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 of the following informalities: A brief description of drawings section is not present. See MPEP 608.01(a) and 608.01(f).
Appropriate correction is required.
Claim Objections
Claim 1 is objected to because of the following informalities: “a polyurethane dispersion” should be “the polyurethane dispersion” at step c since the polyurethane dispersion is introduced/prepared at step b. Appropriate correction is required.
Claim 3 is objected to because of the following informalities: “a polyurethane powder” should be “the polyurethane powder”. 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 2-5 is 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 2 has been amended to recite “device selected from the group consisting of colloid mills, single- or multi-stage rotor-stator systems with different geometries or fast running dissolver disk, and a sawtooth impeller in a stirred vessel”. Written support is only found for “fast running dissolver disk” to be associated with the stirred vessel as opposed to a rotor-stator system. See Page 9, Lines 30-31. Therefore, claim 3 fails to comply with the written description requirement. Recitation of “device selected from the group consisting of colloid mills, single- or multi-stage rotor-stator systems with different geometries and a fast running dissolver diskor a sawtooth impeller in a stirred vessel”.
As claims 3 and 4 depend from claim 2, they are rejected for the same issue discussed above.
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 2-5 and 17 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 2 recites “device selected from the group consisting of colloid mills, single- or multi-stage rotor-stator systems with different geometries or fast running dissolver disk, and a sawtooth impeller in a stirred vessel”. The term “fast running” in is a relative term which renders the claim indefinite. The term “fast running” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
As claims 3 and 4 depend from claim 2, they are rejected for the same issue discussed above.
Claim 5 recites “and/or the polyurethane powder is mixed with the dispersing medium…”. The only prior mention of “dispersing medium” is with respect to the previous “and/or” option within claim 5. Thus, the terminology “the dispersing medium” lacks antecedent basis with respect to claim 1 as the first “and/or” option of claim 5 is not required to be operating. Therefore, the intended scope of the claim is unclear.
Further with respect to claim 5, the terminology “the polyurethane powder” used in claim 5 lacks antecedent basis. Therefore, the intended scope of the claim is unclear.
Claim 17 recites “the quaternary ammonium salt”, which lacks antecedent basis. Therefore, the intended scope of the claim is unclear.
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) 1 and 5-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yang (U.S. Pat. No. 5,208,379).
Regarding Claims 1, 5-7, 19, and 20, Yang teaches methods of hydrolyzing scrap polyurethanes (Abstract) whereby scrap polyurethane pieces are provided, the polyurethane is mixed with water mixture in a container, the container is sealed, and then the container is proceeded to be heated at 150 degrees C for 8 hours to induce hydrolysis/solvolysis (Example 1), construed as elevated pressure. The mixture is agitated/stirred so as to ensure intimate contact (Col. 7 Lines 15-18). Thus, Yang is seen stir polyurethane pieces in an aqueous mixture at ambient conditions, thus creating a dispersion, after which solvolysis is induced via heating.
While the particle sizes and weight ratios disclosed fall outside the ranges claimed, Yang teaches the weight ratio of polyurethane to water is generally 3:1 to 1:15 (Col. 6, Line 68 to Col. 7, Line 1), equivalent to roughly 6.3-75 wt%. The polyurethane pieces are of small particles of less than about 1” in diameters (Col. 3, Lines 1-2). Therefore, Yang describes 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 Yang suggests the claimed ranges. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Yang. See MPEP 2123.
Regarding Claims 8-16, example of Yang uses sodium hydroxide (strong inorganic base with pkb < 1) and tetrabutylammium hydrogen sulfate (quaternary ammonium salt containing 16 carbon atoms), consistent with combination (III). The dependent claims further limiting combinations (I) and (II) are met since the claims do not explciitly require that combinations (I) and/or (II) be present.
Regarding Claim 17, example 1 of Yang uses 0.5 g of ammonium catalyst per 50 g of polyurethane, equivalent to 1 wt%.
Regarding Claim 18, in example 1 diamine solvolysis products are separated/recovered.
Claim(s) 1, 5, and 7-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yang (U.S. Pat. No. 5,208,379) in view of Miwa (JP2001-064437A). As the cited JP publication is in a non-English language, a machine-translated version of the publication will be cited to.
Regarding Claims 1, 5, 7, 19, and 20, Yang teaches methods of hydrolyzing scrap polyurethanes (Abstract) whereby scrap polyurethane pieces are provided, the polyurethane is mixed with water mixture in a container, the container is sealed, and then the container is proceeded to be heated at 150 degrees C for 8 hours to induce hydrolysis/solvolysis (Example 1), construed as elevated pressure.
To the extent Yang differs from the subject matter claimed with respect to creating a polyurethane dispersion provided to the solvolysis reactor, Miwa teaches it was known polyurethane foams can be pretreated prior to entry in a solvolysis reactor via subjecting ground polyurethane waste to degassing/compounding means “4” and then separating device “5” (Abstract). Specifically, foam is crushed/mixed with water to eliminate closed cells / increase wettability and create a slurry; after which the slurry is classified such that upper and lower fractions are removed and an intermediate layer composed of polyurethane dispersion is discharged to solvolysis reactor (¶ 8, 19, 24-28). It would have been obvious to one of ordinary skill in the art to utilize the pre-treatment protocol of Miwa to generate polyurethane dispersions fed into the reactor of Yang because doing so would facilitate the removal of impurities in the resulting dispersions as taught by Miwa.
Miwa teaches foams should be tageted to have a particle size of about of 150 microns (i.e. 0.15 mm) to faciliate mixing in the degassing/mixing step (¶ 23). Yang teaches the weight ratio of polyurethane to water is generally 3:1 to 1:15 (Col. 6, Line 68 to Col. 7, Line 1), equivalent to roughly 6.3-75 wt%. The disclosed range overlaps the range claimed. 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 Yang suggests the claimed range. A person of ordinary skill would be motivated to use the claimed amount, based on the teachings of Yang. See MPEP 2123.
Regarding Claims 8-16, example of Yang uses sodium hydroxide (strong inorganic base with pkb < 1) and tetrabutylammium hydrogen sulfate (quaternary ammonium salt containing 16 carbon atoms), consistent with combination (III). The dependent claims further limiting combinations (I) and (II) are met since the claims do not explciitly require that combinations (I) and/or (II) be present.
Regarding Claim 17, example 1 of Yang uses 0.5 g of ammonium catalyst per 50 g of polyurethane, equivalent to 1 wt%.
Regarding Claim 18, in example 1 diamine solvolysis products are separated/recovered.
Allowable Subject Matter
Claims 2-4 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, and 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
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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