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 .
Detailed Action
Claims 1-12 are currently pending.
Specification
The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code. See Page 3 which contains “http://”. Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code; references to websites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. See MPEP § 608.01.
Appropriate correction is required.
Claim Objections
Claims 1-2, 4, and 12 are objected to because of the following informalities:
Claim 1 should recite “having the same number of or fewer carbon atoms than the alkyl group of R2” rather than “having the number of carbon atoms equal to or less than the number of carbon atoms of an alkyl group having R2”.
Claim 2 should be amended to read “the number”.
Claim 4 should be amended to read “the difference”.
Claim 12 should instead read “wherein the molding of step 2” rather than “wherein the step 2”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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 1-12 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 regards as the invention.
Claim 1 recites “A microwave absorber comprising an imidazolium salt”. The transitional term "comprising” is inclusive or open-ended and does not exclude additional, unrecited elements. It is therefore unclear whether the absorber compound possesses additional unrecited elements not accounted for in formula (1) or the absorber is meant to be exclusively limited to microwave absorbers of formula (I). For the purpose of compact prosecution, Claim 1 is interpreted to be the latter and read “An imidazolium salt microwave absorber represented by formula (1)…”. Claims 2-12 are rejected by virtue of dependency.
Claim 5 seemingly recites two statutory categories of invention by virtue of the preamble referencing a compound and the wherein clause potentially reciting a method step of “[is used by] being mixed with a resin”. Applicant must clearly establish a single unambiguous category of invention for Claim 5. A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318, 97 USPQ2d 1737, 1748-49 (Fed. Cir. 2011). See MPEP 2173.05(p)(II). Claim 5 is interpreted as a composition of matter which is capable of the recited intended use.
Claim 8 recites “A method for heating a resin using the microwave absorber according to claim 1”. Attempts to claim a process without setting forth any steps involved in the process generally raises an issue of indefiniteness under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. The above claim merely recites a use without any active, positive steps delimiting how this use is actually practiced. Ex parte Erlich, 3 USPQ2d 1011 (Bd. Pat. App. & Inter. 1986). It is appropriate to reject a claim that recites a use but fails to recite steps under 35 U.S.C. 101 and 35 U.S.C. 112(b). See MPEP 2173.05(q). Applicant must recite active positive steps describing how the absorber compound is to be used in the heating method. Claim 9 is rejected by virtue of dependency.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 8-9 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because:
Claim 8 recites “A method for heating a resin using the microwave absorber according to claim 1”. Attempts to claim a process without setting forth any steps involved in the process generally raises an issue of indefiniteness under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. The above claim merely recites a use without any active, positive steps delimiting how this use is actually practiced. Ex parte Erlich, 3 USPQ2d 1011 (Bd. Pat. App. & Inter. 1986). It is appropriate to reject a claim that recites a use but fails to recite steps under 35 U.S.C. 101 and 35 U.S.C. 112(b). See MPEP 2173.05(q). Applicant must recite active positive steps describing how the absorber compound is to be used in the heating method. Claim 9 is rejected by virtue of dependency.
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Claim Rejections - 35 USC § 102
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.
Claims 1-6 and 8-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Costa (J. APPL. POLYM. SCI. 2013, 448-455).
Costa teaches the following ionic liquid “IL” on Page 449:
PNG
media_image1.png
101
402
media_image1.png
Greyscale
Wherein R1 is a methyl, containing 11 fewer carbon atoms than the R2 alkyl containing 12, which is a number of carbon atoms more than 9. R3 and R4 are each hydrogen. The X- counterion is chloride. Costa teaches the above IL to be mixed with MMA to form a polymer thereof, PMMA, which is taught on Page 9 of applicant’s specification to be a thermoplastic resin (Page 449, Table 1).
