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 Arguments
Applicant's arguments filed 7/21/26 have been fully considered but they are not persuasive. Applicant argues that there was no motivation to combine Vidalat with Friction Extrusion. However, both references were concerned with the recycling of material via an extrusion method below the melting temperature of the material. Certainly the energy savings noted in Friction Extrusion would be desirable, and given that Friction Extrusion utilized metallic material which is generally is harder to process than plastic, resin materials one of ordinary skill in the art would have a reasonable expectation of successful recycling the resin materials of Vidalat. Applicant is essentially arguing that one of ordinary skill in the art, ie a professional engineer having work experience in the particular field of extrusion recycling and likely graduate level education in mechanical engineering, would not see the applicability of friction extrusion to recycling process and would expect a process that was capable of sheering metal to be incapable of sheering plastic waste. The examiner does not agree. Applicant emphasizes the worm screw extrusion of Vidalat. The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Applicant argues that the examiner’s argument with regards to art recognized equivalents is erroneous as Vidalat does not establish rotation of the die tool or rotation of the billet/container. The examiner remarks were concerned with solely the axial translation of the die tool/feedstock. As to the rotation of the die tool that would still be rendered obvious for the reasons provided in the initial office action: “this had proven successful at recovering waste material and was generally more energy efficient way of inducing plastic deformation.” As to applicant’s arguments in regards to the filler content, Malloy teaches this additional feature. Kernick also teaches 70% total filler content which would be about 72%.
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 10, 11, 13, 15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 10-12, 15 of copending Application No. 18885988 in view of Kernick (US 2008/0146707). Although the claims at issue are not identical, they are not patentably distinct from each other.
As to claims 10, 18885988 recites this content in claims 1, 9, 17, 18.
18885988 does not explicitly state that the filler content greater in a range of from about 65 wt%-90wt % of the polymer matrix.
Kernick teaches similar thermoplastic with filler [Abstract] and notes a filler content greater within and overlapping the claimed range as 70% wt% is about 72% wt% [0063, 0071, Table 3, Example 14, claims 17, 29, 41]. As fiber in this amount had proven effective at improving mechanical strength while still having good adhesion to the polymer matrix [0082, 0002, 0005, 0009,0071, 0063] It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have altered the invention of 18885988 and had the filler content as suggested by Whalen, as this provided “unique control over grain refinement and crystallographic orientation, and hence material property improvements, beyond conventional extrusion techniques.”
As to claim 11, 18885988 recites this content in claims 6.
As to claim 15, 18885988 recites in claims 20 the feedstock material is not melted prior to or during the extruding.
Claims 12, 14, provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 10-11, 15 of copending Application No. 18885988 in view of Vidalat (US 2020/0023555).
As to claims 12, 14, 18806408 does not explicitly recite the features of these claims
Vidalat teaches one or more of the first polymer or the second polymer comprises scrap or waste; and wherein the polymer composite comprises a mixture of the first polymer and the second polymer, the first polymer comprises polypropylene and the second polymer comprises low density polyethylene or high density polyethylene [0065, 0067, 0071, 0074, 0001, 0010, 0022, 0033]. Vidalat teaches the feedstock material is shredded film [0081] which is reasonably interpreted as flake. Vidalat teaches lignin and cellulose phrased as vegetable filler [0168]. Vidalat teaches the polymer materials and filler is shredded and mixed in the extruder which is prior to the introduction into the die [0081, Fig 3]. Vidalat teaches feedstock material is not melted prior to or during the extruding and thus would have to be below at least one of the filler components since it doesn’t melt at all [0147, 0024, Abstract]. These materials proved successful at being recycled into densified extrudate [Abstract], It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have altered the invention of 18885988, an utilized the content of claims 12, 14, 15, as suggested by Vidalat, as these process steps and material had proven successful at recycling.
Claims 16-17, provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 10-11, 15 of copending Application No. 18885988 in view of (Wikipedia- Friction Extrusion).
