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 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 3 and 4 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.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). Claims 3 and 4 use the term “peracid”. An accepted meaning of the “per” prefix (depending on context) is the presence of a peroxy group (-O-O-). A “peracid” is therefore an acid characterized by the presence of a peroxy group, such as peracetic acid [CH3C(O)-O-O-H] or persulfuric acid. See Hawley, attached.
In contrast, the specification indicates examples of “peracids” include substances such as di-t-butylperoxide, cumene hydroperoxide, dicumyl peroxide, or benzoyl peroxide (¶ 17), but these compounds are not “peracids” in the ordinary sense discussed above. The term “peracid” is not re-defined within the specification, nor within the claims. Therefore, the scope of the claims is unclear as it is uncertain what the full intended scope of the terminology “peracid” is meant to be.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Scott (U.S. Pat. No. 3,700,615) as evidenced by Watabe (U.S. Pat. No. 4,426,459).
Regarding Claim 1, Scott teaches methods of depolymerizing waste vulcanized rubber via heating rubber in the presence of free-radical initiator and molecular oxygen (Abstract). The action of oxygen on transitional metal salts procures free radicals, which in turn depolymerize the rubber (Col. 4, line 63 to Col. 5, Line 29) construed as radical precursor converted into radical active species via radical initiator. Scott teaches examples where waste tires are depolymerized to effect rubber dissolution in solvent (Example 2). As evidenced by Watabe, decomposable scrap tire rubber is originally created via sulfur vulcanization (Col. 2, Lines 20-43). Note also Scott indicates the resulting rubber is re-vulcanized via sulfur (Col. 8, Lines 1-12). While not describing the overall mechanism by which the rubber is depolymerized, since Scott also depolymerizes vulcanized rubbers/tires using free radicals, it stands to reason the free radicals produced acts on sulfur crosslinks present within the vulcanized rubber in the absence of evidence to the contrary.
Claim(s) 1-4 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Watabe (U.S. Pat. No. 4,426,459).
Regarding Claim 1, Watabe teaches methods of decomposing vulcanized rubber via heating in the presence of hydroperoxide (free radical intiator) and copper/cobalt salt (radical precursor) (Abstract; Examples). The reaction can also be accelerated by air/oxygen (Col. 3, Lines 54-60), also deemed to be radical precursor. Examples are taught where waste vulcanized tires are depolymerized with heating (Col. 4-5). The decomposable scrap tire rubber is originally created via sulfur vulcanization (Col. 2, Lines 20-43). While not describing the overall mechanism by which the rubber is depolymerized, since Watabe also depolymerizes vulcanized rubbers/tires using free radicals, it stands to reason the free radicals produced acts on sulfur crosslinks present within the vulcanized rubber in the absence of evidence to the contrary.
Regarding Claims 2 and 4, Watabe teaches comparative examples where phosphine compound is used as radical precursor in conjunction with t-butylhydroperoxide (Col. 4, Lines 25-29; Table 1), the latter construed as a “peracid” (see ¶ 17 of the specification).
Regarding Claim 3, Watabe teaches embodiments where t-butylhydroperoxide is used (Col. 5, Lines 4-9), construed as a “peracid” (see ¶ 17 of the specification).
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.
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.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Scott (U.S. Pat. No. 3,700,615) in view of Watabe (U.S. Pat. No. 4,426,459).
Scott teaches methods of depolymerizing waste vulcanized rubber via heating rubber in the presence of free-radical initiator and molecular oxygen (Abstract). The action of oxygen on transitional metal salts procures free radicals, which in turn depolymerize the rubber (Col. 4, line 63 to Col. 5, Line 29) construed as radical precursor converted into radical active species via radical initiator. Scott teaches examples where waste tires are depolymerized to effect rubber dissolution in solvent (Example 2). As evidenced by Watabe, decomposable scrap tire rubber is originally created via sulfur vulcanization (Col. 2, Lines 20-43). Note also Scott indicates the resulting rubber is re-vulcanized via sulfur (Col. 8, Lines 1-12). While not describing the overall mechanism by which the rubber is depolymerized, since Scott also depolymerizes vulcanized rubbers/tires using free radicals, it stands to reason the free radicals produced acts on sulfur crosslinks present within the vulcanized rubber in the absence of evidence to the contrary.
Scott teaches embodiments where depolymerization occurs via peroxy/azo compounds or with transitional metal compounds such as cobalt naphthenate generating free radicals via action of molecular oxygen (Col. 2, Line 71 to Col. 3, Line 7). Scott differs from the subject matter claimed in that the further inclusion of radical precursor with the peroxy/azo compounds is not described.
Watabe also pertains to the chemical devulcanization of waste rubbers via free radicals (Abstract; Examples). Watabe teaches it was known transition metal salts such as cobalt or copper salts are capable of reacting with other oxidants such as peroxides (Abstract; Col. 2, Line 64 to Col. 3, Line 18). The salts give higher degrees of depolymerization compared to using peroxide alone (Tables 1 and 2). It would have been obvious to one of ordinary skill in the art to utilize radical precursor salts such as the cobalt/copper salts of Watabe within the reactions of Scott because doing so would increase the degree of depolymerizations as taught by Watabe.
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 and 2 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 2 of copending Application No. 19/022,319. Although the claims at issue are not identical, they are not patentably distinct from each other.
Specifically, the ‘319 application claims a method of desulfurizing vulcanized rubber using phosphine oxides as desulfurizing agents and free radical initiator that generates a radical active species (Claims 1 and 2). Heating is performed (Claims 6 and 7). Therefore, the ‘319 application anticipates the present claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 3 and 4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1, 2, 6, and 7 of copending Application No. 19/022,319 in view of Scott (U.S. Pat. No. 3,700,615).
The discussion regarding the ‘319 application within ¶ 22 is incorporated herein by reference.
To the extent ‘319 differs from the subject matter claimed via the use of “peracid” / azo compound radical intiators, the use of such initiators were known in the art for the purpose of effecting free radical devulcanization of waste rubbers. See Abstract, Col. 4, line 63 to Col. 5, Line 29 of Scott. It would have been obvious to one of ordinary skill in the art to utilize known free radical intiators such as “peracids” / azo compounds, thereby predictably affording workable radical devulcanization reactions within the ‘319 application.
This is a provisional nonstatutory double patenting rejection.
Related Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Alvarez (US 2025/0075053 A1) and Noel (ACS Sustainable Chem. Eng. 2022, 10, 159-165) both describe the devulcanization of waste rubbers using peroxides.
Conclusion
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/STEPHEN E RIETH/Primary Examiner, Art Unit 1759
Prosecution Insights