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 .
DETAILED ACTION
Election/Restriction
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1-11, drawn to a recycling method for producing a polyolefin recyclate.
Group II, claim(s) 12-20, drawn to a polyolefin recyclate.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I and II lack unity of invention because even though the inventions of these groups require the technical feature of a polyolefin, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of WO 2018091356, represented herein by US 20190330439 by Siegl et al. Siegl describes a polyolefin, e.g. in claim 39. Note that for the product-by-process language in claim 12 and dependents 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.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
During a telephone conversation with Ryan Gillan on 3/17/26 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-11. Affirmation of this election must be made by applicant in replying to this Office action. Claims 12-20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Claim Objections
Claim 1 is objected to because of the following informalities: in the 13th line of claim 1 in the preliminary amendment submitted 6/16/23, the phrase “weight of the low-molecular contaminants of below 2000 daltons…” should be “weight of the low-molecular weight contaminants of below 2000 daltons…”. Appropriate correction is required.
Claim 7 is objected to because of the following informalities: the acronym “DEHP” is used without definition; the definition should be added. The definition “( Di(2-Ethylhexyl) phthalate)” may be given in parentheses after “DEHP” since DEHP is a common acronym, and despite the fact that the full name is not given in the specification.
Claim 7 is objected to because of the following informalities: DEHP is stated without linking it to the plasticizer that was mentioned in claim 6. For clarity, the phrase “a concentration of DEHP in the polyolefin recyclate” may be restated “a concentration of DEHP (Di (2-Ethylhexyl) phthalate) plasticizer in the polyolefin recyclate”.
Claim 11 is objected to because of the following informalities: applicant uses the term “°K” to describe a relative change in temperature. This is a use of Kelvin which is inconsistent with the art. Since there is no need to reference absolute zero temperature and the temperature is relative to the melting temperature of the polyolefin, the degrees should be reported in Celsius.
Specification
The disclosure is objected to because of the following informalities: applicant uses the term “°K” to describe a relative change in temperature, for example in paragraph 23 of the submitted specification. This is a use of Kelvin which is inconsistent with the art. Since there is no need to reference absolute zero temperature and the temperature is relative to the melting temperature of the polyolefin, the degrees should be reported in Celsius.
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 4-6, 8 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 4 recites “wherein more than 90% of residues of mineral oils including MOAHs…or MOSHs…together with POAHs…and POSHs…are washed out”. The combination of conjunctions used in this phrase are confusing. It is unclear which of the listed residues are required in the grouping and which are optional and if the group is closed (“including”). The group should be closed for one of ordinary skill to understand what “residues” means. A proper Markush group, should applicant desire a Markush group, is for example “selected from the group consisting of A, B, and C”. See MPEP section 2117.I.
Claim 5 recites “wherein more than 90% of each model contaminant from a group comprising toluene…or methyl stearate is removed”. First, the “model contaminant” lacks antecedent basis- is it the previously mentioned “contaminant” or some narrower selection thereof? Second, the listing is not a proper Markush group- it is not a closed grouping. It is unclear what is included in “more than 90% of each”. A proper Markush group, should applicant desire a Markush group, is for example “selected from the group consisting of A, B, and C”. See MPEP section 2117.I.
Claim 6 recites “more than 90% of plasticizers at least partly used in soft PVC”. It is not clear if PVC is part of the contaminated polyolefin or not.
Claim 8 contains improper Markush group wording because the list of alternatives is not a closed grouping. See MPEP section 2117.I. The current wording is “the odor-active compounds comprising at least one of carboxylic acids…or limonene” whereas proper wording is “the odor active compounds comprising at least one selected from the group consisting of carboxylic acids…and limonene”.
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 1, 3-10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2018091356, represented herein by US 20190330439 by Siegl et al.
Siegl describes recycling contaminated polyolefins.
