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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 16-22 and species 2) a plasticizer in the reply filed on 12/2/2023 is acknowledged. The traversal is on the ground(s) that the cited prior art within the restriction requirement fails to obviate claim 16 as amended and there would not be an examination burden. This is not found persuasive as all common technical features fail to make a contribution over the prior art as evidenced by the prior art rejections below, incorporated herein by reference. As all common technical features shared between the Groups/species fail to make a contribution over the prior art, they are not special technical features. Therefore, there is lack of unity. Further, while a search burden must be present for a restriction to be proper in national applications filed under 35 USC 111(a), the present application is a national stage application filed under 35 USC 371 and thus, follows the unity of invention standard. MPEP 1893.03(d). Under the unity of invention standard, a group of inventions is considered linked to form a general inventive concept only where there is at least one common special technical feature. In the present case however, all common technical features fail to make a contribution over the prior art as elaborated previously and thus, they are not special technical features.
The requirement is still deemed proper and is therefore made FINAL.
A prior art search was conducted with respect to Species 2 in accordance with Applicant’s election. Prior art was found with respect to the process of claim 16 whereby the regeneration agent is solely plasticizer, with the exception of where the plasticizer is “an oil having a content of polycyclic aromatics of in the range from 10% to 40% by weight, as determined by the IP346 method, the oil selected from mild extraction solvents (MES), treated aromatic extracts of treated distillate (TDAE), and naphthenic oils”. Since the claimset contains claims that have the above oil limitations, but are still generic to other species, such claims are withdrawn from consideration, but would be allowable should a plasticizer regeneration agent with the oil limitation be explicitly required to be present.
Claims 17, 28, and 35 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species (claim 17 only reads on species 4, 6, and 7; claims 28 and 35 require that any plasticizer be the oil above, but do not explicitly require the plasticizer to be present, thus are not allowable generic claims), there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 12/2/2025.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 18-22, 29-33, and 37 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 18, the phrases “preferably” and "particularly preferably" render the claim indefinite because it is unclear whether the limitation(s) following the phrases are part of the claimed invention. See MPEP § 2173.05(d).
Claim 19 recites “wherein adding at least one regeneration reagent to the extruded”. The terminology “the extruded” lacks antecedent basis. Claim 16 only refers to adding regeneration reagent to the rubber particles in the extruder”. Accordingly, the intended scope of the claim is unclear.
Further regarding claim 19, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 20 recites “wherein adding at least one regeneration reagent to the extruded”. The terminology “the extruded” lacks antecedent basis. Claim 16 only refers to adding regeneration reagent to the rubber particles in the extruder”. Accordingly, the intended scope of the claim is unclear.
Claim 21 recites “wherein during the extruding during the entirety of step C)”. It is unclear what relationship (if any) is meant by the combination of “during the extruding” and “during the entirety of step C)”. Are they meant to be in the alternative? Accordingly, the intended scope of the claim is unclear.
Further regarding claim 21, the phrases “preferably” (two instances) and "particularly measured" render the claim indefinite because it is unclear whether the limitation(s) following the phrases are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 22, the phrase "preferably" (two instances) renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 29, the phrases “preferably” and "particularly preferably" render the claim indefinite because it is unclear whether the limitation(s) following the phrases are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 30, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 31 recites “wherein adding at least one regeneration reagent to the extruded rubber particles”. The terminology “the extruded rubber particles” lacks antecedent basis. Claim 16 only refers to adding regeneration reagent to the rubber particles in the extruder”. Accordingly, the intended scope of the claim is unclear.
Regarding claim 32, the phrases “preferably” (two instances) and "particularly measured" render the claim indefinite because it is unclear whether the limitation(s) following the phrases are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 33, the phrase "preferably" (two instances) renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 37 recites “the vulcanized rubber particles produced in step B) are produced in the twin-screw extruder”. However, claim 16 indicates a devulcanized rubber mixture is produced within the extruder, not vulcanized rubber particles. Accordingly, the intended scope of the claim is unclear.
