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 .
Specification
The disclosure is objected to because it contains several embedded hyperlinks and/or other forms of browser-executable code. See various DOI and “http” URL links throughout pages 5 and 9-14. Applicant is required to delete the embedded hyperlinks and/or other forms of browser-executable code; references to websites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. See MPEP § 608.01.
Claim Objections
Claim 10 is objected to because of the following informalities: there should be a comma between “at least cellulose (ii)” and “a plurality of synthetic polymers”. Appropriate correction is required.
Claim 23 is objected to because of the following informalities: there should be a comma between “at least cellulose (ii)” and “a plurality of synthetic polymers”. Appropriate correction is required.
Claim 32 is objected to because of the following informalities: “a blend” should be “the blend”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 28, 33-35, and 37 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 28 is new and recites “an article of manufacture having a carbon footprint that is statistically significantly lower than the carbon footprint of an article of manufacture produced by same methods steps without said composite material”. The limitation at issue is not found within the specification as originally filed. Therefore, claim 28 fails to comply with the written description requirement.
Claim 33 is new and recites “The article of manufacture… comprising up to 40wt% synthetic thermoplastic polymers”. Written support for the article of manufacture comprising up to 40wt% synthetic thermoplastic polymers is not found within the specification as originally filed. Therefore, claim 33 fails to comply with the written description requirement.
Claim 34 is new and recites “The article of manufacture… comprising up to 5wt% synthetic thermoplastic polymers”. Written support for the article of manufacture comprising up to 5wt% synthetic thermoplastic polymers is not found within the specification as originally filed. Therefore, claim 34 fails to comply with the written description requirement.
Claim 35 is new and recites “The article of manufacture… comprising less than 1% halogenated polymers”. Written support for the article of manufacture comprising less than 1% of halogenated polymers is not found within the specification as originally filed. Therefore, claim 35 fails to comply with the written description requirement.
Claim 37 is new and recites “The article of manufacture… comprising at least 0.1 mg/g DNA”. Written support for the article of manufacture comprising less at least 0.1 mg/g DNA is not found within the specification as originally filed. Therefore, claim 35 fails to comply with the written description requirement.
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 10-13 and 23-37 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 10 is directed toward an article of manufacture comprising synthetic polymer(s) and composite material; the composite/article having a defined carbon footprint determined according to ISO 14040:2006. However, the calculated carbon footprint is not solely dependent on the chemical makeup of the composite. As discussed within the specification at Pages 9-15 and 40-42, the calculated carbon footprint is also dependent on the means of manufacturing the composite (e.g. in the examples, solar heat is used to reduce the carbon demands; which would clearly afford different results if the same composite was manufactured using more carbon-intensive energy sources) and the presumed means by which the materials used to create composite would otherwise be disposed of (e.g. landfill disposal). The determined carbon footprint also changes dramatically depending on the metrics one chooses to determine such. For instance, whether one factors in GWP using a 20 year or 100 year window (see for instance Tables 3A and 3B). In view of such, the scope of the claim is generally indefinite as its scope is dependent on the presumed disposal activity/emissions that would otherwise occur, it fails to define the particular process of manufacture by which the carbon footprint value is based, and fails to set forth what critical parameters need be used in ascertaining the value.
As claims 11-13 and 34-37 depend from claim 10, they are rejected for the same issue discussed above.
Claim 12 recites “at least 10% synthetic polymers”. The scope of the claim is unclear as it is uncertain whether the 10% figure is by weight or volume.
Claim 23 is directed toward a method of manufacturing an article comprising synthetic polymer(s) and composite material; the composite/article having a defined carbon footprint determined according to ISO 14040:2006. However, the calculated carbon footprint is not solely dependent on the chemical makeup of the composite. As discussed within the specification at Pages 9-15 and 40-42, the calculated carbon footprint is also dependent on the means of manufacturing the composite (e.g. in the examples, solar heat is used to reduce the carbon demands; which would clearly afford different results if the same composite was manufactured using more carbon-intensive energy sources) and the presumed means by which the materials used to create composite would otherwise be disposed of (e.g. landfill disposal). The determined carbon footprint also changes dramatically depending on the metrics one chooses to determine such. For instance, whether one factors in GWP using a 20 year or 100 year window (see for instance Tables 3A and 3B). In view of such, the scope of the claim is generally indefinite as its scope is dependent on the presumed disposal activity/emissions that would otherwise occur, it fails to define the particular process of manufacture by which the carbon footprint value is based, and fails to set forth what critical parameters need be used in ascertaining the value.
