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 .
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.
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Claim 11 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No.12024887B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the present application (18583998) claims are narrower in at least one aspect and recites additional specific features not claimed in U.S. Patent No.12024887B2 claims.
For dependent claim 2:
Regarding the narrowing aspect of the present application claims, the following comparison between the present application claims and the U.S. Patent claims highlights (see underlined features in the present application claims) what elements have been excluded in the presentation of the co-pending application claims.
U.S. Patent No.12024887B2 claim 1.
Present application (18583998) claims 11, claim 11 depends from claim 2, claim 2 depend from claim 1.
A method of producing a granulated product from photopolymer printing plate materials, the method comprising the steps of:
sorting the photopolymer printing plate materials based on an identifiable property;
grinding photopolymer printing plate materials to particles; and
screening the particles to remove particles above a certain size to produce the granulated product;
wherein the photopolymer printing plate materials comprise used photocured or photopolymerized flexographic printing elements comprising one or more cured photopolymer layers on a support layer, and
wherein the support layer is not removed from the one or more photopolymer layers prior to the grinding step.
A method of producing a granulated product from photopolymer printing plate materials, the method comprising the steps of:
sorting the photopolymer printing plate materials based on an identifiable property;
b) optionally, shredding or chipping the photopolymer printing plate materials to reduce the size of the photopolymer printing plate materials to smaller chips or shreds having a relatively uniform size;
c) subjecting the photopolymer printing plate materials to UV-C light from a UV-C light source for a period of time, whereby the photopolymer printing plate materials are rendered less tacky and more brittle;
d) grinding the photopolymer printing plate materials to particles; and
e) screening the particles to remove particles above a certain size to produce the granulated product.
2. (Original) The method according to claim 1, wherein photopolymer printing plate materials comprise used photocured or photopolymerized flexographic printing elements comprising one or more cured photopolymer layers on a support layer.
11. (Original) The method according to claim 2, wherein the support layer is not removed from the one or more photopolymer layers prior to the grinding step.
For dependent claim 29:
Regarding the narrowing aspect of the present application claims, the following comparison between the present application claims and the U.S. Patent claims highlights (see underlined features in the present application claims) what elements have been excluded in the presentation of the co-pending application claims.
U.S. Patent No.12024887B2 claim 1.
Present application (18583998) claims 29, claim 29 depends from claim 20, claim 20 depend from claim 18.
A method of producing a granulated product from photopolymer printing plate materials, the method comprising the steps of:
sorting the photopolymer printing plate materials based on an identifiable property;
grinding photopolymer printing plate materials to particles; and
screening the particles to remove particles above a certain size to produce the granulated product;
wherein the photopolymer printing plate materials comprise used photocured or photopolymerized flexographic printing elements comprising one or more cured photopolymer layers on a support layer, and
wherein the support layer is not removed from the one or more photopolymer layers prior to the grinding step.
A method of producing a granulated product from photopolymer printing plate materials, the method comprising the steps of:
a) optionally, shredding or chipping the photopolymer printing plate materials to reduce the size of the photopolymer printing plate materials to smaller chips or shreds having a relatively uniform size;
b) subjecting the photopolymer printing plate materials to UV-C light from a UV-C light source for a period of time, whereby the photopolymer printing plate materials are rendered less tacky and more brittle;
c) grinding the photopolymer printing plate materials to particles; andd) screening the particles to remove particles above a certain size to produce the granulated product.
20. (New) The method according to claim 18, wherein photopolymer printing plate materials comprise used photocured or photopolymerized flexographic printing elements comprising one or more cured photopolymer layers on a support layer.
29. (New) The method according to claim 20, wherein the support layer is not removed from the one or more photopolymer layers prior to the grinding step.
Claim Objections
Claim 1 objected to because of the following informalities:
Regarding claim 1, the phrase “the method comprising the steps of” should be changed to “the method comprising steps of”.
Regarding claim 18, the phrase “the method comprising the steps of” should be changed to “the method comprising steps of”.
Appropriate correction is required.
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 1-33 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.
Regarding claim 1, the phrase "optionally" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 1 recites the limitation "the size" in line 5. There is insufficient antecedent basis for this limitation in the claim.
Claims 2-17 are rejected because they depend from claim 1.
Claim 6 recites the limitation "the certain size" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim.
Regarding claim 6, the phrase “about 3 mm and about 10 mm” renders the claim indefinite because having “about” on both ends of the range makes the range of the angle unclear, and also the specification does not give metes and bonds for determining “about”.
Regarding claim 18, the phrase "optionally" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 18 recites the limitation "the size" in line 4. There is insufficient antecedent basis for this limitation in the claim.
Claims 19-33 are rejected because they depend from claim 15.
