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 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 1-18 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.
Claim 1 contains the recited “polyols released from the polyurethane waste.” However, the claimed range is unclear as to whether the recited polyols are required to be generated by depolymerization of the polyurethane waste, or whether the polyols may instead be polyether polyols and/or polyester polyols added to the reaction mixture and merely present in the final composition . the claim fails to clearly define the origin of the recited polyols or provide objective b boundaries distinguishing polyols derived from the polyurethane waste from polyols introduced as reactants, thereby rendering the scope unclear.
Note that claim 14 which recites “Using….” does not teach making of a polyurethane and thus is accordingly unclear. See MPEP 2173.05(q)
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.
Claim(s) 1-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO2018091568A1, see abstract, pages 1-7 and claims, in view of Kemona et al. see section 3.3.1
With regard to claim 1, claim 1 is directed to:
A process for producing a polyol composition containing polyols released from polyurethane waste, wherein, in a reaction mixture (a) polyurethane waste is reacted with(b) one or more compounds selected from the group consisting of; polyether polyols having an average molar mass of 200 g/mol to 8000 g/mol and a hydroxyl functionality of 2 to 4, and polyester polyols having an average molar mass of 250 g/mol to 8000 g/mol and a hydroxyl functionality of 2 to 4, (c) one or more compounds selected from the group consisting of dicarboxylic anhydrides and dicarboxylic acids; and (d) water, forming a polyol composition containing polyols released from the polyurethane waste.
WO2018091568A1 discloses a process for providing recycled polyols from polyurethane waste, including post-consumer polyurethane materials through chemical degradation reactions that cleave urethane linkages to recover polyols suitable for reuse in polyurethane production. See abstract and page 1, page 2 line 9 to page 3 line 10 and page 4. WO2018091568A1 teaches reacting polyurethane waste in a reaction mixture containing degradation agents and polyether polyols under elevated temperatures to effect chemical cleavage of urethane bonds. See WO2018091568A1 see page 3 lines 34-43 and page 4 lines 10, 16-33. The reference further teaches that polyether polyols or polyethers having average molecular weights and hydroxyl functionalities consistent with those used in polyurethane production are present during the degradation reactions. See page 3 line 38 to page 7. WO2018091568A1 also teaches acidolysis of polyurethane waste using dicarboxylic acids and anhydrides. See page 5 lines 9-20.
WO2018091568A1 does not explicitly require water as a mandatory component of the reaction mixture. Note however, hydrolysis using water was a well-known and established mechanism for polyurethane bond cleavage prior to the effective filing date, and water was commonly used along with other polyurethane recycling additives and process steps. Note for example, Kemona et al. teaches that hydrolysis is a known chemical recycling method for polyurethane waste, involving a reaction between polyurethane and water, in liquid or steam form, to cleave urethane linkages and produce polyols. See section 3.3.1. Kemona et al. further explains that the resulting polyols may be reused in polyurethane production.
Thus, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the process of WO’568 to include water as part of the reaction mixture in view of the teachings of Kemona et al. in order to assist in depolymerization and the recovery of polyols. One of ordinary skill would have been motivated to employ water in the process since, generally, it would have been obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended purpose. See Sinclair & Carroll Co. v. Interchemical Corp., 325 US 327, 65 USPQ 297 (1945). (Selection of solvent having boiling point and vapor pressure properties recognized as being ideal for printing inks into printing ink compositions found obvious on its face). See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960). (Selection of a known plastic to make a plastic container found obvious on its face).
With regard to claim 2 directed to the process as claimed in claim 1, and further limits the polyether and polyester poly components by specifying narrower average molar mass ranges. WO2018091568A1 teaches the use of polyether polyols and polyester polyols having molecular weights that overlap and fall within the claimed ranges. See pages 3-7. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to employ particular amounts and/or parameters within the disclosed ranges as known in the art, since the ranges disclosed fall within the claimed ranges and it is well-established that merely selecting proportions and ranges is not patentable absent a showing of criticality. In re Becket, 33 U.S.P.Q. 33 (C.C.P.A. 1937). In re Russell, 439 F.2d 1228, 169 U.S.P.Q. 426 (C.C.P.A. 1971). One would have been motivated to employ particular amounts and/or parameters as known in the art, since, the primary reference discusses the generally use of such and generally, it is prima facie obvious to determine workable or optimal values within a prior art disclosure through the application of routine experimentation. See In re Aller, 105 USPQ 233, 235 (CCPA 1955); In re Boesch, 205 USPQ 215 (CCPA 1980); and In re Peterson, 315 F.3d 1325 (CA Fed 2003).
