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 16-30 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.
In step (b) of claim 16, , the claim recites “separating the pyrolysis oil into at least one raffinate, an intermediate fraction and an extract.” However, the claim does not provide a clear structure or composition distinctions between the recited “raffinate,” “intermediate fraction, “ and “extract”. The claim fails to show how one of ordinary skill in the art would determine how each of these fractions is defined or distinguished from the other. Moreover, the recited “of at least one raffinate” and “an intermediate fraction and “an extract” renders the scope of the separation step unclear, as it is not apparent how multiple raffinates (if present) are differentiated from the other recited fractions.
To overcome the rejection, applicants may amend the claim to clear define the raffinate, intermediate fraction and extract in terms of structural parameters such as boiling point ranges, or specific process separation criteria, etc.
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) 16-30 is/are rejected under 35 U.S.C. 103 as being unpatentable over USP 5,087,436 in view of Franco Cataldo, Thermal depolymerization and pyrolysis of cis-1,4-polyisoprene: preparation of liquid polyisoprene and terpene resin; Journal of Analytical and Applied Pyrolysis Volume 44, Issue 2, January 1998, Pages 121-130; further in view of USP20190300794; or further in view of USP2471134.
Claim 16 is directed to a method of producing hydrocarbon-containing resins starting from a charge comprising rubber chips, the method comprising:
(a) a step of pyrolysis of the rubber chips carried out at a temperature between 300 and 900oC with an increasing temperature ramp, giving a gaseous effluent, a pyrolysis oil and a solid effluent, the pyrolysis oil comprising at least 1.5 wt% of C4-C12 olefinic monomers;
(b) a step of separation of the pyrolysis oil into at least one raffinate, an intermediate fraction and an extract, the intermediate fraction comprising at least 20 wt% of C4-C12 olefinic monomers and at most 10 wt% of heteroatoms;
(c) a resin synthesis step comprising a polymerization section supplied at least with the intermediate fraction resulting from step (b) and with a solvent selected from aliphatic, aromatic and halogenated solvents and mixtures thereof, followed by a finishing section producing a polymerized effluent; and
(d) a step of treatment of the polymerized effluent resulting from step (c) comprising a section for separation of an effluent rich in solvent and an effluent rich in resins, and a drying sections applied with the resin-rich effluent in order to produce a stream of hydrocarbon- containing resins.
USP 5,087,436 discloses commercially valuable chemicals which are extracted from tire-derived pyrolytic oils by subjecting the pyrolytic oils to a fractional distillation at a temperature of up to about 204oC under atmospheric pressure to isolate at least one commercially valuable chemical selected from the group consisting of paraffins, naphthenes, olefins and aromatics. The chemicals which can be extracted from tire-derived pyrolytic oils are benzene, toluene, xylene, styrene and limonene-dl. The distillation fraction boiling above 204 oC and can be used as an extension oil in the manufacture of various rubber and plastic parts. See abstract.
More particularly, USP5087436 discloses
(a) pyrolysis of rubber chips from used tires at a temperature range from 420oC to 700oC, producing a gas, liquid hydrocarbons, and a solid residue. Although the reference does not expressly recite “an increasing temperature“, heating rubber chips from ambient temperature to a disclosed pyrolysis temperature of 420-700C naturally requires increasing the temperature over time as would be understood by one of ordinary skill in the art. The reference further teaches that the liquid hydrocarbons include limonene, 8.9%. The reference also teaches distillation of the oil to recover a 70-204oC fraction or an intermediate fraction. See col. 4 lines 51-53 and col. 5, see col. 6 lines 19-25 Example 1 and Table 3.
