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 .
Election/Restrictions
Applicant's election with traverse of polypropylene in the reply filed on 6/29/26 is acknowledged. The traversal is on the ground(s) that the PTO has not established that a search of the full scope of the claims would pose an undue burden. This is not found persuasive because the current application was filed as a 371 PCT application, and is thus subject to unity of invention determination for restriction. See MPEP section 823. Since the unity of invention was previously found, the restriction is proper. Furthermore, although applicant has newly amended the claims such that the Office’s art previously supplied as evidence to meet the unity of invention aspect of restriction no longer applies, the Office presents new art below which meets the unity (Claim 1). Since the unity of invention fails to make a contribution over the prior art, the restriction is proper.
The requirement is still deemed proper and is therefore made FINAL.
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, 2, 4-7 and 10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of copending Application No. 19/162,752 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
Instant claim 1 recites three steps a), b) and c) which are present in copending claim 1 as copending steps S-a), S-b) and S-c). Copending claim 1 has further steps. The invention of copending claim 1 is in effect a “species” of the “generic” invention of the application claim 1. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since application claim 1 is anticipated by copending claim 1, it is not copendingably distinct from copending claim 1.
Similarly, copending claim 2-15 depend on copending claim 1 and are more specific, thus they also render application claim 1 copendingly indistinct.
Instant claim 2 recites a boiling point range encompassed by copending claim 1.
Instant claim 4 recites a dissolution temperature encompassed by copending claim 1.
Instant claims 5 and 6 recite a dissolution pressure encompassed by copending claim 1.
Instant claim 7 describes an absorbent step in the same conditions as copending claim 1 S-b).
Instant claim 10 describes a recovery step which is more narrowly described by copending claim 14.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 2, 4-7, 14 and 18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 14 of copending Application No. 18/266,930 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
Instant claim 1 recites three steps, a), b) and c) which are present in copending claim 14, as a), E3) and c). Instant claim 1 has “comprising” language which allows for the additional step recited in copending claim 1, extraction.
Instant claim 2 recites a boiling point range encompassed by copending claim 14.
Instant claim 4 recites a dissolution temperature encompassed by copending claim 14.
Instant claims 5 and 6 recite a dissolution pressure encompassed by copending claim 14.
Instant claim 7 describes dissolution temperature and pressure as the same as in step a); this is encompassed by copending claim 14’s recitation of temperature and pressure.
Instant claim 14 describes extraction with a solvent; this is also recited in copending claim 1 step b), upon which copending claim 14 depends, with more specificity.
Instant claim 18 describes extraction with a solvent; this is also recited in copending claim 1 step b), upon which copending claim 14 depends, with more specificity.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 2, 4-7, 13 and 17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 13 and 15 of copending Application No. 18/266,646 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
Instant claim 1 recites three steps, a), b) and c) which are present in copending claims 13 and 15 as a), E3) and c). Instant claim 1 has “comprising” language which allows for the additional step recited in copending claim 1, washing.
Instant claim 2 recites a boiling point range encompassed by copending claim 13, 15.
Instant claim 4 recites a dissolution temperature encompassed by copending claim 13, 15.
Instant claims 5 and 6 recite a dissolution pressure encompassed by copending claim 13, 15.
Instant claim 7 describes dissolution temperature and pressure as the same as in step a); this is encompassed by copending claim 13’s recitation of temperature and pressure.
Instant claims 13 and 17 describe a washing step E2) which is also described by copending claim 13, 15 (step b)).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 13-15, 17-19 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 13 and 17 are unclear because the phrase in about the second line “a step E2) of washing with a dense solution” does not designate what is being washed. It is expected that applicant intends “a step E2) of washing the crude polymer solution with a dense solution”.
Claim 14 and 18 are unclear because the phrase in the second line “by placing in contact with an extraction solvent” is not clear as to what is placed in contact with an extraction solvent. It is expected that applicant intends “by placing the crude polymer solution in contact with an extraction solvent”, but this is not the structure of the claim language currently.
Claims 15 and 19 depend on claim 1 but read like independent claims, using “a <noun>” instead of “the <noun>” in several instances (e.g. “a dissolution step”, “a step of adsorption”) where the noun is previously mentioned in claim 1. This claim structure creates confusion as to if applicant intends to add another, different <noun> to claim 1’s process or to expound upon that already mentioned in claim 1. For clarity claims 15 and 19 should either be made independent or properly use antecedent basis for the nouns previously mentioned in claim 1 (e.g. “the dissolution step”, “the step of adsorption”).
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.
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) 1-12, 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 5278282 by Nauman et al in view of US 20170002110 by Layman et al as evidenced by NIST chemistry webbook.
Nauman describes polymer recycling by selective dissolution.
Regarding claim 1, Nauman describes a process for treating commingled solid mixture containing a plurality of polymers (abstract) comprising:
a) dissolving plastic which comprises polyolefin (col 8 ln 23-35) in optionally cyclohexane, decahydronaphthalene, or xylene (claim 6) which have boiling points in the claimed range (see NIST webbook references). Nauman exemplifies dissolving polyolefins in xylene at 118C (col 8 Example 5 ln 45-50) or 75-118C (col 7 Example 2 ln 29-35), and more broadly Nauman describes dissolution temperature may range from room temperature to 250C (col 3 ln 19-20). Nauman states that pressures of 1-20 atm (0.1-2 MPa) may be maintained for each solution (claim 3).
c) recovering the polymers via flash devolatization, which recovers both solvent and polymer (Fig.1, col 5 ln 50-55)
Nauman describes polypropylene as a recovered polymer (e.g. Example 7 col 11 ln 65-col 12 ln 56). Nauman is silent as to the step (b) adsorption by placing the crude polymer solution in contact with an adsorbent.
