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 .
Claim Analysis
Summary of Claim 1:
A method for recycling a glass fiber product to obtain recycled glass fibers comprising the steps of
a. providing glass fiber waste products containing glass fibers and at least one binder,
b. mechanically treating the glass fiber product by compacting or partitioning,
c. extracting/removing the binder by subjecting the mechanically treated glass fiber product to solvolysis with a glycol as a solvent, wherein the solvent is selected from triethylene glycol, propylene glyocol, and ethylene glycol at temperatures between 150°C and 260°C for an exposure time between 2 and 30 min,
d. separating the glass fibers from the solvent by filtering,
e. cooling the glass fibers,
f. washing the cooled glass fibers in clean water and
g. drying the glass fibers after washing.
Election/Restriction
The Amendment filed 09/02/2026 has been entered. Claims 1-13 and 15-17 remain pending in the application. Claim 14 was canceled.
Applicant’s election without traverse of Group 1, Claims 1-6 and 15-16 in the Remarks submitted on 09/02/2026 is acknowledged. Claims 7-13 and 17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claims.
Claims 2 and 4 were amended and support for amendments are found in the original claims and the original Specification.
Specification
The disclosure is objected to because of the following informalities:
It is suggested that Applicant add a section “Brief Description of Drawings” as required by MPEP 608.01(f) and 37 CFR 1.74.
The Specification refers to “Figures 1a and 1b”, “Fig 1a”, “fig. 1b”, etc. However, the figures in the Drawings are labeled as “FIG. 1a”, “FIG. 1b”, etc. Applicant is advised to amend the Specification to refer to the figures as they are labeled in the drawings (e.g. “FIG. 1a”, “FIG. 1b”, etc.).
Appropriate correction is required.
Claim Objections
Claim 1 and 5 are objected to because of the following informalities:
Claim 1 recites “propylene glyocol”. Applicant is advised to correct the misspelling to “propylene glycol” as supported by the instant Specification [Pg. 3, Lines 1-8].
Claim 1 recites “c. extracting/removing the binder by subjecting the mechanically treated glass fiber product to solvolysis with a glycol as a solvent, wherein the solvent is selected from triethylene glycol, propylene glyocol, and ethylene glycol at temperatures between 150°C and 260°C for an exposure time between 2 and 30 min” (emphasis added). The misplaced modifier (i.e., wherein the solvent is selected from triethylene glycol, propylene glyocol, and ethylene glycol) implies the solvent is selected at temperatures between 150°C and 260°C for an exposure time between 2 and 30 min. Applicant is advised to rephrase to “c. extracting/removing the binder by subjecting the mechanically treated glass fiber product to solvolysis with a solvent at temperatures between 150°C and 260°C for an exposure time between 2 and 30 min, wherein the solvent is selected from triethylene glycol, propylene glycol, and ethylene glycol”.
Claim 5 recites “tri ethylene glycol”. Applicant is advised to rephrase to “triethylene glycol” to be consistent with the “triethylene glycol” of Claim 1.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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 1-6 and 15-16 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 pre-AIA the applicant regards as the invention.
Claim 1 recites the limitation "extracting/removing". However, it is unclear how to interpret the “/” (e.g., as “and”, “or”, or otherwise) rendering the claim indefinite. For the purposes of examination, "extracting/removing" will be interpreted as “extracting or removing” as supported in the instant Specification [Pg. 2, Lines 17; Pg. 4, Lines 10-12].
The term “clean water” in Claim 1 is a relative term which renders the claim indefinite. The term “clean” is not defined by the claim, the Specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Applicant’s specification does not teach the value and method for measuring the cleanliness of the water. Therefore, the scope of the claim is indefinite.
Claim 3 recites “the subsequent steps”, and Claim 5 recites “the extraction step c.”. However, it is unclear what “the subsequent steps” and “the extraction step c.” refer to. There is insufficient antecedent basis for these limitations in the claims, and thus, the scopes of the claims are indefinite.
Claims 2-6 and 15-16 are rejected at least for being dependent on a rejected base 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.
Claims 1-6 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Durand et al. (US 2004/0102533 A1; as cited in the IDS submitted on 140/30/2024; hereafter as “Durand”) in view of Terada et al. (US 6,245,822 B1; as cited in the IDS submitted on 140/30/2024; hereafter as “Terada”).