(b) distillation of the pyrolysis oil to recover 70-204 oC fraction contains limonene, a C10-C12 olefin, which falls within the claimed C4-C12 olefinic monomers and within the claimed 10-90wt% range. Example 1 and Table 3 of USP5087436 disclose that limonene is present at 8.9wt% in the total pyrolysis oil, and because the 70-204C fraction specifically isolates the limonene-containing boiling range, fractional distillation would have concentrated the olefinic components in that intermediate fraction resulting in an olefine concentration that would have reasonably been expected to meet or exceed the claimed “at least 20wt% C4-C12 olefinic monomers limitation. The reference further teaches that this fraction contains aromatic hydrocarbons including xylene, which correspond to inert compounds present in the feed. See Example 2, col. 3 lines 4-5, col. 5, Table 4. Table 4 of the reference discloses that 70-204C fraction compromises 16.6wt% limonene and 6.1wt% styrene, which are C4-C12 olefinic monomers, for a combined total of 22.7wt%. Accordingly, the intermediate fraction expressly meets the claimed limitation of “ at least 20wt% C4-C12 olefinic monomers. Table 4 identifies the components of the 70-204C fraction as hydrocarbons, e.g. benzene, toluene, xylenes, styrene, limonene. Such components are hydrocarbon moieties within a defined boiling range. In fractional distillation of pyrolysis oil, heteroatom containing compounds such as oxygen, nitrogen or sulfur containing moieties are typically concentrated in heavier fractions or residue streams rather than in light hydrocarbon distillate fractions. Accordingly, one of ordinary skill in the art would have reasonably concluded that the disclosed 70-204C intermediate fraction being a light hydrocarbon distillate fraction consisting predominantly of hydrocarbons and would have been understood to contain low levels of heteroatoms including amounts within the claimed maximum of 10wt%.
With regard to the polymerization of the intermediate fraction and separation and recovery of the resin produced, USP5087436 does not disclose this limitation. However, note that Cataldo discloses this limitation as well as the limitation for both (c)) and (d):
For example, for (c), Cataldo discloses the polymerization of crude dipentene or limonene obtained from tire pyrolysis to produce a resin. See section 2.6, pages 123-124.
Moreover, for (d), Cataldo discloses the separation and the recovery and drying of the resin. Cataldo further teaches the following steps: c) polymerization of crude dipentene (limonene) from pyrolysis to produce a product effluent comprising a resin. See pages 123-124, Section 2.6. In carrying out this polymerization of the limonene-containing intermediate fraction recovered as taught by USP5087436, the concentration of olefinic monomers and the presence of inert compounds in the intermediate fraction would have been recognized as affecting the efficiency and outcome of the polymerization reaction.
With respect to separation of inert compounds USP5087436 teaches that the intermediate fraction contains aromatic hydrocarbons including xylene which correspond to inert compounds present in the feed. See col. 5 table 4. Cataldo teaches the recovery of the resin product following polymerization. Separation of resin from nonreactive components would have resulted in a remaining stream enriched in inert compounds, as such components would not participate in the polymerization reaction.
Consequently, since USP5087436 discloses recovery of limonenes from tire pyrolysis. (see col. 2 lines 21-35. Cataldo discloses polymerization of limonene to produce terpene resins. See section 2.6, pages 123-124, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to polymerize the limonene-containing intermediate fraction obtained from the pyrolysis oil of USP5087436 using polymerization process taught by Cataldo in order to produce terpene resin. Cataldo teaches that limonene derived from tire pyrolysis is a suitable monomer feedstock for resin production and that polymerization of such limonene produces terpene resins. See Cataldo section 2.6 pages 123-124. Accordingly, one of ordinary skill in the art would have been motivated toa apply the polymerization process of Cataldo to the to the limonene-containing intermediate fraction recovered in the pyrolysis process of USP5087436 in order to convert the olefinic monomers present in that fraction into hydrocarbon-containing resins.
With regard to claim 17, USP5087436 teaches pyrolysis of rubber chips derived from used tires but does not disclose the specific longest dimension of the tire pieces. USP20190300794 teaches tire pieces having dimensions of 50-100mm in [013], which falls within the claimed ranges 1-100mm.
Thus, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use tire pieces having a longest dimension within the claimed range in the process of USP5087436 since USPub20190300794 teaches suitable tire piece sizes for pyrolysis and selection of chop size for thermal degradation is a known process parameter.
