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 .
Election/Restriction
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
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) 1-14, 20, 21, drawn to a method for recycling polystyrene.
Group II, claim(s) 15-19, drawn to an apparatus for recycling polystyrene.
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 capability of dissolving, heating, removing, pyrolyzing and distilling, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of US 20130317238 by Mohanty et al. Mohanty describes dissolving (paragraph 41), heating (paragraph 41), removing (paragraph 41), pyrolyzing (paragraph 47) and distilling (paragraph 51).
During a telephone conversation with Marcus Dawes on 8/25/26 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-14, 20, 21. Affirmation of this election must be made by applicant in replying to this Office action. Claims 15-19 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected 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).
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 4, 11, 20 and 21 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.
Claim 4 recites “selected from the group comprises”. This is improper Markush formatting; it is unclear if the group is closed or not. Proper language is “selected from the group consisting of”.
Claim 11 recites “removed by…filtration, centrifugation, cyclonic separation”. This is confusing as it is not clear if the methods are in the alternative or all required. Proper language is “filtration, centrifugation or cyclonic separation”.
Claim 20 recites “comprising at least one of the following:” in line 4. This is improper Markush language. Proper Markush language is “comprises at least one selected from the group consisting of:”.
Claim 20 further is confusing at the end of the claim with “wherein the organofluoro compounds may comprise…”. This is confusing because organofluoro compounds have already been listed in the Markush group. The final listing hydrochlorofluorocarbon should be listed as the last alternative in the Markush grouping, not separately.
Claim 21 recites “wherein the polystyrene based material comprises….”. This is improper Markush language. Proper language is “wherein the polystyrene-based material comprises at least one selected from the group consisting of…”.
Claim Objections
Claim 4 is objected to because of the following informalities: in the final line, replace “P(CH3NCH2CH2)3N” with “P(CH3NCH2CH2)3N”, i.e. use subscripts properly for a chemical compound. Appropriate correction is required.
Claim Rejections - 35 USC § 103
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.
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) 1-3, 5, 13, 20, 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 20150210611 by Tippet et al.
Tippet describes depolymerization of plastic materials.
Regarding claim 1, Tippet describes a method for recycling a polystyrene (paragraph 6) optionally comprising organohalogen flame retardant (paragraph 66) comprising:
(i) dissolving the polystyrene (paragraph 35) in for example benzene and toluene among other solvents, which qualify as apolar, high-boiling, organic. See paragraph 43 for full list.
(ii) heating the polystyrene in solvent (paragraph 38)
Regarding step (ii) “so as to release halogen from the flame retardant” any nominal amount of release with heating in Tippet meets the claim, and since the heat dissolves the polystyrene one of ordinary skill would reasonably expect some amount of halogen to be released. For example, the mechanism of action for flame retardant hexabromocyclododecane, mentioned in Tippet (paragraph 43) is to break the C-F bonds in response to heat.
(iii) contacting the released halogen with a base, described in Tippet as a “caustic treatment” (paragraph 23-29), which can also remove halides (paragraph 45), i.e. forming a halogen residue
(iv) removing the halogen residue (paragraph 45)
(v) pyrolyzing polystyrene in the solvent (paragraph 50-51)
(vi) distilling the depolymerized mixture (paragraph 72)
It would be obvious to one of ordinary skill to choose the particulars claimed such as recovering a polystyrene containing a halogenated flame retardant and submitting the dissolved solution to caustic treatment because Tippet describes these in embodiments.
Regarding claim 2, Tippet describes adding the base to the reaction solvent (paragraph 45 “fed to a caustic treatment”) to form the halogen residue (paragraph 45).
Regarding claim 3, Tippet exemplifies a flame retardant of hexabromocyclododecane (paragraph 43), which releases fluorine, and a caustic agent of sodium or potassium hydroxide (paragraph 45). Therefore the residue is a halogen salt (NaF or KF).
Regarding claim 5, the claim does not require the presence of foreign polymer, and Tippet describes separation of foreign materials from the polystyrene waste (paragraph 23-33) prior to dissolution step (i).
Regarding claim 13, Tippet describes a pyrolysis temperature of 300-800C (paragraph 54) in optionally a fluid bed or tube reactor (paragraph 57), and when it is non-pressurized, e.g an empty tube (paragraph 62).
Regarding claim 20, Tippet describes hexabromocyclododecane (paragraph 43).
Regarding claim 21, Tippet describes for example an ABS feed stream (paragraph 77).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over US 20150210611 by Tippet et al as evidenced by “Toluene” by NIST.
Regarding claim 9, Tippet exemplifies toluene, which has a vapor pressure well below 15 bar at the cited temperature range (NIST p.2 Table). Tippet describes recirculating the distilled toluene from the styrene distilling process (paragraph 74).
Allowable Subject Matter
Claims 6-8, 10, 12, 14 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 11 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claim 4 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims, and the objection set forth above is overcome.
Claim 4 recites different bases than those recited by the closest art, US 20150210611 by Tippet et al.
For claim 6, although US 20150210611 by Tippet et al describes heating, there is no temperature range given, and other art such as “Toluene Solvent System for the headspace gas chromatographic determination of styrene monomer in polystyrene” by Wong et al indicates that much lower temperatures are needed to dissolve polystyrene in toluene than the claimed range (Wong p.347 Table 2).
For claims 7, 8 and 10, the closest art is US 20150210611 by Tippet et al, which does not describe expanded polystyrene.
For claim 11, US 20150210611 by Tippet et al is silent as to residue particle size.
For claim 12, US 20150210611 by Tippet et al is silent as to the molar ratio of base to flame retardant.
For claim 14, US 20150210611 by Tippet et al is silent as to the extent of flame retardant removal.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTINA W ROSEBACH whose telephone number is (571)270-7154. The examiner can normally be reached 8am-3:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at 5712721302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTINA H.W. ROSEBACH/Examiner, Art Unit 1766
