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 Objections
The amendment filed 7-10-23 is objected to under 37 CFR 1.121© because it fails to present a complete listing of all claims. Clam 4 is referenced in claims 6 adn7 but is not included in the substitute claim listing. Applicants are required to submit a complete and corrected substitute claim listing that includes all pending claims and properly reflects their status. appears to have left off claim 4.
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 1-9 are rejected 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 1 recites a “polar solvent having a solubility parameter, SP, value of 9-13”. However, the claims do not specify how the solubility parameter is determined. Solubility parameters values, Hildebrand solubility parameters, are known to vary depending on the method of determination, and conditions used to measure the value. Further, the effective solubility parameter of a solvent system can vary based on concentration and composition. For example, when solvents are used in mixtures or in the presence of other components, the resulting system may exhibit a blended or effective solubility parameters that differs from that of any individual pure solvent. Thus, it is unclear whether the claimed SP value refers to the solubility parameter of a pure solvent, a solvent mixture or an effective solubility parameter under particular concnetration or processing conditions Consequently, since the claims do not define the method of measurement or the relevant conditions for determining the SP value, one of ordinary skill in the art would not reasonably be able to determine the scope of the claimed invention. See dependent claims 2-9.
Claim 6 and 7 depends from claim 4. However claim 4 is not present in the current claim listing and the scope of the claim cannot be determined with reasonable certainty and the claims have failed to particular point out and distinctly claim the subject matter regarded as the invention.
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 and 2 is/are rejected under 35 U.S.C. 102a1 as being anticipated by WO2008125465A1
WO2008125465A1 teaches the use of the disclosed solvent system as an extraction solvent for polymer compositions in recycling and polymer processing. The disclosed solvent system includes polar organic solvent components, e.g. amines , amides and alkanols, which are polar solvents. The reference further discloses that the ammonium slat may be tetra-alkyl ammonium salt. See claims 1, 2 and 9. A tetra-alkyl ammonium salt is a quaternary ammonium salt.
The reference further discloses nitrogen-containing organic base
solvents including N methyl 2 pyrrolidone, dimethylacetamide, and pyrrolidone (see Examples 1-15). N methyl-2-pyrrolidone is a well-known polar aprotic solvents having Hildebrand solubility parameters within the range of 9-to13. Note NMP approximately 11-12 (cal/cm3)1/2 . Because the reference expressly discloses NMP as a solvent component, and NMP inherently possesses solubility parameter within the claimed range, the claimed solubility parameter limitation is inherently met.
Any properties or characteristics inherent in the prior art, e.g. SP value, although unobserved or detected by the reference, would still anticipate the claimed invention. Note In re Swinehart, 169 USPQ 226. "It is elementary that the mere recitation of a newly discovered...property, inherently possessed by things in the prior art, does not cause claim drawn to those things to distinguish over the prior art".
Accordingly the reference teaches a solvent system comprising a polar organic solvent and a quaternary ammonium salt.
However, in view of the lack of clarity regarding the scope of the SP limitation as discussed in the a112 rejection above, and in the interest of expediently continuing prosecution, in the event that applicants’ arguments in the response adequately provide evidence or a reasonable presumption that the above 102 rejection is considered not to have sufficient specificity according to MPEP 2131.03:
2131.03 Anticipation of Ranges
I. A SPECIFIC EXAMPLE IN THE PRIOR ART WHICH IS WITHIN A CLAIMED RANGE ANTICIPATES THE RANGE
"[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is 'anticipated' if one of them is in the prior art." Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (citing In re Petering, 301 F.2d 676, 682, 133 USPQ 275, 280 (CCPA 1962)) (emphasis in original) (Claims to titanium (Ti) alloy with 0.6-0.9% nickel (Ni) and 0.2-0.4% molybdenum (Mo) were held anticipated by a graph in a Russian article on Ti-Mo-Ni alloys because the graph contained an actual data point corresponding to a Ti alloy containing 0.25% Mo and 0.75% Ni and this composition was within the claimed range of compositions.).