With regard to claim 18, USP5087436 teaches pyrolysis of rubber chips derived from used tires but does not disclose that the rubber composition comprises at least 50phr of a diene elastomer. USPub20190300794 teaches that tire comprise natural rubber and styrene-butadiene rubber which are diene elastomers. See [0005].
Thus, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use rubber chips comprising at least 50phr of diene elastomer in the process of USP5087436 in view of the teaching of USPub20190300794 since the tires disclosed include diene elastomers and such materials are conventional constituents of tire rubber subjected to pyrolysis.
With regard to claim 19, USP5087436 teaches reacting the pyrolysis step at a starting temperature of 420C and at final temperature of 500C in col. 6 lines 19-24 and at a pressure of 0.3kPa or 0.01bar, which fall within the claimed temperature range of 350-800C and pressure below 1 bar. Although the reference does not expressly disclose the ratio of residence time of solid residence time of gas. However, the residence time is a known process parameter in pyrolysis reactions that affects product distribution. Thus, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to select a ratio of solid-to-gas residence time within the claimed range of 10-240 as a matter of routine optimization.
With regard to claim 20, USP5087436 teaches increasing the temperature from 420C to 500C but does not expressly disclose the specific ramp rate in C/min. see col. 6 lines 23-25. However, the temperature ramp rate is a known reaction parameter in pyrolysis processes. It would have been obvious to one of ordinary skill in the art to select a temperature ram rate within the clamed range of 1-10C/min as a matter of routine optimization of a process variable affecting product distribution.
With regard to claim 21, USP5087436 does not expressly disclose the sulfur content of the fractions. It would have been obvious to one of ordinary skill in the art to obtain an intermediate fraction having sulfur content within the claimed limit since sulfur content in tire derived pyrolysis fractions depends on feed composition and separation conditions which are known process conditions. art, since 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 22, USP5087436 teaches separating the pyrolysis oil by fractional distillation to recover a 70-240C fraction. See col. 3 lines 4-5, col. 5, Table 4.
With regard to claim 23, USP5087436 teaches separating the pyrolysis oil by fractional distillation to recover a 70-240C fraction but not performing the distillation in a column and obtaining the fraction by side-steam draw-off. However, USP2471134 teaches a fractional distillation column having a partition for withdrawing side stream. See col. 1 lines 17-21, 42-49. It would have been obvious to one of ordinary skill in the art to perform the distillation of USP5087436 using the column as taught in USP2471134 since the reference teaches that the it provides improved separation defined fractions.
With regard to claim 24, USP5087436 teaches further distillation and purification to isolate components, e.g. benzene, toluene, xylene, styrene, limonene. See col 5 lines 22-25. The reference does not disclose polymerizing the intermediate fraction or step c. However, Cataldo discloses polymerization of crude dipentene/ limonene obtained from tire pyrolysis to produce a resin . section 2.6, pages 123-124. It would have been obvious to one of ordinary skill in the art to
With regard to claim 25, USP5087436 does not teach heteroatom content below 2wt % in the intermediate fraction after purification but does teach purification and further distillation of the intermediate fraction. See col. 5 lines 22-25. teaches polymerization of pyrolysis-derived limonene/dipentene to produce a resin. See section 2.6 pages 123-124. It would have been obvious to one of ordinary skill in the art to control heteroatom content in the purified fraction to a low level suitable for downstream polymerization including within the claimed range.
With regard to claim 26, it would have been obvious to one of ordinary skill in the art to carry out the polymerization step using an aromatic solvent such as xylene, which falls within the claimed 67-C10 aromatic solvents since USP5087436 discloses such in col. 5 , Table 4.
With regard to claim 27, Cataldo teaches polymerization with the use of aluminum chloride as a catalyst. See section 2.6. It would have been obvious to one of ordinary skill in the art to use the polymerization catalysts as taught by Cataldo since generally, it is prima facie 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 28, USP5087436 does not discloses an stopper compound selected from water or C1-C3 at a particular temperature followed by phase decanting. However, Cataldo teaches recovery of the resin product following polymerization. See section 2.6. It would have been obvious to one of ordinary skill in the art to quench or terminate the polymerization reaction using a conventional stopper compound such as water or a lower alcohol and to separate phases by decanting in order to recover the resin product, as such steps are routine in polymer processing.