As claims 24-32 depend from claim 23 they are rejected for the same issue discussed above.
Claim 31 recites “wherein said one or more synthetic polymers is selected from polypropylene (PP), polyethylene (PE), polylactic acid (PLA). It is unclear whether the listing is meant to be an open/closed group. The lack of a conjunction (“and” / “or”) preceding the last species renders the scope unclear as to whether the listed options are required individually or in combination.
With respect to claim 32, the lack of a conjunction (“and” / “or”) preceding the last species renders the scope unclear as to whether the listed options are required individually or in combination.
Claim 35 recites “less than 1% halogenated polymers”. The scope of the claim is unclear as it is uncertain whether the 10% figure is by weight or volume.
Claim 37 recites “2% chloroform:isoamyl alcohol 24:1 (CTAB)”. It is unclear what component is meant to be present at 2% (possibly CTAB?). It is unclear whether the recited 2% value is by weight or volume.
Claim Rejections - 35 USC § 102/103
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.
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) 10-13, 23-33, 35, and 36 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Tamir (US 2011/0272858 A1).
Regarding Claims 10, 11, 13, 23, 27, 28, and 36, Tamir teaches articles of manufacture and method of manufacturing the articles comprising a combination of synthetic thermoplastic polymers and composite material (¶ 272, 283, 374-283). The composite material can comprise roughly organic material, 0-40 wt% plastic (i.e. synthetic polymeric material), and 1-50 wt% inorganic matter (¶ 37-40). The organic matter is municipal waste comprising diverse materials from various sources such as wood, foods, ash, or paper, whereby the organic matter comprises cellulose (¶ 248, 252) and thus, the composite material is construed as being of heterogenous organic material (see page 4 of the specification). The thermoplastic component may or may not comprise polyethylene terephthalate (¶ 249-251).
With respect to carbon footprint, the manner by which carbon footprint is assessed depends squarely on the energy requirements / method of processing associated with creating the composites / article and also on the perceived method by which such components would otherwise be deemed to be disposed of (see for instance Pages 9-15 and 40-42 of the specification). The composite materials of Tamir are seen to be no different than what is indicated by the claims even if manufactured by or otherwise disposed of by alternative means.
In Example 3, a composition of roughly 100% organic waste with only traces of plastic (i.e. synthetic polymers) and sand (inorganic material) is prepared (¶ 355-359). Therefore, Tamir anticipates the concentration ranges claimed. Alternatively, Tamir teaches the composite material can comprise roughly at least 10 wt% organic material, 0-40 wt% plastic (i.e. synthetic polymeric material), and 1-50 wt% inorganic matter (¶ 37-40). Thus, Tamir is descriptive of overlapping ranges. 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 Tamir suggests the claimed ranges. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Tamir. See MPEP 2123.
Regarding Claims 12, 24, 25, and 33, examples are taught where composite is combined with roughly 40 wt% synthetic polymers (¶ 274-275).
Regarding Claim 35, Tamir teaches an embodiment in example 3 where roughly 100% organic waste with only traces of plastic (i.e. synthetic polymers) and sand (inorganic material) is prepared (¶ 355-359), construed as a material with less than 1% halogenated polymers. Alternatively, Tamir teaches the composite material can comprise roughly at least 10 wt% organic material, 0-40 wt% plastic (i.e. synthetic polymeric material), and 1-50 wt% inorganic matter (¶ 37-40). Thus, Tamir is descriptive of overlapping ranges. 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 Tamir suggests the claimed ranges. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Tamir. See MPEP 2123.
Regarding Claims 26 and 29-32, Tamir teaches embodiments where composite and virgin HDPE (polyolefin) are combined and processed via injection molding (¶ 47, 375), which entails forming a melt of synthetic HDPE and composite.
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) 34 and 37 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tamir (US 2011/0272858 A1).
Tamir teaches articles of manufacture and method of manufacturing the articles comprising a combination of synthetic thermoplastic polymers and composite material (¶ 272, 283, 374-283). The composite material can comprise roughly organic material, 0-40 wt% plastic (i.e. synthetic polymeric material), and 1-50 wt% inorganic matter (¶ 37-40). The organic matter is municipal waste comprising diverse materials from various sources such as wood, foods, ash, or paper, whereby the organic matter comprises cellulose (¶ 248, 252) and thus, the composite material is construed as being of heterogenous organic material (see page 4 of the specification). The thermoplastic component may or may not comprise polyethylene terephthalate (¶ 249-251).