PNG
media_image2.png
156
406
media_image2.png
Greyscale
The heating and reaction results in a composition comprising the IL and resin. All three systems result in IL absorber:PMMA mass weight ratios encompassed by the range of examined Claim 9 (e.g., IL-1: 1.29/20 = 6.45/100; 0.01<6.45<10). Costa details the microwave procedure for reacting the contents described in Table 1 on Pages 449-450 and the capacity of IL compounds to efficiently absorb heat through microwaving to “suppress side reactions, increase yields, and improve purity and reproducibility” on Page 448. Multiple cycles of reacting and heating MMA and PMMA through microwaving are shown in Fig 1. (Page 449).
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.
Claims 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Costa (J. APPL. POLYM. SCI. 2013, 448-455) in view of Cook (US8361621).
Costa teaches the following ionic liquid “IL” on Page 449:
PNG
media_image1.png
101
402
media_image1.png
Greyscale
Wherein R1 is a methyl, containing 11 fewer carbon atoms than the R2 alkyl containing 12, which is a number of carbon atoms more than 9. R3 and R4 are each hydrogen. The X- counterion is chloride. Costa teaches the above IL to be mixed with MMA to form a polymer thereof, PMMA, which is taught on Page 9 of applicant’s specification to be a thermoplastic resin (Page 449, Table 1).
PNG
media_image2.png
156
406
media_image2.png
Greyscale
The heating and reaction results in a composition comprising the IL and resin (Page 552). All three systems result in IL absorber:PMMA mass weight ratios encompassed by the range of examined Claim 9 (e.g., IL-1: 1.29/20 = 6.45/100; 0.01<6.45<10). Costa details the microwave procedure for reacting the contents described in Table 1 on Pages 449-450 and the capacity of IL compounds to efficiently absorb heat through microwaving to “suppress side reactions, increase yields, and improve purity and reproducibility” on Page 448. Multiple cycles of reacting and heating MMA and PMMA through microwaving are shown in Fig 1. (Page 449). Costa also describes constant heating via microwave, thus maintaining a flowable state of the resin (Page 450).
Costa fails to teach resin pellets and the formation of a flowable resin which is molded via injection molding.
Cook teaches “A microwave-sensitive thermoplastic composition that includes a microwave-receptive additive; and a thermoplastic polymer”; the additives comprise a group of varied microwave receptive salts and other materials (Abstract). “Thermoplastic polymer pellets typically must be melted, re-shaped and cooled in a primary conversion process, such as extrusion or injection molding, in order to make parts of commercial value” (Col.1). The polymers identified in Cook are described in the instant specification on Page 9 as thermoplastic resins, including polyolefins, polyamides, and polyesters (Col. 9). Microwaving to melt bare polymers is difficult due to “low microwave receptivity” thereof (Col. 2). Cook further describes “a need for processes and polymeric materials that have the ability to heat or melt only a portion of the polymeric material, sufficient to render the bulk material capable of flow” (Col. 2).
Therefore, one of skill in the art seeking to form the Cook resin polymer pellets into “parts of commercial value” through injection molding must first devise a method of heating said pellets. A method of heating is microwaving with the consideration that polymers on their own have “low microwave receptivity”. Thus, Costa and Cook both suggest the addition of microwave absorbing salt additives to locally heat the system, and Costa specifically teaches the above IL, encompassed by examined formula (1), to heat a composition yielding a polymer. The ordinary artisan, in view of the above teachings, would then find it obvious to use the microwave absorber of Costa in a composition of resin polymer pellets to aid in heating said pellets of Cook to yield a composition “capable of flow” (i.e., flowable), and maintaining flowability via constant microwave or cycled microwave heating for as long as necessary for industrial purposes like transport and molding, the heated flowable state allowing subsequent injection molding to produce the useful parts. The same artisan would expect success in doing so before the filing date of the instant claims because the capacity of the Costa IL to absorb microwave energy and heat a system is demonstrated in examples IL-1 through IL-3 of Costa and would resolve the issue of “low microwave receptivity” of polymers identified by Cook.
Conclusion
No claim is allowable.
Inquiries
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Richard G. Peckham whose telephone number is (703)756-4621. The examiner can normally be reached 8:30am - 4:30pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kortney Klinkel can be reached on (571) 270-5239. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/RICHARD GRANT PECKHAM/Examiner, Art Unit 1627
Prosecution Insights