Claim 24 recites the limitation "the certain size" in lines 1-2. There is insufficient antecedent basis for this limitation in the claim.
Regarding claim 24, the phrase “about 3 mm and about 10 mm” renders the claim indefinite because having “about” on both ends of the range makes the range of the angle unclear, and also the specification does not give metes and bonds for determining “about”.
Claim Rejections - 35 USC § 102
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 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 1-4, 7-10, 12 and 18-22, 25-28 and 30 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Michael (EP2767377A1 attached NPL, English Machine translation).
Regarding claim 1, Michael discloses a method of producing a granulated product from photopolymer printing plate materials (paragraphs 0005-0007 and 0034-0040), the method comprising the steps of:
a) sorting the photopolymer printing plate materials based on an identifiable property (paragraphs 0022, 0026 and 0034);
b) optionally, shredding or chipping the photopolymer printing plate materials to reduce the size of the photopolymer printing plate materials to smaller chips or shreds having a relatively uniform size (paragraph 0025);
c) subjecting the photopolymer printing plate materials to UV-C light from a UV-C light source for a period of time, whereby the photopolymer printing plate materials are rendered less tacky and more brittle (paragraph 0025);
d) grinding the photopolymer printing plate materials to particles; and e) screening the particles to remove particles above a certain size to produce the granulated product (paragraph 0027: further processed into granules; the process of granules is known in art having steps of grinding then sieving to separate the desired size fraction).
Regarding claim 2, Michael discloses wherein photopolymer printing plate materials comprise used photocured or photopolymerized flexographic printing elements comprising one or more cured photopolymer layers on a support layer (paragraphs 0003 and 0007).
Regarding claim 3, Michael discloses wherein the step of shredding or chipping is performed (paragraph 0025).
Regarding claim 4, Michael discloses wherein the steps are performed in order (paragraph 0025).
Regarding claim 7, Michael discloses wherein the one or more cured photopolymer layers comprise a binder selected from styrene-isoprene-styrene and styrene-butadiene- styrene (paragraphs 0003 and 0007).
Regarding claim 8, Michael discloses wherein the binder comprises styrene-butadiene-styrene (paragraphs 0003 and 0007).
Regarding claim 9, Michael discloses wherein the one or more cured photopolymer layers are processed from liquid photoresins based on ethylenically unsaturated prepolymers selected from the group consisting of unsaturated polyester resins, unsaturated polyurethane resins, unsaturated polyamide resins, and unsaturated poly(meth) acrylate resins (paragraphs 0003 and 0007).
Regarding claim 10, Michael discloses wherein the photoresin comprises an unsaturated polyurethane resin (paragraphs 0003 and 0007).
Regarding claim 12, Michael discloses wherein the identifiable property is selected from the group consisting of type of binder, Shore A hardness of the photopolymer, printing plate gauge, and combinations of one or more of the foregoing (paragraphs 0003 and 0007).
Regarding claim 18, Michael discloses a method of producing a granulated product from photopolymer printing plate materials (paragraphs 0005-0007 and 0034-0040), the method comprising the steps of:
a) optionally, shredding or chipping the photopolymer printing plate materials to reduce the size of the photopolymer printing plate materials to smaller chips or shreds having a relatively uniform size (paragraph 0025);
b) subjecting the photopolymer printing plate materials to UV-C light from a UV-C light source for a period of time, whereby the photopolymer printing plate materials are rendered less tacky and more brittle (paragraph 0025);
c) grinding the photopolymer printing plate materials to particles; and d) screening the particles to remove particles above a certain size to produce the granulated product (paragraph 0027: further processed into granules; the process of granules is known in art having steps of grinding then sieving to separate the desired size fraction).
Regarding claim 19, Michael discloses further comprising the step of sorting the photopolymer printing plate materials based on an identifiable property prior to step a) (paragraphs 0022, 0026 and 0034).
Regarding claim 20, Michael discloses wherein photopolymer printing plate materials comprise used photocured or photopolymerized flexographic printing elements comprising one or more cured photopolymer layers on a support layer (paragraphs 0003 and 0007).
Regarding claim 21, Michael discloses wherein the step of shredding or chipping is performed (paragraph 0025).
Regarding claim 22, Michael discloses wherein the steps are performed in order (paragraph 0025).
Regarding claim 25, Michael discloses wherein the one or more cured photopolymer layers comprise a binder selected from styrene-isoprene-styrene and styrene-butadiene- styrene (paragraphs 0003 and 0007).
Regarding claim 26, Michael discloses wherein the binder comprises styrene-butadiene- styrene (paragraphs 0003 and 0007).
