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 .
The traverse is noted. The argument (pg. 6 middle) that ‘the Examiner has referenced prior art in view of, and therefore separable from …’ is unclear and (as understood) not true. This misunderstanding appears to occur because the MPEP form paragraph probably should have a comma or semicolon after the word ‘art’ in the paragraph on pg. 3 lines 8 of the restriction requirement for better clarity (so as to read ‘… does not make a contribution over the prior art, in view of the references cited…’) . The restriction was predicated only on the art that applicant supplied and which they got from a foreign Office. There is not a separate ‘pool’ of prior art. As an aside, this action contains relevant prior art which confirms the non-patentability of the claims. The fact that the apparatus can be capable of a diverse use is an important justification for the restriction, because if it weren’t true, there would be no burden of search of the two inventions. The argument continues ‘the referenced foreign office report only exists in German’ is not relevant and unclear why that is a problem for applicant since -based upon the German sounding names and residences of the inventors- they are presumed to be fluent in German. If applicant desires a translation into English from the foreign office, they should take the matter up with them. Applicant submitted these documents to the PTO and thus is presumed to understand their content. It behooves them to make sure that their counsel also understands the documents. The foreign Office explained, presumably in sufficient detail, the relevance of these documents to applicants. If applicants feel this is not true, they should take the matter up with the foreign Office. The sentence partially quoted above ends with ‘and is also not cited with specificity.’ It is unclear what is allegedly not cited with specificity. The documents D1 and D2 are cited with specificity. The document labelled Incoming Written Opinion of 12/8/22 contains on page 6 a discussion in English and German of document D2. In addition to quoted text, it contains a reference to where in the document it is found (‘Seite’ is the German word for ‘page’). This is reasonably specific.
The next paragraph (“In consideration ...’) is based upon the erroneous reading noted above. The restriction requirement did not cite any additional documents; the PTO has given deference to the reasoning of the foreign Office as to why the claims are not patentable. If applicant can persuade the foreign Office that they are wrong, then this would jeopardize the validity of the initial restriction. However, the additional references cited herein would reinforce the notion that the (independent) claims are not patentable regardless of whether the foreign Office changed their mind.
The next argument concerns the categories of invention. Note that the cited category 2 ‘product and process of use’ was interpreted as the apparatus being the product. However, in view of the separate enumeration of category 4 ‘A process and an apparatus’, category 4 would clearly be more pertinent to the claims at hand. It seems that category 2 could be (and is) argued as a generic catchall which includes category 4 within it, but the separate recitation of category 4 casts doubt upon the logic of this interpretation. Rather, in the context of the entire category list, a ‘product’ is most reasonably read as meaning a chemical compound or composition (for example), rather than an apparatus/system. The closing sentence dismisses the idea of the apparatus having other uses, however this is a vital part of the restriction, as noted above.
The opinion of the disagreement with the seriousness of the search is noted but respectfully disagreed with. The search would be a serious burden. The rules for rejoinder would apply once a ‘product’ (which in this case includes an apparatus) becomes allowable.
The restriction is maintained and made FINAL. Claims 12-20 are withdrawn.
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 1-11 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.
Claims 5 and 6 are unclear as to the ‘fission’. There is no fission in a simple decomposition process, noting that process steps/limitation/features do not limit an apparatus. Claims 7-9 depend from claim 6.
Claim 10 is entirely unclear. Is the diameter required to change? What standard is used to decide to ‘adapt’ the diameter? Claim 3 appears to be a better worded equivalent of claim 10.
Claim 11 is subjective and unclear in the term ‘small’.
In claim 1, the term ‘flaps’ is unclear, given that they appear to be conduits to the inside of the reactor rather than outer fins to dissipate heat or decorative fins. As the operative function of the flaps is to control gas flow, it appears they are actually valves. Put another way, it is what is under the flap that’s important.
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.
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.
Claims 1, 2, 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Faulkner et al. 6221329.
Faulkner teaches, especially in col. 6-8 and fig. 4, a rotary kiln 52 with flight elements 46.
For claim 2, see elements 46 and 52.
For claim 5, zone 80B is cooler and col. 9 lines 20-30 for the exhaust vacuum.
For claim 6, see elements 120 and 122 and col. 9. See elements 104 and 106.
Claims 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Faulkner as applied to claim 6 above, and further in view of Masemore et al. 20020119089.
Faulkner does not teach the cleaning brush, however Masemore does in para 33 in a similar system. The cleaning unit may be moved by a drive belt to different locations, as needed. Using it in the reactor of Faulkner is obvious to avoid fouling. While not teaching it as circular, it is obvious to make in conform to the shape of the pipe.
For claim 8, see Masemore fig. 7.
For clam 9, it is obvious to maintain the seal to control gas flows and prevent air from entering which may cause combustion of the soot.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Faulkner as applied to claim 1 above, and further in view of Tenore et al. 20200369964 and Jones 20240091832 as evidence.
For claim 11, Tenore teaches lifting fingers between the parallel worm conveyors for product flow control in a polymer decomposition process; note para 26 of Jones. Using them in the process of Faulkner is obvious to provide efficient feed to the reactor. See figs. 16 and 21 and paras 108 and 131.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Faulkner as applied to claim 1 above, and further in view of Asanuma et al. 6048380.
Faulkner does not teach the reactor shape, however Asanuma shows in fig. 19 a pyrolysis reactor having a thick middle and thin at the ends. Using it in the system of Faulkner is obvious to have maximum reactor outer surface area at the hot part of the heater for efficient heat transfer.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Faulkner as applied to claim 1 above, and further in view of Daugaard et al. 20140183022.
Faulkner does not teach the auger blade feature, however Daugaard teaches a worm having different spacing of pushers; see fig. 11 and para. 92. The claim does not require any change in diameter of the reactor. Using it in the system of Faulkner is obvious to regulate movement of the feed.
Allowable Subject Matter
The dual reactors with one burner of claim 4 is allowable, as it is not taught or suggested by the prior art, as it does not have this arrangement which would entail a more complex system.
Ullom ‘390 is noted to teaches, especially in figs. 1-2 and para 62, 3 parallel zone reactor having elements 309, 311 lifts 304 and 305.
Thorpe 3254986 teaches flaps in col. 5 and elements 66, 69 in a pyrolysis system.
WO 2011/034409 Pg. 4 and fig. 2 element 19 are noted.
While the drawings are independently reviewed, it appears that figs. 1-4 would not be acceptable due to crowding and microprint.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STUART L HENDRICKSON whose telephone number is (571)272-1351. The examiner can normally be reached on Monday-Friday from 9 to 5. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Anthony Zimmer, can be reached on 571-270-3591. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
/STUART L HENDRICKSON/Primary Examiner, Art Unit 1736
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