Regarding Claims 1-2, and 4, Durand teaches a method of recycling materials resulting from the solvolysis of composite materials comprising polyethylene terephthalate (PET) and glass fibers [Claims 1, 6, 11; ¶ 0039], corresponding to the method for recycling a glass fiber product to obtain recycled glass fiber of Claim 1, to a. providing glass fiber waste products containing glass fibers and at least one binder of Claim 1, wherein the PET and glass fibers correspond to the binder and glass fibers, respectively, of Claim 1. Durand further teaches:
shredding the composite material [Claim 11], corresponding to b. mechanically treating the glass fiber product by partitioning of Claim 1;
carrying out solvolysis with reactive solvents to separate the glass fiber from the PET at a temperature between 120 and 300 °C for 0.5 to 12 hours [Claims 1-2, 10-11], corresponding to c. removing the binder by subjecting the mechanically treated glass fiber product to solvolysis with a solvent at temperatures between 150°C and 260°C of Claim 1, wherein 0.5 to 12 hours overlaps with an exposure time between 2 and 30 min of Claim 1, and
corresponds to the solvent is heated to a temperature between 150 °C to 260 °C and wherein the method further comprises adding the mechanically treated glass fiber product to the heated solvent of Claim 2,
wherein the reaction temperature of 120-300°C overlaps with 150-190 °C of Claim 4;
wherein the reaction time of 0.5-12 hours is substantially close to the exposure time is 5 to 25 min of Claim 4;
wherein the reactive solvents are ethylene glycol and propylene glycol [Claim 7], thereby reading on the ethylene glycol and propylene glycol of Claim 1, and corresponding to the ethylene glycol of Claim 4;
filtering, separating and isolating the fibers for their recovery [Claims 11; ¶ 0112], corresponding to d. separating the glass fibers from the solvent by filtering of Claim 1;
freeing the reinforcing materials from any organic material by washing, draining and drying [Claim 11], corresponding to f. washing the cooled glass fibers and g. drying the glass fibers after washing of Claim 1; and
the solvolysis reaction is carried out in the presence of a catalyst [Claim 1], corresponding to a catalyst is used of Claim 4.
Durand teaches a solvolysis reaction temperature of 120-300 °C but is silent to actively heating the reactants after the solvolysis step. In the absence of actively heating the solvolysis reactants, the glass fibers would naturally cool, and thus, will be interpreted to read on e. cooling the glass fibers of Claim 1.
However, Durand does not teach an exposure time between 2 and 30 min of Claim 1; washing the cooled glass fibers in clean water; step c. is conducted at temperatures between 150 °C and 190 °C of Claim 4; and the exposure time is 5 to 25 min of Claim 4.
Regarding the exposure time of Claim 1 and temperature of Claim 4, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the ranges taught by Durand for the exposure time (0.5-12 hours) and temperature (120-300 °C) overlaps the instantly claimed ranges (2-30 min. and 150-190 °C, respectively) and is therefore considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, MPEP 2144.05.
Regarding washing the glass fibers in water of Claim 1, Terada teaches a method of decomposition treating a waste article having cured resin and glass fibers [Claims 1, 14; Examples 8-16], including a step where the solid contents are separated using solvents such as water and acetone [Col. 9, Ln. 1-8] wherein the use of the water as a solvent corresponds to the claimed washing step in water.
Durand does not explicitly teach a washing step in water, but rather a washing step in acetone [¶ 0113]. Since Terada teaches that water and acetone are equivalent and interchangeable as separation solvents (washing), it would have been obvious to one of ordinary skill in the art to substitute acetone for water and thereby arrive at the present invention. Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See MPEP 2144.06 and In re Ruff 118 USPQ 343 (CCPA 1958).
It would have been obvious to use clean water because using dirty water would contaminate the product with impurities.
Durand and Terada are considered to be analogous art as the claimed invention, as all are in the same field of methods of recycling glass fibers from composite materials comprising glass fiber, binders, and glycol solvents.
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use water as a solvent as suggested by Terada with the method of recycling materials of Durand, thereby arriving at the claimed invention.
Regarding the exposure time of Claim 4, the 0.5-12 hours as taught by Durand is substantially close to the upper range of 25 min as required by the instant Claim 4. One of ordinary skill would have expected exposure times that are in such close durations to those in prior art to be prima facie obvious and to have the same properties. Titanium Metals Corp., 227 USPQ 773 (CA FC 1985). See MPEP 2144.05. Therefore, it would have been obvious to one of ordinary skill in the art to expect the 30 min of Durand would result in the same properties as the claimed time of 25 min thereby rendering the claimed range obvious.
Regarding Claim 3, Durand does not teach wherein step c. and the subsequent steps d., e. and f. build an extraction cycle and the extraction cycle is repeated more than once.
However, repeating, reordering, or routine trial-and-error sequencing of known process steps is considered prima facie obvious if the prior art discloses the individual steps and yields a predictable result. In this case, Durand teaches the claimed individual steps (separating, cooling and washing) and the same purpose for the same steps (i.e., freeing the glass fibers from the organic material). Thus, it would be obvious to one of ordinary skill that simply repeating the separating, cooling and washing steps would yield the predictable result of further freeing glass fibers from the organic material. If it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position and the claimed steps produces unexpected results. See MPEP 2144.04.
Regarding Claim 5, Durand teaches:
carrying out solvolysis at a temperature between 120 and 300 °C for 0.5 to 12 hours [Claims 1-2, 10-11],
wherein the reaction temperature of 120-300°C overlaps with 200-260 °C of Claim 5; and
wherein the reaction time of 0.5-12 hours is substantially close to the exposure time is 5 to 25 min of Claim 5.
However, Durand does not teach wherein the solvent in step c. is tri ethylene glycol and the extraction step c. is conducted at temperatures between 200°C and 260°C, and the exposure time is 5 to 25 min of Claim 5.
