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 .
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, 11-13, 20 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 10-12, 15 of copending Application No. 18806408. Although the claims at issue are not identical, they are not patentably distinct from each other.
As to claim 1, 18806408 recites in claims 10 and 11 A method of extruding a polymer composite, the method comprising: loading a feedstock material comprising a first polymer and a second polymer; establishing shear at an interface between a face of a die tool and a face of the feedstock material by establishing rotation of the die tool relative to the feedstock material; establishing an axial extrusion force at the interface between the face of the die tool and the face of the feedstock material by translating the die tool relative to the feedstock material, contemporaneously with the rotation of the die tool relative to the feedstock material; and extruding the feedstock material through an opening of the die tool using plastic deformation of a solid phase of the feedstock material in response to the rotation and the axial extrusion force at the interface.
As to claim 2, 18806408 recites in claim 15 extruding the feedstock material does not melt the feedstock material.
As to claim 3, 18806408 recites in claim 15 the feedstock material is not melted prior to or during the extruding.
As to claim 4, 18806408 recites in claim 10 wherein 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.
As to claim 5, 18806408 recites in claims 10-12 scrap or waste associated with a first resin identification code and the second polymer comprises scrap or waste associated with a different second resin identification code.
As to claim 11, 18806408 recites in claims 10 and 11 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; establishing a rotation-induced shear force shear at an interface between a face of a die tool and a face of the feedstock material by rotating the feedstock material at a different rate than the die tool; establishing an axial extrusion force at the interface between the face of the die tool and the face of the feedstock material by translating the die tool relative to the container; 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.
As to claim 12, 18806408 recites in claims 10-12 the first polymer type is a first type of recycled polymer and the second polymer type is a second type of recycled polymer.
As to claim 13, 18806408 recites in claims 10-12 generating extrudate from the feedstock material made of a homogenized mixture of the first type of recycled polymer and the second type of recycled polymer.
As to claim 20, 18806408 recites in claims 15 the feedstock material is not melted prior to or during the extruding.
Claims 6, 7, 10, 14, 16, provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 10-12, 15 of copending Application No. 18806408 in view of Vidalat (US 2020/0023555).
As to claims 6, 7, 14, 16, 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. 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 18806408, an utilized a mixture of scrap LDPE and HDPE flakes, as suggested by Vidalat, as these material had proven successful at recycling.
As to claim 10, Vidalat teaches the opening connected to the face of the die tool is a circular bore [Fig 3] having a diameter between 1 mm and 5 mm as Vidalat teaches the diameter may be as small as “a few” mm (in other words 3) and notes an axial length of up 15 times the diameter which for a diameter of 3-5 would be 45-75 mm [0161, 0162]. Furthermore, Vidalat notes that the axial length and diameter determined level of densification in the end extrudate [0162]; in other words axial length and diameter of the die were art recognized results effective variables. axial length and diameter determined level. It is well settled that the determination of the optimum value of a result effective variable, in this case axial length and diameter of the die, 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 die diameter to 1-5 mm and axial length to 30-100 mm, as suggested by Vidalat, in order to achieve the desired degree of densification.
Claims 8, 9, 15, 17-19 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 10-12, 15 of copending Application No. 18806408 in view of Vidalat (US 2020/0023555) in view of (Wikipedia- Friction Extrusion) referred to as Friction Extrusion.
As to claims 8, 15, 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 “scrolled feature on the face of the die aid material flow into the extrusion orifice which can lead to order of magnitude reduction in extrusion force” [Fig 4 caption, Description of the Process and Essential Process Variables]. 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 18806408 to have the materials travel through plurality of pathways in the face of the die tool, the plurality of pathways connected to the opening of the die tool, as suggested by Friction Extrusion, as this greatly reduced the required extrusion force.
As to claims 9, 17-19, 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, the 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. 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 18806408 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. 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.
The examiner notes the charge would have to be in some contained else it would not be extruded through the die and would just fall apart prior to densification.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 11-20 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.
Claim 11 recites “a first polymer type and a second polymer type.” The term type extends the scope of a term so as to render it indefinite. See MPEP 2173.05(b) III E.
Claim 18 rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. As parent claims 11 and 17 require that the feedstock be rotated via the container relative to the die tool, it is unclear what additional limitations are required by claim 18. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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) 1-20 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.
As to claim 1, Vidalat teaches a method of extruding a polymer composite [Abstract], the method comprising: loading a feedstock material comprising a first polymer and a second polymer [0065, 0067, 0071, 0074, 0001, 0010, 0022, 0033]; establishing shear at an interface between a face of a die tool and a face of the feedstock material; establishing an axial extrusion force at the interface between the face of the die tool and the face of the feedstock material by translating the die tool relative to the feedstock material as this is what extrusion definitionally is as the die cavity must be smaller than the feedstock in order to shape it and would therefore have to have at least some small amount of shear force at the interface between the die tool and the feedstock [0034, 0133, Fig 3]; and extruding the feedstock material through an opening of the die tool using plastic deformation of a solid phase of the feedstock material [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, the 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]. 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, 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.
As to claim 2, Vidalat teaches extruding the feedstock material does not melt the feedstock material [0147, 0024, Abstract].
As to claim 3, Vidalat teaches the feedstock material is not melted prior to or during the extruding [0147, 0024, Abstract].
As to claim 4, 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 [0065, 0067, 0071, 0074, 0001, 0010, 0022, 0033].
