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 1-18 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims of copending Application No. 18687499; copending Application No.18688016; copending Application No. 18688146.
Related reference 18/687499 claims a method for screening a solvent for extracting polyvinyl chloride from waste containing polyvinyl chloride. As the present claims, the related reference determines whether a solvent is suitable for extracting PVC by calculating a solvent’s score from the properties of the solvent such as the Hansen solubility parameter.
The present claims differ from the related application ‘499 in the particular PVC solubility score equation used to evaluate ethe solvent. The present equation uses chemical potential, Hansen’s solubility parameters and molecular volume with specific coefficients whereas ‘499 uses a PVC swelling score based on solvent properties including dipole moment, sphericity, Hansen solubility parameter and polar surface area.
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 presently claimed solvent scoring equation in the solvent method of ‘499 because both equations perform the same general function of evaluating solvent suitability for extracting PVC based on properties of the solvent.
Related reference 18/688146 claims a method for screening a solvent for extracting an acrylonitrile butadiene styrene or ABS copolymer from waste containing ABS copolymer. Similar to the present claims, the related claims ‘146 screens a solvent for extracting a polymer from waste by calculating a solubility score based on properties of the solvent.
The present claims differ from the related application ‘146 in the particular PVC rather than ABS and in the particular solubility equation and solvent properties used to calculate the score.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to apply the presently claimed solvent equation in the solvent method of ‘146 since the equation taches the same general screening method for evaluating a solvent for extracting PVC based on properties of the solvent.
Related reference 18/688016 claims a method for screening a solvent for extracting an acrylonitrile butadiene styrene or ABS copolymer from waste containing ABS copolymer. Like the present claims, the related reference ‘016 ‘146 screens a solvent for extracting a polymer from waste by score based on solvent properties including the Hansen solubility parameter and solvent volume.
The present claims differ from the related application ‘016 in the polymer is PVC rather than ABS and in the particular equation and solvent properties used to calculate the score.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to apply the solvent screening method of ‘016 to PVC and use solvent parameters appropriate for PVC because ‘016 already teaches evaluating solvent suitability for extracting a polymer from waste based on the calculated properties of the solvent. presently claimed solvent equation in the solvent method of ‘146 since the equation taches the same general screening method for evaluating a solvent for extracting PVC based on properties of the solvent.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the applications. However, the dependent claims of each of the reference applications teach basically all of the claimed parameters and a substantially similar method.
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.
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.
Claim(s) 1-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over ACHILIAS, D.S. "Chemical recycling of polymers from waste electric and electronic equipment", Journal of Applied Polymer Science, 2009, A1, 212-221 in view of JP2007146045A Machine Translation, see page 3 lines 19-46, and page 5 lines 6-29.
With regard to claim 1, the claim is directed to:
A method for screening a solvent for extracting polyvinyl chloride, the method comprising: screening a solvent for extracting a polyvinyl chloride from a waste comprising including the polyvinyl chloride using the following Equation 1:
[Equation 1]
PVC solubility score
PNG
media_image1.png
26
522
media_image1.png
Greyscale
wherein, in Equation 1, Xk is each a real number from -20 to 20, and k is an integer from 1 to 9,
µ i is a chemical potential of the solvent, and in µ¹, i is a solute and j is the solvent,
ri is the Hansen solubility parameter distance of the solvent, Vsol is the molecular volume of the solvent, and sol is the solvent, and solute is either PVC or DOP, PVC is the polyvinyl chloride, and dop is diethylhexyl phthalate.
ACHILIAS discloses recovering acrylonitrile butadiene styrene or ABS/PABS from waste electrical and electronic equipment using dissolution and reprecipitation methods and teaches selecting solvents and nonsolvents based on polymer solvent compatibility. Achilias further discloses evaluating solvent and dissolution s to identify suitable solvents for recovering ABS polymers from waste. See pages 213 and 215-217 particularly page 216, Figure 2 and Tables II-III.
ACHILIAS does not disclose the claimed mathematical equation.
JP2007146045A discloses selecting good solvents and poor solvents using mathematical relationships based on Hanes solubility parameters, including dispersion, polar and hydrogen bonding components and numerical relationships for determining polymer solvent compatibility. See page 3 lines 19-46, and page 5 lines 6-29.
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 solvent selection process of ACHILIAS by applying the mathematical solvent screening method of JP2007146045A since both references are directed to selecting suitable solvents for polymer dissolution and recovery based on polymer solvent compatibility. The particular use molecular weight and atomic number information in the claimed ABS solubility score equation would have been a routine selection and optimization of solvent parameters for screening solvents suitable for extracting ABS from waste.
With regard to claims 2 and 6, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to select a PVC solubility score of 11 or more for a good solvent and less than 11 for a nonsolvent since selecting a cutoff value for determining a good solvent from a nonsolvent would have been a matter of routine optimization. See JP2007146045A page 5 lines 17-23 and 25-30 and page 6 lines 1-6.
With regard to claims 3 and 11, JP2007146045A discloses good solvents for PVC having boiling points of 85oC or more including N-methyl-2—pyrrolidone and thus would have been obvious to the skilled artisan. See page 6 lines 8-13.
With regard to claim 4, the particular values are not disclosed by the references. However one the mathematical solvent screening method is used, the selectin of the coefficients would have been a matter of routine optimization. See JP2007146045A page 5 lines 25-30, page 6 lines 1-6.
With regard to claims 5 and 9, ACHILIAS discloses recovering polymers from waste using solvent dissolution and reprecipitation and JP2007146045A discloses recovering PVC from waste by dissolving the PVC in a good solvent and precipitating the PVC. Therefore, 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 screened solvent to extract and recover PVC from PVC waste. See JP2007146045A page 1 lines 31-36 and page 3 lines 19-29 and Achilias pages 213, 216-217.
With regard to claims 7 and 8, JP2007146045A discloses separating solid material from the PVC solution by solid liquid separation and rinsing the PVC precipitated during the precipitation process and the additional steps would have been obvious to the skilled artisan. See page 4 lines 10-13 and page 6 lines 43-48.
With regard to claims 10 and 12, JP2007146045A discloses recovered PVC and the use of good and poor solvents in the PVC recovery process, while Achilias teaches solvent nonsolvent systems including dichloromethane, acetone, chloroform, toluene, and methanol. The solvents all fall within the claimed solvent classes and would have been obvious to the skilled artisan.
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.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Terressa Boykin/Primary Examiner, Art Unit 1765
Prosecution Insights