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 .
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 and 3-20 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 recites the phrase “wherein, within the selected plastic species, the first plastic recyclate and the first virgin plastic belong to the same plastic type” in lines 17-18. It is unclear what is meant by the same “plastic type” and what exactly needs to be the same about the plastics to be of the same plastic type. For example, one of the plastic species named is polyolefin. It is unclear if both plastics being polyethylene would be the same plastic type within the species of polyolefin, or if both plastics would need to be HDPE to be the same type, or if they would need to be the exact same HDPE to be the same type. The instant specification indicates that plastic type is a subset of plastic species, but does not demonstrate exactly what is needed to be the same for the plastics to be of the same type. For purposes of examination, the limitation of claim 1 will be considered satisfied if the first plastic recyclate and the first virgin plastic have any similarities within their plastic species.
Claims 3-20 are also rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, since these claims depend from the claims rejected above and do not remedy the aforementioned deficiencies.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 3-14, and 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Montanari et al. (US-20230191757-A1) (previously cited) in view of Jacquemet et al. (US 6117561 A) (previously cited).
Regarding claim 1, Montanari teaches a method of using of a first plastic recyclate for a tube of a land vehicle, the method comprising the steps of providing a first plastic recyclate, providing a first virgin plastic, extruding the tube comprising the first plastic recyclate and the first virgin plastic, and incorporating the tube into the land vehicle, wherein the tube comprises a barrier layer (layers (1 and 2)) comprising a first layer (1) and a second layer (2), wherein the first layer and the second layer abut against each other, wherein the first layer has the first plastic recyclate and the second layer comprises a virgin plastic (Montanari, Abstract, Par. 0001, 0017-0025, and 0381-0383). The first and second layer are considered the barrier layer and do not require any intervening layers, and therefore Montanari teaches the barrier layer consists of the first and second layers. Montanari teaches the first plastic recyclate and the first virgin plastic belong to the same plastic species of polyamides and thus the first layer and second layer are formed of a single plastic species (Montanari, Par. 0017-0025). Montanari teaches the first plastic recyclate and the first virgin plastic are semi-crystalline aliphatic polyamides and thus are of the same plastic type (Montanari, Par. 0017-0019).
Montanari is silent regarding the first plastic recyclate being formed from industrial plastic residues obtained as plastic waste arising from a manufacturing process, wherein the first plastic recyclate is post-industrial recyclate and excludes post-consumer recyclate from end-users.
Jacquemet teaches an extruded tube formed from recycled polyamide, wherein the recycled polyamide is formed from industrial plastic residues obtained as plastic waste arising from a manufacturing process (Jacquemet, Abstract, Col. 2 Lines 16-33, Col. 2 Lines 53-56, and Col. 7 Line 8 – Col. 9 Line 5 – see “scrap recycling”). Jacquemet does not state that post-consumer recyclate from end-users must be used and thus satisfies the limitation of excluding post-consumer recyclate from end-users.
Montanari and Jacquemet are analogous art as they both teach extruded tubes comprising recycled polyamide. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have formed the first plastic recyclate of Montanari from post-industrial recyclate that is industrial plastic residue obtained as plastic waste arising from a manufacturing process. This would allow for reduced waste of manufacturing (Jacquemet, Col. 7 Line 8 – Col. 9 Line 5).
Regarding claim 3, modified Montanari teaches the first layer has a thickness of at least 50% of the overall tube thickness (Montanari, Par. 0301-0302), and teaches an example wherein the first layer has a thickness of 70% of the multilayer tube and the second layer has a thickness of 15% of the multilayer tube (Montanari, Table 1 – see Ex1). This results in a share of the layer thickness of the first layer in relation to the combined thickness of the first layer and the second layer of 82%, which lies within the claimed range of at most 90% and therefore satisfies the claimed range, see MPEP 2131.03.
Regarding claims 4 and 17, modified Montanari teaches that the multilayer film has a thickness of 1 mm and the second layer has a thickness of 15% of the overall thickness, resulting in a second layer thickness of 0.15 mm (Montanari, Par. 0384, 0408, 0416, and Table 1 – see Ex1), which lies within the claim 4 range of at most 0.5 mm and the claim 17 range of at most 0.35 mm and therefore establishes a prima facie case of obviousness over the claimed ranges, see MPEP 2131.03.
Regarding claims 5 and 18, modified Montanari teaches the first layer has a thickness of at least 50% of the total wall thickness of the tube (Montanari, Par. 0301-0302), which lies within the claim 5 range of at least 10% and the claim 18 range of at least 20%, and therefore satisfies the claimed ranges, see MPEP 2131.03.
