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.
Claim 3 is 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 3 refers to “the solvent”, but it is unclear whether this is in reference to 1) the hydrocarbon-based or aromatic solvent or 2) the mixed solvent of claim 1. Therefore, the intended scope of the claim is unclear.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 3-7, 9, and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Obara (JPH11-293030A). As the cited JP publication is in a non-English language, a machine-translated version of the publication will be cited to.
Regarding Claim 1, Obara teaches methods of reusing/recycling alicyclic structure-containing polymers comprising grinding/pulverizing molded bodies (resin shaped product) to obtain ground products and dissolving the shaped product in solvent to obtain a polymer solution (Abstract; ¶ 53). Obara teaches solvents such as cyclohexane (¶ 53; Examples). Obara differs from the subject matter claimed by the further inclusion of hydrocarbon-based or aromatic solvent.
In this regard, Obara teaches a range of solvents in addition to cyclohexane, inclusive of toluene and xylene (¶ 54), which have coagulation points of -40 degrees C or lower (¶ 33 of the specification). It is well settled that it is prima facie obvious to combine two ingredients, each of which is targeted by the prior art to be useful for the same purpose. In re Crockett, 279 F.2d 274, 126 USPQ 186 (CCPA 1960). Ex parte Quadranti, 25 USPQ2d 1071 (Bd. Pat. App. & Inter. 1992). Also, case law holds that “it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art.” In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980). In the present case, as Obara teaches such solvents individually, it would have been obvious to one of ordinary skill in the art to utilize combinations of solvents, inclusive of combinations of cyclohexane with toluene/xylene, and afford the predictable result of resin solutions suitable for recycle in accordance with the teachings Obara.
With respect to the ratios of solvent, generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Obara teaches whether or not a solvent is a “good solvent” is dependent on the type and structure of alicyclic resin and the appropriate solvent(s) are selected in view of ease of handling and ease of subsequent drying (¶ 53). It would have been obvious to one of ordinary skill in the art to discover workable/optimal solvent quantities within the scope of the present claims so as to produce desirable degrees of solubility and ease of handling/drying for a given resin type/structure.
Regarding Claim 3, solvents such as xylene and toluene have boiling points within the claimed range (¶ 33 of the specification).
Regarding Claims 4-6, Obara teaches adding adsorbent such as activated clay and subsequently filtering (¶ 53-55, 60).
Regarding Claim 7, Obara teaches solutions with 1-40 wt% solids (¶ 53), which overlaps the range claimed. It would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Obara suggests the claimed range. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Obara. See MPEP 2123.
Regarding Claims 9 and 10, Obara teaches Tg’s preferably from 70 to 250 degrees C (¶ 20), which overlaps the range claimed. It would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Obara suggests the claimed range. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Obara. See MPEP 2123.
Obara teaches various resins inclusive of norbornene-based polymers (¶ 7). Given the resins exhibit a Tg, they are amorphous materials.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Obara (JPH11-293030A) in view of AreYour (All About the Plastic Grinding Process). As the cited JP publication is in a non-English language, a machine-translated version of the publication will be cited to.
The discussion regarding Obara within ¶ 8-16 is incorporated herein by reference.
Regarding Claim 2, Obara teaches pulverizing/creating particles of size preferably less than 20 microns to ease dissolution (¶ 53). To the extent that Obara differs from the subject matter claimed with respect to the use of a sieve to classify particles, the use of grinding devices using sieves to classify waste plastic particles according to a desired size for recycling are well known in the art (see for instance AreYour). It would have been obvious to one of ordinary skill in the art to sieve the polymer pieces after griding to sizes less than 20 microns because doing so would procure particles that easily dissolve. The disclosed range overlaps the claimed range. It would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Obara suggests the claimed range. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Obara. See MPEP 2123.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Obara (JPH11-293030A) in view of Feichtinger (US 2012/0091609 A1). As the cited JP publication is in a non-English language, a machine-translated version of the publication will be cited to.
The discussion regarding Obara within ¶ 8-16 is incorporated herein by reference.
Regarding Claim 8, Obara teaches drying/removing solvent to recover alicyclic resin and subsequently melting the resin for molding (¶ 65-72). Obara differs from the subject matter claimed in that filtering the melted resin in a melted state is not described. In this regard, Feichtinger teaches it was known recycled plastic material can be reprocessed via melting and then filtering the melt so as to remove impurities (Abstract). It would have been obvious to one of ordinary skill in the art to filter the melts of Obara because doing so would remove impurities as taught by Feichtinger.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Obara (JPH11-293030A) in view of Nakahori (JP2013-010853A). As the cited JP publication is in a non-English language, a machine-translated version of the publication will be cited to.
The discussion regarding Obara within ¶ 8-16 is incorporated herein by reference.
Regarding Claim 11, Obara teaches the recycling procedure is applicable toward a variety of molded substrates, inclusive of multilayer / optical articles (¶ 23-31). Obara differs from the subject matter claimed in that particular moldings having urethane layers are not described.
