Detailed Office Action
The communication dated 4/26/2024 has been entered and fully considered.
Claims 1-24 are currently pending.
Claim Interpretation
In claim 1 the applicant uses the term “fine screening”. The applicant acts as their own lexicographer. Screening means in addition to screens other fractionation methods according to the specification: “The fine screening step may include screening using one or more pressure screens, one or more hydrocyclones, one or more belt filters, or a combination thereof.”
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 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 6-8 of copending Application No. 18/705,099 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both disclose treatment of UBC to separate a raw fiber fraction from polymers and aluminum followed by coarse/fine screening, bleaching, purification, dewatering, and deactivation.
Instant claim 1 see copending claim 6.
Instant claims 2 and 3 both the ‘099 claims and the instant claims treat the same starting material UBC with aluminum and polymer.
Instant claims 4, 7-11, 15, and 16, the ‘099 application claims coarse, fine screening, and purification and therefore would be expected to be substantially pure fiber.
Instant claims 12-14 it would be obvious to duplicate the fiber screening of the ‘099 application to obtain more pure fiber.
Instant claims 5 and 6 see copending claims 7 and 8
Instant claims 17-20 the use of recycled paper pulp is making paper. Therefore it would be obvious to make paper with the highly refined cellulose of the ‘099 application. The act of papermaking includes elevated temperature during drying which will act as deactivation as evidenced by SMOOK [pg. 228 Figure 16-1]. Biocides are used during papermaking which will also act as deactivation as evidenced by SMOOK [pg. 220 Table 15-1]
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. 2016/0222585 MENKE et al., hereinafter MENKE, in view of U.S. 2019/0301094 RAMIRES et al., hereinafter RAMIRES, and Handbook for Pulp and Paper Technologists by SMOOK, hereinafter SMOOK.
As for claims 1 and 17-20, MENKE discloses taking used beverage cartons (UBC) and treating them to separate out aluminum and polymer plastics with a pulper (10) with coarse screening [0002, 0015, Figure 4]. The rich fiber fraction (52) can be dewatered (48) and sent to papermaking (56) [0092, Figure 4] . The aluminum and plastics are removed via line (52’) [0094, Figure 4]. MENKE sends the pulp (56) to papermaking but fails to disclose fine screening to remove fines from the pulp [Figure 4].
RAMIRES discloses taking any type of recycled pulp [0058-0059] and subjecting it to a fine separating fractionation using screening [0060]. The screening includes pressurized screening baskets and cyclones [0060]. RAMIRES discloses the fine separation occurs at 0.02 to 1% [0053] which means dilution after (48) of MENKE [Figure 4]. Pressurized screens use dilution water and optimization of consistency as evidenced by SMOOK [pg. 110 Figure 9-24 and pg.112 Table 9-3]. Furthermore, cleaners operate at a feed consistency of 1% which requires dilution as evidenced by SMOOK [pg. 117 Figure 9-37].
At the time of the invention it would be obvious to perform the fine screening fractionation on the pulp of MENKE as suggested by RAMIRES. The person of ordinary skill in the art would be motivated to do so to remove fines to increase drainage [0037] and thereby decrease energy during drying in papermaking [0036]. The fines removed can be converted into nanocellulose [0046] giving a second saleable product. The person of ordinary skill in the art would expect success as RAMIRES states that any recycled pulp can be used.
MENKE discloses papermaking (56) but does not disclose how papermaking is done. MENKE does not disclose deactivation. SMOOK discloses papermaking uses dewatering to 40% consistency [pg. 250 col. 2] followed by heated drying [pg. 228 Figure 16-1 and pg. 264]. The heated drying will act as a thermal deactivation step. Furthermore, SMOOK discloses the use of biocides in papermaking which also act as chemical deactivation [pg. 220 Table 15-1]. At the time of the invention it would be obvious to the person of ordinary skill in the art to combine the known and conventional papermaking steps of SMOOK including dewatering and drying to the papermaking of MENKE/RAMIRES. Each step of MENKE/RAMIRES and SMOOK merely perform the same function as prior to there combination. The person of ordinary skill in the art would expect success as dewatering followed by heated drying is a conventional and known papermaking technique since the introduction of the fourdrinier machine.
As for claim 2, MENKE discloses beverage cartons with 75% pulp fibers, 25% polymer, and 5% aluminum which falls within the claimed range [0002].
As for claim 3 and 10, MENKE does not disclose the presence of any optical brightener in the UBC. Furthermore, since MENKE can treat the genus of UBC it would be expected to treat UBC with or without optical brighteners. A UBC without optical brighteners or a very low amount of optical brighteners will produce a final purified pulp with low OBA.
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation."
In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
As for claims 4, 7, 8, and 9 MENKE separates out the fibers (52) from the plastics and aluminum (52’) [Figure 4]. MENKE suggests that the process is efficient and complete which the Examiner interprets as producing fibers of over 90% purity (from the original 75% fibers) [0010]. A complete separation will have less than 0.5% plastic and less than 0.1% aluminum. In the alternative it would be obvious to optimize purity to further decrease the amounts of aluminum and plastic in which MENKE states that complete separation occurs [MPEP 2144.04 (VII)].
As for claim 5, MENKE starts with substantially the same starting material (UBC) and pulps and coarse screens the UBC pulp. The combination with RAMIRES removes fines in substantially the same way thereby lowering SR. It is the Examiner’s position that substantially the same pulp will be produced. Further, RAMIRES discloses that the fine removed pulp can have a SR of 14 to 17(this was with eucalyptus chemical pulp not recycled pulp but gives blaze marks guiding the artisan of ordinary skill) [0064].
As for claim 6, MENKE starts with substantially the same starting material (UBC) and pulps and coarse screens the UBC pulp. The combination with RAMIRES removes fines in substantially the same way thereby lowering water retention value. It is the Examiner’s position that substantially the same pulp will be produced. Further, RAMIRES discloses that the fine removed pulp can have a water retention of 110-130 which falls within the claimed range (this was with eucalyptus chemical pulp not recycled pulp but gives blaze marks guiding the artisan of ordinary skill) [0064].
As for claim 11, MENKE starts with substantially the same starting material (UBC) and pulps and coarse screens the UBC pulp. The combination with RAMIRES removes fines in substantially the same way thereby lowering the ash which will travel with the fines. Furthermore, ash is an impurity and it is prima facie obvious to increase the purity of a known product [MPEP 2144.04 (VII)].
As for claims 12-14, MENKE discloses screening and cleaning in one or more steps [0060]. Both screening and cleaning use dilution water as per SMOOK.
As for claims 15 and16, MENKE discloses removing 10 to 90% of the fines [0053] which overlaps the instant claimed range making a prima facie case of obviousness.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTHONY J CALANDRA whose telephone number is (571)270-5124. The examiner can normally be reached Monday-Friday 7:45 AM -4:15 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abbas Rashid can be reached at (571)270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ANTHONY J. CALANDRA
Primary Examiner
Art Unit 1748
/Anthony Calandra/Primary Examiner, Art Unit 1748
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