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 1-15 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims of U.S. Patent No.12692359.
Although the claims are not identical, they are not patentably distinct because both claims are directed to recovering an amine and or a polyol from polyurethane by chemolysis with water and a catalyst.
The temperature, reagent and polyurethane ratio and the amount of water recited in in the patent overlap the ranges in claim 1. A polyurethane foam is a polyurethane product, and an amino alcohol is an alcohol containing chemolysis reagent. And lastly the claimed pressure range includes atmospheric pressure.
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 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) 1-5 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over USP5714523 abstract, col. 1 lines 49-64, col. 2 lines 3-13, col. 6 lines 1-10, 34-37 and claims 1-9 in view of EP 0835901A2 See page 2 lines 36-45, page 3 lines 7-14, claims 1-10 and Figure 1.
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Claim 1 is directed to a method of recovering raw materials from a polyurethane product, comprising (A) providing the polyurethane product, in which the polyurethane product is based on an isocyanate component and a polyol component; (B) chemolyzing the polyurethane product in the liquid phase with (i) an aminic chemolysis reagent selected from (a) a primary or secondary organic amine, (b) an amino alcohol having a primary or secondary amino group or (c) a mixture of (a) and (b), and (ii) water in the presence of (iii) a catalyst, at a temperature of 100°C to 195°C and at a pressure of 900 mbar(abs.) to 2000 mbar(abs.), where the mass ratio of (1) aminic chemolysis reagent and water to (2) the polyurethane product is in the range from 0.5 to 2.5, and where the mass of water is 3.0% to 22% of the mass of the aminic chemolysis reagent, to obtain a chemolysis product; and (C) working up the chemolysis product to obtain an amine and/or a polyol.
USP5714523 discloses a process for alcoholizing polyurethane foam by bringing the foam into contact with an alcoholizing polyol, allowing the foam and polyol to react in the presence of a catalyst, allowing the reaction mixture to separate into an upper and lower phase, and hydrolyzing at least one phase by the addition of water. USP5714523 further discloses that the reaction is conducted within temperature ranges overlapping those recited in claim 1. The reference also disclose a pressure from ambient pressure to 10bar. Ambient pressure falls within the claimed pressure range. The refernece discloses alkali metal hydroxides including sodium hydroxide and potassium hydroxide as suitable catalysts for promoting the alcoholysis and hydrolysis reactions. See abstract, col. 1 lines 49-64, col. 2 lines 3-13, col. 6 lines 1-10, 34-37 and claims 1-9. The reference further discloses using 0/1 to 10 parts by weight of alcoholizing polyol per part by weight of polyurethane foam., up to 5% by weight of an alkanolamine and 0.5% to 15% by weight of water each of which falls within the claimed ranges. The reference also discloses separating an upper phase containing the recovered polyol and a lower phase containing the other reaction products. The hydrolyzed product contains amins and corresponds to the polyisocyanates used to prepare the polyurethan foam and may be purified by evaporation or distillation. See abstract, col. 1 liens 49-64, col. 2 lines 3-19, cols. 5-8.
USP5714523 does not disclose that the alkanolamine has a primary or secondary amino group.
EP0835901A2 discloses that it is known in the art to depolymerize polyurethane using a mixture of an aliphatic diol and a dialkanolamine , i.e. a secondary amino group, at a temperature of about 175 C to about 250 C.. See page 2 lines 36-45, page 3 lines 7-14, and Figure 1.
USP5714523 and EP0835901A2 are directed to the same field of polyurethane chemical recycling via glycolysis or alcoholysis and aminolysis reactions conducted under comparable operating conditions. USP5714523 supplies the claimed process structure, including the alcoholysis reaction, catalyst presence, phase separation, and hydrolysis step. The reference also discloses the claimed process conditions and recovery of polyol and amine products. EP0835901A2 teaches that a dialkanolamine is suitable for depolymerizing polyurethane. .
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 dialkanolamine taught by EP0835901A2 as the alkanolamine in the process of USP5714523 since USP5714523 already teaches that alkanolamines may be used and EP0835901A2 discloses that a dialkanolamine is usable for depolymerizing a polyurethane. One having ordinary skill in the art would have expected the dialkanolamine to work for the same purpose with a reasonable expectation of success.
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 amounts of alkanolamine and water from within the ranges disclosed by USP5714523 since the reference discloses these amounts as process conditions for the recycling process.
Claim 2 is directed to the method as claimed in claim 1, in which the polyurethane product, in step (B),(I) is admixed first with (1) the aminic chemolysis reagent, but not yet with the water, or (2) the aminic chemolysis reagent and a first portion of the water, and then (II) the water (1) or a second portion of the water (2) is added to the mixture resulting from (I).
USP5714523 discloses adding water after the polyurethane foam and alcoholizing material have been mixed. The reference also discloses that the water may be added gradually.
Claim 3 is directed to the method as claimed in claim 2, in which, in step (II), the water (1) or the second portion of the water (2) is added continuously or in portions such that the temperature of the liquid phase during step (II) differs by a maximum of 20°C from the temperature of the liquid phase in step (I).
USP5714523 discloses gradual addition of water while controlling the temperature of the reaction mixture. The reference also shows in an example the temperature during the water treatment step differing from the following reaction temperature by 10C.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use this temperature control within the overlapping temperature range discussed above.
Claim 4 is directed to the method as claimed in claim 1, in which the aminic chemolysis reagent (a) comprises an aliphatic primary or secondary organic amine, (b) an aliphatic amino alcohol having a primary or secondary amino group or (c) a mixture thereo
EP0835901A2 discloses that it is known in the art to use of a dialkanolamine in the polyurethane reaction which is an aliphatic amino alcohol having a secondary amino group. Generally, it is prima facie obvious to select a known material for incorporation into a composition, based on its recognized suitability for its intended purpose. See Sinclair & Carroll Co. v. Interchemical Corp., 325 US 327, 65 USPQ 297 (1945). (Selection of solvent having boiling point and vapor pressure properties recognized as being ideal for printing inks into printing ink compositions found obvious on its face). See also In re Leshin, 227 F.2d 197, 125 USPQ 416 (CCPA 1960). (Selection of a known plastic to make a plastic container found obvious on its face).
Claim 5 is directed to the method as claimed in claim 1, in which the catalyst is selected from a hydroxide, a carboxylate, a tin compound, a zinc compound, a carbonate, an orthophosphate, a monohydrogen orthophosphate, a metaphosphate, or a mixture of any two or more thereo
USP5714523 discloses metal hydroxides including sodium hydroxide and potassium hydroxide, as catalysts.
Claim 15 is directed to the method as claimed in claim 1, in which the polyurethane product is a polyurethane foam.
USP5714523 discloses recovering materials from a polyurethane foam.
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 M-F 7-5:30.
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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