Layman also describes reclaiming polyolefin, specifically polypropylene, from a dissolved, pressurized state (abstract, paragraph 1, 18).
Layman describes contacting the dissolved, pressurized polypropylene with solid media in order to produce a purer polymer solution (abstract, paragraph 15). The solid media acts as an adsorbent (paragraph 60). Layman states that the polymer solution is kept at a temperature and pressure wherein the polymer remains dissolved in the solvent during this process (paragraph 60). Layman states this solid media step removes contamination (paragraph 60).
Thus it would be obvious to one of ordinary skill to contact the high temperature and pressure polymer-separated solution of Nauman (Nauman Fig.1 item 18 prior to blending) with solid media according to Layman in order to remove contamination from the polymeric solution and result in a purer polyolefin product.
Regarding the overlapping ranges of solvent, dissolution pressure and dissolution temperature, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). It would be obvious to one of ordinary skill to arrive at values in the claimed range because Nauman describes values overlapping with the claimed range.
Regarding claim 2, Nauman describes cyclohexane, decahydronaphthalene, or xylene which have values in the claimed range (see NIST entries attached).
Regarding claim 3, Nauman describes cyclohexane, which has a critical temperature of 281C and a critical pressure of 4 MPa (see NIST entries attached). Nauman also describes xylene, of which the isomers each have a critical temperature and pressure in the claimed range (o-xylene: 358C, 3.7MPa; p-xylene 344C, 3.5MPa).
Regarding claim 4, Nauman describes a dissolution temperature from room temperature to 250C (col 3 ln 19-20).
Regarding claim 5 and 6, Nauman states that pressures of 1-20 atm (0.1-2 MPa) may be maintained for each solution (claim 3). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990), In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). It would be obvious to one of ordinary skill to arrive at values in the claimed range because Nauman describes values overlapping with the claimed range.
Regarding claim 7, Layman describes the adsorbing step as taking place at a temperature and pressure wherein the polymer remains dissolved in the solvent during this process (paragraph 60), i.e. the temperature and pressure of the dissolution process is clearly encompassed by this phrase because the polymer is dissolved in these conditions.
Regarding claim 8, Layman describes a packed, stationary bed (paragraph 62), reading on a fixed bed.
Regarding claim 9, Layman describes alumina, silica, mixtures thereof, activated carbon (charcoal), fuller’s earth (decolorizing earth) among others (paragraph 61).
Regarding claim 10, Nauman describes recovery via flash volatilization under conditions of 200-400C and 10-40 atm (1-4 MPa) (col 6 ln 25-33).
Regarding claim 11, Nauman describes flash volatilization under conditions of 200-400C and 10-40 atm (1-4 MPa) (col 6 ln 25-33). Nauman’s described cyclohexane has a critical temperature of 281C and a critical pressure of 4 MPa and the xylene has a critical temperature around 350C and critical pressure around 3.6MPa. Since Nauman’s conditions exceed the critical temperature and pressure for these solvents, Nauman encompasses values which are “under supercritical conditions” for the dissolution solvent.
Regarding claim 12, Layman describes an embodiment including a solid-liquid separation step (paragraph 62) which is after the dissolution step and before the polymer recovery and after (downstream of) the adsorption step, which collects the solid media used for purification (paragraph 62). Layman describes the overall process of purification as taking place at a temperature and pressure wherein the polymer remains dissolved in a fluid solvent, which encompasses the dissolution temperature and pressure (Nauman 0.1-2 MPa and 0-250C).
Regarding claim 20 Nauman describes the elected polypropylene as well as polyethylene in the form of LDPE or HDPE (col 7 ln 1-5).
Allowable Subject Matter
Claim 16 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 15 and 19 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 13, 14, 17 and 18 would be allowable if the double patenting rejections and the rejection under 35 U.S.C. 112(b) are overcome and rewritten to include all of the limitations of the base claim and any intervening claims.
For these claims, the search has been extended beyond the elected polypropylene.
Claims 13 and 17 describe a washing of (presumably, see 112 rejection) the polymer solution with a solution. This is not disclosed in the applied prior art, nor is it present in other searched art. the closest art is US 20190233609 by Maurer. Maurer describes a method for recycling polyolefin containing waste by using a solvent with a specific Hansen parameter and contacting this mixture with a liquid filtration aid before separating the polyolefm from the mixture. The liquid filtration aid is close to the instant dense liquid (paragraph 23). The filtration aid accelerates the sedimentation of impurities (paragraph 61). But Maurer is silent as to the application of pressure instantly claimed, and pressure could conceivably affect the properties of materials in Maurer’s invention.
Claims 14 and 18 describe an extraction step of (presumably, see 112 rejection) the polymer solution. This is not disclosed in the applied prior art, nor is it present in other searched art. the closest art is US 20190233609 by Maurer. Maurer describes a method for recycling polyolefin containing waste by using a solvent with a specific Hansen parameter and contacting this mixture with a liquid filtration aid before separating the polyolefm from the mixture. The liquid filtration aid is a hydrocarbon, like the instant extraction solvent (paragraph 23). The filtration aid accelerates the sedimentation of impurities (paragraph 61). But Maurer is silent as to the application of pressure instantly claimed, and pressure could conceivably affect the properties of materials in Maurer’s invention.
Claim 15, 16 and 19 describe a solid-liquid separation step before the adsorption step, whereas in the closest art, US 5278282 by Nauman et al in view of US 20170002110 by Layman et al, Layman describes solid-liquid separation after adsorption to get rid of the adsorbent (paragraph 62), so changing the order of steps is not feasible. Other art in this space typically does not use pressure as instantly claimed.
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
Prosecution Insights