As to claim 5, Vidalat teaches the first polymer comprises scrap or waste associated with a first resin identification code and the second polymer comprises scrap or waste associated with a different second resin identification code [0065, 0067, 0071, 0074, 0001, 0010, 0022, 0033].
As to claim 6, Vidalat teaches the first polymer comprises polypropylene and the second polymer comprises low density polyethylene or high density polyethylene [0066, 0067].
As to claim 7, Vidalat teaches the feedstock material comprises shredded material [0081].
As to claim 8, Vidalat teaches mixing and consolidating the multiple polymers as explained above but does not explicitly state travel through plurality of pathways in the face of the die tool, the plurality of pathways connected to the opening of the die tool.
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 “scrolled feature on the face of the die aid material flow into the extrusion orifice which can lead to order of magnitude reduction in extrusion force” [Fig 4 caption, Description of the Process and Essential Process Variables]. 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 the materials travel through plurality of pathways in the face of the die tool, the plurality of pathways connected to the opening of the die tool, as suggested by Friction Extrusion, as this greatly reduced the required extrusion force.
As to claim 9, the combination of Vidalat and Friction extrusion teach rotating the feedstock material relative to the die tool to establish the rotational shear; rotating the feedstock material with the container relative to the die tool to establish the rotational shear; and generating extrudate from the feedstock material made of a homogenized mixture of the first polymer and the second polymer as explained above. 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.
The examiner notes the charge would have to be in some contained else it would not be extruded through the die and would just fall apart prior to densification.
As to claim 10, Vidalat teaches the opening connected to the face of the die tool is a circular bore [Fig 3] having a diameter between 1 mm and 5 mm as Vidalat teaches the diameter may be as small as “a few” mm (in other words 3) and notes an axial length of up 15 times the diameter which for a diameter of 3-5 would be 45-75 mm [0161, 0162]. Furthermore, Vidalat notes that the axial length and diameter determined level of densification in the end extrudate [0162]; in other words axial length and diameter of the die were art recognized results effective variables. axial length and diameter determined level. It is well settled that the determination of the optimum value of a result effective variable, in this case axial length and diameter of the die, 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 die diameter to 1-5 mm and axial length to 30-100 mm, as suggested by Vidalat, in order to achieve the desired degree of densification.
As to claim 11, 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 [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, the 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. 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.
As to claim 12, 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].
As to claim 13, Vidalat teaches generating extrudate from the feedstock material made of a homogenized mixture of the first type of recycled polymer and the second type of recycled polymer as the material is shredded and mixed in the extruder [0081, Fig 3].
As to claim 14, Vidalat teaches the first type of recycled polymer is recycled polypropylene and the second type of recycled polymer is recycled low density polyethylene or recycled high density polyethylene [0066, 0067].
As to claim 15, Vidalate teaches mixing and consolidating the multiple polymers as explained above but does not explicitly state travel through plurality of pathways in the face of the die tool, the plurality of pathways connected to the opening of the die tool.
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 “scrolled feature on the face of the die aid material flow into the extrusion orifice which can lead to order of magnitude reduction in extrusion force” [Fig 4 caption, Description of the Process and Essential Process Variables]. 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 the materials travel through plurality of pathways in the face of the die tool, the plurality of pathways connected to the opening of the die tool, as suggested by Friction Extrusion, as this greatly reduced the required extrusion force.
As to claim 16, Vidalat teaches the feedstock material is shredded film [0081] which is reasonably interpreted as flake.
As to claims 17-19, the combination of Vidalat and Friction extrusion teach rotating the feedstock material relative to the die tool to establish the rotational shear; rotating the feedstock material with the container relative to the die tool to establish the rotational shear; and generating extrudate from the feedstock material made of a homogenized mixture of the first polymer and the second polymer as explained above. Friction Extrusion states that “either the die or the charge may rotate or they may be counter rotating” 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/container.
The examiner notes the charge would have to be in some contained else it would not be extruded through the die and would just fall apart prior to densification.
As to claim 20, Vidalat teaches feedstock material is not melted prior to or during the extruding [0147, 0024, Abstract].
Claims 9, 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Vidalat (US 2020/0023555) in view of (Wikipedia- Friction Extrusion), as applied to claims 1-20 above, and in further view of Whalen (Scaled-Up Fabrication of Thin-Walled ZK60 Tubing Using Shear Assisted Processing and Extrusion (ShAPE)). Note this is an alternative rejection of claims 9, 17-19.
As to claims 9, 17-19, As explained above the combination of the Vidalat and Friction Extrusion teach rotating the feedstock material relative to the die and maintaining a rotational position of the die but do not explicitly mention the rotation of the container.
Whalen teaches a method of friction extrusion [Abstract] and notes “In the ShAPE process, a rotating billet is forced into a stationary extrusion die where significant heating occurs due to friction at the billet/die interface…the billet face softens and plastically flows through the spiral scroll features inward toward the extrusion orifice” [316 2nd column, Fig 1] and notes this process “unique control over grain refinement and crystallographic orientation, and hence material property improvements, beyond conventional extrusion techniques” [316 2nd column, Fig 1], 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 die remain stationary while the container rotated to induce shear force, as suggested by Whalen, as this provided “unique control over grain refinement and crystallographic orientation, and hence material property improvements, beyond conventional extrusion techniques.”
Conclusion
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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/ARMAND MELENDEZ/ Primary Examiner, Art Unit 1759