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 Interpretation
Instant claim include term “ground Styrofoam”. Since the applicants have not provide any description as to particle size or grinding of the Styrofoam, any method producing small size particulates will meet term “ground”. This would include processed such as pulverization, shearing, or any other process that makes small particle size.
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”.
Claim 1 additionally discloses term “Styrofoam”. Styrofoam is still a live and registered Trademark that belongs to DDP Specialty Electronics Materials US. LLC. (SN 71514334 and 73075952). Depending which SN Styrofoam is utilized, its compositions are different. The ‘952 Styrofoam is specifically tailored to construction while ‘334 Styrofoam is made for construction adhesives. Additionally, the use of trademarks and tradenames in the claims is improper because the manufacturer is under no obligation to continue making the same material under given trademark nor continue to selling anything under given trademark. The discontinued use of trademarks or changing of the material sold under the trademark renders the claim meaningless. See MPEP 608.01 (v). As an example, there are total 38 discontinued Styrofoam tradenames and with varying composition (packaging, siding, coating and the like. Applicants are welcome to check website: tmsearch.uspto.gov.
Consequently, even if tradenames were allowed for use in the claims, considering what the Styrofoam was meant to do its composition will vary. The claims are indefinite because the scope of the term “Styrofoam” is not explicitly disclosed in the specification as originally filed.
To further advance the prosecution of the instant invention, the examiner will treat the term “Styrofoam” as expanded polystyrene or any Styrofoam tradename that is disclosed in the printed publication. It is important to note that the applicants failed to provide any other term with which Styrofoam can be associated with, for example, expanded polystyrene foam.
With respect to claim 3, term “mix of suitable ground plastics” renders claim indefinite. Specification does not provide any definition as to what applicants consider a suitable plastic. In fact term “suitable” does not appear in the specification. [0011] specification discloses ground plastics such as PET (mixture of ground plastics). The mixture itself is not defined as well.
All dependent claims inherit the deficiencies of the independent claim.
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 following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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):
Rubber chips and short fibers as a pulverized material
Inorganic granules byproduct of firing process (low density waste)
Binder
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 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 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.
Correspondence
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/KATARZYNA I KOLB/Primary Examiner, Art Unit 1767
March 12, 2026