DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Status
Claim 1 is amended.
The amendments to claim 1 overcome the previous claim objections. However, the amendments also create a new claim objection, see below.
Claims 1-17 are pending for examination below.
Response to Arguments
Applicant's arguments filed 12 December 2025 have been fully considered but they are not persuasive.
Applicant argues on page 7 that the step of swelling is now required as a preliminary step, and that Gonchar only teaches heating waste material in contact with oil during a thermal decomposition step, and thus does not teach the preliminary step of swelling.
In response, the Examiner respectfully disagrees. Gonchar clearly teaches that the method comprises the step of adding the waste material (rubber) to a solvent, followed by the distinct step of introducing energy at a time, temperature, and pressure to form a product (paragraph [0014]) where the energy adding step is equivalent to the thermal decomposition (paragraph [0039]). Therefore, Gonchar does teach adding the solvent and rubber together as a preliminary step. Gonchar does not explicitly teach that this step is for swelling the rubber. However, the instant specification recites that the reasons that some Examples include swelling and others do not is that the mediums which swell the rubber are liquid at room temperature (paragraph [0031]). There are no further limitations on what is required for the swelling step to take place, as the instant specification teaches that the swelling method is not particularly limited, and can involve contacting the medium with the rubber for a “certain period of time” (paragraph [0019] middle paragraph). The solvents of Gonchar, corn oil and soybean oil, are known to be liquid at room temperature, and the step of adding the solvent to the rubber of Gonchar inherently takes place for some period of time. Therefore, the contacting of Gonchar, which is specifically indicated as taking place prior to the introduction of energy (thermal decomposition), is considered to be equivalent to the claimed swelling absent any evidence to the contrary.
Claim Objections
Claim 1 is objected to because of the following informalities:
With regard to claim 1, the claim recites in line 3 “bringing the used rubber into swelling in a medium”. This phrasing is unnecessarily wordy. The instant specification recites two options for the presence of the medium, “contacting” and “swelling” (pargraph [0019]). Thus, the Examiner suggests “swelling the used rubber in a medium” would make more sense and add clarity.
Appropriate correction is required.
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 1-17 are rejected under 35 U.S.C. 103 as being unpatentable over Gonchar et al. (US 2011/0041391).
With regard to claims 1, 4-7, and 9-17, Gonchar teaches a method for recycling waste materials (Abstract) comprising the following:
a) adding waste material to a solvent (paragraph [0038]), where the waste material includes waste tires (page 6, claim 4) and the solvent includes soybean or corn oil (soybean or corn oil having at least one oxygen atom and having a fatty acid ester of instant claims 1, 5-7, 10, 11, and 13-17) (paragraphs [0034] and [0054]). The instant specification evidences that each of soybean oil and corn oil is a medium having a SP value of 8.3 to 11 (cal/cm3)1/2, an endothermic peak temperature of 235°C or higher as measured by TGA, being a liquid at 150°C (instant claim 1), and having a weight-average molecular weight of 1000 or less (instant claims 4, 9, and 12) as claimed (instant specification paragraphs [0016], [0020], and [0025]). Gonchar teaches that the step of adding the tires into the solvent occurs before the step of heating (thermal decomposition) (paragraph [0014]). Thus, the introducing into the solvent is a preliminary step, as claimed.
b) heating the mixture of waste materials and solvent to produce a degraded waste material, where the degradation comprises breaking carbon-carbon bonds (page 6, claim 1 and paragraphs [0030] and [0039]). Thus, while Gonchar does not explicitly use the term” thermal decomposition”, one of ordinary skill in the art would reasonably find it obvious to conclude that the step of heating of Gonchar includes the claimed thermal decomposition, as thermal decomposition is described in the specification as forming monomers which includes breaking carbon-carbon bonds in the rubber, and Gonchar teaches breaking carbon-carbon bonds and “degrading” the rubber.
Gonchar does not explicitly teach that this step is for swelling the rubber. However, the instant specification recites that the reasons that some Examples include swelling and others do not is that the mediums which swell the rubber are liquid at room temperature (paragraph [0031]). There are no further limitations on what is required for the swelling step to take place, as the instant specification teaches that the swelling method is not particularly limited, and can involve contacting the medium with the rubber for a “certain period of time” (paragraph [0019] middle paragraph). The solvents of Gonchar, corn oil and soybean oil, are known to be liquid at room temperature, and the step of adding the solvent to the rubber of Gonchar inherently takes place for some period of time.
Therefore, the step of contacting of Gonchar, which is specifically indicated as taking place prior to the introduction of energy (thermal decomposition) and comprises the same medium having the same properties added to the same waste tires, is expected to include the claimed swelling of the rubber, absent any evidence to the contrary.
With regard to claims 2 and 3, Gonchar does not specifically teach the composition of the waste tires in the process. However, Gonchar teaches the process is used with waste tires (page 6, claim 4), and teaches that it is known to have passenger and truck waste tires (paragraph [0007]). Gonchar further teaches that natural rubber is derived from isoprene (isoprene-skeleton elastomer) (paragraph [0005]), that synthetic styrene-butadiene-rubber (styrene and butadiene-skeleton elastomer) is the largest synthetic component of tires (paragraph [0006]), and that typical passenger tires and truck tires contain both natural and synthetic rubber (paragraph [0009]). Thus, typical waste passenger tires and truck tires comprise the isoprene-skeleton, butadiene-skeleton, and styrene-skeleton elastomers, as claimed.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to use typical waste passenger and truck tires comprising the claimed elastomers in the process of Gonchar, because Gonchar teaches using waste tires in the process and one of ordinary skill in the art, knowing the existence of the waste passenger and/or truck tires taught by Gonchar, would find it obvious to use the waste passenger and/or truck tires comprising the claimed elastomers in the process with a reasonable expectation of success and without undue experimentation.
With regard to claim 8, Gonchar teaches a mixture of waste tires in a solvent comprising soybean oil or corn oil (paragraphs [0034] and [0054], and page 6, claim 4), which have the SP value of 8.3 to 11 (cal/cm3)1/2, an endothermic peak temperature of 380°C or higher as measured by TGA, and being a liquid at 150°C of instant claim 8 as evidenced by the instant specification paragraphs [0016], [0018], and [0025]). While Gonchar does not specifically teach the composition of the waste tires in the mixture, Gonchar teaches the mixture comprises waste tires (page 6, claim 4), and teaches that it is known to have passenger and truck waste tires (paragraph [0007]). Gonchar further teaches that natural rubber is derived from isoprene (isoprene-skeleton elastomer) (paragraph [0005]), that synthetic styrene-butadiene-rubber (styrene and butadiene-skeleton elastomer) is the largest synthetic component of tires (paragraph [0006]), and that typical passenger tires and truck tires contain both natural and synthetic rubber (paragraph [0009]). Thus, typical waste passenger tires and truck tires comprise the isoprene-skeleton, butadiene-skeleton, and styrene-skeleton elastomers, as claimed.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to use typical waste passenger and truck tires comprising the claimed elastomers in the mixture of Gonchar, because Gonchar teaches using waste tires in the mixture and one of ordinary skill in the art, knowing the existence of the waste passenger and/or truck tires taught by Gonchar, would find it obvious to use the waste passenger and/or truck tires comprising the claimed elastomers in the mixture with a reasonable expectation of success and without undue experimentation.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALYSSA L CEPLUCH whose telephone number is (571)270-5752. The examiner can normally be reached M-F, 8:30 am-5 pm, EST.
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/Alyssa L Cepluch/Examiner, Art Unit 1772
/IN SUK C BULLOCK/Supervisory Patent Examiner, Art Unit 1772
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