Regarding claim 1, Siegl describes a recycling method for producing a polyolefin recyclate (paragraph 2) comprising:
-washing the contaminated polyolefin with water and lye (paragraph 101)
-removing contaminants via soaking in a solvent in order to dissolve the contaminants (paragraph 102) and subsequently removing the solvent (paragraph 102, 103)
Regarding the claim phrase:
“whereby the soaking in the solvent changes the contaminated polyolefin material such that (i) 90 percent by weight of the low-molecular contaminants of below 2000 daltons and decomposition products of the polyolefin are removed or washed out, and an average molecular chain length of the polyolefin recyclate is thereby increased and (ii) the melt volume-flow rate (MVR) of the polyolefin recyclate is reduced to a specified MVR”
Although Siegl is silent as to the percentage low molecular weight contaminants and change of molecular chain length, the instant specification lacks any examples, inventive or comparative. The instant specification indicates that the solvent n-hexane or n-heptane is “particularly efficient” for removing low-molecular weight contaminants of below 2000 daltons (instant submitted specification paragraph 22), which Siegl employs (claim 29, paragraph 102). The instant specification states that the degree and speed of removal of low-molecular weight contaminants can be influenced by residence time of contaminated polyolefin material, temperature of solvent and application of pressure (end of instant submitted specification paragraph 10). But there is not an example of what percentage of low molecular weight contaminants is achieved. As such, to avoid a 112(a) rejection for lack of enablement, that any amount of residence time of contaminated polyolefin material, temperature of solvent and application of pressure reads on achieving the instant claim. As such, Siegl, who surely applies a residence time, a temperature and some value of pressure reads on the instant claim, achieving a specified MVR and 90% removal of low MW contaminants.
Regarding claim 3, notably there is no requirement for the encapsulated dyes to be present in the contaminated polyolefin material, and Siegl meets the claim at least in the case where they are not present. Siegl makes no mention of encapsulated dyes in his list of contaminants (paragraph 29-30). Alternatively should they be determined to be inherent to Siegl’s starting contaminated polyolefin material, Siegl still meets the claim. The instant specification does not set forth parameters or examples by which to achieve this removal beyond that which is detailed by Seigl. Since Siegl describes the washing and removing steps, to avoid a 112(a) rejection for lack of enablement, Seigl meets the claim since no other steps appear to be necessary to achieve the claimed result.
Regarding claim 4, notably there is no requirement for the residues to be present in the contaminated polyolefin material, and Siegl meets the claim at least in the case where they are not present to start with in the contaminated polyolefin material. Alternatively, since the residues are described as “naturally occurring” in the claim, Siegl meets the claim where they are inherently present in the contaminated polyolefin because the instant specification does not set forth parameters or examples by which to achieve this removal beyond that which is detailed by Seigl. Since Siegl describes the washing and removing steps, to avoid a 112(a) rejection for lack of enablement Seigl meets the claim since no other steps appear to be necessary to achieve the claimed result.
Regarding claim 5, notably there is no requirement for the model contaminant to be present in in the contaminated polyolefin material, and Siegl meets the claim at least in the case where they are not present. Alternatively, should the model contaminants be considered inherent to Siegl’s contaminated polyolefin material, Siegl still meets the claim. The instant specification does not set forth parameters or examples by which to achieve this removal beyond that which is detailed by Seigl. Since Siegl describes the washing and removing steps, to avoid a 112(a) rejection for lack of enablement Seigl meets the claim since no other steps appear to be necessary to achieve the claimed result.
Regarding claim 6, notably there is no requirement for the plasticizers to be present in in the contaminated polyolefin material, and Siegl meets the claim at least in the case where they are not present. Alternatively should they be determined to be inherent to Siegl’s starting contaminated polyolefin material, Siegl still meets the claim. The instant specification does not set forth parameters or examples by which to achieve this removal beyond that which is detailed by Seigl. Since Siegl describes the washing and removing steps, to avoid a 112(a) rejection for lack of enablement, Seigl meets the claim since no other steps appear to be necessary to achieve the claimed result.
Regarding claim 7, Siegl does not mention the presence of DEHP thus Siegl meets the claim at least where DEHP is not present in the initial polyolefin recyclate (i.e. concentration is zero). Alternatively should DEHP be determined to be inherent to Siegl’s starting contaminated polyolefin material, Siegl still meets the claim. The instant specification does not set forth parameters or examples by which to achieve this removal beyond that which is detailed by Seigl. Since Siegl describes the washing and removing steps, to avoid a 112(a) rejection for lack of enablement, Seigl meets the claim since no other steps appear to be necessary to achieve the claimed result.
