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 .
Obviousness-type 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 obviousness-type 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); and 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-24 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims of copending Application No. 18215275 and copending Application No. 18624541.
Claim 1 of the related application 18215275 claims a method for purifying a reclaimed polymer comprising leaching contaminants from the reclaimed polymer, extraction using a fluid solvent, dissolving the polymer in a fluid solvent, settling, mechanical filtration, adsorptive filtration and separating the polymer to obtain a purer polymer.
Claim 1 of the related application 18624541, also claims a method for purifying reclaimed polymer comprising leaching contaminants from the reclaimed polymer, dissolving the polymer in a fluid solvent, settling the resulting solution, mechanically filtering the solution, adsorptive filtering of the solution, and separating the polymer from the resulting solution to obtain a purer polymer.
The instant claim 1 differs in requiring the extraction with a second fluid solvent after the settling, mechanical filtration and adsorptive filtration steps. Note that related application ‘275 performs the extraction earlier in the purification process and related application ‘541 claims the dissolution , settling , filtration and separating without the additional extraction step.
It would have been obvious to one of ordinary skill in the art to combine the purification sequence claimed in related application ‘541 with the extraction step claimed in related application ‘275 and perform the extraction after the filtration steps. Moreover, although the conflicting claims are not identical, they are not patentably distinct from each other because the related application contains claims which, when read as a whole, contain the same subject as claim 1 of the present application, respectively and thus would have been obvious over the claimed invention. It is clear that all the elements of the present application claims are to be found in related application claims (as the application claims fully encompasses related application claims). The difference between the application claims and the related application claims lies in the fact that the related application claim includes many more elements and is, thus, much more specific. Thus, the invention of claims of the related application is in effect a “species” of the “generic” invention of the application claims. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29USPQ2d2010 (Fed. Cir. 1993). Since application claims is anticipated by claims of the related application, it is not patentably distinct from claims of the related application.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
As a future response to the rejection above, applicants are advised to not withhold a response, such as, a terminal disclaimer (TD), to the pending ODP rejection. It is noted that the filing of a TD cannot be held in abeyance since that filing “is necessary for further consideration of the rejection of the claims” as set forth in MPEP 804 (I) (B) (1) quoted below:
“As filing a terminal disclaimer, or filing a showing that the claims subject to the rejection are patentably distinct from the reference application’s claims, is necessary for further consideration of the rejection of the claims, such a filing should not be held in abeyance. Only objections or requirements as to form not necessary for further consideration of the claims may be held in abeyance until allowable subject matter is indicated.”
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.
Claim(s) 1, 3-7, 9, 11-14, 16-23 is/are rejected under 35 U.S.C. 103 as being unpatentable over USPub20190390031 see paragraphs [0063]-[111] and Figure 1.
With regard to claim 1, USPub20190390031 discloses a method for purifying reclaimed polymer comprising obtaining reclaimed polypropylene from post-consumer, post-industrial post-commercial and waste streams. See paragraphs [0065] and Figure 1. USPub20190390031 also discloses contacting the reclaimed polymer with a fluid solvent to remove extractable contaminants and identifies the fluid solvents including carbon dioxide, acetone , methanol, ethers, alkanes, propane, n-butane, isobutane and n-pentane. See paragraphs [0068],[0070-[0074]. The reference further discloses dissolving the reclaimed polymer in a fluid solvent to release contaminants from the polymer for removal , and allowing the settling higher density undissolved contaminants while leaving the polymer to remain dissolved. See paragraphs. [0075]-[0083]. Then the polymer solution is filtered to remove suspended contaminants, and the filtered polymer solution is then contacted with a solid media to remove contamination by adsorption, absorption, electrostatic interactions, size exclusion, ion exclusion and ion exchange. See paragraphs. [0084]-[0107] and [0011].
USPub20190390031 does not disclose performing the extraction after the mechanical filtration and adsorptive filtration steps as noted in applicants’ claim 1. Instead the reference performs extraction before dissolution, sedimentation, filtration and purification. See paragraphs [0063]-[0111] and Figure 1.
Thus, 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 order of USPub20190390031 purification process steps by performing the extraction after the mechanical and adsorptive filtration steps because the reference teaches these steps as contaminant removal steps within the same overall purification process. A skilled artisan would have known that reordering the extraction step would have allowed each of the known purification steps to be able to perform its intended function within the process.
With regard to the process conditions and parameters, the reference discloses controlling temperatures and pressures during the treatment and dissolution of the solvent. Thus, it would also have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to select suitable process conditions and parameters through routine optimization of the references purification process. it is prima facie obvious to determine workable or optimal values within a prior art disclosure through the application of routine experimentation. See In re Aller, 105 USPQ 233, 235 (CCPA 1955); In re Boesch, 205 USPQ 215 (CCPA 1980); and In re Peterson, 315 F.3d 1325 (CA Fed 2003).
