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 .
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 2-6, 8, 10-12, 14, 15 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.
For claims 2-6, 8, 10, 12, 14, 15: A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
Claim 2 recites the broad recitation “a boiling point of between -50°C and 250°C” and the claim also recites “preferably between -15°C and 150°C, preferably between 20°C and 110°C” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Similarly claim 3 recites the broad limitation “a critical temperature of between 90 and 400°C” and narrower limitations “preferably between 130 and 300°C and preferably between 180 and 290°C”. It also recites the broad limitation “a critical pressure of between 1.5 and 5.0 MPa abs” and narrower limitations “preferably between 2.0 and 4.3 MPa abs and preferably between 2.4 and 4.2 MPa abs”.
Similarly claim 4 recites the broad limitation “the dissolution pressure is between 1.5 and 15.0 MPa abs” and narrower limitation “very preferably between 2.0 and 10.0 MPa abs”.
Similarly claim 5 recites the broad limitation “a density of greater than or equal to 0.85” as well as narrower limitations “preferably greater than or equal to 0.9, preferentially greater than or equal to 1.0”.
Similarly claim 6 recites “comprises at least 50% by weight of water” as well as the narrower limitations “preferably at least 75% by weight of water, preferably at least 90% by weight of water, very preferably at least 95% by weight of water”. Also, the full first phrase “preferably comprises at least 50% by weight of water”, is unclear due to the word “preferably”. It is unclear if this phrase is limiting or not, see MPEP section 2173.05(c)I.
Similarly claim 8 recites “a temperature of between 0 and 350°C” as well as the narrower limitations “preferably between 5 and 300°C and preferably between 10 and 250°C”. It also recites the broad limitation “a pressure of between 0.1 and 20.0 MPa abs” and the narrower limitation “preferably between 0.1 and 15.0 MPa abs and very preferably between 0.1 and 10.0 MPa abs”.
Similarly claim 10 recites “a critical temperature of between 90 and 400°C” as well as the narrower limitations “preferably between 130 and 300°C and preferably between 180 and 290°C”.
Claim 11 depends on claim 10 and is rejected for the same reason.
Similarly claim 14 recites “said dense solution preferably being an aqueous solution” and “said polymer recovery step preferably including…”. It is unclear if these phrases are limiting or not, see MPEP section 2173.05(c)I.
Similarly claim 15 recites “said dense solution preferably being an aqueous solution” and “said polymer recovery step preferably including…”. It is unclear if these phrases are limiting or not, see MPEP section 2173.05(c)I.
Claims 14 and 15 are further rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for competing definitions with the claim upon which it depends, claim 1. Claims 14 and 15 read like independent claims, creating new antecedents – for example “a dissolution step”- where the antecedent was already been established in claim 1- for example see claim 1 step a) for “a dissolution step”. This is confusing as it is not clear if applicant is establishing a new, additional “dissolution step” for example, or narrowing that already established in claim 1. There are several instances of this in claims 14 and 15. To correct, claims 14 and 15 could be made independent, i.e. without the phrase “according to claim 1” and changing “the plastic feedstock” to “a plastic feedstock”. Alternatively applicant may remove any limitations already required in claim 1 and keep claims 14 and 15 dependent on claim 1.
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, 8-10, 13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 10, 13 of copending Application No. 18266930 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other. Instant claim 1 and copending claim 1 both refer to a step (b) wherein the difference between step (b)s is instant- washing by contact with a dense solution; copending- extraction by contact with a solvent. Instant exemplified “dense solution” is water (instant Example 1). Copending “extracting solvent” is not specific as to what is being extracted and thus also includes the solvent water, for example. Thus the claims overlap.
Instant claims 2-4 relate to copending claims 2-4 in order.
Instant claim 8 corresponds to copending claim 10.
Instant claim 9 corresponds to copending claim 11
Instant claim 10 corresponds to copending claim 13, wherein instant step E2) reads on instant b) and instant step b) reads on copending step E2).