Regarding claim 6, modified Montanari teaches the first virgin plastic of the second layer comprises a single virgin polyamide and the first plastic recyclate may comprise multiple different polyamides from multiple different recycled tubes (Montanari, Par. 0018-0024, 0040-0043, and 0063-0068). A recycled material made from multiple different polyamides from multiple different recycled tubes would inherently comprise multiple different molar mass polyamides and thus exhibit a broader molar mass distribution than a single, virgin polyamide and thus satisfy the claimed limitation.
Regarding claims 7 and 19, modified Montanari teaches the percentage by weight of the first plastic recyclate in the first layer measures at least 95% (Montanari, Abstract and Par. 0104-0105), which lies within the claim 7 range of at least 70% and is the same as the claim 19 range and therefore satisfies the claimed ranges, see MPEP 2131.03.
Regarding claim 8, modified Montanari teaches the percentage by weight of the first virgin plastic in the second layer measures at least 90% (Montanari, Abstract, Par. 0019, 0025, and 0234-0239), which lies within the claimed range of at least 70% and therefore satisfies the claimed range, see MPEP 2131.03.
Regarding claim 9, modified Montanari teaches all of the elements of the claimed invention as stated above for claim 1. While modified Montanari does not specifically disclose that the first layer has a darker color than the second layer, and the first layer has a gray shade, this is merely an obvious aesthetic design change to the tube of modified Montanari with no mechanical function. The court found that matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947), see MPEP 2144.04, I. Therefore, absent objective evidence to the mechanical function of the first layer being darker than the second layer and the first layer having a gray shade, modified Montanari renders obvious the limitations of claim 9.
Regarding claim 10, modified Montanari teaches the industrial plastic residues comprise extruded products or semifinished products that constitute manufacturing rejects (Scrap) (Jacquemet, Col. 7 Lines 8-62).
Regarding claim 11, modified Montanari teaches the first plastic recyclate and the first virgin plastic belong to the same plastics species of polyamides (Montanari, Abstract and Par. 0017-0025).
Regarding claims 12 and 14, modified Montanari teaches the tube has an additional layer or second virgin layer (2’) comprising a second virgin plastic that is a polyamide and is this the same species as the first plastic recyclate (Montanari, Par. 0018-0025).
Regarding claim 13, modified Montanari teaches the tube comprises at least one layer of recycled material and therefore teaches a further layer comprising a second plastic recyclate (Montanari, Abstract, Par. 0018 and 0035).
Regarding claim 16, modified Montanari teaches the tube comprising the first layer, second layer, and an additional layer only, wherein first layer has a thickness of at least 50% of the overall tube thickness and the second layer and additional layer have the same thickness (Montanari, Par. 0283, 0292, 0301-0302). This results in embodiments wherein the first layer has a thickness of 50% and the second layer has a thickness of 25%, resulting in a share of the layer thickness of the first layer in relation to the combined thickness of the first layer and the second layer of 66.7%, which lies within the claimed range of at most 75%. Therefore, modified Montanari establishes a prima facie case of obviousness over the claimed range, see MPEP 2144.05, I.
Regarding claim 20, modified Montanari teaches the percentage by weight of the first virgin plastic in the second layer measures at least 90% (Montanari, Abstract, Par. 0019, 0025, and 0234-0239), which lies within the claimed range of at least 70% and therefore satisfies the claimed range, see MPEP 2131.03.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Montanari in view of Jacquemet et al. as applied to claim 1 above, further in view of Zhang et al.
Regarding claim 15, modified Montanari teaches all of the elements of the claimed invention as stated above for claim 1. Modified Montanari further teaches the tube is used to transport liquids, such as coolants, in a vehicle (Montanari, Par. 0009, 0017, and 0020-0021).
Modified Montanari is silent regarding the land vehicle being an electric vehicle and wherein the tube is used as a cooling means for a battery of the electric vehicle.
Zhang teaches a tube comprising polyamide (see PA12) that is used as a cooling means for a battery in an electric vehicle (Zhang, Par. 0002-0005 and 0011).
Modified Montanari and Zhang are analogous art as they both teach tubes comprising polyamide that are used as a cooling means in a vehicle. It would have been obvious to one of ordinary skill the art before the effective filing date of the claimed invention to have used the tube of modified Montanari as a cooling means for a battery of an electric vehicle. This would allow for a recyclable cooling tube for a battery of an electric vehicle that utilized recycled materials (Zhang, Par. 0002-0005 and 0011; Montanari, Par. 0015-0017).