With regard to claims 3, 4 and 5, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to optimize the number of leaching stages, surface area to volume ratio and residence time to provide the desired contaminant removal in the USPub20190390031 solvent treatment process. See paragraphs [0068]-[0074].
With regard to claims 6 and 7, , it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use the claimed organic leaching solvent since USPub20190390031 discloses suitable organic solvents, including diethyl ether. See paragraph [0068].
With regard to claim 9, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to optimize the surface washing and physical structure of the reclaimed polymer to improve the removal of contamination on the. See paragraph [0091].
With regard to claims 11-12, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to select the claimed separation conditions and polymer concentration because these are changeable parameters that affect the polymer dissolution and separation process.
With regard to claims 13-14, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use the claimed reclaimed polymer and polypropylene because USPub20190390031 discloses reclaimed polypropylene from post-consumer sources as suitable feed material in paragraphs [0064]-[0065].
With regard to claims 16-19, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use the claimed fluid solvent and hydrocarbon since USPub20190390031 discloses suitable low boing fluid solvents including propane, n-butane, isobutane, n-pentane and other aliphatic hydrocarbons in paragraph [0068].
With regard to claims 20-23, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to optimize the claimed temperature and pressure conditions since USPub20190390031 discloses controlling the temperature and pressure through the solvent based purification process. See paragraphs [0070]-[0111].
With regard to claim 24, USPub20190390031 discloses a method for purifying reclaimed polymer comprising obtaining reclaimed polypropylene from post-consumer, postindustrial post commercial and other waste streams. See paragraphs [0065] and Figure 1. USPub20190390031 also teaches contacting the reclaimed polymer with a fluid solvent to remove extractable contaminants and identifies fluid solvents including carbon dioxide, acetone , methanol, ethers, alkanes, propane, n-butane, isobutane and n-pentane. See paragraphs [0068],[0070-[0074]. The reference further discloses dissolving the reclaimed polymer in a fluid solvent to release contaminants from the polymer for removal , and the settling higher density undissolved contaminants while the polymer remains dissolved. See paragraphs. [0075]-[0083]. Then mechanically filtering the polymer solution to remove suspended contaminants and contacting the filtered polymer solution with solid media to remove contamination by adsorption, absorption, electrostatic interactions, size exclusion, ion exclusion and ion exchange. See paragraphs. [0084]-[0107] and [0011].
USPub20190390031 does not disclose performing the extraction after the mechanical filtration and adsorptive filtration steps as noted in applicants’ claim 1. Instead the reference performs extraction before dissolution, sedimentation, filtration and soldi media purification. See paragraphs [0063]-[0111] and Figure 1.
Thus, 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 order of USPub20190390031 purification process steps by performing the extraction after the mechanical and adsorptive filtration steps because the reference teaches these steps as contaminant removal steps within the same overall purification process. A skilled artisan would have known that reordering the extraction step would have allowed each of the known purification steps to be able to perform its intended function within the process. With regard to the process conditions and parameters, the reference discloses controlling temperatures and pressure during the solvent treatment and dissolution. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to select suitable process conditions and parameters through routine optimization of the references purification process. it is prima facie obvious to determine workable or optimal values within a prior art disclosure through the application of routine experimentation. See In re Aller, 105 USPQ 233, 235 (CCPA 1955); In re Boesch, 205 USPQ 215 (CCPA 1980); and In re Peterson, 315 F.3d 1325 (CA Fed 2003).
In conclusion, in view of the above, there appears to be no significant difference between the reference(s) and that which is claimed by applicant(s). Any differences not specifically mentioned appear to be conventional. Consequently, the claimed invention cannot be deemed as unobvious and accordingly is unpatentable.
Claim Objections over Prior Art of Record
Claims 2, 8, 10, 15 are objected to as being dependent upon a rejected base claim, but may be allowable if:
1) after a further search,
2) rewritten in independent form including all of the limitations of the base claim
and any intervening claims and
3) having corrected any 112 or Obviousness-type Double Patenting issues as set forth above.
Information Disclosure Statement
Note that any future and/or present information disclosure statements must comply with 37 CFR § 1.98(b), which requires a list of the publications to include: the author (if any), title, relevant pages of the publication, date and place of publication to be submitted for consideration by the Office.
Improper Claim Dependency
Prior to allowance, any dependent claims should be rechecked for proper dependency if independent claims are cancelled.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TERRESSA M BOYKIN whose telephone number is (571)272-1069. The examiner can normally be reached at M-F 7-5:30.
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, Heidi Kelley can be reached at 571 270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Terressa Boykin/Primary Examiner, Art Unit 1765
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