Nakahori teaches double layer films with a alicyclic resin base layer and polyurethane coatings for optical applications are known in the art (Abstract; ¶ 1-4). Obara teaches the methods are capable of recycling alicyclic resin molded products into new molded products excellent in transparency (¶ 2-3). It would have been obvious to one of ordinary skill in the art to apply the recycling methods of Obara toward the films of Nakahori because doing so would facilitate the re-use of alicyclic resins toward the creation of new molded products excellent in transparency as taught by Obara.
Nakahori teaches the thickness of the urethane layer may range from 0.005-1 microns (¶ 118), equivalent to 5-1,000 nm. The disclosed range overlaps the range claimed. It would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Nakahori suggests the claimed range. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Nakahori. See MPEP 2123.
Claim(s) 1, 3-7, 9, and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Obara (JPH11-293030A) in view of Sawada (JP2004-074662A). As the cited JP publication is in a non-English language, a machine-translated version of the publication will be cited to.
Regarding Claims 1 and 3, Obara teaches methods of reusing/recycling alicyclic structure-containing polymers comprising grinding/pulverizing molded bodies (resin shaped product) to obtain ground products and dissolving the shaped product in solvent to obtain a polymer solution (Abstract; ¶ 53). Obara teaches solvents such as cyclohexane (¶ 53; Examples). Embodiments are taught where the resulting solution is used as is (¶ 65, 73). Obara differs from the subject matter claimed in that the particular mixed solvent is not described.
Sawada teaches the creation of films/sheets from cycloolefin addition polymer solutions (Abstract). Sawada teaches using a combination of good and bad solvent provides for films of high heat resistance, high transparency, and improved fracture characteristics (¶ 1). It would have been obvious to one of ordinary skill in the art to utilize the mixed solvents of Sawada in creating resin solutions according to the protocol of Obara because doing so would provide resin solutions that can be used as is for creating films of high heat resistance, high transparency, and improved fracture characteristics. Sawada teaches embodiments where the solvent is 45/5 vol/vol cyclohexane/heptane (¶ 81), the latter have a coagulation point of -91 degrees C and boiling point of 98.4 degrees C (¶ 33 of the specification). The amounts of solvent are roughly 91.2 wt% cyclohexane and 8.8 wt% heptane based on densities of 0.78 g/mL and 0.68 g/mL respectively.
Regarding Claims 4-6, Obara teaches adding adsorbent such as activated clay and subsequently filtering (¶ 53-55, 60).
Regarding Claim 7, Obara teaches solutions with 1-40 wt% solids (¶ 53), which overlaps the range claimed. It would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Obara suggests the claimed range. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Obara. See MPEP 2123.
Regarding Claims 9 and 10, Obara teaches Tg’s preferably from 70 to 250 degrees C (¶ 20), which overlaps the range claimed. It would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Obara suggests the claimed range. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Obara. See MPEP 2123. Obara teaches various resins inclusive of norbornene-based polymers (¶ 7). Given the resins exhibit a Tg, they are amorphous materials.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Obara (JPH11-293030A) in view of Sawada (JP2004-074662A) and AreYour (All About the Plastic Grinding Process). As the cited JP publication is in a non-English language, a machine-translated version of the publication will be cited to.
The discussion regarding Obara and Sawada within ¶ 29-33 is incorporated herein by reference.
Regarding Claim 2, Obara teaches pulverizing/creating particles of size preferably less than 20 microns to ease dissolution (¶ 53). To the extent that Obara differs from the subject matter claimed with respect to the use of a sieve to classify particles, the use of grinding devices using sieves to classify waste plastic particles according to a desired size for recycling are well known in the art (see for instance AreYour). It would have been obvious to one of ordinary skill in the art to sieve the polymer pieces after griding to sizes less than 20 microns because doing so would procure particles that easily dissolve. The disclosed range overlaps the claimed range. It would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Obara suggests the claimed range. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Obara. See MPEP 2123.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Obara (JPH11-293030A) in view of Sawada (JP2004-074662A) and Nakahori (JP2013-010853A). As the cited JP publication is in a non-English language, a machine-translated version of the publication will be cited to.
The discussion regarding Obara and Sawada within ¶ 29-33 is incorporated herein by reference.
Regarding Claim 11, Obara teaches the recycling procedure is applicable toward a variety of molded substrates, inclusive of multilayer / optical articles (¶ 23-31). Obara differs from the subject matter claimed in that particular moldings having urethane layers are not described.
Nakahori teaches double layer films with a alicyclic resin base layer and polyurethane coatings for optical applications are known in the art (Abstract; ¶ 1-4). Obara teaches the methods are capable of recycling alicyclic resin molded products into new molded products excellent in transparency (¶ 2-3). It would have been obvious to one of ordinary skill in the art to apply the recycling methods of Obara toward the films of Nakahori because doing so would facilitate the re-use of alicyclic resins toward the creation of new molded products excellent in transparency as taught by Obara.
Nakahori teaches the thickness of the urethane layer may range from 0.005-1 microns (¶ 118), equivalent to 5-1,000 nm. The disclosed range overlaps the range claimed. It would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Nakahori suggests the claimed range. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Nakahori. See MPEP 2123.
Conclusion
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/STEPHEN E RIETH/Primary Examiner, Art Unit 1759