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 6/29/2026 did not include any claim amendments. Applicants cancelled claim 24 and added new claim 25. Applicants’ cancellation of claim 24 overcomes the 35 USC 112 rejection over claim 24. Applicants’ arguments are persuasive in overcoming the 35 USC 102 rejection over Wang from the office action mailed 3/27/2026; therefore, this rejection is withdrawn. Applicants’ arguments addressed below do not overcome the 35 USC 112 rejections over claims 10, 13 and 20, nor the 35 USC 102/103 rejections over Wang, and finally do not overcome the 35 USC 103 rejection over Wong in view of Norena Franco from the office action mailed 3/27/2026; therefore, these rejections are maintained below. Also, applicants did not address the IDS issues, nor the double patenting rejections from the office action mailed 3/27/2026; therefore, these issues remain below.
Information Disclosure Statement
The information disclosure statements filed 3/26/2025 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.
Claims 10, 13 and 20 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.
Claims 10, 13 and 20 include 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 § 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.
Claims 1, 6-10, 12-13, 16-20, 22 and 25 are rejected under 35 U.S.C. 103 as unpatentable over Wang et al., US Patent Application Publication No. 2022/0002216 (hereinafter referred to as Wang).
Regarding claims 1, 6-10, 12-13, 16-20, 22 and 25, Wang discloses a method for hydrocracking a polymer (containing aromatic rings), comprising reacting the polymer dispersed in a solvent with hydrogen under the action of a catalyst at a temperature of no more than 350°C (see Claim 1, see Figure 1 and Para. [0004] and [0006]). The polymer can be polystyrene, which is a polyolefin (see Claim 2, see Figure 1 and Para. 0029]). The solvent can be an aromatic compound such as benzene, toluene or ethylbenzene (Para. [0033]). These examples are monocyclic aromatics with a molecular weight below 150 g/mol. The catalyst can comprise the molecular sieve/zeolite H-ZSM-5 (see Claim 1 and Para. [0038]). This implicitly discloses the presence of a plurality of Bronsted acidic sites and a plurality of pores in the range of 0.45-0.60 nm (0.5 nm is typical of H-ZSM-5). It is moreover common general knowledge that ZSM-5 is a framework type MFI zeolite, which contains a plurality of pores comprising 10-membered ring channels and a SiO2/Al203 ratio in between 5 and 94 (implicit in the general SiO2/AI203 structure of ZSM-5, (Al)x(Si)96-x(O)192, with X = 1-26). The reaction temperature is no more than in between 150 and 350°C (Para. [0034]) and the atmosphere is 0.1-10 MPa of hydrogen (Para. [0034]).
Claim Rejections - 35 USC § 103
Claims 1-10, 12-13, 16-20 and 22-23 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) in view of Norena Franco et al., US Patent Application Publication No. 2016/1060127 (hereinafter referred to as Norena Franco).
Regarding claims 1-10, 12-13, 16-20 and 22-23, 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.
Wong discloses all the limitations discussed above but does not disclose an inert environment comprising hydrogen, nor the temperature range within the recited range of claim 1.
Norena Franco discloses a method for producing hydrocarbons by catalytic decomposition of plastic waste products, including low density polyethylene, high density polyethylene and polypropylene in a single step, said method comprising: subjecting the plastic waste material to a thermal pre-treatment in order to produce a liquid plastic mass, wherein the thermal pre-treatment of the plastic material is carried out in an inert gas atmosphere (which would include hydrogen) at a temperature that varies between 110°C and 310°C; simultaneously feeding the liquid plastic mass to a reaction apparatus; bringing the plastic mass into contact with a bed of particles of inorganic porous material contained inside the reaction apparatus at a temperature of between 300° and 600°C; inducing thermocatalytic decomposition reactions at a temperature of between 300 and 600° C. in order to generate a mixture of hydrocarbons in a vapour phase; and separating the hydrocarbons from the vapour phase current generated inside the reaction means in order to produce a liquid mixture of hydrocarbons through the use of zeolite catalysts having a pore diameter ranging from 0.5 to 50 nm and Si/Al molar ratios of 3 to 40 (see Abstract; see Example 1 and see Claim 8). It would have been obvious to one of ordinary skill in the art at the time of the invention to use the process steps of Norena Franco in the process of Wong as it is a combination of prior art elements according to known methods to yield predictable results.
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 1-10, 12-13, 16-20, 22-23 and 25 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-8, 10-11, 15-22 and 24-25 of co-pending application No. 18/727,146. Although the conflicting claims are not identical, they are not patentably distinct from each other.
The co-pending '146 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 1.321(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.
Response to Arguments
Applicants’ arguments filed 6/29/2026 regarding claims 1-10, 12-13, 16-20, 22-23 and 25 have been fully considered and are not persuasive.
Applicants argue that claims 10, 13 and 20 should not be rejection under 35 USC 112 as being indefinite. This argument is not persuasive. The claims clearly include a broad limitation and a narrow limitation of the same parameter within the same claim. The standard is not whether one of ordinary skill in the art would have sufficient level of skill to interpret the scope of the claim. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) is considered indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). Note the explanation given by the Board of Patent Appeals and Interferences in Ex parte Wu, 10 USPQ2d 2031, 2033 (Bd. Pat. App. & Inter. 1989), as to where broad language is followed by "such as" and then narrow language. The Board stated that this can render a claim indefinite by raising a question or doubt as to whether the feature introduced by such language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Note also, for example, the decisions of Ex parte Steigewald, 131 USPQ 74 (Bd. App. 1961); Ex parte Hall, 83 USPQ 38 (Bd. App. 1948); and Ex parte Hasche, 86 USPQ 481 (Bd. App. 1949). Appropriate correction is required.
Applicants argue that Wang does not render the instant claims obvious as instantly recited because Wang does not disclose contacting a polyolefin with a zeolite catalyst and an aromatic solvent with the specificity required by the claims. This argument is not persuasive for the obviousness rejection. Wang explicitly discloses the use of a zeolite catalyst and an aromatic solvent (paragraph 0033) as recited by the instant claims. Even though Wang does not disclose a specific embodiment with the H-ZSM-5 catalyst in an aromatic solvent, this does not necessarily overcome the obviousness rejection set for the above. The entire reference needs to be considered and in this case it is the position of the examiner that based on the disclosure of Wang discussed above that one of ordinary skill in the art before the effective filing date of the application would immediately envisage the scope of the instant claims with a reasonable expectation of success.
Applicants argue that the obviousness rejection of Wong over Norena Franco does not read on the claims as instantly recited because Wong does not disclose the zeolite catalyst with the properties recited in the instant claims, and this is not rectified by Norena Franco. This argument is also not persuasive. The ZSM-5 zeolite catalyst is known to have available Bronsted acid sites and a pore diameter that at least overlaps the range recited in instant claim 1. For this reason this rejection is also maintained above.
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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/VISHAL V VASISTH/Primary Examiner, Art Unit 1771
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