As to claims 16 and 17, 18885988 does not teach a feed rate of the mixture is in a range of from about 4 mm/min to about 50 mm/min and a rotation rate of a die used in extrusion is in a range of about 3 RPM to 60 RPM.
Friction Extrusion explains the general description of friction extrusion noting that it is generally useful of making extrudate from waste by plastic deformation [Friction Extrusion, Description of the Process and Essential Process Variables]. Friction extrusion notes that the die rotation rate (in other words RPM), extrusion rate (in other words feed rate), and extrusion force (of which feed rate is a component) are “essential process variables” [Description of the Process and Essential Process Variables]. It is well settled that the determination of the optimum value of a result effective variable, in this case feed rate and rotation rate, is within the skill of one practicing art, see MPEP § 2144.05 II. It would have been obvious to one of ordinary skill in the art to optimize It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have altered the invention of 18885988 to have optimized a feed rate of the mixture to a range of from about 4 mm/min to about 50 mm/min and a rotation rate of a die used in extrusion to a range of about 3 RPM to 60 RPM, as suggested by Friction Extrusion, as this had proven successful at recovering waste material and was generally more energy efficient way of inducing plastic deformation and these were known “essential process variables.”
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 10-17 are 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.
The change of the ranges referring to the filler component in the feedstock instead of the polymer matrix, changes what the filler content is being compared to: a single component vs. the entirety of the feedstock. The specification does not recite filler wt% of the filler content relative to the feedstock.
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.
Claim(s) 10-17 are rejected under 35 U.S.C. 103 as being unpatentable over Vidalat (US 2020/0023555) in view of (Wikipedia- Friction Extrusion) referred to as Friction Extrusion and Kernick (US 2008/0146707).
As to claim 10 and 13, Vidalat teaches a method of extruding a polymer composite, the method comprising: loading into a container feedstock material comprising a first polymer type and a second polymer type different from the first polymer type both can be comprised of recycled polymer and filler [0065, 0067, 0071, 0074, 0001, 0010, 0022, 0033]; establishing shear force shear at an interface between a face of a die tool and a face of the feedstock material [0034, 0133, Fig 3]; establishing an axial extrusion force at the interface between the face of the die tool and the face of the feedstock material [0034, 0133, Fig 3]; and producing extrudate by extruding the feedstock material through an opening of the die tool using plastic deformation in response to the rotational shear and the axial extrusion force at the interface [0034, 0133, Fig 3].
Vidalat does not state establishing rotation of the die tool relative to the feedstock material or that the die is translated relative to the feedstock.
Friction Extrusion explains the general description of friction extrusion noting that it is generally useful of making extrudate from waste by plastic deformation [Friction Extrusion, Description of the Process and Essential Process Variables]. Friction extrusion notes that either the feedstock can be translated relative to the die (phrased as “extrusion force normal to the die face”) or the die can be translated relative to the feedstock (phrased as “rate of die advance to the charge”). In other words, having the feedstock be translated relative to the die and translating the die relative to the feedstock were art recognized equivalents. Friction extrusion noted having the feedstock or the die be rotated relative to one another [Fig 1 caption, Description of the Process and Essential Process Variables]. Friction extrusion states that “either the die or the charge may rotate or they may be counter rotating” [Description of the Process and Essential Process Variables] in other words maintaining the rotation position of the die and the rotating charge would be presumably be accomplished via the rotation of the charged holder. Friction extrusion notes the die has a scroll shape [Fig 4]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have altered the invention of Vidalat to have utilized rotating the feedstock relative to the die and simply substituted extrusion force normal to the die for having the die be translated relative to the feedstock such that the advancement of the die face was contemporaneous with the relative rotation at different rates, as suggested by Friction Extrusion, as this had proven successful at recovering waste material and was generally more energy efficient way of inducing plastic deformation.
