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 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 1-2, 4-12, 14-15, 17, 19, and 21-23 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.
Claim 1: There is no indication that Applicant had possession of the entire genus of strong bases separate from other species as delamination agents. Claims 2, 4-12, 14-15, 17, 19, and 21-23 are rejected for containing the same flaw. Claim 3 is not rejected because it limits to species for which there is support in the original specification and 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.
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 1-12, 14, 17, 19, and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Ohara et al. (US 2021/0178744).
Claim 1: Ohara ‘744 teaches a method of delaminating a composite [0019] by immersing the composite into a delamination solution [0021]; wherein the composite comprises a metal substrate in the form of a foil [0047] and a coating (of adhesive AD) on one or both sides of the metal substrate [0048], wherein the coating comprises a copolymeric binder; wherein the copolymeric binder comprises a carboxylic acid group-containing polymer (such as acrylic acid) [0067]. The delamination solution comprises a delamination agent (sodium hydroxide or potassium hydroxide, which are strong bases) in an aqueous solvent [0021]. Ohara does not expressly teach a single embodiment using a combination of carboxylic acid monomers, amide monomers, and ester monomers, but it teaches copolymers that may include carboxylic acids, sulfone amide, and combinations thereof [0067]. Likewise, Ohara teaches that any components of the reactive adhesive composition may contain ester bonds [0064]. Therefore, it would have been obvious at the time of filing the instant application to have used a copolymer including a carboxylic acid monomer and a sulfone amide monomer, and an ester group monomer with a reasonable expectation of success because Ohara teaches that these monomers may be used in combinations in copolymers.
Claims 2 and 23: The delamination agent (sodium hydroxide or potassium hydroxide) may be present in an amount of 1-5% by mass [0021]. This is 0.25-1.25 M for NaOH and 0.18-0.89 M for KOH.
Claim 3: The delamination agent may be sodium hydroxide [0021].
Claim 4: The solvent may be water (aqueous) [0021].
Claim 5: The solvent may contain 1-10% of an organic solvent [0023], which leaves 90-99% water. The organic solvent may be methyl alcohol (methanol) [0022].
Claims 6, 14, and 17: While Ohara does not explicitly teach the amounts of each monomer within the copolymer, it has been held that differences in concentration will not support patentability in the absence of a showing of criticality. See MPEP 2144.05.II.A.
Claim 7: The carboxylic acid-containing monomer may be acrylic acid [0067].
Claim 9: The sulfonic acid-containing monomer may be styrenesulfonic acid [0067].
Claims 8-12 further limits the carboxylic acid salts, sulfonic acids, sulfonic acid salts, phosphonic acids, or phosphonic acid salts which satisfy the claims but do not actually require choosing a carboxylic acid salt, sulfonic acid, sulfonic acid salt, phosphonic acid, or phosphonic acid salt. Thus the claims are met by choosing a carboxylic acid.
Claim 17 further limits the nitriles which satisfy the claim but do not actually require choosing a nitrile. Thus the claim is met by choosing an ester.
Claim 19: The metal foil may be stainless steel [0054].
Claim 15 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Ohara ‘744 as applied to claim 1 above, and further in view of Schoenfeld (US 2003/0192643).
Claims 15 and 22: Ohara is discussed above. The purpose of Ohara is to remove a wide variety of reactive adhesives, including polyurethane adhesives (Abstract, [0062, 0063, 0067].) Ohara does not explicitly contemplate that the adhesive contains an amide that is not aromatic, such as acrylamide. However, reactive urethane adhesives comprising combinations of acids and acrylamide are known. See, for example, Schoenfeld [0075-0076]. Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing the instant invention to recover a urethane adhesive comprising acrylamide monomers because Ohara is taught generally for separating and recovering reactive adhesives and so one of ordinary skill in the art would have practiced the method of acrylamide-containing reactive adhesives, such as those of Schoenfeld ‘643 with a reasonable expectation of success.
Claim 22: Ohara teaches non-aromatic acid monomers, such as acrylic acid [0067] and acrylic esters [0100]. Thus, all monomers present may be non-aromatic.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Ohara ‘744 in view of Ho et al. (US 2018/0013181).
Claim 21: Ohara ‘744 is described above. It teaches that the delamination may take place by immersion at 20-90 degrees C [0019]. It does not teach a specific ratio of composite to delamination solution. One of ordinary skill in the art would have understood that this ratio would be important to have sufficient solution to completely immerse the product to be delaminate and also chosen with such factors in mind as how quickly the solution would be contaminated and need treatment or replacement. One of ordinary skill in the art would have been motivated to have looked to related art for guidance as to a sufficient ratio. Ho teaches in a delamination process that the weight ratio of the composite to be delaminated to the delaminating solution may be 10%. See [0128], which used 0.5 kg of batteries (the composite) in 5 L of water (approx. 5 kg) as the solution.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing the instant invention to have used a weight ratio of composite to delamination solution of 10% because Ho demonstrates that such a ratio is suitable for successfully delaminating composites.
Response to Arguments
The rejections over Watase JP ‘606 are overcome by amendment and withdrawn because it does not teach a copolymeric binder comprising structural units (b) and (c) as claimed.
The rejections over Ho ‘181 as primary reference are overcome by amendment and withdrawn because Ho’s delamination solution is not a strong acid. Ho is still used as a secondary reference regarding claim 21.
The 102 rejections over Ohara are withdrawn because claim 1 has been amended to require the features of amended claims 13 and 16, and Ohara does not expressly teach a polymer that contains all three monomers (a), (b), and (c). However, these claims are rejected under 35 USC 103 because Ohara teaches monomers of types (a), (b), and (c), and that they may be used in combination.
Applicant's arguments filed 3/4/26 have been fully considered but they are not persuasive.
Applicant argues that Ohara does not provide reason or motivation that would have led a person skilled in the art to have adopted a copolymeric binder with the particular structural units claimed. The argument is unconvincing because Ohara teaches the claimed units and teaches that they may be used in combination.
Applicant appears to argue that Ohara teaches isocyanates as a critical component that would be different from nitrile group-containing polymers. The argument is unconvincing at least because the claims do not exclude isocyanates and do not require nitriles.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Applicant argues that Ohara does not provide any reason or motivation that would have led a person skill in the art to adopt the claimed composite configurations. The argument is unconvincing because Ohara expressly teaches embodiments of metal foils in contact with adhesives [0047-0048]. The presence of examples of other examples without metal foils does not disguise the use of these embodiments. These are not merely obvious; they are anticipated.
Applicant argues that the present invention brings about an unexpected improvement, such that stirring is not needed. Applicant argues that stirring is crucial to Ohara. The argument is unconvincing because Ohara teaches that stirring is preferred but not necessary [0031]. And because stirring is not excluded by the claims. Further, the argument is not accompanied by a showing of evidence commensurate in scope with the claims. See MPEP 716.02(d).
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 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL B CLEVELAND whose telephone number is (571)272-1418. The examiner can normally be reached Monday-Friday; 9:00 am - 5:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alexa Neckel can be reached at 571-272-2450. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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MICHAEL B. CLEVELAND
Supervisory Patent Examiner
Art Unit 1712
/MICHAEL B CLEVELAND/ Supervisory Patent Examiner, Art Unit 1712
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