DETAILED ACTION
This is the initial Office action for application SN 18/725,831 having an effective date of 01 July 2024 and a Foreign priority date of 30 December 2021 (Italy). A preliminary amendment was filed on 01 July 2024. Claims 1-22 are pending. 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 abstract of the disclosure is objected to because it is too long. The abstract must be as concise as the disclosure permits (preferably 50 to 150 words if it is in English or when translated into English). National practice (see MPEP § 608.01(b)) also provides a maximum of 150 words for the abstract. See 37 CFR 1.72(b). 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 Objections
Claims 1-22 are objected to because of the following informalities:
Applicant submitted a preliminary amendment on 01 July 2024 wherein the type used in the amendments to the claims is very faint and difficult to read. It is requested that applicant re-submit the claims containing all the same type.
All the claims (1-20) contain terms in quotations such as “Ax”, “Px”, “Cx”, etc., which is improper. Claims 6-7 recite “Overall Index” in quotations which is improper.
Appropriate correction is required.
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 1-22 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.
Independent claims 1, 8 and 19 recite “substantially plastic material” which is a term of degree which renders the claims indefinite. The term “substantially plastic” 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. Therefore, it is unclear in the claims what is required of the plastic material to be considered “substantially plastic”.
Claim 1 recites the limitation “A process for the pyrolysis…” (emphasis added) in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation “the liquid phase” (emphasis added) in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation “the molten state” (emphasis added) in line 6. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation “the value” (emphasis added) in line 10. There is insufficient antecedent basis for this limitation in the claim.
It is suggested that applicant carefully review ALL of the claims. The term “the” implies antecedent basis, and the term must be recited in the claim previously to provide antecedent basis.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 2 recites the broad recitation “the pyrolysis process is not more than 1 hour”, and the claim also recites “or no more than 10 minutes, or between 1 and 60 seconds” which is the narrower statement of the range/limitation.
Claim 7 recites the broad recitation “at least a threshold pressure PS when the overall index (O.I.) is greater than or equal to 0.7”, and the claim also recites “and where preferably said threshold pressure PS is at least 1.5 bar, even more preferably between 2 and 2.9 bara, in particular 2.5 bara” which is the narrower statement of the range/limitation.
Claim 8 recites the broad recitation “the molten state for at least 60% by weight”, and the claim also recites “or between 70% and 99% by weight, or between 80% and 94% by weight of the material” which is the narrower statement of the range/limitation.
Claim 9 recites the broad recitation “has a temperature between 140 and 300°C”, and the claim also recites “or between 160 and 260°C” which is the narrower statement of the range/limitation.
Claim 10 recites the broad recitation “has a pressure of not less than 2 bar”, and the claim also recites “or between 3 and 300 bara” which is the narrower statement of the range/limitation.
Claim 12 recites the broad recitation “wherein the reflection spectrum of said substantially plastic material acquired in step ii) is in the range between 4000 and 12000 cm-1”, and the claim also recites “or is in the range of 5000 to 9000 cm-1”, which is the narrower statement of the range/limitation.
Claim 16 recites the broad recitation “is calculated on the first from 5 to 15 principal components”, and the claim also recites “or on the first from 8 to 11 principal components”, which is the narrower statement of the range/limitation.
Claim 19 recites the broad recitation “wherein said cavity is able to withstand a pressure of at least 50 bara”, and the claim also recites “or between 80 and 300 bara” which is the narrower statement of the range/limitation.
Claim 20 recites the broad recitation “the reflection spectrum is measured not more than 100 mm”, and the claim also recites “or not more than 30 mm, or not more than 3 mm” which is the narrower statement of the range/limitation.
Claim 21 recites the broad recitation “the minimum distance between the emission zone of the probe and the detection zone of said emission is not more than 50 mm”, and the claim also recites “or not more than 15 mm, or not more than 3 mm” which is the narrower statement of the range/limitation.
The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claims 1 (lines 17 and 22), and 8 (line 23), recite the language “and by the fact that…” and “characterized by the fact that...” which are improper/indefinite claim language.
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 1-22 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3-20 of copending Application No. 18/725,830. Although the claims at issue are not identical, they are not patentably distinct from each other because the co-pending application claims a process for the pyrolysis of plastic material to obtain at least hydrocarbons that are liquid at 25C, and apparatus therefore, which includes the step of carrying out an assessment of at least one property Px of a liquid condensed from said effluent, by means of at least one measurement Ax followed by adjusting at least one process parameter Ox, which is indistinguishable over the process for pyrolysis of substantially plastic material and apparatus claimed in this application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-22 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of copending Application No. 18/725,824. Although the claims at issue are not identical, they are not patentably distinct from each other because the co-pending application claims a process for the pyrolysis of a substantially plastics material to obtain at least liquid hydrocarbons that are in the liquid state at 25°C, and apparatus therefore, wherein the pyrolysis process is carried out at a pressure of at least the threshold pressure PS when the overall index O.I. is greater than or equal to 0.7 (dependent claim 16) and other parameters set forth in dependent claim 16, which is indistinguishable over the process for pyrolysis of substantially plastic material and apparatus claimed in this application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELLEN M MCAVOY whose telephone number is (571)272-1451. The examiner can normally be reached Monday-Friday 9:30am - 7:00 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, PREM SINGH can be reached at (571) 272-6381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ELLEN M MCAVOY/ Primary Examiner, Art Unit 1771
EMcAvoy
September 26, 2026