Vidalat does not explicitly state that the filler content greater in a range of from about 79 wt%-90wt % of the polymer matrix.
Kernick teaches similar thermoplastic with filler [Abstract] and notes a filler content of up to 70% which would be “about 72 wt%”[0063, 0071, Table 3, Example 14, claim 17, 29, 41]. As fiber in this amount had proven effective at improving mechanical strength while still having good adhesion to the polymer matrix [0082, 0002, 0005, 0009,0071, 0063] It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have altered the invention of Vidalat and had the filler content be about 72 wt%, as suggested by Whalen, as this provided “unique control over grain refinement and crystallographic orientation, and hence material property improvements, beyond conventional extrusion techniques.” Furthermore, it would have been obvious to optimize the filler content to the exact range of about 79%-90% as suggested by Kernick, as filler content was results effective variable on mechanical strength and thus optimizing the range was just routine experimentation, see MPEP 2144.
As to claim 11, Vidalat teaches the first polymer type is a first type of recycled polymer and the second polymer type is a second type of recycled polymer [0065, 0067, 0071, 0074, 0001, 0010, 0022, 0033, Fig 1] made of thermoplastic or thermoset [0066, 0067].
As to claim 12, Vidalat teaches lignin and cellulose phrased as vegetable filler [0168].
As to claim 14, Vidalat teaches the polymer materials and filler is shredded and mixed in the extruder which is prior to the introduction into the die [0081, Fig 3].
As to claim 15, Vidalat teaches feedstock material is not melted prior to or during the extruding and thus would have to be below at least one of the filler components since it doesn’t melt at all [0147, 0024, Abstract]
As to claims 16 and 17, Vidalat does not teach a feed rate of the mixture is in a range of from about 4 mm/min to about 50 mm/min and a rotation rate of a die used in extrusion is in a range of about 3 RPM to 60 RPM.
Friction Extrusion explains the general description of friction extrusion noting that it is generally useful of making extrudate from waste by plastic deformation [Friction Extrusion, Description of the Process and Essential Process Variables]. Friction extrusion notes that the die rotation rate (in other words RPM), extrusion rate (in other words feed rate), and extrusion force (of which feed rate is a component) are “essential process variables” [Description of the Process and Essential Process Variables]. It is well settled that the determination of the optimum value of a result effective variable, in this case feed rate and rotation rate, is within the skill of one practicing art, see MPEP § 2144.05 II. It would have been obvious to one of ordinary skill in the art to optimize It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have altered the invention of Vidalat to have optimized a feed rate of the mixture to a range of from about 4 mm/min to about 50 mm/min and a rotation rate of a die used in extrusion to a range of about 3 RPM to 60 RPM, as suggested by Friction Extrusion, as this had proven successful at recovering waste material and was generally more energy efficient way of inducing plastic deformation and these were known “essential process variables.”
Claim(s) 10-17 are rejected under 35 U.S.C. 103 as being unpatentable over Vidalat (US 2020/0023555) in view of (Wikipedia- Friction Extrusion) referred to as Friction Extrusion and Malloy (US 2003/0041782).
As to claim 10 and 13, Vidalat teaches a method of extruding a polymer composite, the method comprising: loading into a container feedstock material comprising a first polymer type and a second polymer type different from the first polymer type both can be comprised of recycled polymer and filler [0065, 0067, 0071, 0074, 0001, 0010, 0022, 0033]; establishing shear force shear at an interface between a face of a die tool and a face of the feedstock material [0034, 0133, Fig 3]; establishing an axial extrusion force at the interface between the face of the die tool and the face of the feedstock material [0034, 0133, Fig 3]; and producing extrudate by extruding the feedstock material through an opening of the die tool using plastic deformation in response to the rotational shear and the axial extrusion force at the interface [0034, 0133, Fig 3].
Vidalat does not state establishing rotation of the die tool relative to the feedstock material or that the die is translated relative to the feedstock.