Response to Arguments
Applicant’s remarks and amendments filed 24 June 2026 have been fully considered.
Applicant requests withdrawal of the objection recited in the previous office action.
The objection recited in the previous office action has been withdrawn due to the present claim amendments.
Regarding arguments directed to the rejections over prior art, on pages 6-7 and 9-10 of the remarks, Applicant argues that Montanari teaches recycling material from a tube that has already been used which is a different process than Jacquemet and is not a post-industrial recyclate. This is not found persuasive for the following reasons:
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). While Montanari alone is silent regarding using post-industrial recyclate, Jacquemet renders obvious utilizing a post-industrial recyclate as a recyclate for a polyamide tube as stated in the grounds of rejection above. While Montanari generally states using a recyclate that has been previously used by a consumer, these are only specific, preferred embodiments. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971), see MPEP 2123. Nothing in Montanari indicates that post-industrial recyclate, such as that taught by Jacquemet, cannot be used as the recycled material and thus Montanari does not teach away from using post-industrial recyclate as taught by Jacquemet. Therefore, Montanari in view of Jacquemet render obvious a post-industrial recyclate.
Note that while Jacquemet does not disclose all the features of the present claimed invention, Jacquemet is used as a secondary reference, and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, and in combination with the other applied prior art establishes a prima facie case of obviousness over the presently claimed invention. Jacquemet teaches that it is well known and well within the ability of one of ordinary skill in the art to use post-industrial recyclate as a recyclate for a polyamide tube as stated in the grounds of rejection above. Jacquemet further provides motivation specifically for utilizing a post-industrial recyclate such as allowing for reduced waste of manufacturing (Jacquemet, Col. 7 Line 8 – Col. 9 Line 5). Meanwhile, the primary reference Montanari teaches the specific material and layer structure of the instant claim 1 as stated in the grounds of rejection above. Therefore, Montanari in view of Jacquemet render obvious the claimed layer structure of claim 1, wherein the first plastic recyclate is a post-industrial recyclate.
In view of the above, Montanari in view of Jacquemet render obvious the claimed first plastic recyclate and first virgin plastic wherein the first plastic recyclate is formed from industrial plastic residues as claimed and Applicant’s argument is unpersuasive.
Secondly, on pages 8-9 of the remarks, Applicant argues that Montanari does not teach the required “same type” plastic limitation. This is not found persuasive for the following reasons:
To note, the limitation of the first virgin plastic and the first plastic recyclate being of the same type has been rejected under 35 USC § 112(b) above. In view of the rejection under 35 USC § 112(b), the limitation is interpreted as being satisfied if the first plastic recyclate and the first virgin plastic have any similarity within the claimed species.
Montanari teaches the first plastic recyclate and the first virgin plastic are semi-crystalline aliphatic polyamides and thus have a similarity within the plastic species of polyamide (Montanari, Par. 0017-0019). Therefore, Montanari teaches the first plastic recyclate and the first virgin plastic are of the same plastic type and Applicant’s argument is unpersuasive.
Thirdly, on page 11 of the remarks, Applicant argues that the claimed darker/gray first layer in claim 9 is not ornamental and is due to the recycled materials being less pure. This is not found persuasive for the following reason:
While modified Montanari does not specifically disclose that the first layer has a darker color than the second layer, and the first layer has a gray shade, this is merely an obvious aesthetic design change to the tube of modified Montanari with no mechanical function. The court found that matters relating to ornamentation only which have no mechanical function cannot be relied upon to patentably distinguish the claimed invention from the prior art In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA 1947), see MPEP 2144.04, I. Therefore, absent objective evidence to the mechanical function of the first layer being darker than the second layer and the first layer having a gray shade, modified Montanari renders obvious the limitations of claim 9. Applicant has not provided any rationale or objective evidence as to a mechanical function of the color of the first and second layers. Applicant states that the color is a result of the recycled plastic being less pure than the virgin plastic, however this does not show a mechanical function to the color choice itself. Therefore, modified Montanari renders obvious the color limitations of claim 9 and Applicant’s argument is unpersuasive.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS J KESSLER JR whose telephone number is (571)272-3075. The examiner can normally be reached 7:30-5:30 M-Th.
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/THOMAS J KESSLER/Examiner, Art Unit 1782
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