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 .
Drawings
The drawings are objected to because Figure 1 bottom graph x-axis label contains typo “Prticle” and should read “Particle” instead.
The drawings are objected to because applicant labels all drawings (1-13) “Figure” followed by consecutive Arabic numerals. The patent office requires applications with more than one drawing to be labeled “Fig.” with consecutive Arabic numerals (1, 2, etc.) or an Arabic numeral and capital letter in the English alphabet (A, B, etc.). See 37 CFR 1.84(u)(1) and MPEP §507 (E).
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 14, 23, 28-33, and claims dependent therefrom (claims 15, 16, 24-26, 34) 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 14 used the phrase “fine powders,” which is indefinite and is not further defined in the specification. Fine powders could have a particle size in some embodiments <200 µm as described by applicant (instant application ¶ [0035]), but applicant does not clearly define the term, thus one of ordinary skill in the art would not know if a powder having an average particle size of 300 µm would be considered a “fine powder” and infringe upon the instant claim.
MPEP §2173.02(I): If the language of the claim is such that a person of ordinary skill in the art could not interpret the metes and bounds of the claim so as to understand how to avoid infringement, a rejection of the claim under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, is appropriate. See IBSA Institut Biochimique, S.A. v. Teva Pharm. USA, Inc., 966 F.3d 1374, 1378-81, 2020 USPQ2d 10865 (Fed. Cir. 2020)
Claims 15 and 16 are dependent on claim 14 and are thus also rejected as being indefinite.
Claim 23 uses the phrase, “to form a processed profile,” which is indefinite and is not defined by the specification. A processed profile could refer to a side view of a manufactured article comprising the claimed vitrimer, a combination of desired physical properties, or a graphical representation of a single physical property of the claimed vitrimer and thus, it is unclear what applicant is claiming to be the subject matter of the claimed invention.
MPEP §2173.02(I): If the language of the claim is such that a person of ordinary skill in the art could not interpret the metes and bounds of the claim so as to understand how to avoid infringement, a rejection of the claim under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, is appropriate. See IBSA Institut Biochimique, S.A. v. Teva Pharm. USA, Inc., 966 F.3d 1374, 1378-81, 2020 USPQ2d 10865 (Fed. Cir. 2020)
Claims 24-26 and 34 are dependent on claim 23 and are thus also rejected as being indefinite.
Claims 28 and 29 state that the “vitrimer exhibits a decreased crystallinity” of varying amounts but does not state what the initial crystallinity value is or what the new crystallinity value is being compared to. For the purposes of examination, examiner is interpreting the claim to be comparing the vitrimer crystallinity to the crystallinity of the initial irreversibly crosslinked ethylene-vinyl ester polymer.
Claims 30 and 31 state that the “vitrimer exhibits and increased solvent-swelling ratio” of varying amounts but does not state what the initial solvent-swelling ratio is or what the new solvent-swelling ratio is being compared to. For the purposes of examination, examiner is interpreting the claim to be comparing the vitrimer solvent-swelling ratio to the solvent-swelling ratio of the initial irreversibly crosslinked ethylene-vinyl ester polymer.
Claims 32 and 33 state that the “vitrimer exhibits an increased tensile modulus (Young’s modulus)” of varying amounts but does not state what the initial tensile modulus value is or what the new tensile modulus value is being compared to. For the purposes of examination, examiner is interpreting the claim to be comparing the vitrimer tensile modulus to the tensile modulus of the initial irreversibly crosslinked ethylene-vinyl ester polymer.
Applicant can address the above §112(b) rejections by clearly identifying what the produced recyclable ethylene-vinyl ester vitrimer is being compared to with respect to each of the measured properties (crystallinity, solvent swelling ration, and tensile modulus).
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 22 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to contain a reference to a claim previously set forth. The claim states the “process of claim 22,” which is self-referential and not a reference to a previous claim. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
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.
Claims 1-11, 14, 17-24, and 26-34 are rejected under 35 U.S.C. 103 as being unpatentable over the article “Performance of ethylene vinyl acetate waste (EVA-w) when incorporated into expanded EVA foam for footwear” authored by C. Z. Paiva Junior et al., and published in Journal of Cleaner Production (2021) 317 (hereinafter Paiva Junior) in view of the article provided by applicant entitled “Vitrimerization: Converting Thermoset Polymers into Vitrimers” authored by Liang Yue et al., and published in ACS Macro Letters (2020) 9, 836-842 (hereinafter Liang Yue) in further view of Xiao Hue et al. CN 115073844A (hereinafter Xiao Hue).
