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 .
Election/Restrictions
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1-12, drawn to a composition.
Group II, claim(s) 13-18, drawn to a method of reducing taste and odor.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I and II lack unity of invention because even though the inventions of these groups require the technical feature of the composition of claim 1, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Trolez (US 2017/0107364 A1) in view of Gustafsson (U.S. Pat. No. 5,436,282) and Gioffre (U.S. Pat. No. 4,795,482) as evidenced by Perez-Botella (Chem. Rev. 2022, 122, 17647-17695). Specifically, see ¶ 11-15 below, the discussion of which is incorporated herein by reference.
As all common technical features shared between Groups I and II fail to make a contribution over the prior art, they are not special technical features. Therefore, there is lack of unity between Groups I and II.
During a telephone conversation with Katherine Frait on 6/8/2026 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-12. Affirmation of this election must be made by applicant in replying to this Office action. Claims 13-18 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species or invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention or species may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected invention or species.
Should applicant traverse on the ground that the inventions have unity of invention (37 CFR 1.475(a)), applicant must provide reasons in support thereof. Applicant may submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. Where such evidence or admission is provided by applicant, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
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) 1-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Trolez (US 2017/0107364 A1) in view of Gustafsson (U.S. Pat. No. 5,436,282) and Gioffre (U.S. Pat. No. 4,795,482) as evidenced by Perez-Botella (Chem. Rev. 2022, 122, 17647-17695).
Regarding Claims 1, 2, 6, 9 and 10, Trolez teaches compositions comprising polyethylene PCR resin and virgin polyethylene resin (Abstract). Examples are taught where the PCR resin has a limonene content of 21 ppm, of which is diluted upon incorporation into the composition (e.g. 40 wt% PCR resin yields 8 ppm limonene in the composition; 25 wt% PCR resin yields 5 ppm limonene in the composition; see Table 4). While the limonene amounts of Table 4 exceed 3 ppm, the content of limonene within the PCR resin is preferably at most 25 ppm (¶ 112), whereby 15-70 wt% of PCR resin is used (¶ 14). As no lower limit is specified, Trolez describes ranges that overlap the “less than 3 ppm” range of claim 1 and less than 1 ppm range of claim 10. It would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Trolez suggests the claimed range. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Trolez. See MPEP 2123.
The overlapping ranges taught by Trolez also meets the “PCR resin having an initial limonene level of at least 5 ppm” limitation. In the alternative, the limitation at issue merely refers to a characteristic of the PCR resin that is lost over the course of creating the instantly claimed compositions. The reference discloses the claimed product in the sense that the prior art product structure is seen to be no different from that indicated by the claims, even if manufactured by alternative means. See MPEP 2113.
Trolez therefore differs from the subject matter claimed with respect to the further incorporation of odor-active zeolite. Gustafsson teaches it was known in the art zeolites can be incorporated into polyolefin plastics for the purpose of eliminating odor/taste producing substances (Abstract; Col. 3, Lines 29-35). It would have been obvious to one of ordinary skill in the art to incorporate the zeolites of Gustafsson into the polyolefin compositions of Trolez, thereby eliminating odor/taste producing substances in accordance with the teachings of Gustafsson.
Gustafsson teaches the zeolites have a Si/Al molar ratio exceeding 35 (Col. 3, Lines 50-54), which overlaps the range claimed. It would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Trolez suggests the claimed range. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Trolez. See MPEP 2123.
While not describing a particular crystal structure, Gustafsson explicitly teaches the zeolites are those of US 4795482 (Gioffre), of which Geoffre indicates zeolites of the ZSM-5 type are applicable (Col. 8, Lines 54-57). As evidenced by Perez-Botella, ZSM-5 is a common name for a MFI crystal structure (Figure 1). It would have been obvious to one of ordinary skill in the art to utilize zeolites with a MFI crystal structure because such zeolites are effective in eliminating odor/taste producing substances as taught by Gustafsson/Geoffre.
Regarding Claim 3, Gustafsson teaches 0.05-0.5 wt% of zeolite (Abstract).
Regarding Claims 4 and 5, Trolez teaches virgin HDPE and HDPE PCR resins (¶ 68, 75). The virgin resin has a density spanning 0.945-0.96 (¶ 105). The PCR resin has a density spanning 0.954-0.964 (¶ 27).
Regarding Claim 7, Trolez teaches the content of virgin resin ranges from 30-85 wt% (¶ 26).
Regarding Claim 8, Gustafsson teaches a particle size not exceeding about 5 microns (Abstract), which overlaps the range claimed. It would have been obvious to one of ordinary skill in the art to use a range within the claimed range because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art and Gustafsson suggests the claimed range. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Gustafsson. See MPEP 2123.
Regarding Claim 11, Trolez teaches various articles such as containers for food or chemicals (¶ 59), construed as closures.
Regarding Claim 12, Trolez teaches the compositions re-utilize plastic waste (¶ 8-9) and be used for the creation of various articles (¶ 59). Trolez differs from the subject matter claimed in that films are not described. Gustafsson teaches it was known in the art HDPE can be used to formulate various articles, inclusive of plastics films or containers (Col. 3, Lines 21-28). It would have been obvious to one of ordinary skill in the art to create films of the polyethylene compositions of Trolez because doing so would facilitate the re-use of waste polyethylenes in accordance with the teachings of Trolez/Gustafsson.
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 1-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10, 12-14, 16, and 17 of copending Application No. 18/567,184. Although the claims at issue are not identical, they are not patentably distinct from each other.
Specifically, claim 2 pertains to a composition comprising PCR polyolefin, virgin ethylene-based polymer, and the same odor-active zeolite as presently claimed. The same limonene contents are described. The remaining limitations are found within the claims of the copending application. Therefore, the copending claims anticipate the present claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Related Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Scarola (U.S. Pat. No. 5,767,230) describes the removal of limonene from PCR polyolefin resins. Contents of less than 0.1 ppm is achievable (Table II).
Li (ACS Omega, 2020, 5, 31925-31935) teaches zeolites of the FAU type are known to absorb volatile compounds such as limonene.
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.
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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.
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/STEPHEN E RIETH/Primary Examiner, Art Unit 1759
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