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
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because it exceeds 150 words. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Rejections - 35 USC § 112
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 1-15 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.
The terminology “the liquid phase” in claim 1 lacks antecedent basis. Therefore, the intended scope of the claim is unclear.
As claims 2-15 depend from claim 1, they are rejected for the same issue discussed above.
The terminology “the chemolysis reactor” in claim 7 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, 4, 6-9, and 11-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yang (CN 103275349A) in view of Simon (Waste Management 2018, 76, 147-171; cited 5/15/2024). As the cited CN publication is in a non-English language, a machine-translated version of the publication will be cited to.
Regarding Claims 1, 9, and 11-13, Yang teaches methods of recovering polyols from polyurethane products (¶ 17). Yang describes examples where rigid polyurethane foam product based on isocyanate and polyol components is provided, the foam is reacted with excess ethylene glycol and water at 210 degrees C, ethylene acetate (bp ~ 77 degrees C) organic solvent is added to provide polyol phase with organic solvent and aqueous phase, and the polyol phase is worked up via distillation to dryness to obtain recovered polyol (¶ 58). There is no perceived substantial difference in protocol between what is instantly claimed and what is set forth by Yang. Thus, the polyol phase of Yang is seen to intrinsically possess some quantity of amine in addition to ethyl acetate and polyol and the aqueous phase of Yang is seen to possess water, ethylene glycol, and amine. The distillation purification of polyol is seen to intrinsically separate off organic solvent and amine since distillation is continued to dryness to afford polyol. Yang alludes to no heating/cooling when extracting and thus, room temperature is implied. Yang differs from the subject matter claimed in that 1) catalyst is not indicated and 2) the identity of isocyanate/amine for the rigid polyurethane foam is not identified.
In this regard, the use of catalysts in polyurethane hydrolysis/hydroglycolysis is well known in the art. See for instance Page 154 of Simon where base catalysts such as sodium hydroxide are indicated. It would have been obvious to one of ordinary skill in the art to further incorporate catalysts within the reaction mixtures of Yang, thereby predictably increasing reaction rates associated with polyurethane degradation. Simon teaches the isocyanate mainly used for rigid polyurethane foams is widely known to be polymeric MDI (Section 3.1.2). See also the use of polymeric MDI within ¶ 102 with respect to the creation of new rigid polyurethane foams. Thus, it would have been obvious to one of ordinary skill in the art to treat rigid polyurethane foams formed from MDI (corresponding diamine 4,4’-methylenedianiline; bp ~ 398 degrees C), thereby facilitating the recycling of common rigid polyurethane foam substrates.
Regarding Claim 4, since ethylene glycol has a higher boiling point than ethyl acetate, ethyl acetate would logically be distilled off first prior to any residual ethylene glycol present.
Regarding Claim 6, Yang teaches mixing ethylene glycol with water and then polyurethane is added (¶ 58). Thus, Yang differs from the subject matter claimed solely by the order of mixing, whereby the claims require that polyurethane first be added to ethylene glycol and then water is added to the resulting mixture. It has been held that any order of mixing ingredients is prima facie obvious. MPEP 2144.04(IV)(C). Thus, it would have been obvious that any order of mixing polyurethane, water, and alcohol can be performed within the protocols of Yang, inclusive of polyurethane first being added to ethylene glycol and then water is added to the resulting mixture, with an expectation of chemolysis/recovering recycled alcohol would result in the absence of evidence showing the claimed order of addition to be critical.
Regarding Claim 7, Yang teaches components are mixed, the reactor sealed, and is then heated at 210 degrees C (¶ 58). Yang therefore implies mixing prior to sealing/heating occurs at room temperature. Yang is seen to suggest water is added in one portion.
Regarding Claim 8, as option α is met, any further limitations concerning option β is seen to be met by the prior art since claim 8 does not explicitly require the protocol of option β.
Regarding Claim 14, while Yang does not specify the type of polyol, Simon teaches the use of polyether and polyester polyols are routinely used in the creation of rigid polyurethane foams (Section 3.1.2). Thus, it would have been obvious to one of ordinary skill in the art to utilize rigid polyurethane foams of polyether and polyester polyols thereby facilitating the recovery of such polyols for re-use.
Claim(s) 3 and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yang (CN 103275349A) in view of Simon (Waste Management 2018, 76, 147-171; cited 5/15/2024) and Steffens (WO 2020/260387 A1). As the cited CN publication is in a non-English language, a machine-translated version of the publication will be cited to. As the cited WO document is in a non-English language, the English equivalent, US 2022/0251328 A1 has been utilized in place of the WO document. All citations are made with respect to the above-mentioned US document.
The discussion regarding Yang and Simon within ¶ 13-19 is incorporated herein by reference.
