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
Claims 13, 14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 6/24/26.
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 1-12, 15-20 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 “at least one hydrocarbon, optionally halogenated hydrocarbon”. This is confusing because the term “hydrocarbon” does not encompass “halogenated hydrocarbon”; they are mutually exclusive. The term “optionally” renders the claim indefinite because it is unclear whether the limitations following the phrase- halogenated hydrocarbon- is necessarily part of the claimed invention. See MPEP § 2173.05(d). Applicant may change the phrase to “at least one hydrocarbon or halogenated hydrocarbon” to obviate this rejection.
Claims 2-12, 15-20 depend on claim 1 and do not remedy this deficiency.
Additionally claim 4 also recites “at least one hydrocarbon, optionally halogenated hydrocarbon” which is rejected for the same reasoning as the same phrase in claim 1, stated above. Furthermore claim 4 recites “such as” in line 3, 4, 5 and 6. In each instance the term “such as” renders the claim indefinite because it is unclear whether the limitations following the phrase are necessarily part of the claimed invention. See MPEP § 2173.05(d).
Additionally claim 15 is rejected because it recites the limitation "steps F, G and H" in line 7. There is insufficient antecedent basis for this limitation in the claim. Steps F, G and H are only detailed in claim 8, upon which claim 15 does not depend.
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, 2, 4-7, 16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2016209094 by Grzybowski.
Grzybowski describes separation of composite packaging materials.
Regarding claim 1, Grzybowski describes a process comprising:
Providing polymer-containing waste material comprising polyethylene (a polyolefin) and aluminum (translation p.6 penultimate paragraph Example 1)
Contacting the material with xylene, a hydrocarbon with 8 carbon atoms (p.6 final paragraph)
Heating the composition at a temperature of xylene’s boiling point (about 140C) for three hours to dissolve the polyethylene (p.6 final paragraph). A lack of reported pressure indicates atmospheric pressure (0.101 MPa).
Separating the undissolved aluminum and particles (p.7 paragraph 1)
Separating the polyethylene and solvent from solution (p.7 paragraph 1)
For the claimed numerical values, 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 (see MPEP section 2131.03). See also Example 2 of Grzybowski (p.7). Also, regarding the solvent, Grzybowski also mentions benzene, toluene, cumene, ethylbenzene, naphtha, chlorobenzene, dichlorobenzene and bromotoluene as possibilities (p.5 antepenultimate paragraph). These read on other hydrocarbons and halogenated hydrocarbons claimed.
Regarding claim 2, Grzybowski exemplifies the amount of polymer at 87.7% (p.6 penultimate paragraph) and 20% (p.7 paragraph 2).
Regarding claim 4, Grzybowski exemplifies xylene (Example 1 and 2) but also describes benzene, toluene, cumene, ethylbenzene, naphtha, chlorobenzene, dichlorobenzene, bromotoluene (p.5 antepenultimate paragraph).
Regarding claim 5, Grzybowski describes collecting and reusing the solvent after separation (p.7 paragraph 1).
Regarding claim 6, Grzybowski describes reducing the size of the waste (“broken down into pieces” p.6 penultimate paragraph).
Regarding claim 7, Grzybowski describes evaporating the xylene solvent (p.7 paragraph 1).
Regarding claim 16, Grzybowksi describes shredding which reads on grinding (p.6 penultimate paragraph) and a maximum size, which reads on size separating.
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) 1-4, 6, 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 20190233609 by Maurer et al.
Maurer describes a method for recycling polyolefin waste.
Regarding claim 1, Maurer describes a process for extracting polymers comprising:
Providing a polymer containing material comprising polyolefin (paragraph 17, 25, 37)
Contacting the material with a solvent comprising a hydrocarbon with 5-18 carbon atoms (paragraph 22)
Heating the composition to 75-200C (paragraph 29) for at least 0.5-180min (paragraph 31), and a lack of mention of pressure indicates atmospheric pressure, 0.101MPa to dissolve the polyolefin (paragraph 37).
Separating the undissolved material (paragraph 33)
Separating the polyolefin and solvent (paragraph 34, 35 solvent evaporation and mechanical separation of polyolefin)
For step C) values, 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 Maurer describes values overlapping with the claimed range.
Regarding claim 2, Maurer describes a multilayer waste material with at least one layer of 80 wt% polyolefin and another layer with at least 80 wt% of another polymer with optionally another layer of more than 20 wt% metal and/or paper (paragraph 25). This overlaps with the claimed range of polymer material, e.g. two equal layers of 100% polymeric material and one equal layer of metal material would overlap with the claimed range.
Regarding claim 3, Maurer describes polystyrene, polyester (i.e. polyethylene terephthalate), polyamide and polyvinylchloride (paragraph 26).
Regarding claim 4, Maurer describes linear and cycloaliphatic hydrocarbons (paragraph 22).
Regarding claim 6, Maurer describes cutting the packaging into pieces prior to introducing solvent (paragraph 37).
Regarding claim 7, Maurer describes evaporation of the solvent as well as precipitation of the polyolefin (paragraph 34).