Regarding the temperature of Claim 5, one of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the range taught by Durand for the temperature (120-300 °C) overlaps the instantly claimed range (200-260 °C) and is therefore considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, MPEP 2144.05.
Regarding the exposure time of Claim 5, the 0.5-12 hours as taught by Durand is substantially close to the upper range of 25 min as required by the instant claim. One of ordinary skill would have expected exposure times that are in such close durations to those in prior art to be prima facie obvious and to have the same properties. Titanium Metals Corp., 227 USPQ 773 (CA FC 1985). See MPEP 2144.05. Therefore, it would have been obvious to one of ordinary skill in the art to expect the 30 min of Durand would result in the same properties as the claimed time of 25 min thereby rendering the claimed range obvious.
Regarding the triethylene glycol of Claim 5, Terada teaches a method of decomposition treating a waste article having cured resin and glass fibers [Claims 1, 14; Examples 8-16], comprising solvents such as triethylene glycol [Claims 6, 18], corresponding to the claimed triethylene glycol.
Terada offers the motivation that solvents, such as triethylene glycol, can decompose the cured resin when heated by solvolysis reactions [Col. 2, Lines 14-16; Claim 5].
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the triethylene glycol of Terada with the method of recycling materials of Durand, thereby arriving at the claimed invention.
Furthermore, Durand teaches the use of ethylene glycol [¶ 0047]. While the ethylene glycol of Durand does not exactly read on the triethylene glycol of Claim 5, Terada teaches that ethylene glycol and triethylene are used for the same purpose - as a solvent to decompose the cured resin by solvolysis [Col. 2, Ln. 17-31]. Since Terada teaches that ethylene glycol and triethylene glycol are equivalent and interchangeable, it would have been obvious to one of ordinary skill in the art to substitute ethylene glycol for triethylene glycol and thereby arrive at the present invention. Case law holds that the mere substitution of an equivalent (something equal in value or meaning, as taught by analogous prior art) is not an act of invention; where equivalency is known to the prior art, the substitution of one equivalent for another is not patentable. See MPEP 2144.06 and In re Ruff 118 USPQ 343 (CCPA 1958).
Regarding Claim 6, Durand does not teach wherein the binder in the glass fiber waste products is selected from melamine - urea - formaldehyde resins, acrylic resins, acrylic resin dispersions and mixtures thereof.
Nevertheless, Terada teaches the decomposition method can similarly decompose acrylic resins [Col. 20, Lines 23-28], wherein the acrylic resin reads on the acrylic resins of Claim 6.
Terada offers the motivation that with the decomposition method, it is possible to recover the resin, filler, base material such as glass fiber, additives and their components from waste materials [Col. 9, Lines 25-31].
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the acrylic resin of Terada with the method of recycling materials of Durand, thereby arriving at the claimed invention.
Regarding Claim 16, Durand further teaches glass fibers in the form of a fabric or a mat [¶ 0043, 0134; Claim 6], corresponding to wherein the glass fiber waste products comprise glass fiber waste mats.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Durand et al. (US 2004/0102533 A1; as cited in the IDS submitted on 140/30/2024; hereafter as “Durand”) in view of Terada et al. (US 6,245,822 B1; as cited in the IDS submitted on 140/30/2024; hereafter as “Terada”) and Lv et al. (CN 104437651; English Translation incorporated herein; hereafter as “Lv”).
Durand and Terada teach the method for recycling a glass fiber product, glass fibers, binder, mechanical treatment, solvolysis, glycol solvent, filtering, cooling, washing, and drying steps as set forth above and incorporated herein by reference.
Regarding Claim 15, Durand further teaches the use of catalysts comprising zinc [Claim 8].
However, Durand does not teach wherein the catalyst is selected from ZnCl2 in combination with urea, MgCl2 in combination with urea or BaCl2 in combination with urea of Claim 15.
Nevertheless, Lv teaches a method for carrying out catalytic alcoholysis on polyethylene terephthalate [Abstract], comprising an ionic catalyst for degrading polyethylene terephthalate with a reaction time of 10 minutes to 4 hours at a temperature of 60-100 °C [Claims 3, 8]. Lv further teaches specific ionic catalysts such as zinc chloride and urea [Claim 1], thereby reading on the ZnCl2 in combination with urea of Claim 15.
Lv offers the motivation that the method for carrying out catalytic alcoholysis on polyethylene terephthalate is a clean catalysis technology [¶ 0002]. Lv also offers the motivation that catalysts composed of urea and metal salts, such as zinc chloride, exhibit high catalytic activity in the degradation of polyethylene terephthalate, which can significantly improve the reaction time and selectivity [¶ 0008].
Durand, Terada and Lv are considered to be analogous art as the claimed invention, as all are in the same field of methods of recycling polymer materials by catalytic reactions.
Therefore, it would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the claimed zinc chloride and urea of Lv with the method of recycling materials of Durand and Terada, thereby arriving at the claimed invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DORIS LING whose telephone number is (571)270-3961. The examiner can normally be reached Monday-Friday, 8:30am-5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, ARRIE LANEE REUTHER can be reached on (571)270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DORIS LING/Examiner, Art Unit 1764
/ROBERT C BOYLE/Primary Examiner, Art Unit 1764