With regard to claim 3, claim 3 is directed to the process as claimed in claim 1, wherein at least one of: the compounds (c) from the group consisting of dicarboxylic anhydrides and dicarboxylic acids are selected from the group consisting of adipic acid and the anhydrides of maleic acid, phthalic acid, hexahydrophthalic acid and succinic acid; and the reaction mixture includes one or more monocarboxylic acids. WO2018091568A1 also teaches acidolysis of polyurethane waste using dicarboxylic acids and anhydrides. See page 5 lines 3-20. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to select specific dicarboxylic acids and anhydrides from among those disclosed in the reference including adipic acid and the recited anhydrides as well as to include monocarboxylic acids as co-reactants since such acids were known degradation agents used to control reaction processes and properties in polyurethane recycling processes.
With regard to claim 4 further limits the process by reciting a specific order of charging water, metering polyurethane wase, addition of degradation agents and temperature and time ranges. .WO2018091568A1 also teaches conducting polyurethane degradation reactions under elevated temperatures with controlled addition of reactants, while Kemona et al. teaches hydrolysis processes employing water at overlapping temperatures. The operating conditions represent routine process steps used to manage reaction product recovery. See pages 3 line 34 – page 7. Kemona et al. teaches that hydrolysis processes employing water at overlapping temperatures. See section 3.3.1. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to employ the claimed order of steps and operating conditions as a matter of routine optimization since no criticality has been demonstrated.
With regard to claim 5 directed to the process as claimed in claim 1 wherein: (e) one or more compounds selected from the group consisting of diols having 2 to 8 carbon atoms and triols having 3 to 8 carbon atoms are added to the reaction mixture. WO2018091568A1 also teaches the use of glycol and other short chain diols on page 3 line 41.
With regard to claim 6 directed to the process as claimed in claim 5, wherein the compounds (e) from the group consisting of diols having 2 to 8 carbon atoms and triols having 3 to 8 carbon atoms are selected from the group consisting of ethylene glycol, diethylene glycol, dipropylene glycol, 1,3-propaneglycol,1,2-butanediol, 1,4-butaneglycol and glycerol. WO2018091568A1 also teaches the use of glycol and other short chain diols having 2 to 8 carbon atoms on page 3 line 41. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to include diols and triols as recited since such compounds were well known chain extruders and degradation agents used in polyurethane recycling processes as well as disclosed in the reference.
With regard to claim 7, claim 7 further limits the process by specifying the use of multistage reaction process including dissolution of the polyurethane waste prior to alcohol addition. WO2018091568A1 (pages 3-7) also teaches staged degradation reactions and elevated temperature processing of polyurethane waste while Kemona et al. further teaches hydrolysis processes employing water for polyurethane degradation. see Kemona et al. 3.3.1. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to employ a multistage reaction process including dissolution of polyurethane waste prior to alcohol addition as such processing represents a routine step used to improve reaction efficiency, heat transfer and degradation control in polyurethane recycling processes.
With regard to claim 8. See discussion for claim 7 above.
With regard to claim 9, See discussion for claim 7 above.
With regard to the claim 10 further litas the process of claim 1 by specifying composition ranges of the reaction components. See pages 3-7 of WO2018091568A1. Determining appropriate component rations is routine experimentation within those of ordinary skill of the art. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to employ particular amounts and/or parameters as known in the art, since the ranges disclosed fall within the claimed ranges and it is well-established that merely selecting proportions and ranges is not patentable absent a showing of criticality. In re Becket, 33 U.S.P.Q. 33 (C.C.P.A. 1937). In re Russell, 439 F.2d 1228, 169 U.S.P.Q. 426 (C.C.P.A. 1971). One would have been motivated to employ particular amounts and/or parameters as known in the art, since, the primary reference discusses the generally use of such and generally, it is prima facie obvious to determine workable or optimal values within a prior art disclosure through the application of routine experimentation. See In re Aller, 105 USPQ 233, 235 (CCPA 1955); In re Boesch
With regard to claim 11, claim 11 further limits the process of claim 1 and by selecting specific weight percent ranges from known workable ranges which constitutes routine optimization absent any unexpected results.
