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 .
Response to Amendment
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a).
Claim Rejections - 35 USC § 112
Claim 10 is 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 10 refers to “a recycled and reproduced polyester obtained or produced by the disposal method… according to claim 1”, but claim 1 does not refer to an obtained recycled and reproduced polyester. It is generally unclear whether claim 10 is referring to the “first solid matter containing polyester”, “the second solid matter containing polyester”, or neither of these options.
Further with respect to claim 10, claim 10 uses the terminology “recycled and reproduced” with respect to polyester material melted/cut via extruder, but the specification uses the “reproduced” terminology with respect to the polyester resulting from extrusion (see for instance ¶ 57 of the specification). The discrepancy between the specification and claims regarding the terminology used renders the intended scope of the claim unclear.
Claim Rejections - 35 USC § 102
Claim(s) 10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Obe (JP2021-187870A). As the cited JP publication is in a non-English language, a machine-translated version of the publication will be cited to.
Regarding Claim 10, Obe teaches methods of treating/recycling release films comprising polyester base material layer and silicone release layer comprising treating with an aqueous alkali treatment liquid for removing the release layer and obtaining solid matter comprising polyester (Abstract; ¶ 13; Examples). The resulting polyester can be melted/pelletized within an extruder to create pellets (¶ 68-70), construed as chips.
While not describing the acid washing and subsequent alkali washing protocol of claim 1, the reference to claim 1 appears as an embedded product-by-process limitation within claim 10 through use of the language “obtained or produced by”. Case law holds that even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). In the present case, the obtained polyesters of Obe are seen to be no different in structure than that indicated by the claims despite being manufactured by alternative means.
Allowable Subject Matter
Claims 1 and 4-9 are allowed.
The following amendments are suggested for claims 1 and 10 to resolve the outstanding issues above.
1. (Currently Amended) A disposal method for a polyester-containing release film, comprising:
providing a release film comprising a substrate and a release layer, wherein at least a material of the substrate comprises polyester;
performing an acid washing step to the release film for removing the release layer from the release film and obtaining a first solid matter containing polyester; and
performing an alkali washing step to the first solid matter for obtaining a second solid matter containing recycled polyester.
10. The disposal method for a polyester-containing release film according to claim 1, further comprising:
using an extruder to melt [[a]] the recycled of claim 1
extruding and cutting the melted recycled
Response to Arguments
It does not appear the submitted remarks present arguments applicable toward the new grounds of rejection presented above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHEN E RIETH whose telephone number is (571)272-6274. The examiner can normally be reached Monday - Friday, 8AM-4PM Mountain Standard Time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached at (571)272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEPHEN E RIETH/Primary Examiner, Art Unit 1759
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