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(s) 16, 18, 22, 26, and 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Recker (US 2015/0166759 A1) in view of Tang (U.S. Pat. No. 6,590,042).
Regarding Claims 16 and 26, Recker teaches processes for regenerating rubbers (Abstract) comprising producing vulcanized rubber mixture, processing the vulcanized rubber mixture into granulates of vulcanized rubber particles, placing the vulcanized particles in a mechanical mixer, heating the mixer, adding regeneration agent, and forming devulcanized rubber mixture (¶ 15, 31-35, 49-50). The regeneration agent can comprise plasticizers/oils, such as TDAE oil (¶ 41, 43, 66).
Recker expressly teaches a twin-screw extruder can be used as an alternative to a mechanical mixer (¶ 52). Recker differs from the subject matter claimed in that it is not indicated whether regeneration agent is added to rubber particles already within the extruder during the extrusion process. Tang is also directed toward the reclaiming/regeneration of scrap rubber (Abstract). Tang teaches using batch mixers is labor intensive and twin-screw extruders are favorable (Col. 6, Lines 34-51). Specifically, Tang teaches the crumb rubber is placed within the extruder, after which a reclaiming agent (i.e. regeneration reagent) is fed to the extruder, providing just-on-time mixing within the extruder (Col. 6, Lines 34-51; Col. 7, Lines 30-40). Tang teaches such allows mix rates / production levels to be adjusted via computer as necessary, depending on the rubber being processed and product physical properties desired (Col. 6, Lines 45-51 and 60-67). It would have been obvious to one of ordinary skill in the art to utilize an extruder feeding regeneration agent to rubber particles already within the extruder during the extrusion process because doing so would allow mix rates / production levels to be adjusted via computer as necessary, depending on the rubber being processed and product physical properties desired as taught by Tang.
Regarding Claim 18, Recker teaches embodiments where regeneration agent is present at roughly 9.5 wt% (¶ 60-68).
Regarding Claim 22, Recker teaches particle sizes spanning 0.001 to 0.5 mm (¶ 61), which overlaps the ranges claimed. It would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Recker suggests the claimed range. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Recker. See MPEP 2123.
Regarding Claim 27, Recker teaches the regeneration reagent comprises dithiophosphory polysulfide and/or silane (Abstract), suggesting embodiments where silane is not present.
Claim(s) 19 and 30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Recker (US 2015/0166759 A1) in view of Tang (U.S. Pat. No. 6,590,042) and Maris (US 2013/0137786 A1).
The discussion regarding Recker and Tang within ¶ 24-28 is incorporated herein by reference.
Regarding Claims 19 and 30, Recker/Tang differs from the subject matter claimed in that specific energy inputs are not described. Maris is also directed toward the devulcanization of crumb rubbers using extruders (Abstract). Maris teaches it was known in the art specific power of the extruder depends on the desired degree of shearing (¶ 18-19, 21), whereby typical power for twin-screw extruders are of the order of 0.6-0.8 kW/kg, although 0.1-0.4 kW/kg is also possible (¶ 21). Accordingly, Maris teaches the power used within the extruder is a known result effective variable subject to routine optimization by one of ordinary skill in the art. See MPEP 2144.05(II). Case law holds that “discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In view of this, it would have been obvious to one of ordinary skill in the art to discover workable or optimal energy inputs within the scope of the present claims so as to produce desired shear and/or devulcanization characteristics.
Claim(s) 16, 18, 22, 26, 27, 29, and 33 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tang (U.S. Pat. No. 6,590,042).