Regarding Claims 3 and 5, to the extent Yang differs from the subject matter claimed with respect to recycling extraction solvent or recovered glycol for re-use, Steffens also pertains to the recovery of polyols from polyurethanes involving extraction workup (Abstract). Steffens teaches it was known in the art solvent and/or glycol recovered from extractions can be separated off and re-used for further extractions/reactions (Figure 1; ¶ 134, 137). It would have been obvious to one of ordinary skill in the art to recover and re-use the extraction solvents and/or glycols of Yang because doing so would avoid costs associated with solvent/glycol purchase/waste/disposal.
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, 4, 6, and 8-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12,692,359 in view of Yang (CN 103275349A). As the cited CN publication is in a non-English language, a machine-translated version of the publication will be cited to.
Specifically, claim 1 of ‘359 pertains to a process of recovering raw materials from polyurethane foams based on isocyanate and polyol components, comprising conducting chemolysis with water and alcohol in the presence of catalyst to obtain a mixture of amine, polyol, water, and alcohol; which is then worked up at step (C) and polyols are recovered at step (D). Claim 1 requires a mass ratio of alcohol and water to PUR foam in the range of 0.5-2.5 and a mass of water is 4-10 wt% of alcohol, which is the same ranges instantly claimed (see instant claim 10). Therefore, ‘359 is seen to suggest the use of excess alcohol and water.
Various amines of diisocyanates are disclosed such as toluenediaimne / toluenediisocyanate (Claims 2-5), which exhibits the boiling point characteristic of claim 1. Working up step (C) can comprise mixing the product mixture with organic solvent, upon which separation of phases occurs with a polyol phase and amine phase (Claim 13) after which the polyol is recovered from polyol phase via distillation (Claim 14). While the ‘359 claims do not identify the exact components of the polyol phase (e.g. polyol phase also has organic solvent and some amine) and does not indicate amine/solvent is removed via distillation when recovering the polyol, the ‘359 patent suggests substantially same protocols and materials as set forth within the instant specification/claims. Thus, such characteristics are seen to necessarily be present in the absence of evidence to the contrary.
‘359 differs from the subject matter claimed in that the claims do not specify particular organic solvents or extraction temperatures. Yang also pertains to recovering polyols from polyurethanes via hydroalcoholysis followed by extraction (¶ 5; Examples). Yang teaches extraction with solvents such as ethyl acetate (bp ~ 77 degrees C) facilitates the removal of polyol, which can be isolated via distillation/evaporation (¶ 16, 30). It would have been obvious to one of ordinary skill in the art to utilize the organic solvents of Yang within the protocols of ‘359, thereby predictably affording polyol phases for purification as taught by Yang. Yang does not indicate any heating/cooling during extractions (Examples), implying extractions at room temperature. The remaining limitations claimed are found within the ‘359 claims.
Regarding Claim 4, claim 8 of ‘359 suggests alcohols such as ethylene glycol, which exceeds the boiling point of ethyl acetate. Thus, the combination would suggest instances where organic solvent would be distilled off first followed by alcohol over the course of isolating polyol.
Claims 3 and 5 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12,692,359 in view of Yang (CN 103275349A) and Steffens (WO 2020/260387 A1). As the cited CN publication is in a non-English language, a machine-translated version of the publication will be cited to. As the cited WO document is in a non-English language, the English equivalent, US 2022/0251328 A1 has been utilized in place of the WO document. All citations are made with respect to the above-mentioned US document.
The discussion regarding the ‘359 patent and Yang within ¶ 25-28 is incorporated herein by reference.
Regarding Claims 3 and 5, to the extent the ‘359 claims differs from the subject matter claimed with respect to recycling extraction solvent or recovered glycol for re-use, Steffens also pertains to the recovery of polyols from polyurethanes involving extraction workup (Abstract). Steffens teaches it was known in the art solvent and/or glycol recovered from extractions can be separated off and re-used for further extractions/reactions (Figure 1; ¶ 134, 137). It would have been obvious to one of ordinary skill in the art to recover and re-use the extraction solvents and/or glycols of ‘359 because doing so would avoid costs associated with solvent/glycol purchase/waste/disposal.
Related Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Pizzini (U.S. Pat. No. 3,441,616) describes hydrolyzing polyurethanes followed by polyol extraction with organic solvent. Hydroglycolysis is not described.
Gerlock (U.S. Pat. No. 4,336,406) describes hydroglycolyzing polyurethanes followed by polyol extraction with organic solvent. However, Gerlock removes water prior to extraction. Gerlock notes “any water present in solution must be removed. If this is not done, spattering will take place when the solution and the alkane are combined” (Col. 5, Lines 31-34).
Verbergen (US 2021/0214518 A1) describes alcoholysis of polyurethanes followed by extraction purification. The use of excess water during alcoholysis is not seen to be described.
Allowable Subject Matter
Claims 2 and 15 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, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claims 10 would be allowable if 1) rewritten to overcome the rejection(s) under 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 and 2) a terminal disclaimer is filed to overcome the double patenting rejection.
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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