the fatty acid at a temperature of 200°C (column 9, lines 28-30 of Nakayama). In the case where the claimed range overlaps or lies inside ranges disclosed by the prior art a prima facie case of obviousness exists. Consult MPEP 2144.05.
Regarding claim 14, Nakayama/Peters further teaches that the plastic material comprises a multilayer plastic material (column 1, lines 62-65 of Nakayama).
Regarding claim 16, Nakayama/Peters teaches that the fatty acid is selected from the group consisting of acetic acid, formic acid, propionic acid, butyric acid, caproic acid, caprylic acid and/or lauric acid (column 7, lines 4-11, and 56-57 of Nakayama).
Regarding claim 17, Nakayama teaches that the fatty acid contacting the substrate can be present in a concentration from about 0.01 wt.% to 99.99 wt.% (column 7, lines 61-64 of Nakayama). In the case where the claimed range overlaps or lies inside ranges disclosed by the prior art a prima facie case of obviousness exists. Consult MPEP 2144.05.
Regarding claim 18, Nakayama teaches that the fatty acid contacting the substrate can be present in a concentration from about 0.01 wt.% to 99.99 wt.% (column 7, lines 61-64 of Nakayama). In the case where the claimed range overlaps or lies inside ranges disclosed by the prior art a prima facie case of obviousness exists. Consult MPEP 2144.05.
Regarding claim 19, Nakayama teaches that the fatty acid contacting the substrate can be present in a concentration from about 0.01 wt.% to 99.99 wt.% (column 7, lines 61-64 of Nakayama). In the case where the claimed range overlaps or lies inside ranges disclosed by the prior art a prima facie case of obviousness exists. Consult MPEP 2144.05.
Regarding claim 20, Nakayama/Peters further teaches that the substrate (plastic) is contacted with the fatty acid at a temperature of 200°C (column 9, lines 28-30 of Nakayama). In the case where the claimed range overlaps or lies inside ranges disclosed by the prior art a prima facie case of obviousness exists. Consult MPEP 2144.05.
Regarding claim 21, Nakayama/Peters further teaches that the substrate (plastic) is contacted with the fatty acid at a temperature of 200°C (column 9, lines 28-30 of Nakayama). In the case where the claimed range overlaps or lies inside ranges disclosed by the prior art a prima facie case of obviousness exists. Consult MPEP 2144.05.
Regarding claim 22, Nakayama/Peters does not teach the step of separating the plastic material from the fatty acid.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method disclosed by Nakayama/Peters with the step of separating the plastic material from the fatty acid, with a reasonable expectation of success, since Peters teaches that it is effective to separate the plastic material from the separating composition, wherein the separating composition comprises fatty acids such as acetic acid, formic acid, propionic acid, and/or butyric acid (column 5, lines 52-54, and column 8, lines 38-40 of Peters).
Regarding claim 24, Nakayama/Peters does not teach that the volume ratio of plastic material to oxidizing inorganic acid is between 0.8 and 1.2.
However, the volume ratio of plastic material to oxidizing inorganic acid is a result effective variable modifying the separating results. For example, if the volume ratio of plastic material to oxidizing inorganic acid is too low, it wastes the acid, while if the volume ratio of plastic material to oxidizing inorganic acid is too high, it risks insufficient removal of the multiple layers from the substrate, wherein the layers comprise at least one cured binder resin adjacent to the substrate. Without evidence of unexpected results, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to determine the appropriate volume ratio of plastic material to oxidizing inorganic acid with predictable results, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. Consult MPEP 2144.05II.
Regarding claim 25, Nakayama/Peters teaches that the fatty acid is formic acid (column 7, lines 9 and 56 of Nakayama).
Conclusion
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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/A.I.R/Examiner, Art Unit 1714
/KAJ K OLSEN/Supervisory Patent Examiner, Art Unit 1714
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