Regarding Claims 16, 26, and 27, Tang teaches processes for reclaiming rubbers via a twin-screw extruder (Abstract) comprising producing vulcanized scrap rubber mixture, processing the vulcanized rubber mixture into vulcanized rubber particles, and extruding the vulcanized rubber particles in a twin-screw extruder to form a devulcanized rubber mixture (Col. 5, Line 39 to Col. Line 9). Tang teaches the crumb rubber is placed within the extruder, after which a reclaiming agent (i.e. regeneration reagent) is fed to the extruder, providing just-on-time mixing within the extruder (Col. 6, Lines 34-51; Col. 7, Lines 30-40), reading on regeneration reagent being added to rubber particles during the extrusion step.
Tang teaches the regeneration reagents comprise various accelerators, activators, and other ingredients inclusive of aging inhibitors (i.e. aging stabilizer) and/or processing lubricants (construed as plasticizer) (Col. 8, Lines 1-15; Col. 9, Lines 6-14). Accordingly, it would have been obvious to one of ordinary skill in the art to further include ingredients such as plasticizers and/or aging stabilizers within the regeneration reagents of Tang, thereby predictably affording workable methods of devulcanizing/recycling waste rubbers in accordance with the teachings of Tang. Tang does not describe silanes.
Regarding Claims 18 and 29, Tang teaches 1-2 phr of regeneration reagent (Col. 8, Line 66 to Col. 9, Line 5), equivalent to roughly 1-2 wt%.
Regarding Claims 22 and 33, Tang teaches the rubbers are ground to a particle size of preferably 40-60 mesh (Col. 5, Lines 59-63), equivalent to particle sizes exhibiting a maximum particle size of less than roughly 0.4-0.25 microns. Particles that are ground to pass through a 45-60 mesh screen would exhibit 100 wt% of particles that pass through a 44 mesh sieve. Accordingly, Tang is suggestive of overlapping particle sizes. It would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Tang suggests the claimed range. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Tang. See MPEP 2123.
Claim(s) 19 and 30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tang (U.S. Pat. No. 6,590,042) in view of Maris (US 2013/0137786 A1).
The discussion regarding Tang within ¶ 33-36 is incorporated herein by reference.
Regarding Claims 19 and 30, Tang differs from the subject matter claimed in that specific energy inputs are not described. Maris is also directed toward the devulcanization of crumb rubbers using extruders (Abstract). Maris teaches it was known in the art specific power of the extruder depends on the desired degree of shearing (¶ 18-19, 21), whereby typical power for twin-screw extruders are of the order of 0.6-0.8 kW/kg, although 0.1-0.4 kW/kg is also possible (¶ 21). Accordingly, Maris teaches the power used within the extruder is a known result effective variable subject to routine optimization by one of ordinary skill in the art. See MPEP 2144.05(II). Case law holds that “discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In view of this, it would have been obvious to one of ordinary skill in the art to discover workable or optimal energy inputs within the scope of the present claims so as to produce desired shear and/or devulcanization characteristics.
Claim(s) 16, 18, 22, 26, 27, 29, and 33 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tang (U.S. Pat. No. 6,590,042) in view of Krieg (WO 98/39148 A1). As the cited WO publication is in a non-English language, a machine-translated version of the publication will be cited to.
Regarding Claims 16, 26, and 27, Tang teaches processes for reclaiming rubbers via a twin-screw extruder (Abstract) comprising producing vulcanized scrap rubber mixture, processing the vulcanized rubber mixture into vulcanized rubber particles, and extruding the vulcanized rubber particles in a twin-screw extruder to form a devulcanized rubber mixture (Col. 5, Line 39 to Col. Line 9). Tang teaches the crumb rubber is placed within the extruder, after which a reclaiming agent (i.e. regeneration reagent) is fed to the extruder, providing just-on-time mixing within the extruder (Col. 6, Lines 34-51; Col. 7, Lines 30-40), reading on regeneration reagent being added to rubber particles during the extrusion step.