II. PRIOR ART WHICH TEACHES A RANGE OVERLAPPING OR TOUCHING THE CLAIMED RANGE ANTICIPATES IF THE PRIOR ART RANGE DISCLOSES THE CLAIMED RANGE WITH "SUFFICIENT SPECIFICITY"
When the prior art discloses a range which touches or overlaps the claimed range, but no specific examples falling within the claimed range are disclosed, a case by case determination must be made as to anticipation. In order to anticipate the claims, the claimed subject matter must be disclosed in the reference with "sufficient specificity to constitute an anticipation under the statute." What constitutes a "sufficient specificity" is fact dependent. If the claims are directed to a narrow range, and the reference teaches a broad range, depending on the other facts of the case, it may be reasonable to conclude that the narrow range is not disclosed with "sufficient specificity" to constitute an anticipation of the claims. See, e.g., Atofina v. Great Lakes Chem. Corp, 441 F.3d 991, 999, 78 USPQ2d 1417, 1423 (Fed. Cir. 2006) wherein the court held that a reference temperature range of 100-500 degrees C did not describe the claimed range of 330-450 degrees C with sufficient specificity to be anticipatory. Further, while there was a slight overlap between the reference's preferred range (150-350 degrees C) and the claimed range, that overlap was not sufficient for anticipation. "[T]he disclosure of a range is no more a disclosure of the end points of the range than it is each of the intermediate points." Id. at 1000, 78 USPQ2d at 1424. Any evidence of unexpected results within the narrow range may also render the claims unobvious. The question of "sufficient specificity" is similar to that of "clearly envisaging" a species from a generic teaching. See MPEP § 2131.02. A 35 U.S.C. 102/ 103 combination rejection is permitted if it is unclear if the reference teaches the range with "sufficient specificity." The examiner must, in this case, provide reasons for anticipation as well as a *>reasoned< statement regarding obviousness. Ex parte Lee, 31 USPQ2d 1105 (Bd. Pat. App. & Inter. 1993) (expanded Board). For a discussion of the obviousness of ranges see MPEP § 2144.05.
III. PRIOR ART WHICH TEACHES A VALUE OR RANGE THAT IS VERY CLOSE TO, BUT DOES NOT OVERLAP OR TOUCH, THE CLAIMED RANGE DOES NOT ANTICIPATE THE CLAIMED RANGE
"[A]anticipation under § 102 can be found only when the reference discloses exactly what is claimed and that where there are differences between the reference disclosure and the claim, the rejection must be based on § 103 which takes differences into account." Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (Claims to titanium (Ti) alloy with 0.8% nickel (Ni) and 0.3% molybdenum (Mo) were not anticipated by, although they were held obvious over, a graph in a Russian article on Ti-Mo-Ni alloys in which the graph contained an actual data point corresponding to a Ti alloy containing 0.25% Mo and 0.75% Ni.).
, the following rejection under 35 USC § 103
is as follows:
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) 1-3,5-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO2008/125465A1 see abstract, pages 1-4 and claims in view of US Pub 20060223896A1 see abstract and paragraphs [0002], [00011] and [0012].
WO2008125465A1 teaches the use of the disclosed solvent system as an extraction solvent for polymer compositions in recycling and polymer processing. The disclosed solvent system includes polar organic solvent components, e.g. amines , amides and alkanols, which are polar solvents. The reference further discloses that the ammonium slat may be tetra-alkyl ammonium salt. See claims 1, 2 and 9. A tetra-alkyl ammonium salt is a quaternary ammonium salt.
The reference also discloses nitrogen-containing organic base solvents including N methyl 2 pyrrolidone, dimethylacetamide, and pyrrolidone. See Examples 1-15. N methyl-2-pyrrolidone and dimethylacetamide are well known polar aprotic solvents having Hildebrand solubility parameters within the range of 9-to13. Note NMP approximately 11-12 (cal/cm3)1/2 .
Accordingly the reference teaches a solvent system comprising a polar organic solvent and a quaternary ammonium salt. However, the reference does not expressly disclose using the solvent composition as an extractant for EVOH or for selectively dissolving EVOH from a multilayer resin molded body.
USPub20060223896A1 teaches recovery and processing of vinyl alcohol polymers, including EVOH and discloses solvent-based treatment of EVOH in recycling contexts. USPub20060223896A1 therefore demonstrates that polar organic solvent systems are used in connection with EVOH processing and recovery. See abstract and paragraphs [0002], [00011] and [0012].
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use the solvent composition disclosed in WO2008125465A1, including a polar solvent such as NMP and a tetra-allyl ammonium salt, as an EVOH extractant in view of the teaching of USPub20060223896A1 that EVOH is processed and recovered using solvent systems.
The combination represents the predictable use of a known solvent composition for a known EVOH solvent-processing and recovery purpose.. Note that N methyl-2-pyrrolidone or NMP is a known polar solvent having a Hildebrand solubility parameter within the claimed range of 9 to 13. Since WO2008125465A1 expressly discloses NMP as the solvent component, the clamed SP range encompasses the know solubility parameter value of the solvent disclosed in the prior art.
