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 .
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.
Priority
3. Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application TAIWAN 112134548 09/11/2023 filed on 02/23/2024.
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 1-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6-11, 16-17 of copending Application No. 19/190462. Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed invention and the copending claims are directed to a polymer plate obtained by the same method with the difference in the polymer body plate vs imitating material-pattern colloidal plate, however, it has been noted that the copending imitating material-pattern colloidal plate read on claimed polymer body plate. Instant dependent claims are either disclosed or inherently met by the copending claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 1-5 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential structural cooperative relationships of elements, such omission amounting to a gap between the necessary structural connections. See MPEP § 2172.01.
The omitted structural cooperative relationships are: In claim 1 the structural requirements of Preamble “A mixed polymer body plate” and the specific requirements of the final product in the body of the claim “a shaped polymer body plate.” Claim 1 does not specify these elements forms proper connections.
Claims 2-5 depends from rejected claim 1.
Appropriate correction is required.
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 6-10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01.
The omitted step is the step for “manufacturing a mixed polymer body plate.” While the preamble recites that the process is " A method for manufacturing a mixed polymer body plate," the claim does not positively recite manufacturing a mixed polymer body plate to relate the method back to the preamble.
Claims 7-10 depends from rejected claim 6.
Appropriate correction is required.
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 9-10 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.
Claims 9-10 recites the limitation "the shaped polymer material body plate" in line 2. There is insufficient antecedent basis for this limitation in the claim.
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.
Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Lu (T. Lu, et al, Material recycling of Acrylonitrile Butadiene Styrene (ABS) from toy waste using density separation and safer solvents, Resources, Conservation & Recycling 197 (2023) 107090, pages 1-9) in view of Heinz (WO 2009/053066).
Regarding claims 1-7, Lu discloses a method for manufacturing a mixed polymer body, comprising: preparing at least one polymer material, wherein the polymer material is a recycled waste plastic comprising acrylonitrile-butadiene-styrene (ABS) polymer, thermoplastic rubber, and polyethylene foam (read on foaming agent); preparing at least one solvent, wherein the solvent is acetone-water (3:1); mixing and stirring the polymer material and the solvent at a normal temperature (room temperature) to obtain a soluble mixed polymer material, wherein the mixed polymer material uses no crosslinking agent or a material having a crosslinking function; and subjecting the mixed polymer material to extrusion through a die with a length to diameter ratio of 30 (abstract, para 2.1, 2.4-2-5). Lu does not expressly discloses subjecting the mixed polymer material to extrusion forming to obtain a shaped polymer body plate.
However, Heinz discloses a cost-effective economical method for producing plastic plate from thermoplastic recyclates by processing of the recycled plastic in extrusion apparatus and then pressing in continuously operating press, wherein the plastic plates are used for various purpose such as bottom plates, e.g. container bottom plates (abstract, page 2, lines 17-20, page 3, lines 7-10). Lu and Heinz are pertinent to the recycled plastic and the extrusion processing of the same.
It would have been obvious to one with ordinary skill, in the art at the time of invention, to modify Lu with the pressing of the extruded product in continuously operating press, as taught by Heinz to obtain plastic plates. The rationale to do so would have been motivation provided by of Heinz that to do so would provide a cost-effective economical production of the plastic plates used for various purpose such as bottom plates, e.g. container bottom plates.
Regarding claim 8, Lu discloses the method of a mixed polymer system (abstract, page 2, lines 17-20, page 3, lines 7-10) undergoes dissolution-precipitation of polymer materials that inherently results in polymer chain re-entanglement and physical fusion upon recovery. Such behavior reasonable meets the ‘fusing and ‘attaching’ limitations under broadest reasonable interpretation. The phrase ‘for grafting’ is construed as an intended use or functional statement not limiting on the structural or process features of the mixed polymer system. Therefore, it is not given patentable weight in distinguishing over prior art.
Regarding claim 9, Lu in view of Heinz discloses a product polymer plate by the extrusion, such extrusion product necessarily has extrusion surface as claimed. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01(I) , In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp v Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985), In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Warren Corp v D F Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY 1934).
Regarding claim 10, under broadest reasonable interpretation, the claim 10 is interpreted as ‘polymer plate is capable of further processing (cutting, molding, extrusion, etc), processing inherently generates scrap or waste material, and such waste is recyclable in polymer processing systems. Thus, the claimed limitations describe the inherent properties and lifecycle behavior of the plastic material and recycling systems. Lu explicitly teaches recycling of waste polymer material via dissolution-precipitation and reuse in subsequent processing cycles (abstract, page 2, lines 17-20, page 3, lines 7-10).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KUMAR R BHUSHAN whose telephone number is (313)446-4807. The examiner can normally be reached 9.00 AM to 5.50 PM (EST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, RANDY P GULAKOWSKI can be reached at (571)272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KUMAR R BHUSHAN/Primary Examiner, Art Unit 1766
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