Tang teaches the regeneration reagents comprise various accelerators, activators, and other ingredients (Col. 8, Lines 1-15; Col. 9, Lines 6-14). To the extent Tang differs from the subject matter claimed with respect to the further inclusion of plasticizer, Krieg is also directed toward the devulvanization of waste rubber powders using chemical activators (Page 1; Examples). Krieg teaches the further incorporation of plasticizer during processing allows for increases in penetration depth of activators, thus improving surface quality (Page 3). It would have been obvious to one of ordinary skill in the art to further include plasticizers within the regeneration reagents of Tang because doing so would allow for increases in penetration depth of activators, thus improving surface quality as taught by Krieg.
Regarding Claims 18 and 29, Tang teaches 1-2 phr of regeneration reagent (Col. 8, Line 66 to Col. 9, Line 5), equivalent to roughly 1-2 wt%.
Regarding Claims 22 and 33, Tang teaches the rubbers are ground to a particle size of preferably 40-60 mesh (Col. 5, Lines 59-63), equivalent to particle sizes exhibiting a maximum particle size of less than roughly 0.4-0.25 microns. Particles that are ground to pass through a 45-60 mesh screen would exhibit 100 wt% of particles that pass through a 44 mesh sieve. Accordingly, Tang is suggestive of overlapping particle sizes. It would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Tang suggests the claimed range. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Tang. See MPEP 2123.
Claim(s) 19 and 30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tang (U.S. Pat. No. 6,590,042) in view of Krieg (WO 98/39148 A1) and Maris (US 2013/0137786 A1). As the cited WO publication is in a non-English language, a machine-translated version of the publication will be cited to.
The discussion regarding Tang and Krieg within ¶ 33-36 is incorporated herein by reference.
Regarding Claims 19 and 30, Tang differs from the subject matter claimed in that specific energy inputs are not described. Maris is also directed toward the devulcanization of crumb rubbers using extruders (Abstract). Maris teaches it was known in the art specific power of the extruder depends on the desired desired degree of shearing (¶ 18-19, 21), whereby typical power for twin-screw extruders are of the order of 0.6-0.8 kW/kg, although 0.1-0.4 kW/kg is also possible (¶ 21). Accordingly, Maris teaches the power used within the extruder is a known result effective variable subject to routine optimization by one of ordinary skill in the art. See MPEP 2144.05(II). Case law holds that “discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In view of this, it would have been obvious to one of ordinary skill in the art to discover workable or optimal energy inputs within the scope of the present claims so as to produce desired shear and/or devulcanization characteristics.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 16, 18-22, 26, 27, and 29-33 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,391,821. Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding Claims 16, 19-22, 26, 27, and 30-33 Specifically, the ‘821 patent claims a process whereby vulcanized rubber mixture is provided, granulated to particles, and then extruded/devulcanized in a twin-screw extruder to yield devulcanized rubber mixture (Claim 1). Process oil that does not react with the rubber particles can be added during the extruding step C (Claims 7-9). The process oils of ‘821 are seen to be no different than plasticizers indicated within the present claims/specification. Accordingly, the ‘821 patent anticipates the present claims. The remaining limitations are found within the claims of the ‘821 patent
Regarding Claims 18 and 29, although the ‘821 claims do not specify a content of oil, the claims nevertheless indicate the quantity of oil should be used according to a desired degree of temperature control (Claims 7-9). Accordingly, the ‘821 claims teaches the quantity of oil is a known result effective variable subject to routine optimization by one of ordinary skill in the art. See MPEP 2144.05(II). Case law holds that “discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In view of this, it would have been obvious to one of ordinary skill in the art to discover workable or optimal energy inputs within the scope of the present claims so as to produce desirable temperature control characteristics.
Allowable Subject Matter
Claims 34 and 36 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 37 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claims 20, 21, 31, and 32 would be allowable if 1) a terminal disclaimer is filed to overcome the double patenting rejection and 2) rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claims 28 and 35 would be allowable if 1) amended to require that at least one plasticizer be present and 2) rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
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/STEPHEN E RIETH/Primary Examiner, Art Unit 1759