Regarding Claims 1-6, Paiva Junior teaches a process of mechanically recycling crosslinked EVA waste by milling and blending the waste into virgin EVA and then studying the effects on mechanical properties of EVA blends containing various amounts of recycled and virgin EVA (abstract). Paiva Junior additionally teaches that crosslinked EVA waste is difficult to chemically reprocess, limiting its reusability. Paiva Junior also teaches that residues from the manufacture of shoes are generated in significant quantities worldwide and cause both environmental pollution and waste. To mitigate these environmental effects, strategies to remedy these problems are required, such as using post-consumer and post-industrial EVA as a filler material in various matrices (Introduction para. 2 and 3).
Paiva Junior does not teach a process for producing a recyclable ethylene-vinyl ester polymer comprising reacting the crosslinked EVA with poly (vinyl alcohol) (PVA), via transesterification, with a catalyst, to produce a vitrimer.
Liang Yue teaches a vitrimerization process for producing a recyclable polymer by reacting a permanently cross-linked thermoset polymer via a transesterification reaction, in the presence of a transesterification catalyst, to produce a recyclable vitrimer polymer (p. 836, para. 3).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to be motivated to mitigate the environmental effects of cross-linked post-consumer or post-industrial EVA waste (Claims 2 and 3) that is difficult to recycle as taught by Paiva Junior and to have applied the process taught by Liang Yue of converting cross-linked thermoset polymers into recyclable vitrimers via transesterification. A person having ordinary skill in the art would reasonably expect the vitrimerization process to similarly work for thermoset EVA polymers as Liang Yue teaches polyester-type thermosets, like vinyl esters, can be converted into vitrimer networks (p. 837, para. 1).
Examiner notes that Paiva Junior in view of Liang Yue does not teach wherein the process reaction includes PVA.
Xiao Hue teaches a method for preparing a recyclable material comprising EVA and PVA by reacting EVA that is not permanently crosslinked with PVA via transesterification using a catalyst to obtain a recyclable EVA foam with dynamic crosslinking (¶[n0023]). Furthermore, Xiao Hue teaches that the inclusion of PVA into the recyclable EVA polymer can reduce production costs and improve recycling performance (¶[n0024]).
Therefore, it would be obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, while applying the vitrimerization process including transesterification taught by Liang Yue to recycle irreversibly cross-linked EVA from post-consumer or post-industrial sources, to additionally include PVA in a recycled EVA vitrimer, motivated by a desire to reduce costs and improve recycling performance.
Furthermore, because Xiao Hue and Pavia Junior specifically teach EVA, the limitations contained within Claims 4-6 are addressed by the teachings above. It would be obvious to a person having ordinary skill in the art that EVA is an aliphatic vinyl ester having 3 to 20 carbon atoms (instant claim 4) because EVA is an aliphatic vinyl ester containing 4 carbon atoms. Similarly, the additional limitations wherein the ethylene-vinyl ester of instant claim 1 is an ethylene-vinyl acetate copolymer or an ethylene-vinyl acetate-vinyl versatate terpolymer (claim 5) and wherein the ethylene-vinyl ester is an ethylene-vinyl acetate copolymer (claim 6) are addressed by the teachings of an EVA polymer above.
Regarding Claims 7-9, Paiva Junior in view of Liang Yue, in further view of Xiao Hue teaches the process of claim 6.Liang Yue additionally teaches the use of zinc acetate as a transesterification catalyst used for its low cost, nontoxicity, and high efficacy (p. 838, para. 2). Zinc acetate is a zinc salt and a transitional metal acetate, thus addressing instant claims 7-9.
Therefore, it would have been obvious to a person having ordinary skill in the art prior to the effective filing date of the claimed invention to have utilized a zinc acetate catalyst as taught by Liang Yue, motivated by a desire to reduce costs and one could reasonably expect success due to zinc acetate’s known efficacy as a transesterification catalyst.