With regard to claim 29, the claim is a product-by-process and thus the claim is not limited to the manipulations of the recited steps of claim 16, only the structure of the implied by the steps. As such, Cataldo teaches recovery of terpene resin product from limonene. See section 2.6. Terpene resins are known additives in rubber compositions and rubber articles. The structure of Cataldo’s terpene resin is indistinguishable from the claimed resin and the source of limonene , i.e. pure vs intermediate fraction, does not provide a structural distinction. Because the resin produced by the method of claim 16 would have been obvious over USP5087436 in view of Cataldo, incorporation of the resin into rubber article would have been obvious. Cataldo teaches that t terpene resins derived from limonene are commonly used additives in rubber compositions and rubber articles where they act as tackifiers and improve adhesion and compatibility within rubber material. See Cataldo , section 2.6, pages 123-124. Accordingly one of ordinary skill in the art would have been motivated to incorporate the resin obtained from the limonene-containing intermediate fraction produced according to USp5087436 into rubber compositions as taught by Cataldo in order to achieve the known benefits of terpene resins in rubber system.
With regard to claim 30, the claim is a product-by-process and thus the claim is not limited to the manipulations of the recited steps of claim 16, only the structure of the implied by the steps. As such, Cataldo teaches recovery of terpene resin product from limonene. See section 2.6. Terpene resins are known additives in rubber compositions and rubber articles. Because the resin produced by the method of claim 16 would have been obvious over USP5087436 in view of Cataldo, incorporation of the resin into rubber article would have been obvious. Cataldo teaches that t terpene resins derived from limonene are commonly used additives in rubber compositions and rubber articles where they act as tackifiers and improve adhesion and compatibility within rubber material. See Cataldo , section 2.6, pages 123-124. Accordingly one of ordinary skill in the art would have been motivated to incorporate the resin obtained from the limonene-containing intermediate fraction produced according to USp5087436 into rubber compositions as taught by Cataldo in order to achieve the known benefits of terpene resins in rubber system.
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.
Obviousness-type 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 obviousness-type 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); and 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 16-30 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims of copending Application No.18037002.
Claim 16 of the related application recites a method of producing hydrocarbon-continuing resins from rubber chips . The differences do not render the claimed subject matter patentably distinct because both claims define substantially the same method steps for producing hydrocarbon-containing resins from rubber chips via pyrolysis, separation and polymerization of an intermediate fraction. Although the conflicting claims are not identical, they are not patentably distinct from each other because the related application contains dependent claims which, when read as a whole, contain the same subject as claim 1 of the present application, respectively and thus would have been obvious over the claimed invention. It is clear that all the elements of the application claims are to be found in related application claims (as the application claims fully encompasses related application claims). The difference between the application claims and the related application claims lies in the fact that the related application claim includes many more elements and is, thus, much more specific. Thus, the invention of claims of the related application is in effect a “species” of the “generic” invention of the application claims. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29USPQ2d2010 (Fed. Cir. 1993). Since application claims is anticipated by claims of the related application, it is not patentably distinct from claims of the related application.
Furthermore, with respect to the dependent claims, although the related dependent claims are not identical, they are not patentably distinct from one another. Each claim includes limitations that, when read as a whole, encompass the same subject matter as currently claimed, and thus would have been obvious to the skilled artisan.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
As a future response to the rejection above, applicants are advised to not withhold a response, such as, a terminal disclaimer (TD), to the pending ODP rejection. It is noted that the filing of a TD cannot be held in abeyance since that filing “is necessary for further consideration of the rejection of the claims” as set forth in MPEP 804 (I) (B) (1) quoted below:
“As filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application’s claims, is necessary for further consideration of the rejection of the claims, such a filing should not be held in abeyance. Only objections or requirements as to form not necessary for further consideration of the claims may be held in abeyance until allowable subject matter is indicated.”
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