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 Amendment
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a).
Claim Rejections - 35 USC § 103
Claim(s) 1, 3-7, 9, 10, 12, and 13 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 Claims 1, 12, and 13, 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 ¶ 6-13 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 ¶ 6-13 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 ¶ 6-13 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.
Response to Arguments
Applicant's arguments filed 6/1/2026 have been fully considered but they are not persuasive.
Applicant argues the prior art does not describe particular types of solvents or proportions thereof. Applicant urges the particular solvents/ratios procure advantageous effects such as operability in low temperature environments and/or increased solubility. This is not found persuasive.
The claims do not impose any particular temperature requirements and thus, are open to dissolution/recovery regardless of what external conditions are present. Applicant’s argumentation with respect to increased solubility is not seen to hold significance to the extent that it can be regarded as unexpected. Obara already teaches what constitutes a “good solvent” (i.e. ease of solubility) depends on the type and structure of the alicyclic resin, the ease of handing of the solvent(s), and subsequent drying (¶ 53). Note also that the terminology “solvent” encompasses blends/mixtures of materials (see for instance ¶ 81). Thus, probing various “good solvents” to find optimal dissolution blends is seen to be a matter of optimization by routine experimentation within the level of ordinary skill in the art for a given alicyclic resin.
Even arguendo an unexpected effect is present, the claims at issue are not commensurate in scope with the evidence relied upon in support of the alleged unexpected results. Only a single alicylic polymer is probed whereas the claims refer to generic “alicyclic structure-containing polymer”. Applicant urges the 2-20 wt% figure is critical, but only methylcyclohexane has been studied. The evidence fails to illustrate the results alleged to be unexpected occurs throughout the scope of the claim and one of ordinary skill would be unable to ascertain a trend within the data to reasonably extend the probative value thereof to encompass the scope claimed.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHEN E RIETH whose telephone number is (571)272-6274. The examiner can normally be reached Monday - Friday, 8AM-4PM Mountain Standard Time.
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/STEPHEN E RIETH/Primary Examiner, Art Unit 1759
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