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 1-13 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 1 recites “acrylonitrile butadiene styrene (ABS resin)” which is incorrect. As understood from the disclosure, this should be -- acrylonitrile butadiene styrene (ABS) resin--. Claim 1 recites an ABS base resin including polyurethane, a metal carboxylic acid salt, and a polyhydric alcohol, which is incorrect. As understood from the disclosure, the extrusion feed includes ABS base resin, a metal carboxylic acid salt, and a polyhydric alcohol, wherein the ABS base resin includes polyurethane and ABS. The Examiner suggests the following amendments:
1. (Currently Amended) A method for preparing a recycled acrylonitrile butadiene styrene (ABS) resin [[)]], the method comprising:
preparing an extrusion feed including an acrylonitrile butadiene styrene (ABS) base resin
, wherein the ABS base resin includes ABS and polyurethane; and
supplying the extrusion feed to an extruder to perform a depolymerization reaction of the
polyurethane, and
extruding the extrusion feed.
Claims not listed above are rejected as being dependent upon a rejected claim.
For further examination purposes, the scope of the claims are read in light of the suggested Examiner claim amendments.
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.
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) 1-10 and 12-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over KR 2000-0018319 in view of CN 102618010.
KR 2000-0018319 discloses a method for preparing a recycled acrylonitrile butadiene styrene (ABS) resin, the method comprising:
preparing an extrusion feed including an acrylonitrile butadiene styrene (ABS) base resin
including polyurethane; and
supplying the extrusion feed to an extruder to perform a depolymerization reaction of the
polyurethane, and
extruding the extrusion feed (see attached entire English translation provided by the Examiner; recycled PC/ABS base resin including polyurethane is feed into an extruder for extrusion, wherein the polyurethane is decomposed (depolymerization reaction) by heat and high shear force in the extruder to break down the bonds of the polyurethane making the polyurethane into fine particles).
However, KR 2000-0018319 does not disclose the extrusion feed including a metal carboxylic acid salt and a polyhydric alcohol.
CN 102618010 discloses a method of recycling polyurethane including:
preparing an extrusion feed including polyurethane, a metal carboxylic acid salt, and a polyhydric alcohol; and
supplying the extrusion feed to an extruder to perform a depolymerization reaction of the
polyurethane, and
extruding the extrusion feed (references are to the attached English translation provided by the Examiner; polyurethane, catalysts and alcoholysis agent are feed to an extruder for depolymerizing the polyurethane [005], [0008], [0015]-[0016], wherein the catalysts include a metal salt of a carboxylic acid including zinc acetate [0029], and wherein the alcoholysis agent includes glycerol (glycerin which is a polyhydric alcohol) [0025]).
It would have been obvious to one of ordinary skill in the art, at the time the invention was made, to modify the method of KR 2000-0018319 by including a metal carboxylic acid salt and a polyhydric alcohol in the extrusion feed, as disclosed by CN 102618010, because such a modification is known in the recycling art and would provide an alternative configuration for depolymerizing the urethane known to be operable in the art.
KR 2000-0018319 further discloses the method:
(Claim 8) wherein a temperature inside the extruder is 200°C to 280°C (see attached entire English translation provided by the Examiner; extruder at 180°C to 280°C).
CN 102618010 further discloses the method;
(Claim 2) wherein the metal carboxylic acid salt includes one or more of zinc acetate, zinc stearate, and potassium acetate [0029];
(Claim 6) wherein the polyhydric alcohol includes one or more of glycerin (glycerol) and erythritol [0025];
(Claim 9) wherein a residence time of the extrusion feed in the extruder is 0.5 minutes to 10 minutes [0021];
(Claim 12) wherein the metal carboxylic acid salt includes zinc acetate [0029];
(Claim 13) wherein the polyhydric alcohol includes glycerin (glycerol) [0025].
As to claims 3-4, 7 and 10, as mentioned above, adding a metal carboxylic acid salt and a polyhydric alcohol in the extrusion feed to depolymerize polyurethane is taught in the prior art. The amounts of the metal carboxylic acid salt and the polyhydric alcohol, as recited by claims 3-4, 7 and 10, would have been found by an artisan of ordinary skill in view of such teachings in finding operable amounts of the metal carboxylic acid salt and the polyhydric alcohol to obtain a desired depolymerization of the polyurethane.
As to claim 5, as mentioned above, CN 102618010 further discloses the method wherein the polyhydric alcohol includes glycerin (glycerol) [0025]. Note that instant Table 1 lists glycerin as having a boiling point of 290°C.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over KR 2000-0018319 in view of CN 102618010 as applied to claims 1-10 and 12-13 above, and further in view of JP 6-155474.
KR 2000-0018319 and CN 102618010 do not disclose the limitations of claim 8.
JP 6-155474 discloses a method for preparing a recycled resin, the method including extruding an extrusion feed from an extruder 20, and supplying an extrusion composition 15 discharged from the extruder 20 to a pelletizer (including cutting chamber 30) to perform pelletization (fig. 1; see English translation provided by Applicant).
It would have been obvious to one of ordinary skill in the art, at the time the invention was made, to further modify the method by supplying an extrusion composition discharged from the extruder to a pelletizer to perform pelletization, as disclosed by JP 6-155474, because such a modification is known in the art and would provide an alternative configuration for the method capable of producing pellets from the recycled resin.
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 and 6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8 and 9 of copending Application No. 18/290,852 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1 and 6 are respectively fully encompassed by claims 8 and 9 of copending Application No. 18/290,852.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH S LEYSON whose telephone number is (571)272-5061. The examiner can normally be reached M-F 8am-4:30pm.
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/J.S.L/Examiner, Art Unit 1744
/XIAO S ZHAO/Supervisory Patent Examiner, Art Unit 1744