DETAILED ACTION
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 .
Response to Amendment
Applicants’ response filed 7/24/2026 amended claims 1, 3, 6, 11 and 20 and cancelled claim 19. Applicants’ amendment is persuasive in overcoming the claim objection from the office 3/26/2026; therefore, the objection is withdrawn. Also, applicants’ amendments in light of their arguments are persuasive in overcoming the 35 USC 102 rejection over Wong from the office action mailed 3/26/2026; therefore, this rejection is withdrawn. Neither applicants’ amendments nor arguments addressed below overcome the 35 USC 112, 102/103 rejections over Garforth and the 35 USC 103 rejection over Wong from the office action mailed 3/26/2026; therefore, these rejections are maintained below. Also, applicants have not addressed the IDS issues, nor the double patenting issue from the office action mailed 3/26/2026; therefore, these issues remain below.
Information Disclosure Statement
The information disclosure statements filed 7/8/2024 and 2/5/2025 fail to comply with 37 CFR 1.98(a)(3) because it does not include a concise explanation of the relevance, as it is presently understood by the individual designated in 37 CFR 1.56(c) most knowledgeable about the content of the information, of each patent listed that is not in the English language. It has been placed in the application file, but the information referred to therein have not been considered.
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.
Claim 11 is 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 11 includes a broad limitation and a narrow limitation within the same claim. The claim would be better understood as separate dependent claims.
Claim Rejections - 35 USC § 102/103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
Claims 1-8, 10-11, 16, 18 and 20-22 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Garforth et al., US Patent Application Publication No. 2012/0165583 (hereinafter referred to as Garforth).
Regarding claims 1-8, 10-11, 16, 18 and 20-22, Garforth discloses a method to recycling waste plastics material by heating a plastic with a modified zeolite catalyst in between 150-500 °C using a solvent and using an inert gas, or using hydrogen (as recited in claim 1 and reads on claims 20-22) (see Abstract and see Claim 1 of Garforth and see Figure on page 7 and Para. [0028]-[0036]). The solvent can be a C5-C12 alkane (see Claim 2 of Garforth), including n-decane (as recited in claim 1 and reads on claims 10-11, 16 and 18) (Para. [0073]). The plastic can be high and low density PE and/or PP (as recited in claims 2-5) (see Claim 5 of Garforth and Para. [0062]-[0063]).
The zeolite catalyst can be loaded with a catalytic metal catalyst selected from Fe, Ru, Os, Rh, Ir, Ni, Pd and Pt to facilitate hydrocracking under an atmosphere of hydrogen (Para. [0067]-[0069]). When functionalising the zeolite catalyst with metal catalyst, the ion exchange intended is not complete and some ammonium is left to provide the Bronsted acid site after calcination (as recited in claim 1 and reads on claims 6-8) (Para. [0129]).
Claim Rejections - 35 USC § 103
Claims 1-6, 10-11, 15-17, 20 and 24-25 are rejected under 35 U.S.C. 103 as being unpatentable over Wong et al., NPL document entitled Conversion of low density polyethylene (LDPE) over ZSM-5 zeolite to liquid fuel (hereinafter referred to as Wong).
Regarding claims 1-6, 10-11, 15-17, 20 and 24-25, Wong discloses a method to catalytically crack LDPE to liquid fuel over ZSM-% (see Title) using benzene as a solvent (see Abstract). Prior to the reaction, the reactor was purged with nitrogen for 5 min to ensure an inert atmosphere for the cracking reaction (section 2.2). The catalyst was heated to 500°C prior to use (section 2.1), which ensures the catalyst is in its H-form (section 2.1). The cracking was done at a temperature ranging from 400 to 600°C, the amount of catalyst used varied between 0.1 and 0.2 g and the LDPE concentration used varied between 0.005 and 0.02 ml (see Table 1). The LDPE solution was passed through a fixed-bed reactor of 27 cm length, where the catalyst was held in place by stainless steel mesh at 15 cm from the top (section 2.2, see Figure 1). Where the flowing solution and the catalyst are in contact with each other, the weight ratio of both will be larger than unity (small volume of catalyst with even smaller volume available for the solution). It is common general knowledge that ZSM-5 as a pore volume of about 0.17 ml/g, with amounts to 0.17*0.8765 = 0.146 g benzene/g of ZSM-5. Thus, implicitly discloses a ratio or 1/0.146 = 6.8 (which is also close enough to the ratio recited in claim 25; and concentration is a result effective variable and as such can be optimized without undue experimentation).
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 claims at issue 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-8, 10-11, 15-18, 20-22 and 24-25 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-10, 12-13, 16-20 and 22-24 of co-pending application No. 18/727,730. Although the conflicting claims are not identical, they are not patentably distinct from each other.
The co-pending ‘730 application discloses the same limitations as does the instant application and would therefore be obvious in light of the disclosures discussed above and incorporated herein by reference.
A timely filed terminal disclaimer in compliance with 37 CFR 1.321I or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Response to Arguments
Applicants’ arguments filed 7/24/2026 regarding claims 1-8, 10-11, 15-18, 20-22 and 24-25 have been fully considered and are not persuasive.
Applicants argue that Garforth does not anticipate nor render obvious the claims as instantly recited because Garforth does not disclose contacting a polyolefin with an aluminosilicate in the presence of a hydrocarbon. This argument is not persuasive. Garforth explicitly discloses in paragraph 0073, In an embodiment, a solvent is employed in the method of the invention. This is introduced in step (ii) into the reactor. The purpose of the solvent is to improve the interaction of the catalyst with the waste plastics supply. The solvent may be a single solvent or may be a mixture of suitable solvents and a preferred solvent is n-decane.
Applicants argue that Wong does not render the instant claims obvious because the reaction temperature of Wong is above 390°C as required by the instant claims. This argument is not persuasive. Applicants have not shown the criticality for the temperature at 390°C versus 400°C and temperature is a result effective variable and as such can be optimized without undue experimentation. Furthermore, it is settled by the Court that a prima facie case of obviousness exists when the claimed range and the prior art range do not overlap, but are close enough (for example only 0.001 ppm difference!), such that one skilled in the art would have expected them to have the same properties, Titanium Metals Corp. v. Banner, 778 F.2d 775,783,227 USPQ 773,779 (Fed. Cir. 1985).
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VISHAL V VASISTH whose telephone number is (571)270-3716. The examiner can normally be reached M-F 9:00-4:30 and 7:00-10:00p.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Prem Singh can be reached at 5712726381. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/VISHAL V VASISTH/Primary Examiner, Art Unit 1771
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