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 .
Response to Arguments
In their response dated 9/26/2026 the applicants amended claim 1 to remove trademark Styrofoam, and in claim 3 the limitation of “or a mix of suitable ground plastics” has been removed. Term “inner structure” was not amended. As such rejection will be restated.
Applicants argued that one of ordinary skill in the art would know what an inner structure in a pellet is.
After reviewing applicants arguments, and validating applicant’s specification, the claims do not appear to claim the invention.
Instant claim 1 is a composition claim, wherein the intended use is pellet. Pellet comprises recycles material ground polystyrene, inner structure and binding resin.
As such the question is : what is pellet?
A pellet is a small, compact and often cylindrical object made by compressing materials such as wood, metal or polymer.
The specification does not disclose pellet. Specification discloses pallet. Pallet, is a flat, sturdy platform used to support, store and transport goods.
Pellet as claimed is very different from pallet disclosed in the specification. One spelling mistake made a huge difference with respect to the scope of the claim and scope of the invention. Please note that examiners are prohibited from reading spec into the claims. As such at this point applicants are claiming a composition, where in the intended use if pellet, and wherein the intended use does not carry patentable weight.
Consequently, rejections of record are restated since applicant’s arguments are directed to a pallet not a pellet or composition itself.
Claim Interpretation
Instant claim 1 recites “a composition for obtaining pallets”. Limitation “for obtaining pallets” is a recitation of intended use wherein patentable weight is given to the composition and not how the composition is utilized.
Term “recycled material” has not been defined in the specification and therefore it includes any type of material both organic and inorganic.
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 1-5 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.
With respect to claim 1, term “inner structure” is viewed as indefinite. Specifically, the claim 1 is directed to a composition which is mixture of material, wherein term “inner structure” is completely undefined by the specification as filed. The fact that claim 4 lists inner structure is selected from group consisting of wood, fiberglass and nylon, does little to allow one of ordinary skill in the art to ascertain the meaning of “inner structure”.
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 § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
1. Claims 1, 2, 4 and 5 are rejected under 35 U.S.C. 102(a)(1) or 102(a)(2) as being anticipated by Hayashi (JP 2012-041687 translation provided).
With respect to claim 1, Hayashi discloses composition comprising recycled components [overview]. The composition comprises (claim 1):
1) Rubber chips and short fibers as a pulverized material
2) Inorganic granules byproduct of firing process (low density waste)
3) Binder
4) Expanded polystyrene in amount of less than 6% by volume (claim 4)
Rubber and short fibers are utilized in amount of 10-40 %, inorganic material is utilized in amount 50-80 % and binder is utilized in amount of 3-20 % [claim 5, 0018]. The ratio of rubber chips to short fibers is 6:1 to 9:1 which means for the content of 40% or less, the fibers (inner structure) can be utilized in amount of 5% while rubber chips can be 35%. Therefore, the rubber component meets the definition of recycled material along with the inorganic particulate.
All recycled material of Hayashi is pulverized [0020 to form granulates of inorganic material, powdery waste [0023] granules [0024].
With respect to claim 2, the rubber of Hayashi is recycled rubber and include isoprene rubber, natural rubber, SBR [0026] which is the same as rubber utilized in tires.
With respect to claim 4, the inner structure of Hayashi includes reinforcing fiber, such as nylon fiber.
With respect to claim 5, binder of Hayashi, is a polyurethane based resin is most preferably combination of urethane and acrylate, which renders it a two part binder (urethane part and acrylate part) [0033], especially when applicants have not defined their two part polyurethane based binder.
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.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Hayashi (JP 2012-041687) in view of Yun (CN 105255375 translation attached).
Discussion of Hayashi from paragraph 1 of this office action is incorporated here by reference. Hayashi disclosed a composition suitable for heat insulating boards comprising waste rubber, porous material, less than 6% of Styrofoam and the urethane binder. Hayashi disclosed waste polymers which come from recycled rubber products without fully disclosing what type of polymers actually go into the rubber article. While most preferred rubber is chloroprene, Hayashi also teaches urethane rubber, ethylene propylene rubber and the like.
Hayashi, however, did not disclose any additional polymers or components that can be utilized to form heat insulating boards.
Yun discloses another composition for heat insulation which utilizes waste rubber just like Hayashi. However, Yun goes more in depth into which types of polymers can be utilized to make insulation board from completely recycled materials. Recycled waste includes foamed and non-foamed rubbers and plastics.
With respect to rubbers, Yun throughout the disclosure teaches butyl rubber, diene rubber, EP rubber, EPDM rubber, neoprene rubber, chloroprene rubber, all of which are also disclosed in Hayashi. From plastics, Yun discloses ethylene vinyl acetate, polyethylene as well as foamed version of PE (see example 3). Other sources include glass fiber reinforced polyesters and PVC components.
Due to lack of applicant’s definition of what the suitable mixture of plastic is, the combination of polymers such as EVA, PE, polyesters and PVC are deemed as suitable for the purpose of making composition of Hayashi.
In the light of the above disclosure, it would have been obvious to one having ordinary skill in the art at the time instant invention was filed to utilize plastic of Yun in the composition of Hayashi and thereby obtain the claimed invention. This is because waste products often contain mix of polymers (rubber and plastic) that can be recycled.
Plastics in addition to rubber, bring render product lighter and allow in some cases melt processing. The actual composition depends to a large extent on what products are being recycled. Yun actually noted that current insulation products can be smelly due to chemical used in both foaming of the composition and imparting flame retardant properties. Using recycled product as disclosed in Yun results in product that is safe and harmless to human.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Correspondence
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767 October 8, 2026
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