Instant claim 13 corresponds to copending claim 14.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Note that MPEP section 804 I.B.1.(b)(ii) states:
“If both the application under examination and the reference application have the same patent term filing date, the provisional nonstatutory double patenting rejection made in each application should be maintained until it is overcome. Provisional nonstatutory double patenting rejections are subject to the requirements of 37 CFR 1.111(b). Thus, applicant can overcome a provisional nonstatutory double patenting rejection by filing a reply that either shows that the claims subject to the rejection are patentably distinct from the claims of the reference application, or includes a compliant terminal disclaimer under 37 CFR 1.321 that obviates the rejection. If the reply is sufficient, the examiner will withdraw the nonstatutory double patenting rejection in the application in which it was submitted.
As such, the provisional double patenting rejection set forth above cannot be automatically withdrawn if it becomes the only rejection remaining in the application, because both the instant and copending Application No.18266930 have the same patent term filing date.
Claim Interpretation
In each claim in which a preference is recited, the preference will be considered nonlimiting in accordance with broadest reasonable interpretation.
Allowable Subject Matter
Claims 7 and 16-20 are allowed.
Claims 5, 6, 11-12, 14, 15 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claims 1, 9, 13 would be allowable if the double patenting rejection set forth were overcome.
Claims 2-4, 8, 10 would be allowable if both the double patenting and the 112 rejections set forth above were overcome.
The closest – yet inapplicable- art is US 20190233609 by Maurer. Maurer describes a method for recycling polyolefin-containing waste.
Similar to instant claim 1, Maurer describes a process for treating polyolefin (a plastic feedstock) comprising:
a) mixing the polyolefin with a solvent (paragraph 16, 17) wherein the polyolefin is PE, PP, LDPE, HDPE, LLDPE (paragraph 21) and the solvent is a cycloaliphatic, linear or branched hydrocarbon compound with 5 to 18 carbon atoms (paragraph 22); the polyolefin is dissolved (paragraph 37, 46) at 75-200C (paragraph 29). However no pressure is described during this stage; that instantly claimed is well above ambient pressure.
b) contacting the solution with a liquid filtration aid (paragraph 18) at a temperature between 75-200C (paragraph 29) at an amount of 0.5-100 wt% in relation to the mixture of step a) (paragraph 32). However no pressure is described during this stage; that instantly claimed is well above ambient pressure.
Maurer is thus deficient in that he does not describe any pressure applied in step a) and b); Maurer also does not describe a continuous process and thus does not directly describe the instant term “mass flow rate of the dense solution and the mass flow rate of the crude polymer solution”.
Other close yet inapplicable art is US 20170002109 by Layman et al. Layman describes dissolving a reclaimed polymer in a solvent at specific temperatures and pressures (paragraph 51 step 3)). However Layman follows dissolution step 3) with contact with a solid media at a dissolution temperature and pressure (paragraph 51 step 4)) without washing the polymer solution in between. While Maurer might be contemplated to add this step to Layman by one of ordinary skill, such a combination would still lack the instant pressure requirement for the washing step. Also, Maurer does not directly address the instant term “mass flow rate of the dense solution and the mass flow rate of the crude polymer solution”.
Other close yet inapplicable art is US 8338563 by Vandenhende (“Vandenhende1”), which describes dissolving plastic under pressure in the presence of a phase-separating agent (col 2 ln 46-50). The phase-separating agent is similar to instant step b)’s “washing…dense solution”. Vendenhende1 is silent as to applying the phase-separating agent separately in a continuous manner with a mass ratio as instantly described.
The international search report indicates US 6172125 by Vandenhende et al (“Vandenhende2”) is relevant to the instant claims, but it falls short of rendering obvious or anticipating the claims. Vandenhende2 describes an injection of steam which causes precipitation, not a washing step with a dense solution which yields “one washed polymer solution” (col 5 ln 15-20). Vandenhende2 describes dissolving the polymer at a temperature and pressure which reads on the instant range (col 4 ln 10-15), but the lack of description of instant b) remains.
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.
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/CHRISTINA H.W. ROSEBACH/ Examiner, Art Unit 1766
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