Regarding Claims 10 and 11, Paiva Junior in view of Liang Yue, in further view of Xiao Hue teaches the process of claim 9. Additionally, Liang Yue teaches zinc acetate catalyst in amounts from 2-10 mol% (Fig. 2) with respect to hydroxyl groups in an epoxy resin (Laing Yue: Supporting Information). Liang Yue also teaches the incorporation of appropriate catalyst to facilitate transesterification reactions is needed to convert a thermoset network into a dynamic network. Furthermore, FTIR spectroscopy (Fig. 3 (d)) shows that inclusion of zinc acetate resulted in reductions in hydroxyl and carbonyl bonds and increases in carboxylate-zinc bonds. Thus, Liang Yue teaches that the amount of zinc acetate catalyst is relative to the amount of functional groups in the thermoset polymer capable of undergoing the transesterification reaction.
Liang Yue fails to teach the amount of zinc acetate relative to VA content in the EVA polymer. However, one of ordinary skill in the art prior to the effective filing date of the claimed invention would reasonably expect that the teaching of Liang Yue would lead to a reasonable expectation of success when modifying the amount of catalyst between 2 mol% and 10 mol% zinc acetate relative to the amount of functional groups in the thermoset EVA capable of transesterification. A skilled artisan would recognize that the vinyl acetate (VA) groups in EVA are the functional groups that would undergo transesterification. A skilled artisan, motivated to minimize the cost associated with increased catalyst use, would optimize the amount of catalyst needed to achieve the desired properties of a recyclable vitrimer polymer.
Regarding Claim 14, Paiva Junior in view of Liang Yue, in further view of Xiao Hue teaches the process of claim 6. Additionally, Liang Yue teaches a process where the thermoset polymer is ground with a catalyst into fine powders via ball milling (Figure 1).
The process of ball milling a thermoset polymer into a fine powder as taught by Liang Yue is a known technique applied to the “base” product of a thermoset polymer. It would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to have applied the known technique to another thermoset polymer such as irreversibly crosslinked EVA to yield predictable results.
The rationale to support a conclusion that the claim would have been obvious is that a method of enhancing a particular class of devices (methods, or products) has been made part of the ordinary capabilities of one skilled in the art based upon the teaching of such improvement in other situations. One of ordinary skill in the art would have been capable of applying this known method of enhancement to a "base" device (method, or product) in the prior art and the results would have been predictable to one of ordinary skill in the art. "It's enough … to show that there was a known problem … in the art, that [another reference] … helped address that issue, and that combining the teachings of [the two references] wasn't beyond the skill of an ordinary artisan. Nothing more is required to show a motivation to combine under KSR." See Intel Corp. v. PACT XPP Schweiz AG, 61 F.4th 1373, 1380-81, 2023 USPQ2d 297 (Fed. Cir. 2023) (finding that both prior art references "address the same problem and that [the secondary reference’s] cache was a known way to address that problem is precisely the reason that there's a motivation to combine under KSR and our precedent."). See MPEP 2143 (I)(C).
Regarding Claims 17-20, Paiva Junior in view of Liang Yue, in further view of Xiao Hue teaches the process of claim 6. Additionally, Xiao Hue teaches molding temperatures from 120-180°C and pressures from 5-20 MPa (¶[n0034]).
It has been held that in the case where the claimed ranges overlap or lie inside ranges disclosed in the prior art, a prima facie case of obviousness exists; see 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). The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages; see In re Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (MPEP § 2144.05).
Therefore, the temperatures (120-200°C, 170-180°C, and 175°C) and the pressures (2-10 MPa and 7 MPa) claimed in the instant application are held to be prima facie obvious in view of the ranges taught by Xiao Hue.
Compression molding at specific temperatures and pressures taught by Xiao Hue for preparing EVA/PVA materials is a known technique applied to a “base” product of a recyclable EVA/PVA polymer. It would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to have applied this known technique to a similar EVA/PVA vitrimer polymer as taught above to yield predictable results.
See rationale above for Claim 14 and also MPEP 2143 (I)(C).
Regarding Claims 21 and 22, Paiva Junior in view of Liang Yue, in further view of Xiao Hue teaches the process and the produced recyclable ethylene-vinyl ester vitrimer of claim 1 and supported in the rejection of claim 1 above
The prior art teaches a vitrimer comprising EVA, PVA, and a zinc acetate transesterification catalyst as discussed above in the rejection of claim 1. Given the prior art and the claimed invention contain the same components combined in the same way, a person having ordinary skill in the art would reasonably expect the prior art composition to have the claimed property (being able to be reprocessed at 120°C or higher at least three times without additional reactants and/or catalysts) and that the burden is therefore shifted to the applicant to provide evidence that the claimed properties would not be present in the prior art.