With regard to claim 12, the claim is directed to the process as claimed in claim 1, wherein at least one of: no radical formers are added; and one or more antioxidants are added to the compounds (b) from the group of the polyether polyols. The inclusion of optional additives is commonly used in polyurethane processing and would have been obvious to the skilled artisan since such additives represents predictable variations within the ordinary skill in the art.
With regard to claim 13, claim 13 is directed to a polyol composition produced according to claim 1. Note that the claim is a product-by-process and thus the claim is not limited to the recited process steps, but rather to the structure of the implied by the steps. As such, if the product defined by the process steps is the same as or obvious from a product disclosed in the prior art, the claim is unpatentable regardless of the process by which it is made. In this instance, note WO2018091568A1 discloses recycled polymer compositions obtained from polyurethane waste that are isocyanate reactive and suitable for reuse in polyurethane production. See Abstract and pages 1-4. Since claim 13 does not recite any structural or compositional distinction that differentiates it from the claimed polyol composition in the reference, the claim product is obvious in view of the products of the reference.
With regard to claim 14, the claim is directed to using of a polyol composition produced according to claim 1 to make polyurethanes. WO2018091568A1 explicitly teaches that the recycled polyol compositions obtained from polyurethane waste are suitable for reuse in polyurethane production. See abstract and pages 1-4.
With regard to claim 15, the claim is directed to the process as claimed in claim 2, wherein at least one of:- the compounds (c) from the group consisting of dicarboxylic anhydrides and dicarboxylic acids are selected from the group consisting of adipic acid and the anhydrides of maleic acid, phthalic acid, hexahydrophthalic acid and succinic acid; and the reaction mixture also contains, in addition to the one or more compounds (c) from the group consisting of dicarboxylic anhydrides and dicarboxylic acids, one or more monocarboxylic acids. WO2018091568A1 also teaches acidolysis of polyurethane waste using dicarboxylic acids and anhydrides. See page 5 lines 3-20.
With regard to claim 16, the claim further limits the process by reciting detailed multistage reaction steps including initial charging and heating of water, metered addition of polyurethane waste, parallel or staged addition of water, acids and alcohols, temperature ranges, times and cooling steps. WO2018091568A1 also teaches a conducting polyurethane degradation reactions under elevated temperatures with controlled addition of reactants, see pages 3-7. Kemona et al. teaches hydrolysis based polyurethane recycling processes employing water under comparable conditions. The claimed staging sequencing and operating conditions represent routine process control and optimization measures used to achieve predicable depolymerization results. See section 3.3.1.
With regard to claim 17, the claim also further limits the process by reciting detailed multistage reaction steps including initial charging and heating of water, metered addition of polyurethane waste, parallel or staged addition of water, acids and alcohols, temperature ranges, times and cooling steps. WO2018091568A1 also teaches a conducting polyurethane degradation reactions under elevated temperatures with controlled addition of reactants, see pages 3-7. Kemona et al. teaches hydrolysis based polyurethane recycling processes employing water under comparable conditions. The claimed staging sequencing and operating conditions represent routine process control and optimization measures used to achieve predicable depolymerization results. See section 3.3.1.
With regard to claim 18, the claim is directed to also further limits the process by reciting detailed multistage reaction steps including initial charging and heating of water, metered addition of polyurethane waste, parallel or staged addition of water, acids and alcohols, temperature ranges, times and cooling steps. WO2018091568A1 also teaches a conducting polyurethane degradation reactions under elevated temperatures with controlled addition of reactants, see pages 3-7. Kemona et al. teaches hydrolysis based polyurethane recycling processes employing water under comparable conditions. The claimed staging sequencing and operating conditions represent routine process control and optimization measures used to achieve predicable depolymerization results. See section 3.3.1.
In conclusion, in view of the above, there appears to be no significant difference between the reference(s) and that which is claimed by applicant(s). Any differences not specifically mentioned appear to be conventional. Consequently, the claimed invention cannot be deemed as unobvious and accordingly is unpatentable.
Information Disclosure Statement
Note that any future and/or present information disclosure statements must comply with 37 CFR § 1.98(b), which requires a list of the publications to include: the author (if any), title, relevant pages of the publication, date and place of publication to be submitted for consideration by the Office.
Improper Claim Dependency
Prior to allowance, any dependent claims should be rechecked for proper dependency if independent claims are cancelled.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TERRESSA M BOYKIN whose telephone number is (571)272-1069. The examiner can normally be reached M-F 7-5:30.
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/Terressa Boykin/Primary Examiner, Art Unit 1765