Regarding claim 27, Michael discloses wherein the one or more cured photopolymer layers are processed from liquid photoresins based on ethylenically unsaturated prepolymers selected from the group consisting of unsaturated polyester resins, unsaturated polyurethane resins, unsaturated polyamide resins, and unsaturated poly(meth)acrylate resins (paragraphs 0003 and 0007).
Regarding claim 28, Michael discloses wherein the photoresin comprises an unsaturated polyurethane resin (paragraphs 0003 and 0007).
Regarding claim 30, Michael discloses wherein the identifiable property is selected from the group consisting of type of binder, Shore A hardness of the photopolymer, printing plate gauge, and combinations of one or more of the foregoing resin (paragraphs 0003 and 0007).
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.
Claims 5 -6 and 13-15, 23-24 and 31 are rejected under 35 U.S.C. 103 as being unpatentable over Michael (EP2767377A1 attached NPL, English Machine translation).
Regarding claims 5 and 23, Michael does not disclose wherein the steps of grinding and screening are repeated at least once.
However, it would have been obvious to one of ordinary skill in the art at the time the invention was made to Michael add the steps of grinding and screening as many times as needed to produce the desired product.
Regarding claims 6 and 24, Michael does not disclose wherein the screened particles above the certain size comprise polyethylene terephthalate, wherein the polyethylene terephthalate is in the form of flakes or particles (paragraph 0035);
Michael does not disclose having a size between about 3 mm and about 10 mm;
However, choosing the size of the openings of the screening is known in art and a matter routine design engineering design choice that depends on the required product size as desired;
Therefore; it would have been obvious to one of ordinary skill in the art at the time of the invention to select the size of the openings of the screening as desired, including a size between about 3 mm and about 10 mm; in order to obtain product with specific size as desired.
Regarding claims 13-15 and 31, Michael does not disclose wherein the granulated product has a particle size of less than 20 mm; wherein the granulated product has a particle size of less than 10 mm; and wherein the granulated product has a particle size of less than 5 mm.
However, choosing the size of the openings of the screening is known in art and a matter routine design engineering design choice that depends the required product size as desired;
Therefore; it would have been obvious to one of ordinary skill in the art at the time of the invention to select the size of the openings of the screening as desired, including wherein the granulated product has a particle size of less than 20 mm; wherein the granulated product has a particle size of less than 10 mm; and wherein the granulated product has a particle size of less than 5 mm; in order to obtain product with specific size as desired.
Claims 16-17 and 32-33 are rejected under 35 U.S.C. 103 as being unpatentable over Michael (EP2767377A1 attached NPL, English Machine translation) in view of Kraska (US5552261A).
Regarding claims 16-17 and 32-33, Michael does not disclose wherein an anti-tack agent is added to the granulated product after step c); and wherein the anti-tack agent is selected from the group consisting of fumed silica, talc, mica, clay, carbonate, zinc stearate, magnesium stearate, calcium stearate, potassium stearate, stearic acid, liquid lubricants, emulsified wax, and calcium silicate.
Kraska teaches a method of producing a granulated product from photopolymer printing plate materials (abstract), the method comprising
an anti-tack agent is added to a granulated product; and wherein the anti-tack agent is selected from the group consisting of fumed silica, talc, mica, clay, carbonate, zinc stearate, magnesium stearate, calcium stearate, potassium stearate, stearic acid, liquid lubricants, emulsified wax, and calcium silicate (col.4 lines 8-14).
Both of the prior arts of Michael and Kraska are related to a method of producing a granulated product from photopolymer printing plate materials;
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Michael to have wherein an anti-tack agent is added to the granulated product as taught by Kraska, since it has been held that combining prior art elements according to known methods to yield predictable results requires only routine skill in the art. [KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1742, 82 USPQ2d 1385, 1396 (2007)]. Thereby having wherein an anti-tack agent is added to the granulated product after step c); and wherein the anti-tack agent is selected from the group consisting of fumed silica, talc, mica, clay, carbonate, zinc stearate, magnesium stearate, calcium stearate, potassium stearate, stearic acid, liquid lubricants, emulsified wax, and calcium silicate.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claims 11 and 29, the closet prior art is Michael (EP2767377A1), however in the opinion of the Examiner that the arts of record neither anticipates nor render obvious the limitation of “wherein the support layer is not removed from the one or more photopolymer layers prior to the grinding step” in combination with the other limitations of the claim.
Claims 11 and 29 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.
Claims 11 and 29 would be allowable if rewritten to overcome the double patenting rejection, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOHAMMED S ALAWADI whose telephone number is (571)272-2224. The examiner can normally be reached 08:00 am- 05:00 pm.
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/MOHAMMED S. ALAWADI/Primary Examiner, Art Unit 3725
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