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 .
Examiner’s Comments
Applicants’ response filed on 7/23/2025 has been fully considered. Claim 5 is cancelled, claims 14-20 are withdrawn and claims 1-4 and 6-20 are pending.
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 1-4 and 6-13 are rejected under 35 U.S.C. 103 as being unpatentable over Fuchsbauer et al (EP 4140760 A1) in view of Denifl et al (WO 2023/118421 A1).
Fuchsbauer et al (US 2024/0399781 A1) is being used as the machine translation for Fuchsbauer et al (EP 4140760 A1).
Regarding claim 1, Fuchsbauer discloses a security element comprising a polymer substrate (substrate) comprising at least 50% of at least one recycled material (paragraph [0036]), wherein the at least one recycled material comprises at least one chemically recycled plastic (chemically-recycled polymer material; paragraph [0036]), wherein the at least one recycled material comprises polypropylene (chemically-recycled plastic material; paragraph [0036]), wherein the at least one recycled material comprises polyethylene (paragraph [0036]) and wherein the security element is a banknote (paragraph [0006]).
Fuchsbauer does not disclose the security element comprising a purification-recycled material.
However, Denifl discloses a mechanical recycling process comprising yielding a purified polyolefin recycling stream to remove volatile organic compounds to thereby generate an aerated recycled polyolefin product (purification-recycled material; pg. 4) and wherein the polyolefin comprises polyethylene (pg. 2).
It would have been obvious to one of ordinary skill in the art to modify the security element of Fuchsbauer to include the purified recycled polyethylene of Denifl because doing so results in a highly pure polyolefin with balanced mechanical and optical properties (pg. 3 of Denifl).
Regarding claim 2, Fuchsbauer discloses the security element comprising the polymer substrate comprising the at least one recycled material comprising polypropylene (polyolefin; paragraph [0035]).
Regarding claim 3, Fuchsbauer discloses the security element comprising the polymer substrate comprising the at least one recycled material comprising polypropylene (paragraph [0035]).
Regarding claim 4, Fuchsbauer discloses a security element comprising a polymer substrate comprising at least 50% of at least one recycled material (paragraph [0036]), wherein the at least one recycled material comprises polypropylene, biaxially oriented polypropylene and polyethylene (paragraph [0036]); and wherein the security element is a banknote (paragraph [0006]).
The at least one recycled material comprising polypropylene, biaxially oriented polypropylene and polyethylene reads on the claimed chemically-recycled polymer material being polypropylene and the substrate being a biaxially oriented polypropylene.
Regarding claim 6, Fuchsbauer discloses the security element being a banknote (paragraph [0006]).
Regarding claims 7-9, Fuchsbauer discloses a security element comprising a polymer substrate comprising at least 50% of at least one recycled material (paragraph [0036]) and wherein the security element is a banknote (paragraph [0006]).
Fuchsbauer does not disclose the security element comprising a purification-recycled material, wherein the purification-recycled material comprises a polyolefin and wherein the polyolefin comprises polypropylene.
However, Denifl discloses a mechanical recycling process comprising yielding a purified polyolefin recycling stream to remove volatile organic compounds to thereby generate an aerated recycled polyolefin product (purification-recycled material; pg. 4) and wherein the polyolefin comprises polypropylene (pg. 2).
It would have been obvious to one of ordinary skill in the art to modify the security element of Fuchsbauer to include the purified recycled polypropylene of Denifl in the polymer substrate of Fuchsbauer because doing so results in a highly pure polyolefin with balanced mechanical and optical properties (pg. 3 of Denifl).
Regarding claim 10, Fuchsbauer discloses a security element comprising a polymer substrate comprising at least 50% of at least one recycled material (paragraph [0036]), wherein the at least one recycled material comprises polypropylene, biaxially oriented polypropylene and polyethylene (paragraph [0036]); and wherein the security element is a banknote (paragraph [0006]).
The at least one recycled material comprising polypropylene, biaxially oriented polypropylene and polyethylene reads on the claimed purification-recycled polymer material being polypropylene and the substrate being a biaxially oriented polypropylene.
Regarding claim 11, Fuchsbauer does not disclose the security element comprising a purification-recycled material.
However, Denifl discloses a mechanical recycling process comprising yielding a purified polyolefin recycling stream to remove volatile organic compounds to thereby generate an aerated recycled polyolefin product (purification-recycled material; pg. 4) and wherein the polyolefin comprises polyethylene (pg. 2).
The purification-recycled polymer material being obtained by solvent-based physical separation is a product-by-process limitation. “Even though the 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." (In re Thorpe, 227 USPQ 964,966) Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product (In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113).
Regarding claim 12, Fuchsbauer discloses the security element comprising the polymer substrate comprising the at least one recycled material comprising polyethylene (paragraph [0035]) and wherein the at least one recycled material comprises at least one chemically recycled plastic (chemically recycled polymer material; paragraph [0036]).
Regarding claim 13, Fuchsbauer discloses the security element being a banknote (paragraph [0006]).
Response to Arguments
Applicant's arguments filed 1/7/2026 have been fully considered but they are not persuasive.
Applicants argue that Denifl discloses mechanically recycled materials that are purified through repeated washing steps in aqueous solutions and that these steps in Denifl do not constitute purification recycling. Thus, the purification recycled materials claimed by Applicant are not represented by the washing purification taught by Denifl.
This argument is not persuasive as the purification recycled material described in Applicant’s Specification made by solvent-based separation is not a definition for the claimed purification recycled material. Also, the claimed purification recycled material is open to being formed by any purification process including the washing of Denifl.
Applicants argue that Fuchsbauer and Denifl do not teach or suggest that a purification that is combined with other chemical and/or mechanically recycled polymer materials.
This argument is not persuasive as Fuchsbauer discloses chemical and/or mechanically recycled polymer materials for its at least one recycled material. Fuchsbauer is silent in regard to a purification recycled material. However, Denifl discloses a mechanically recycled material that has been purified. One of ordinary skill in the art would substitute the mechanically recycled material in Fuchsbauer for the mechanically recycled material of Denifl that has been purified.
Applicants argue that Denifl teaches away from any combination with Fuchsbauer.
This argument is not persuasive as pg. 2 of Denifl discusses disadvantages of recycled materials and proposes its mechanical recycling process for providing a purified mechanical recycled material. Fuchsbauer discloses a combination of chemical and/or mechanically recycled polymer materials. One of ordinary skill in the art would substitute the mechanically recycled material in Fuchsbauer for the mechanically recycled material of Denifl that has been purified. This would provide the claimed combination of a purified recycled polymer material and a chemically recycled polymer material.
Applicants argue that Denifl suggests to replace the recycled materials of Fuchsbauer not to add and supplement them.
This argument is not persuasive as Fuchsbauer discloses chemical and/or mechanically recycled polymer materials for its at least one recycled material. Fuchsbauer is silent in regard to a purification recycled material. However, Denifl discloses a mechanically recycled material that has been purified. One of ordinary skill in the art would substitute the mechanically recycled material in Fuchsbauer for the mechanically recycled material of Denifl that has been purified.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/SATHAVARAM I REDDY/Examiner, Art Unit 1785