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 .
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, 5-8, 10-12, 14, 25-27, and 42-49 are rejected under 35 U.S.C. 103 as being unpatentable over Henriksson et al, US Patent Publication 2016/0097158 in view of Andersen et al, USP 6,299,726.
Regarding claims 1 and 27, Henriksson teaches a method and system for recycling waste material (see abstract) comprising:
introducing the waste material and, optionally, water into a pressure vessel [0006];
treating the waste material in the pressure vessel at an elevated processing temperature and an elevated processing pressure [0006] to form a treated waste material including a substantially re-pulped waste paper [0006], wherein, during the treating, the waste material is positioned within a drum of the pressure vessel and mixed via rotation of the drum (see figures 3-10 and [0016]);
discharging the treated waste material from the pressure vessel [0006]; and
thereafter separating the treated waste material into a first portion and a second portion, the first portion comprising the substantially re-pulped waste paper and the second portion comprising large debris [0006].
Henriksson is silent on the use of using a shredder prior to the treatment of the waste paper.
In the same field of endeavor of repulping waste paper for recycling uses, Andersen teaches that optional equipment used for the repulper with a benefit of increasing production includes a shredder (item 60, column 6 lines 35-42) immediately prior to the re-pulper.
It would have been obvious to one of ordinary skill in the art at the time of the invention to utilize a shredder prior to the repulper in the device for recycling waster paper as it has been shown to increase the production of the equipment as taught by Andersen.
Regarding claims 5-6 and 44-45, Andersen further teaches that the preferred size of the “nuggets” of paper in the aggregate stock are 3 mm-19mm (column 5 lines 35-38). While the same language is not utilized as the claims (less than 10% having a long side of greater than 12 inches), it is clear that the goal of the shredding device is to prepare an aggregate pulp for the repulper to produce components with a size of less tan 1 inch. This teaching would have been obvious to one of ordinary skill in the art at the time of the invention to utilize shredded materials of less than 1 inch which is less tan the claimed 12 inches for as much of the material as possible.
If there is a physical component of the device that allows for the shredded material to have a size that produces an unexpected result, it needs to be actively claimed.
Regarding claims 7 and 46, Andersen further teaches that the entire bale of waste material is sent to the shredder (the Examiner is taking this to read on without separating further components, column 6 line 38).
Regarding claims 8 and 47, Andersen further teaches the same claimed shredding step as defined in claim 1. The remaining claimed limitations are result effective variables of the result of the act of shredding. Andersen explicitly teaches that the act of shredding increases the production of the process. Andersen doe not provide a comparison to how much of a reduction occurs with the addition shredding, only that shredding provides a positive increase in the production. Considering as there are no claimed limitations to the actual shredding of the material, it is assumed that the act of shredding will provide the claimed benefit of reduce the large debris as claimed. If there is an actively claimed method step of physical setting to the shredding actions that allows for this improvement to occur it needs to be claimed. Furthermore Andersen does teach the limitations of claims 5-6 that do provide for a sizing to the material which would also implicitly read on the claimed limitations as it is even smaller than the maximum claimed range of the other deponent limitations.
Regarding claims 10 and 48, Henriksson further teaches that the discharged waste material has a solids amount of 5-50% of the discharged treated waste [0100].
Regarding claims 11 and 49, Henriksson further teaches that water is added to the first portion to make a solids of 3-5% [0111].
Regarding claim 12, Henriksson further teaches that, the solids of the first portion may include a re- pulped waste paper fraction in an amount from about 20% to about 90% by weight of the solids of the first portion [0110].
Regarding claim 14, Henriksson further teaches that there is an on site water treatment facility [0135].
Regarding claims 25-26 and 42-43, Andersen teaches that the shredder is positing right before the repulper (column 6 and shown in figure 6 – items 60 and 50).
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, 5-8, 10-12, 14, 25-27, and 42-49 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of U.S. Patent No. 10,100,465 or 9,752,279 in view of Andersen et al, USP 6,299,726.
The above cited reference teach all of the claimed steps with the absence of the shredder in place prior to the repulper.
In the same field of endeavor of repulping waste paper for recycling uses, Andersen teaches that optional equipment used for the repulper with a benefit of increasing production includes a shredder (item 60, column 6 lines 35-42) immediately prior to the re-pulper.
It would have been obvious to one of ordinary skill in the art at the time of the invention to utilize a shredder prior to the repulper in the device for recycling waste paper as it has been shown to increase the production of the equipment as taught by Andersen.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB T MINSKEY whose telephone number is (571)270-7003. The examiner can normally be reached M-F 8-6 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abbas Rashid can be reached at 5712707475. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JACOB T. MINSKEY
Examiner
Art Unit 1741
/JACOB T MINSKEY/Primary Examiner, Art Unit 1748
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