Claim 2 is directed to the EVOH extractant according to claim 1, wherein the polar solvent is at least one member selected from the group consisting of ethylene glycol aminobutyl ether, N-methyl-2-pyrrolid one, isopropanol, dimethyl formamide, dimethyl sulfoxide, and phenyl glycol.
WO2008125465A1 discloses method for removing color from polymeric material. The reference also discloses nitrogen-containing organic bases and alkanols suitable for use as extraction solvents, including amides and alcohols. These claims encompass polar organic solvents. Selection of a specific known polar solvent from among know solvent classes represents routine optimization. See claims 1-4, Examples 10-15, claims 5-6.
USPub20060223896A1 further teaches dissolving EVOH in polar solvent selected based on solubility. See paragraph [0012] and specifically methanol, ethanol and propanol. The reference also teaches placing multilayer articles in contact with a solvent capable of dissolving EVOH but no other constituents. See [0019],[0022].
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use the solvent composition disclose in WO2008125465A1 including a nitrogen containing solvent such as N-methyl-2-pyrrolidocne and tetra alkyl ammonium salt i in the EVOH dissolution and recovery process in USPub20060223896A1 for the predictable purpose of selectively dissolving EVOH from multilayer articles.
Claim 3 is directed to the EVOH extractant according to claim 1, wherein a 1 mass% aqueous solution of the quaternary ammonium salt has a pH of 11.5 or more.
WO2008125465A1 discloses method for removing color from polymeric material. The reference also discloses tetra-alkyl ammonium slats as suitable ammonium salts. See page 7 lines 11-14 and Examples 11-13. Selection of a basic quaternary ammonium salt to enhance extraction performance would have been an obvious matter of routine chemical selection..
Claim 5 is directed to an EVOH extraction method for extracting EVOH, comprising applying the EVOH extractant according to claim 1 to an EVOH layer-containing multilayer resin molded body.
USPub20060223896A1 discloses contacting multilayer HDPE/EVOH molded bodies with a solvent capable of dissolving EVOH. [0019],[0022]. Applying the solvent composition of WO2008125465A1 would have been obvious to the skilled artisan.
Claim 6 is directed to the EVOH extraction method according to claim 4, comprising a step of immersing the EVOH layer-containing multilayer resin molded body in a solution of the EVOH extractant according to claim 1 to extract EVOH.
The immersion of the multilayer article in the solvent constitutes a routine and obvious method of placing the article in contact with the solvent as taught in
USPub20060223896A1
Claim 7 is directed to an EVOH recovery method comprising a step of mixing a solution containing EVOH that has been extracted by the EVOH extraction method according to claim 4 with water and/or a lower alcohol to deposit EVOH, followed by filtration or centrifugation.
USPub20060223896A1 discloses converting the EVOH solution into a gel,[0007], adding water [0028], evaporating ethanol by azeotropic distillation, [0030] , and collecting EVOH particles, [0031] and recovering EVOH from solution.
Claim 8 is directed to an EVOH extractant regeneration method comprising a step of removing water and/or a lower alcohol by distillation from a liquid left after the recovery of EVOH by the EVOH recovery method according to claim 6.
USPub20060223896A1 discloses the removal of alcohol by distillation in [0030] and claim 6.
Claim 9 is directed to the EVOH extractant regeneration method according to claim 7, further comprising a step of adding a polar solvent and/or water to a residue obtained in the step of claim 7.
USPub20060223896A1 discloses recycling of the solvent mixture for reuse in dissolution steps, [0021] and replenishing solvent components represents routine process maintenance.
In conclusion, in view of the above, there appears to be no significant difference between the reference(s) and that which is claimed by applicant(s). Any differences not specifically mentioned appear to be conventional. Consequently, the claimed invention cannot be deemed as unobvious and accordingly is unpatentable.
Information Disclosure Statement
Note that any future and/or present information disclosure statements must comply with 37 CFR § 1.98(b), which requires a list of the publications to include: the author (if any), title, relevant pages of the publication, date and place of publication to be submitted for consideration by the Office.
Improper Claim Dependency
Prior to allowance, any dependent claims should be rechecked for proper dependency if independent claims are cancelled.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TERRESSA M BOYKIN whose telephone number is (571)272-1069. The examiner can normally be reached M-F 7-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelley can be reached at 571 270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Terressa Boykin/Primary Examiner, Art Unit 1765