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 .
Information Disclosure Statement
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
The information disclosure statement filed 12/03/2023 fails to comply with 37 CFR 1.98(a)(3)(i) because it does not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, of each reference listed that is not in the English language. It has been placed in the application file, but the information referred to therein has not been considered.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because it recites phrases the imply such as Processes are disclosed... A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Objections
Claims 6, 8-11, 14, and 17 are objected to because of the following informalities: The term “about” does not provide an exactitude but rather a contemplated variation.
Appropriate correction is required.
Claims 2, 3 are objected to because of the following informalities: It appears that the claim a Markush Group and it should be amended as follow: .. from a group consisting of .
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.
The term “portion” in claims 1 and 4 is a relative term which renders the claim indefinite. The term “portion” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
All the claims dependent of claim 1 are also rejected.
Claim 2 recites the limitation "the step" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claims 10, 11, and 16 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 10 recites “.. … less than about 15%.” This is a range with unbounded lower limit, and as such, it is unclear as to the extent of content Applicant is intending to seek patent protection of; as such, the claim is rendered indefinite.
Claim 11 recites “.. less than about 5%.” This is a range with unbounded lower limit, and as such, it is unclear as to the extent of content Applicant is intending to seek patent protection of; as such, the claim is rendered indefinite.
Claim 16 recites “… at least 4.0 weight percent.” This is a range with unbounded upper limit, and as such, it is unclear as to the extent of amount Applicant is intending to seek patent protection of; as such, the claim is rendered indefinite.
The term “selectively” in claim 3 is a relative term which renders the claim indefinite. The term “selectively” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim 14 recites the limitation " the triethylene glycol bis(2-ethylhexanoate) “ in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 16 recites the limitation "the residual hydroxyl content of the soft poly(vinyl butyral) " in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim the recites the limitation “the isolated soft poly(vinyl) butyral" in line 1. There is insufficient antecedent basis for this limitation in the claim.
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.
Claims 1-7, 15, 18, 19, 20, and 22-26 are rejected under 35 U.S.C. 102(a) (1)) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Thompson et al. (US 2009/0209667 A1) (“Thompson” herein- provided by applicant)
Claim 1
Thompson discloses, as best understood based on the indefiniteness above, aa process for recovering stiff poly(vinyl butyral) from a plasticized poly(vinyl butyral) multilayer sheet (i.e. two polyvinyl butyral resin) [0027] containing a stiff poly(vinyl butyral) (i.e. first poly(vinyl resin) and soft poly(vinyl butyral) (i.e. second poly(vinyl resin), the process comprising: [0008-0010]
a. grinding the plasticized poly(vinyl butyral) multilayer sheet to obtain a poly(vinyl butyral) granulate; [0011-0012]
b. adding additional plasticizer to the poly(vinyl butyral) granulate [0015] to remove at least a portion of the soft poly(vinyl butyral) (i.e. second poly(vinyl resin), from the poly(vinyl butyral) granulate to obtain a granulate enriched in the first poly(vinyl butyral) and a varnish of the soft poly(vinyl butyral) (i.e. second poly(vinyl resin), and the additional plasticizer (i.e. differences in molecular weight, residual hydroxyl (poly(vinyl alcohol)) content, and/or residual acetate (poly(vinyl acetate)) content all affect solubility of a poly(vinyl butyral) resin, and a solvent can be chosen based on those differences) [0014-0016, 0027-0029] and
c. physically separating the granulate enriched in the first poly(vinyl butyral) from the varnish of the soft poly(vinyl butyral) (i.e. second poly(vinyl resin), and the additional plasticizer. [0020, 0032, 0034, 0049]
or a different interpretation of Thompson
Claim 1