Friction Extrusion explains the general description of friction extrusion noting that it is generally useful of making extrudate from waste by plastic deformation [Friction Extrusion, Description of the Process and Essential Process Variables]. Friction extrusion notes that either the feedstock can be translated relative to the die (phrased as “extrusion force normal to the die face”) or the die can be translated relative to the feedstock (phrased as “rate of die advance to the charge”). In other words, having the feedstock be translated relative to the die and translating the die relative to the feedstock were art recognized equivalents. Friction extrusion noted having the feedstock or the die be rotated relative to one another [Fig 1 caption, Description of the Process and Essential Process Variables]. Friction extrusion states that “either the die or the charge may rotate or they may be counter rotating” [Description of the Process and Essential Process Variables] in other words maintaining the rotation position of the die and the rotating charge would be presumably be accomplished via the rotation of the charged holder. Friction extrusion notes the die has a scroll shape [Fig 4]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have altered the invention of Vidalat to have utilized rotating the feedstock relative to the die and simply substituted extrusion force normal to the die for having the die be translated relative to the feedstock such that the advancement of the die face was contemporaneous with the relative rotation at different rates, as suggested by Friction Extrusion, as this had proven successful at recovering waste material and was generally more energy efficient way of inducing plastic deformation.
Vidalat does not explicitly state that the filler content greater in a range of from about 79 wt%-90wt % of the polymer matrix.
Malloy teaches similar thermoplastic with filler [Abstract, 0002, 0012] and notes a filler content of up to 90% [0016]. This content allows for extrusion produced feedstock [0027] that exhibit beneficial ductility and strength [0026]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have altered the invention of Vidalat and had the filler content be about 90 wt%, as suggested by Malloy, as this extrusion produced feedstock that exhibit beneficial ductility and strength.
As to claim 11, Vidalat teaches the first polymer type is a first type of recycled polymer and the second polymer type is a second type of recycled polymer [0065, 0067, 0071, 0074, 0001, 0010, 0022, 0033, Fig 1] made of thermoplastic or thermoset [0066, 0067].
As to claim 12, Vidalat teaches lignin and cellulose phrased as vegetable filler [0168].
As to claim 14, Vidalat teaches the polymer materials and filler is shredded and mixed in the extruder which is prior to the introduction into the die [0081, Fig 3].
As to claim 15, Vidalat teaches feedstock material is not melted prior to or during the extruding and thus would have to be below at least one of the filler components since it doesn’t melt at all [0147, 0024, Abstract]
As to claims 16 and 17, Vidalat does not teach a feed rate of the mixture is in a range of from about 4 mm/min to about 50 mm/min and a rotation rate of a die used in extrusion is in a range of about 3 RPM to 60 RPM.
Friction Extrusion explains the general description of friction extrusion noting that it is generally useful of making extrudate from waste by plastic deformation [Friction Extrusion, Description of the Process and Essential Process Variables]. Friction extrusion notes that the die rotation rate (in other words RPM), extrusion rate (in other words feed rate), and extrusion force (of which feed rate is a component) are “essential process variables” [Description of the Process and Essential Process Variables]. It is well settled that the determination of the optimum value of a result effective variable, in this case feed rate and rotation rate, is within the skill of one practicing art, see MPEP § 2144.05 II. It would have been obvious to one of ordinary skill in the art to optimize It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have altered the invention of Vidalat to have optimized a feed rate of the mixture to a range of from about 4 mm/min to about 50 mm/min and a rotation rate of a die used in extrusion to a range of about 3 RPM to 60 RPM, as suggested by Friction Extrusion, as this had proven successful at recovering waste material and was generally more energy efficient way of inducing plastic deformation and these were known “essential process variables.”
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 ARMAND MELENDEZ whose telephone number is (571)270-0342. The examiner can normally be reached 9 AM- 6 PM Monday-Friday.
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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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/ARMAND MELENDEZ/
Primary Examiner, Art Unit 1759
