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 5-8 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 5 refers to “wherein the liquid solvent is generated at a pressure of…”, but claim 1 does not require a solvent generation step. The “generated” terminology lacks antecedent basis, thus rendering the scope of the claim unclear. In the interest of compact prosecution, claim 5 is construed as if depended on claim 3.
Claim 6 recites “wherein one or two or more of gaseous dimethyl ether, gaseous propane, and gaseous butane obtained by vaporizing one or two or more of the liquid dimethyl ether, the liquid propane, and the liquid butane are refluxed and used as one or two or more of liquid dimethyl ether, liquid propane, and liquid butane in the step of producing the liquefied solvent”. The metes and bounds of the claim are generally unclear. Claim 6 refers to gaseous dimethyl ether/propane/butane obtained by vaporizing, but claim 1 does not refer to any gaseous materials. Claim 6 refers to a step of producing liquefied solvent, but claim 1 does not contain any such step. The terminology appears to lack antecedent basis.
Further with respect to claim 6, the term “reflux” ordinarily refers to heating a liquid mixture above boiling while returning liquid condensate to the boiling mixture, but it appears the term is being used in a manner different than its ordinary meaning. A special definition of the term “reflux” is not found within the specification. Accordingly, the intended scope of the claim is unclear. Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). In the interest of compact prosecution, “refluxed” is construed as “condensed” for the purpose of applying prior art.
Attempts to claim a process without setting forth any steps involved in the process generally raises an issue of indefiniteness under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. Claim 7 refers to a method in which a new resin composition is produced using a resin, but fails to set forth any steps involved in “using” the resin to produce a new resin. It is therefore unclear what method/process applicant is intending to encompass. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced.
As claim 8 depends from claim 7, claim 8 is rejected for the same issue discussed above.
Claim Rejections - 35 USC § 102
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, and 7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Layman (US 2019/0390034 A1).
Regarding Claims 1, 2, and 4, Layman teaches methods of purifying waste polymers comprising dissolving waste polymer to create solution, filtering undissolved material, and evaporating solvent (Abstract; Figure 1; ¶ 85, 119, 141, 160, 202-204). Layman teaches solvents such as propane, butane, and dimethyl ether are suitable (¶ 25, 102). Layman teaches the process removes pigments, such as copper phthalocyanine (condensed polycyclic organic pigment) (¶ 91, 187).
Regarding Claim 7, Layman teaches the recovered/purified resins can be used to create new resin compositions (¶ 217).
Claim Rejections - 35 USC § 103
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) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Layman (US 2019/0390034 A1).
Layman teaches methods of purifying waste polymers comprising dissolving waste polymer to create solution, filtering undissolved material, and evaporating solvent (Abstract; Figure 1; ¶ 85, 119, 141, 160, 202-204). Layman teaches solvents such as propane, butane, and dimethyl ether are suitable (¶ 25, 102). Layman teaches the process removes pigments, such as copper phthalocyanine (condensed polycyclic organic pigment) (¶ 91, 187).
Regarding Claim 8, Layman teaches the recovered/purified resins can be used to create new resin compositions (¶ 217). Although Layman does not describe a particular embodiment where the purified resins are used to create new colored resin compositions, Layman teaches it was well known in the art final forms of plastic articles routinely contain dyes/pigments for coloration (¶ 5). Thus, it would have been obvious to further include a colorant in new compositions to create colored articles where so desired.
Claim(s) 3, 5, and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Layman (US 2019/0390034 A1) in view of Waibel (US 2009/0166175 A1).
The discussion regarding Layman within ¶ 17-18 is incorporated herein by reference.
Regarding Claims 3 and 6, Layman teaches bringing liquid into contact with waste resin to dissolve the resin into solvent, separating insoluble/colorants, and then vaporizing solvent under pressure release to leave resin (Abstract; Figure 1; ¶ 85, 119, 141, 160, 202-204). Layman teaches solvents such as propane and dimethyl ether are suitable (¶ 68, 73).
Layman teaches after vaporization, solvent can be recycled back toward the dissolution step (Figure 1; ¶ 213). Layman differs from the subject matter claimed in that pressurizing/liquifying the vaporized solvent is not described. In this regard, Waibel also pertains to the use / recycling of dense gas solvents such as dimethyl ether or propane (Abstract; ¶ 34). Waibel teaches solvent is used under pressure, is vaporized with reduced pressure, and is then re-condensed to liquid for re-use (Figures 1 and 3). Re-condensation takes place at higher than atmospheric pressures (Table 1) owing to their relatively high vapor pressures (Figure 6). It would have been obvious to re-condense the dense gas solvents of Layman under pressure because doing so would facilitate their recovery/re-use in accordance with the teachings of Waibel.
Regarding Claim 5, Waibel teaches embodiments where dense gas solvents is re-condensed at 8 bar / 0.8 MPa (Figure 3). Alternatively, the solvents used are highly volatile and an applied pressure below the relevant vapor pressure would induce solvent evaporation/boiling. Thus, the relevant pressure exerted during condensation is a result effective temperature subject to routine optimization by one of ordinary skill in the art. See MPEP 2144.05(II). Case law holds that “discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In view of this, it would have been obvious to one of ordinary skill in the art to discover optimal/workable pressures at given temperatures within the scope of the present claims so as to produce desired condensation characteristics while avoiding solvent loss.