Thompson discloses, as best understood based on the indefiniteness above, a process for recovering stiff poly(vinyl butyral) from a plasticized poly(vinyl butyral) multilayer sheet (i.e. two polyvinyl butyral resin) [0027] containing a stiff poly(vinyl butyral) (i.e. first poly(vinyl resin) and soft poly(vinyl butyral) (i.e. second poly(vinyl resin), the process comprising: [0008-0010]
a. grinding the plasticized poly(vinyl butyral) multilayer sheet to obtain a poly(vinyl butyral) granulate; [0011-0012]
b. adding additional plasticizer to the poly(vinyl butyral) granulate [0015] to remove at least a portion of the soft poly(vinyl butyral) (i.e. second poly(vinyl resin), from the poly(vinyl butyral) granulate to obtain a granulate enriched in the first poly(vinyl butyral) and a varnish of the soft poly(vinyl butyral) (i.e. second poly(vinyl resin), and the additional plasticizer (i.e. differences in molecular weight, residual hydroxyl (poly(vinyl alcohol)) content, and/or residual acetate (poly(vinyl acetate)) content all affect solubility of a poly(vinyl butyral) resin, and a solvent can be chosen based on those differences) [0014-0016, 0027-0029] and
c. physically separating the granulate enriched in the first poly(vinyl butyral) from the varnish of the soft poly(vinyl butyral) (i.e. second poly(vinyl resin), and the additional plasticizer. [0020, 0032, 0034, 0049]
Thompson does not explicitly disclose the terminology as recited within the claimed invention: poly(vinyl butyral) multilayer sheet containing a stiff poly(vinyl butyral) and soft poly(vinyl butyral). However, Thompson discloses that the inventive method is used to separate two poly(vinyl butyral) resins from a single batch of granules. This embodiment is particularly useful for recycling interlayers that have multiple layers, ... For this embodiment, a solvent is chosen for the dissolution step that selectively dissolves a first poly(vinyl butyral) resin and not a second poly(vinyl butyral) resin. ([0027])]; which serves as poly(vinyl butyral) multilayer sheet containing a stiff poly(vinyl butyral) and soft poly(vinyl butyral. Therefore, the Examiner interprets this disclosure to read on the claimed invention.
Claim 2
Thompson discloses the process of claim 1, wherein the step of physically separating the granulate is carried out using one or more techniques selected from decanting, filtering, or centrifuging. [0039, 0041]
Claim 3
Thompson discloses the process of claim 1, wherein the removing of at least a portion of the soft poly(vinyl butyral) from the poly(vinyl butyral) granulate comprises selectively washing away the soft poly(vinyl butyral) from the poly(vinyl butyral) granulate. [0040]
Claim 4
Thompson discloses the process of claim 1, further comprising:
d. adding further additional plasticizer to the granulate enriched in the stiff poly(vinyl butyral) to remove an additional portion of the soft poly(vinyl butyral from the granulate;
e. separating the granulate from the additional portion of the soft poly(vinyl butyral) and the further additional plasticizer using one or more techniques selected from decanting, filtering, or centrifuging. [0054-0060]
Claim 5
Thompson discloses the process of claim 1, wherein the additional plasticizer is selected from one or more of esters of a polybasic acid or a polyhydric alcohol. [0015, 0027]
Claim 6
Thompson discloses the process of claim 1, wherein the additional plasticizer is added to the poly(vinyl butyral) granulate at a temperature from about 25°C to about 90 °C. [0038, 0056]
Claim 7
Thompson discloses the process of claim 1, wherein the additional plasticizer is selected from one or more of: triethylene glycol bis(2-ethylhexanoate), tetraethylene glycol bis(2-ethylhexanoate), triethylene glycol bis(2-ethylbutyrate), triethylene glycol diheptanoate, tetraethylene glycol diheptanoate, dihexyl adipate, bis(2-ethylhexyl)adipate, bis(2-ethoxyethyl)adipate, dioctyl adipate, hexyl cyclohexyladipate, diisononyl adipate, heptylnonyl adipate, dibutyl sebacate, polymeric adipates, a soybean oil, or an epoxidized soybean oil. [0015, 0027]
Claim 15
Thompson discloses the process of claim 1, wherein the additional plasticizer added to the poly(vinyl butyral) granulate in step b) comprises triethylene glycol bis(2-ethylhexanoate). [0015-0016]
Claim 18
Thompson discloses the process of claim 1, further comprising subjecting the varnish of soft poly(vinyl butyral) and additional plasticizer to one or more of sedimentation, filtration, centrifugation, evaporation, or precipitation to isolate the soft poly(vinyl butyral). [0059-0060]
Claim 19
