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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-8 in the reply filed on 06/05/2026 is acknowledged.
Claim Objections
Claim 8 is objected to because of the following informalities:
Regarding claim 8, there should be a space in the term “300%wt”.
Appropriate correction is required.
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 6 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.
Regarding claim 6, the phrase “comprising 0.5 to 6 wt.% of the active component, based on the total weight of the catalyst” is unclear. It is unclear if the active component is equivalent to the acidic compound, or if the “active component” is meant to include the acidic compound and the non-porous support. In the interest of compact prosecution and in view of the instant specification, the active component appears to be equivalent to the “acidic compound” and the claim was interpreted accordingly. See at least [0039]-[0040] and [0044].
Claim Rejections - 35 USC § 102
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.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2 and 5-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Seitz et al. (Katalysatorscreening fur die katalytische Spaltung von Braunkohle; Chemie-Ingenieur-Technik, Wiley VCH. Verlag, Weinheim; DE, vol. 85, no. 4, 1 February 2013, pages 529-534; cited in IDS dated 12/08/2025).
Regarding claim 1, Examiner first notes that when reading the preamble in the context
of the entire claim, the recitation “for depolymerization of polymeric waste material” is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations or serve to limit the structure of the claimed catalyst. Thus, the preamble of the claim is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
Seitz teaches a catalyst for the catalytic cleavage of long-chain organic compounds comprising an active component of zeolite deposited on a particulate non-porous glass bead support with the aid of nitric acid solution that helps to better ensure the zeolites adhere to the glass beads (Abstract; Introduction; 2.1 3.2). While Seitz does not specifically use the term depolymerization, the catalyst of Seitz includes a zeolite component (i.e. acidic compound) supported on a non-porous support (i.e. glass beads) with the aid of a chemical that helps to coat the zeolite on the glass beads (i.e. coating agent). Accordingly, the catalyst of Seitz meets the structural limitations required by the claim
Regarding claim 2, Seitz anticipates the catalyst of claim 1 and teaches the support is glass beads (3.2).
Regarding claim 5, Seitz anticipates the catalyst of claim 1 and teaches the acidic compound is a zeolite (Abstract; 3.2).
Regarding claim 6, Seitz anticipates the catalyst of claim 1 and further teaches the zeolite, which exhibits the catalytic activity, is present at 1.4 wt.% in the catalyst (5, Summary).
Claim Rejections - 35 USC § 103
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 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.
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 3 is rejected under 35 U.S.C. 103 as being unpatentable over Seitz et al. (Katalysatorscreening fur die katalytische Spaltung von Braunkohle; Chemie-Ingenieur-Technik, Wiley VCH. Verlag, Weinheim; DE, vol. 85, no. 4, 1 February 2013, pages 529-534; cited in IDS dated 12/08/2025).
Regarding claim 3, Seitz anticipates the catalyst of claim 1 and Seitz further teaches the glass bead support is in the range of 1.7-2.5 mm (3.2). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05 (I). In the instant case, the range taught by Seitz (1.7-2.5 mm) overlaps with the claimed range (0.2 to 20 mm). Therefore, the range in Seitz renders obvious the claimed range.
Although there is no disclosure that the test method is conformity with ISO 3310-1/ASTM E11, given that the Seitz discloses the glass bead diameter size as presently claimed, and absent evidence criticality how the particle size is measured, the bead size disclosed by Seitz meets the claim limitation.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Seitz et al. (Katalysatorscreening fur die katalytische Spaltung von Braunkohle; Chemie-Ingenieur-Technik, Wiley VCH. Verlag, Weinheim; DE, vol. 85, no. 4, 1 February 2013, pages 529-534; cited in IDS dated 12/08/2025) in view of Sueoka et al. (JP2001107058A English).
Regarding claim 4, Seitz anticipates the catalyst of claim 1 and the claim further requires the support is sand, to which Seitz is silent.
Sueoka teaches the thermal cracking of waste plastic where sand is used as part of the catalyst system (Abstract; Claims).
Advantageously, utilizing sand allows for heat regeneration during by-product pyrolysis and does not require any special separation (Pg. 2, par. 2-3, 6-10).
Thus, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to use sand in the product of Seitz in order to allow for heat regeneration without requiring any special separation equipment, as taught by Sueoka.
Claims 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Seitz et al. (Katalysatorscreening fur die katalytische Spaltung von Braunkohle; Chemie-Ingenieur-Technik, Wiley VCH. Verlag, Weinheim; DE, vol. 85, no. 4, 1 February 2013, pages 529-534; cited in IDS dated 12/08/2025) in view of Hagerty et al. (US20080081885A1).
Regarding claims 7-8, Seitz anticipates the catalyst of claim 1 and the claim further requires the coating agent is “oil, inorganic hydrogel, and combinations thereof,” to which Seitz does not teach these coating agents.
Hagerty teaches a catalyst, where the catalyst is dispersed in mineral oil along with a support, where the solid catalyst contents in the oil are present from about 10 to 30 weight percent relative to the oil ([0128]-[0131]; [0143]; [0150]; [0153]-[0154]). Hagerty teaches the dispersion contains the support and the catalyst and that the catalyst can be supported by deposition of the catalyst with the carrier or via spray drying with the slurry ([0129]-[0138]). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05 (I). In the instant case, the range taught by Hagerty (oil from 70-90 wt.%) overlaps with the claimed range (1 to 300 wt.% coating agent). Therefore, the range in Hagerty renders obvious the claimed range.
Advantageously, using oil diluents at the concentrations taught by Hagerty allows the catalyst particle to have substantially neutral buoyancy to polymers in the blend and can be reused ([0022]; [0049]).
Thus, prior to the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to use oil at a concentration from 70-90 wt.% in the product of Seitz in order to allow for substantially neutral buoyancy to polymers in the blend and allow for reuse of the oil, as taught by Hagerty.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jordan Wayne Taylor whose telephone number is (571)272-9895. The examiner can normally be reached Monday - Friday, 7:30 AM - 5 PM EST; Second Fridays Off.
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/JORDAN W TAYLOR/Examiner, Art Unit 1738