With respect to carbon footprint, the manner by which carbon footprint is assessed depends squarely on the energy requirements / method of processing associated with creating the composites / article and also on the perceived method by which such components would otherwise be deemed to be disposed of (see for instance Pages 9-15 and 40-42 of the specification). The composite materials of Tamir are seen to be no different than what is indicated by the claims even if manufactured by or otherwise disposed of by alternative means.
In Example 3, a composition of roughly 100% organic waste with only traces of plastic (i.e. synthetic polymers) and sand (inorganic material) is prepared (¶ 355-359). Tamir also teaches the composite material can comprise roughly at least 10 wt% organic material, 0-40 wt% plastic (i.e. synthetic polymeric material), and 1-50 wt% inorganic matter (¶ 37-40). Thus, Tamir is descriptive of overlapping ranges. 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 Tamir suggests the claimed ranges. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Tamir. See MPEP 2123.
Regarding Claim 34, while not describing examples where the amount of synthetic polymer within the article is up to 5 wt%, Tamir suggests examples where 28-50 wt% of synthetic polymer material is used (¶ 375-378) or where 0 wt% of synthetic polymer material polymer is used (¶ 379-380). Thus, Tamir effectively describes synthetic polymer amounts that would overlap the instantly claimed range. 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 Tamir suggests the claimed ranges. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Tamir. See MPEP 2123.
Regarding Claim 37, Tamir teaches the organic matter is derivable from various waste sources inclusive of various plant matter and foods, thus inherently comprising DNA (¶ 248, 319). While not specifying a certain content of DNA, Tamir nevertheless indicates municipal wastes that would naturally include DNA material (e.g. food wastes) are suitable for the creation of such composites. See MPEP 2144.05(II). Case law holds that “discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In view of this, it would have been obvious to one of ordinary skill in the art to discover workable/optimal contents of DNA-containing waste materials, such as food, within the scope of the present claims so as to produce composites with desired properties or features while achieving substantial reductions in food waste in view of the teachings of Tamir.
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 10-13 and 33-36 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 5, 18, 23-27, 29, 31, 33, 36-38, and 40 of copending Application No. 18/687,188. Although the claims at issue are not identical, they are not patentably distinct from each other.
Specifically, claim 40 claims an article of manufacturing comprising at least one synthetic polymer and an organic composite material comprising at least 90 wt% heterogenous organic matter, 0-3 wt% synthetic polymers, and no detectable PET with the same carbon footprint. With respect to the article of manufacturing exhibiting a carbon footprint lower than the total carbon footprint of the polymers, the manner by which carbon footprint is assessed depends squarely on the energy requirements / method of processing associated with creating the composites / article and also on the perceived method by which such components would otherwise be deemed to be disposed of (see for instance Pages 9-15 and 40-42 of the specification). The composite materials of the copending claims are seen to be no different than what is indicated by the claims even if manufactured by alternative means.
While claim 40 does not allude to the presence of cellulose or inorganic materials, claims 18 and 33 indicate the composites can comprise up to 10 wt% of inorganic matter and cellulose. Thus, the presently claimed articles would have been obvious in view of the ‘188 claims.
The remaining limitations are found within the claims of the copending application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 10-13, 23, 24, 26-30, 32, 33, 35, and 36 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-15, 17, and 19-22 of copending Application No. 18/254,063. Although the claims at issue are not identical, they are not patentably distinct from each other.
Specifically, claim 21 claims an article of manufacturing comprising at least one synthetic polymer and an organic composite material comprising at least 40 wt% heterogenous organic matter comprising cellulose, 10-60 wt% synthetic polymers, and up to 15 wt% inorganic matter. Less than 5 wt% of PET is contained (Claim 3). With respect to carbon footprint, the manner by which carbon footprint is assessed depends squarely on the energy requirements / method of processing associated with creating the composites / article and also on the perceived method by which such components would otherwise be deemed to be disposed of (see for instance Pages 9-15 and 40-42 of the specification). The composite materials of the copending claims are seen to be no different than what is indicated by the claims even if manufactured by alternative means. Articles can be manufactured via homogenous blending/extrusion (Claim 22), which involves forming a molten mixture. The ‘063 application therefore anticipates the present claims.
The remaining limitations are found within the claims of the copending application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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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