As a result, “The PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency under 35 U.S.C. 102, on prima facie obviousness under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same…" as that required with respect to product-by-process claims; see In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (MPEP § 2112).
Regarding Claims 23, 24, and 34, Paiva Junior in view of Liang Yue, in further view of Xiao Hue teaches the process of claim 1 to produce a recyclable ethylene vinyl ester vitrimer. Liang Yue additionally teaches that vitrimer polymers have dynamic covalent networks that allow for rearrangement of covalent bonds at elevated temperatures enabling reshaping, reprocessing, and recycling via conventional processing methods like injection or hot press molding (p. 836, para. 1).
The recyclable vitrimer produced by the process described in instant application claim 1, as discussed in the rejection above, would contain a dynamic covalent network as taught by Liang Yue. Additionally, one of ordinary skill would know, based on the teaching of Liang Yue, that dynamic covalent networks allow for the rearrangement of covalent bonds within the vitrimer at elevated temperatures. Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention that an EVA/PVA vitrimer prepared according to the process of instant claim 1 would contain a dynamic covalent network and be capable of processing at elevated temperatures to form a processed profile and further, that the processing step could comprise molding as taught by Liang Yue.
Regarding Claim 26, Paiva Junior in view of Liang Yue, in further view of Xiao Hue, teaches the process of claim 24. Xiao Hue additionally teaches the material is subjected to compression molding at temperatures ranging from 120-180°C.
It has been held that in the case where the claimed ranges overlap or lie inside ranges disclosed in the prior art, a prima facie case of obviousness exists; see 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). The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages; see In re Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (MPEP § 2144.05).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention that the instant claimed compression molding temperature of 175°C or higher is held prima facie obvious based on the teachings of Xaio Hue.
Regarding Claims 27-33, Paiva Junior in view of Liang Yue, in further view of Xiao Hue, teaches the process of claim 1 and the produced recyclable ethylene-vinyl ester vitrimer produced by that process.
Examiner notes that the prior art does not teach the vitrimer exhibiting a decreased crystallinity of 10 or 25% or more; a lower crosslinking density of 1.5 or 2.5 fold or more; or an increased tensile modulus of 100 or 150% or more.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01 (I).The prior art teaches a vitrimer comprising EVA, PVA, and a zinc acetate transesterification catalyst. Given the prior art and the claimed invention contain the same components combined in the same way, a person having ordinary skill in the art would reasonably expect the prior art composition to have the claimed properties and that the burden is therefore shifted to the applicant to provide evidence that the claimed properties would not be present in the prior art.
Allowable Subject Matter
Claims 12 and 13, are 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.
The following is a statement of reasons for the indication of allowable subject matter:
Claims 12 and 13 contain limitations regarding the molar ratio of hydroxyl groups in the PVA to vinyl acetate (VA) in the EVA copolymer. The closest prior art reference Xiao Hue teaches mass ratios of PVA and EVA in the recyclable material, however, , Xiao Hue fails to teach the specific molar ratios claimed in the instant application.
Claims 15, 16, and 25, 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.
The following is a statement of reasons for the indication of allowable subject matter:
Claims 15 and 16 contain limitations regarding cryomilling EVA polymer, PVA, and a transesterification catalyst, specifically until particle size is less than 200 µm (claim 15) for about 40-50 minutes at a frequency of about 25-35 Hz (claim 16). The closest prior art reference Sone et al. WO 2021/119854 A1, hereinafter Sone, teaches cryogenic milling of polymeric adhesives for 50 minutes at 30 Hz, however, Sone fails to teach using this process on an EVA/PVA/transesterification catalyst polymer blend and also fails to teach where the particle size is less than 200 µm.
Claim 25 regards the extrusion of a recyclable ethylene-vinyl ester vitrimer at a temperature of 120 °C or higher. The closest prior art reference Xiao Hue teaches molding of a recyclable EVA/PVA polymer at temperatures above 120 °C, but does not teach extrusion. Similarly, Liang Yue teaches that a vitrimer can be repeatedly reprocessed without additional catalyst by applying heat and an external force (p. 837, para. 6), but does not specifically discuss a recyclable ethylene-vinyl ester or extrusion at temperatures above 120 °C.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHEN E MONTGOMERY whose telephone number is (571)270-1523. The examiner can normally be reached Monday-Friday: 8:00am - 5:00pm.
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/S.E.M./Examiner, Art Unit 1765 /HEIDI R KELLEY/Supervisory Patent Examiner, Art Unit 1765
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