Thompson discloses the process of claim 1, further comprising adding the varnish of soft poly(vinyl butyral) and additional plasticizer to a poly(vinyl butyral) composition. [0059-0060]
Claim 20
Thompson discloses the process of claim 19, further comprising forming the poly(vinyl
butyral) composition into a sheet. [0048-0052]
Claim 22
Thompson discloses the process of claim 1,further comprising adding the varnish of soft poly(vinyl butyral) and additional plasticizer to a clear poly(vinyl butyral) formulation. [0048-0052]
Claim 23
Thompson discloses the poly(vinyl butyral) sheet comprising the isolated soft poly(vinyl butyral) of claim 18. ( See claim 18)
Claim 24
Thompson discloses the laminated glass comprising the poly(vinyl butyral) sheet of claim 20. [0048-0052 & Claim 20]
Claim 25
Thompson discloses the poly(vinyl butyral) sheet comprising the separated granulate enriched in the stiff poly(vinyl butyral) of claim 1. [0039, 0041& Claim 1]
Claim 26
Thompson discloses the laminated glass comprising the poly(vinyl butyral) sheet of claim 1. [0048-0052 & Claim 1]
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.
Claims 8-14, 16, 17, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Thompson, as applied to claim 1 above, above, and further in view of Bourcier et al. (US 2008/0254302 A1).
Claim 8-9
Thompson discloses the process of claim 1. Thompson however does not explicitly disclose, wherein the soft poly(vinyl butyral) has a residual hydroxyl content from about 8% to about 12% or the stiff poly(vinyl butyral) has a residual hydroxyl content of from about 15% to about 25%.
Bourcier teaches the above limitation (See paragraphs 0032, 0086 , 0067,0028 , 0041 & 0069-0070 → Bourcier teaches this limitation in that interlayers of the present invention are useful for any multiple layer interlayer having a relatively soft inner layer and one or more relatively stiff outer layers. Three three-layer interlayers are separately coextruded. Each interlayer comprises a 0.1524 millimeter (6 mil) layer sandwiched between two 0.3302 millimeters (13 mil) layers for a total thickness of 0.8128 millimeters (32 mils). The inner layer comprises 75 phr plasticizer (triethylene glycol di-(2-ethylhexanoate)) and 11.0% residual poly(vinyl alcohol), (i.e. soft poly(vinyl) butyl) while the outside layers comprise 38 phr plasticizer (triethylene glycol di-(2-ethylhexanoate)) and 18.5% residual poly(vinyl alcohol) (i.e. stiff poly(vinyl) butyl)). Any suitable plasticizers can be added to the polymer resins of the present invention in order to form the polymer layers. Plasticizers used in the polymer layers of the present invention can include esters of a polybasic acid or a polyhydric alcohol, among others. Suitable plasticizers include, for example, triethylene glycol di-(2-ethylbutyrate), triethylene glycol di-(2-ethylhexanoate), triethylene glycol diheptanoate, tetraethylene glycol diheptanoate, dihexyl adipate, dioctyl adipate, hexyl cyclohexyladipate, mixtures of heptyl and nonyl adipates, diisononyl adipate, heptylnonyl adipate, dibutyl sebacate, polymeric plasticizers such as the oil-modified sebacic alkyds, and mixtures of phosphates and adipates. The residual hydroxyl content of the two adjacent polymer layers can differ by at least.., 4.0%, 5.0%, 7.5%, or by at least 10%. Further embodiments of multiple layer interlayers of the present invention include interlayers having more than two polymer layers, wherein one or more of the additional polymer layers has a residual acetate content of less than 5 mole %, less than 4 mole %, less than 3 mole %, less than 2 mole %, or less than 1 mole %. Additives may be incorporated into the polymer layer to enhance its performance in a final product. Such additives include, but are not limited to, plasticizers, dyes, pigments, stabilizers (e.g., ultraviolet stabilizers), antioxidants, flame retardants, other IR absorbers, anti-block agents, combinations of the foregoing additives, and the like. Agents that selectively absorb light in the visible or near infrared spectrum can be added to any of the appropriate polymer layers. Agents that can be used include dyes and pigments such as indium tin oxide, antimony tin oxide, or lanthanum hexaboride) for the purpose of providing multiple layer glass panels comprising poly(vinyl butyral) layers, without negatively impacting optical quality. [0005]
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to modify Thompson with the above limitation, as taught by Bourcier, in order to provide multiple layer glass panels comprising poly(vinyl butyral) layers, without negatively impacting optical quality.