Regarding claim 8, the presence of odor-active compounds is not required in the instant phrasing of the contaminated polyolefin material. Thus Siegl meets the claim at least in the case where they are not present. See also 103 rejection below. Alternatively should the odor-active contaminants be determined to be inherent to Siegl’s starting contaminated polyolefin material, Siegl still meets the claim. The instant specification does not set forth parameters or examples by which to achieve this removal beyond that which is detailed by Seigl. Since Siegl describes the washing and removing steps, to avoid a 112(a) rejection for lack of enablement, Seigl meets the claim since no other steps appear to be necessary to achieve the claimed result.
Regarding claim 9, Siegl does not mention the presence of nonenal, nonanal or nonalactone therefore meets the claim at least in the case where they are not present. Alternatively should they be determined to be inherent to Siegl’s starting contaminated polyolefin material, Siegl still meets the claim. The instant specification does not set forth parameters or examples by which to achieve this removal beyond that which is detailed by Seigl. Since Siegl describes the washing and removing steps, to avoid a 112(a) rejection for lack of enablement, Seigl meets the claim since no other steps appear to be necessary to achieve the claimed result.
Regarding claim 10, Siegl exemplifies heptane (paragraph 102) and otherwise also describes hexane (claim 29).
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) 2, 4, 8, 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2018091356, represented herein by US 20190330439 by Siegl et al.
Siegl is described above.
Regarding claim 2, Siegl describes an embodiment in which additives including stabilizers and antioxidants are added to the polyolefin after removal of contaminants (paragraph 63). It would be obvious to one of ordinary skill to add antioxidants and stabilizers to the polyolefin material because Siegl describes this in an embodiment.
Regarding the phrase “removing more than 90% of stabilizers and antioxidants” first it is noted that the claim does not require that the contaminated polyolefin contain stabilizers and antioxidants before they are removed. Second, the instant specification does not set forth parameters or examples by which to achieve this removal, thus since Siegl describes the washing and removing steps, to avoid a 112(a) rejection for lack of enablement, Seigl meets the claim since no other steps appear to be necessary to achieve the claimed result.
Regarding claim 4, Siegl further meets this claim under 103 rejection as he describes embodiments in which MOSHs and/or MOAHs are part of the contaminants which are removed (paragraph 30) and the instant describes POAHs and POSHs as naturally occurring. It would be obvious to one of ordinary skill to choose a polyolefin material with the claimed contaminants because Siegl describes them as possibilities. The instant specification does not set forth parameters or examples by which to achieve this removal beyond that which is detailed by Seigl. Since Siegl describes the washing and removing steps, to avoid a 112(a) rejection for lack of enablement, Seigl meets the claim since no other steps appear to be necessary to achieve the claimed result.
Regarding claim 8, Siegl further meets this claim under 103 rejection as he describes embodiments in which scents are a contaminant that are removed (paragraph 29). It would be obvious to one of ordinary skill to choose a polyolefin material with the claimed contaminants because Siegl describes them as possibilities. The instant specification does not set forth parameters or examples by which to achieve this removal beyond that which is detailed by Seigl. Since Siegl describes the washing and removing steps, to avoid a 112(a) rejection for lack of enablement, Seigl meets the claim since no other steps appear to be necessary to achieve the claimed result.
Regarding claim 11, Siegl describes an embodiment with a soaking step with a pressure in the range of 1-1000 bar (paragraph 34) and a temperature 10C below the melting point of the polyolefin (paragraph 33). It would be obvious to choose these ranges because Siegl describes them as possibilities. Regarding the biofilms and germs, these are not required to be present in the contaminated polyolefin therefore Siegl meets the claim at least where they are not present. Alternatively should Siegl’s contaminated polyolefin be determined to have the biofilms/germs inherently, Siegl still meets the claim. The instant specification does not set forth parameters or examples by which to achieve this removal beyond that which is detailed by Seigl. Since Siegl describes the washing and removing steps, to avoid a 112(a) rejection for lack of enablement, Seigl meets the claim since no other steps appear to be necessary to achieve the claimed result.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTINA W ROSEBACH whose telephone number is (571)270-7154. The examiner can normally be reached 8am-3:30pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at 5712721302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTINA H.W. ROSEBACH/Examiner, Art Unit 1766
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