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 .
Applicant’s election without traverse of Group II, claims 8-18 in the reply filed on January 12, 2026 is acknowledged.
The examiner will be treating claims 1-7 as withdrawn and non-elected without traversal. The office does not cancel claims for the applicant except by examiner's amendment at the time of allowance. Since the applicant has not submitted claim amendments, all claims remain active.
Claims 1-7 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on January 12, 2026.
Claim Objections
Claim 16 is objected to because of the following informalities:
Claim 16 recites “further comprising less”. The claim should instead read “further comprises less”.
Appropriate correction is required.
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 and 17 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 16 recites “less than 2% Type F fly ash” which causes confusion. What is the basis for the percentage? For the purposes of examination, the percentage is interpreted as weight percent.
Claim 17 is rejected for being dependent on claim 16.
Claim Analysis
Summary of Claim 1:
A composition for a pellet of a constituent injection material comprising rubber particles and a plastic matrix material, the composition comprising:
waste rubber particles; and
plastic comprising at least one of high density polyethylene, polyethylene terephthalate, and polypropylene, wherein
the waste rubber particles and the plastic have been melted and blended, cooled, and formed into pellets.
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.
Claims 8-10, 12-18 are rejected under 35 U.S.C. 103 as being unpatentable over Boor (US 20090308009).
Regarding claim 8, Boor discloses in Example 1 a composition comprising waste rubber particles and high density polypropylene [0026-0037], thereby reading on the instant claim.
Boor is silent on if the composition of Example 1 is melted, blended, cooled and formed into pellets as recited in the instant claim.
However, Boor broadly teaches the composition may be mixed, heated, and cooled and pelletized [0037]. Therefore, it would have been obvious to one of ordinary skill in the art to process the composition as taught by Boor.
Regarding claim 9, Boor discloses Example 1 comprises a proportion of waste rubber products in of up to about 50% by weight and 5-50% by weight of high density polyethylene [0026-0035], thereby lying within the claimed range of waste rubber and plastic as recited in the instant claim.
Regarding claim 10, Boor discloses Example 1 comprises ethylene vinyl acetate and ultra low density polyethylene as a binder [0026-0037], thereby reading on the bonding agent of the instant claim.
Boor does not teach Example 1 comprises a compatibilizing and reinforcing filler as recited in the instant claim.
However, Boor broadly teaches compatibilizers and fillers may be added to the composition [0018-0020]. Therefore, it would have been obvious to one of ordinary skill in the art to add a compatibilizer and a strengthening agent to the composition as taught by Boor.
Regarding claim 12, Boor discloses in Example 1 the waste rubber comprises ethylene propylene terpolymer rubber [0027], thereby reading on the instant claim.
Boor is silent on if the rubber is from waste tires and the plastic is waste plastic as recited in the instant claim.
However, Boor broadly teaches the styrene butadiene is obtained from shredded vehicle tires and the plastic may be obtained from recycled material streams [0012-0019]. Therefore, it would have been obvious to one of ordinary skill in the art to use waste tires as the rubber component and waste plastic in the composition as taught by Boor.
Regarding claims 13-14, Boor discloses in Example 1 a composition comprising waste rubber particles and high density polyethylene [0026-0037], thereby reading on the instant claim. Boor further discloses the materials are added together and agitated for a sufficient time period to achieve a uniform and homogenous composition [0035], thereby reading on the instant claim.
Boor is silent on if the plastic of Example 1 is melted prior to adding the waste rubber particles, and wherein the time that the waste rubber is exposed to high temperatures and generation of volatile organic compounds is minimized as recited in the instant claim 13 and wherein the melting temperature have been maintained above a maximum melting point of the plastic of instant claim 14.
However, the present claims are product-by-process claims. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." (MPEP § 2113 (quoting In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)).) If the prior art teaches the same product as the product formed by the process recited in the claims at issue, the claims are unpatentable. However, if the process of the claims at issue results in a product that is different from the product taught by the prior art, then the prior art does not teach the invention recited in the claims at issue.
Regarding claim 15, Boor discloses Example 1 comprises a proportion of waste rubber products in of up to about 50% by weight and 5-50% by weight of high density polyethylene [0026-0035], thereby lying within the claimed range of waste rubber and plastic as recited in the instant claim.
Regarding claim 16, Boor discloses in Example 1 0 wt% type F fly ash, thereby lying within the claimed range.
Regarding claim 17, Boor does not disclose Example 1 comprises Type F fly. Claim 16 and 17 do not require the Type F fly ash to be present as recited in claim 16. That is, because claim 17 also includes the limitation of claim 16, claim 17 also includes the limitation that the composition further comprises less than 2% Type F fly ash. Because Boor teaches 0 wt% of Type F fly ash, claim 17 is rendered obvious.
Regarding claim 18, Boor discloses in Example 1 the waste rubber comprises ethylene propylene terpolymer rubber [0027],
Boor is silent if the rubber is from waste tires and the plastic is waste plastic as recited in the instant claim.
However, Boor broadly teaches the styrene butadiene is obtained from shredded vehicle tires and the plastic may be obtained from recycled material streams [0012-0019]. Therefore, it would have been obvious to one of ordinary skill in the art to use waste tires as the rubber component and waste plastic in the composition as taught by Boor.
Claims 11 is rejected under 35 U.S.C. 103 as being unpatentable over Boor (US 20090308009) in view of Hemming et al. (US 20030032707).
The composition of claim 8 is incorporated by reference.
Regarding claim 11, Boor does not disclose Type F fly ash is present in Example 1.
Hemming et al. teach Type F fly ash filler can be combined with a polymer such as polypropylene [0007-0009]. Hemming et al. offer the motivation that adding the Type F fly ash filler improves the mechanical properties of the polymer composite [0012]. Boor is also concerned with the mechanical properties of the composition [0013]. Therefore, it would have been obvious to one of ordinary skill in the art to add the Type F fly ash to the composition of Hemming et al. with reasonable expectation that the mechanical properties would improve.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREA WU whose telephone number is (571)272-0342. The examiner can normally be reached M F 8 - 5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at (571) 272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREA WU/Examiner, Art Unit 1763
/CATHERINE S BRANCH/Primary Examiner, Art Unit 1763