Claim(s) 1, 2, 4, 7, and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ouni (US 2024/0209176 A1) in view of Musgrave (Journal of the Society of Dyes and Colourists).
The examiner has reviewed priority document EP21168649.8 of Ouni and finds written support for the citations below.
Regarding Claims 1 and 2, Ouni teaches processes of treating waste polymers, particularly polyolefins, comprising dissolving the waste polymer in a hydrocarbon solvent, separating undissolved material from the resulting polymer solution, and then separating the solvent from the polymer solution (Abstract). The hydrocarbon solvent can be linear aliphatic hydrocarbons such as n-butane (¶ 43). Colorants, such as pigments, are not dissolved and removed (¶ 38, 65).
Ouni differs from the subject matter claimed in that particular pigments such as carbon black and/or condensed polycyclic are not described. Musgrave teaches it has long been known carbon black and/or polycyclic pigments such as phthalocyanine pigments are useful for coloring polyolefin plastics (Abstract; Table 1; Page 645). It would have been obvious to one of ordinary skill in the art to treat plastics with carbon black and/or polycyclic pigments, thereby predictably facilitating the recycling/re-use of waste plastics in accordance with the teachings of Ouni.
Regarding Claim 4, Ouni teaches the hydrocarbon solvent can be linear aliphatic hydrocarbons such as n-butane, n-pentane, and n-hexane (¶ 43), which differs from the subject matter claimed only by a single -CH2- group. Case laws holds that homologs (compounds differing regularly by the successive addition of the same chemical group, e.g,. by –CH2– groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). In view of such, since Ouni teaches aliphatic linear hydrocarbons are useful solvent toward dissolving the polymers, it would have been obvious to one of ordinary skill in the art to expect similar beneficial results with solvents differing only by an additional –CH2– group.
Regarding Claims 7 and 8, Ouni teaches the resulting polymers can be used to manufacture polymeric articles (¶ 121-124). As set forth by Musgrave, it was well known in the art pigments can be incorporated into polyolefins for the purpose of achieving colored plastic materials. It would have been obvious to one of ordinary skill in the art to incorporate pigments into the recycled polymer articles of Ouni, thereby predictably affording plastic compositions of various colors where so desired.
Claim(s) 3, 5, and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ouni (US 2024/0209176 A1) in view of Musgrave (Journal of the Society of Dyes and Colourists) and Waibel (US 2009/0166175 A1).
The discussion regarding Ouni and Musgrave within ¶ 25-29 is incorporated herein by reference.
Regarding Claims 3 and 6, Ouni teaches brining liquefied solvent into contact with waste resin material to dissolve the resin in the solvent and subsequently vaporizing the solvent under pressure release (¶ 17-22, 69). With respect to solvent, Ouni teaches the hydrocarbon solvent can be linear aliphatic hydrocarbons such as n-butane, n-pentane, and n-hexane (¶ 43), which differs from the subject matter claimed only by a single -CH2- group. Case laws holds that homologs (compounds differing regularly by the successive addition of the same chemical group, e.g,. by –CH2– groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). In view of such, since Ouni teaches aliphatic linear hydrocarbons are useful solvent toward dissolving the polymers, it would have been obvious to one of ordinary skill in the art to expect similar beneficial results with solvents differing only by an additional –CH2– group.
Ouni teaches recovering the volatilized solvent for re-use in the previous dissolution step (¶ 77). Ouni differs from the subject matter claimed in that pressurizing/liquifying the vaporized solvent is not described. In this regard, Waibel also pertains to the use / recycling of dense gas solvents such as butane or propane (Abstract; ¶ 34). Waibel teaches solvent is used under pressure, is vaporized with reduced pressure, and is then re-condensed to liquid for re-use (Figures 1 and 3). Re-condensation takes place at higher than atmospheric pressures (Table 1) owing to their relatively high vapor pressures (Figure 6). It would have been obvious to re-condense the dense gas solvents of Ouni under pressure because doing so would facilitate their recovery/re-use in accordance with the teachings of Waibel.
Regarding Claim 5, Waibel teaches embodiments where dense gas solvents is re-condensed at 8 bar / 0.8 MPa (Figure 3). Alternatively, Ouni teaches solvent is in some embodiments contacted at room temperature (about 20 degrees C) (¶ 49), of which the vapor pressure of butane is roughly 0.2 MPa and propane 0.8 MPa (Figure 6 of Waibel). An applied pressure below the relevant vapor pressure would induce solvent evaporation/boiling. Thus, the relevant pressure exerted during condensation is a result effective temperature subject to routine optimization by one of ordinary skill in the art. See MPEP 2144.05(II). Case law holds that “discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In view of this, it would have been obvious to one of ordinary skill in the art to discover optimal/workable pressures at given temperatures within the scope of the present claims so as to produce desired condensation characteristics while avoiding solvent loss.
Conclusion
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/STEPHEN E RIETH/Primary Examiner, Art Unit 1759
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