Claim 10-11
Thompson discloses the process of claim 1. Thompson however does not explicitly, wherein the soft poly(vinyl butyral) has a residual acetate content less than about 15% or ,wherein the stiff poly(vinyl butyral) has a residual acetate content of less than about 5%. (Same as claims 8-9)
Claim 12 -13
The process of claim 1, wherein the soft poly(vinyl butyral) contained in the plasticized poly(vinyl butyral) multilayer sheet comprises triethylene glycol bis(2-ethylhexanoate) present as a plasticizer or the soft poly(vinyl butyral) contained in the plasticized poly(vinyl butyral) multilayer sheet further comprises dihexyladipate present as a plasticizer. (Same as claims 8-9)
Claim 14 and 17
The process of claim 1,wherein the triethylene glycol bis(2-ethylhexanoate) is present in the soft poly(vinyl butyral) in an amount from about 60 phr to about 100 phr or
the stiff poly(vinyl butyral) contained in the plasticized poly(vinyl butyral) multilayer sheet comprises from about 30 phr to about 45 phr plasticizer. (Same as claims 8-9)
Claim 16
Thompson discloses the process of claim 1. Thompson however does not explicitly, wherein the difference between the residual hydroxyl content of the soft poly(vinyl butyral) and the residual hydroxyl content of the stiff poly(vinyl butyral)
is at least 4.0 weight percent. (Same as claims 8-9)
Claim 21
Thompson discloses the process of claim 1. Thompson however does not explicitly dsiclose, further comprising adding the varnish of soft poly(vinyl butyral) and additional plasticizer to a poly(vinyl butyral) composition comprising a whitener to form a translucent interlayer. (Same as claim 8-9)
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 20, and 24 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1,4,7,8,9,10,11,12,13,14,15,16,17, 18, 19, and 20 of copending Application No. 18/875, 462 (‘462 herein).
Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application independent claim including all its dependent claim are included in the copending application ‘462.
All the claims dependent of claim 1 are also rejected.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Grover (US 3,256,212 A) Process For Separating Polyvinyl Butyral From A teaches olyvinyl butyral is separated from a homogeneous and intimate mixture with a compatible plasticiser which exerts a solvating action on it, e.g. triethylene glycol di(2-ethyl butyrate), Watanabe (US 4,199,109 A1) Method For Recovering Different Plastic Materials From Laminated Articles teaches A method for recovering plastics which is easy in working and effective in separation of materials. The method comprises the steps of: heating multilayer plastic articles, immediately crushing the heated plastic articles by means of shearing, impact or tearing force and peeling the layers of the plastic articles into small pieces of respective component layer materials, and separating the crushed and peeled pieces of materials into the respective component layer materials, thereby recovering the component layer materials in separated state, and D’Errico et al. (US 5,529,849 A) Plasticized Polyvinyl Butyral Sheet Containing Epoxy Resin teaches lasticized polyvinyl butyral sheet containing epoxy resin in amount effective, after prolonged exposure to light, to counteract reduction of adhesion between the sheet and a photoreactive component with which it will be in potential contact. The photoreactive component is typically a dielectric such as a metal oxide layer of a heat-wave-reflective or electrically conductive multi-layer coating, which coating can optionally be supported on (a) a thermoplastic substrate sandwiched between two of such polyvinyl butyral sheets forming a prelaminate for use as a constituent of a laminated glazing panel or (b) a glass sheet component of such glazing panel.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SILVANA C RUNYAN whose telephone number is (571)270-5415. The examiner can normally be reached M-F 7:30-4:30.
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/SILVANA C RUNYAN/Primary Examiner, Art Unit 3674 01/28/2026