Claims 1, 4, 5, 7, 8, 18 are rejected under 35 U.S.C. 103 as being unpatentable over CN 101575421 by Li et al in view of DE 10140913 by Bungert et al.
Li describes reclaiming polypropylene.
Regarding claim 1, Li describes a process of reclaiming polypropylene comprising:
Providing a polyolefin containing waste material and
Contacting with a non-polar solvent (translation paragraph 10)
Dissolving the polyolefin in the solvent at 125-155C (paragraph 10-11) without applying pressure, i.e. at atmospheric pressure
Separating undissolved material from the mixture (paragraph 12)
Separating the polyolefin from solution (paragraph 13)
Li is merely silent as to the amount of time that the dissolution takes place in step C), although the dissolution must take some amount of time. In an example, Li dissolves polypropylene in xylene at 155C (paragraph 28) and describes a temperature range of 125-155C (paragraph 10).
Bungert describes purifying polymers via dissolution.
Bungert describes dissolves polypropylene in xylene at 130C in two hours (Example 2 and 3) which is a preferred method (paragraph 19). Thus it would be obvious to one of ordinary skill to dissolve Li’s polypropylene in xylene for two hours because it is a preferred method to arrive at the dissolution.
Regarding claim 4, Li describes for example xylene as well as oils containing 4-10 carbon atom constituents, e.g. D40 oil (paragraph 15).
Regarding claim 5, Li describes recovering solvent by distillation (paragraph 28).
Regarding claim 7, Li describes precipitating the polyolefin material (paragraph 13).
Regarding claim 8, Li describes adding a polar compound to precipitate the polyolefin and filtering to separate from solution (paragraph 13).
Regarding claim 18, Li describes acetone, a ketone (paragraph 17).
Claims 1, 3-7 are rejected under 35 U.S.C. 103 as being unpatentable over US 5278282 by Nauman et al.
Nauman describes polymer recycling by selective dissolution.
Regarding claim 1, Nauman describes:
Providing waste material comprising polyolefin (col 7 ln 5-10, PE and PP are polyolefin)
Contacting with a nonpolar solvent (Example 2 col 7 ln 25-28 xylene)
Heating the composition to optionally as high as 250C and dissolving the polyolefin (col 3 ln 19-20; Example 2) at atmospheric pressure or supercritical conditions (col 3 ln 35-40), reading on the claimed pressure range. Nauman notes that use of higher than minimum temperatures may be advantageous to decrease dissolution times or to improve drainage of the solution from the residual mass (col 8 ln 55-60).
Separating the undissolved material from solution (Fig.1 item 18 Filtration, col 7 Example 2 ln 34)
Separating the polyolefin from the solvent by flash evaporation (col 6 ln 8-15; Fig. 1 item 24 flash devolatilization)
Regarding the amount of time to dissolve the polyolefin, Nauman describes times ranging from 0.5-2 hrs in examples (col 13 Table 7).
Regarding overlapping ranges of temperature and pressure and time, 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 3, Nauman describes polystyrene, polyethylene terephthalate, and PVC (col 7 ln 5-10).
Regarding claim 4, Nauman exemplifies xylene and also describes decalin, tetralin, toluene, chlorobenzene, dichlorobenzene among others. See Table 7.
Regarding claim 5, Nauman describes recovery of the solvent (Fig.1 item 24, 30).
Regarding claim 6, Nauman describes reducing the size of the polymer containing material (col 9 ln 30-35).
Regarding claim 7, Nauman describes evaporating the solvent (Fig.1 item 24, flash devolatilization, see also col 6 ln 19-20).
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over WO 2016209094 by Grzybowski in view of US 5278282 by Nauman et al.
Grzybowski is described above.
Regarding claim 17, Grzybowski describes shredding the starting material to a maximum size larger than that claimed, 3cmx3cm, and is silent as to specifically the claimed range (p.6 penultimate paragraph).
Nauman is described above.
Nauman, like Grzybowski, concerns the separation and purification of polyolefins by dissolution. Nauman states that the dissolution time is shorter if the material is finely ground (col 9 ln 30-35). Thus it would be obvious to one of ordinary skill to grind Grzybowski’s starting material to a smaller size, including within the claimed range, in order to shorten dissolution time.
Allowable Subject Matter
Claims 9-12, 19, 20 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 of claim 1 and to include all of the limitations of the base claim and any intervening claims.
Claim 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 of claims 1 and claim 15 and to include all of the limitations of the base claim and any intervening claims.
Claim 9 and its dependents (claims 10-12, 15, 19 and 20) describe further treating the waste material of claim 1 by dissolving and recovering part of the material that was undissolved in the steps in claim 1. The art applied above to claim 1 is silent as to this further treatment. While sequential dissolution treatment in general is known, e.g. US 5278282 by Nauman et al, the specific parameters claimed are novel. Nauman, for example, does not describe polystyrene as dissolving after (i.e. at a lower temperature than) polyolefins in any iteration (col 13 Table 7), yet this is what is claimed in claim 9 step B1).
The art cited in the international search report is insufficiently specific to render obvious claim 9 and its dependents.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at 5712721302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CHRISTINA H.W. ROSEBACH/Examiner, Art Unit 1766
Prosecution Insights