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 .
Status of Claims
This action is in reply to the application filed on August 3, 2025.
Claims 4, 6, and 7 have been preliminarily amended.
Claims 1-8 are currently pending and have been examined.
Information Disclosure Statement
The Information Disclosure Statement filed on August 3, 2025 has been considered. An initialed copy of the Form 1449 is enclosed herewith.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claims 1-8 are objected to because of the following informalities: 1) Claims 1, 6, and 8 recite “analyse,” “sanitise,” and “analysing” (respectively) instead of the Americanized spellings of --analyze--, --sanitize--, and –analyzing--; 2) Claim 4 recites “wherein the plastic product is waste container” instead of –wherein the plastic product is a waste container—3) Claims 6 and 7 both recite “A system according claim” instead of –A system according to claim—; and 4) Claim 8 recites “A method of selecting a plastic product for re-use or recycling; the method comprising the steps of” where the semicolon should be a comma. Because Claims 2-7 depend upon Claim 1, they are also objected to. Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. § 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. § 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
Use of the word “means” (or “step for”) in a claim with functional language creates a rebuttable presumption that the claim element is to be treated in accordance with 35 U.S.C. § 112(f) (pre-AIA 35 U.S.C. § 112, sixth paragraph). The presumption that 35 U.S.C. § 112(f) (pre-AIA 35 U.S.C. § 112, sixth paragraph) is invoked is rebutted when the function is recited with sufficient structure, material, or acts within the claim itself to entirely perform the recited function.
Absence of the word “means” (or “step for”) in a claim creates a rebuttable presumption that the claim element is not to be treated in accordance with 35 U.S.C. § 112(f) (pre-AIA 35 U.S.C. § 112, sixth paragraph). The presumption that 35 U.S.C. § 112(f) (pre-AIA 35 U.S.C. § 112, sixth paragraph) is not invoked is rebutted when the claim element recites function but fails to recite sufficiently definite structure, material or acts to perform that function.
Claim elements in this application that use the word “means” (or “step for”) are presumed to invoke 35 U.S.C. § 112(f) except as otherwise indicated in an Office action. Similarly, claim elements that do not use the word “means” (or “step for”) are presumed not to invoke 35 U.S.C. § 112(f) except as otherwise indicated in an Office action.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph, because the claim limitations use a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitations are: (1) means to collect a plastic product after its use in Claim 1; (2) means to identify the product in Claim 1; (3) means to identify the chemical composition of the product once identified in Claim 1; (4) means to capture and analyse the physical appearance of the product in Claim 1; (5) means to empty the container in Claim 4; (6) means to sanitise the container once emptied in Claim 6; and (7) means to heat the product to thereby soften the material in Claim 7.
Because these claim limitations are being interpreted under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph, they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have these limitations interpreted under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph, applicant may: (1) amend the claim limitations to avoid them being interpreted under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitations recites sufficient structure to perform the claimed function so as to avoid them being interpreted under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph.
Claim limitations (1) means to collect a plastic product after its use in Claim 1; (2) means to identify the product in Claim 1; (3) means to identify the chemical composition of the product once identified in Claim 1; (4) means to capture and analyse the physical appearance of the product in Claim 1; (5) means to empty the container in Claim 4; (6) means to sanitise the container once emptied in Claim 6; and (7) means to heat the product to thereby soften the material in Claim 7 have been interpreted under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because they use “means to” without reciting sufficient structure to achieve the function.
Because the claim limitations invoke 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph, Claims 1-7 have been interpreted to cover the corresponding structure described in the specification that achieves the claimed function, and equivalents thereof.
A review of the specification fails to specifically correlate any particular corresponding structure described in the specification for the 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph limitations other than for the limitations of means to identify the chemical composition of the product once identified and means to capture and analyse the physical appearance of the product, which the specification notes utilizes a camera system. The other features do not require any particular specification and, for the purpose of compact prosecution, will be interpreted broadly to encompass any means of performing the recited functions.
If Applicant wishes to provide further explanation or dispute the Examiner’s interpretation of the corresponding structure, Applicant must identify the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters in response to this Office Action.
If Applicant does not intend to have the claim limitations treated under 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112 , sixth paragraph, Applicant may amend the claims so that they will clearly not invoke 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph, or present a sufficient showing that the claims recite sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. § 112(f) or pre-AIA 35 U.S.C. § 112, sixth paragraph.
For more information, see MPEP § 2173 et seq. and Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011).
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 1-7 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 pre-AIA the applicant regards as the invention.
Regarding Claims 1-7, as noted above, the following limitations invoke § 112(f) yet the specification fails to provide any corresponding structure: (1) means to collect a plastic product after its use in Claim 1; (2) means to identify the chemical composition of the product once identified in Claim 1; (3) means to empty the container in Claim 4; (4) means to sanitise the container once emptied in Claim 6; and (5) means to heat the product to thereby soften the material in Claim 7. Because the structure that performs these functions is not particularly pointed out or distinctly claimed, these claims must be rejected under § 112(b). Because Claims 2-7 depend upon Claim 1 without resolving these issues, they are also rejected under § 112(b).
Further regarding Claim 5, this claim recites “the emptied contents,” yet there are no previously recited “emptied contents” in either Claim 4 or Claim 1, from which Claim 5 depends. Claim 4 merely recites a “means to empty contents” but does not recite any step of emptying the contents. Thus, it is not particularly pointed out or distinctly claimed what “emptied contents” are recited or if Applicant intended to recite a step of emptying the contents in Claim 4. Therefore, because Claim 5 is not particularly pointed out or distinctly claimed, it must be further rejected under § 112(b).
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.
Claims 1-8 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to non-statutory subject matter. When considering subject matter eligibility under 35 U.S.C. § 101, there are multiple steps that may need to be assessed. First, in step 1 it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. If the claim does fall within one of the statutory categories, it must then be determined in step 2A prong 1 whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea). If the claim is directed toward a judicial exception, it must then be determined in step 2A prong 2 whether the judicial exception is integrated into a practical application. Finally, if the judicial exception is not integrated into a practical application, it must additionally be determined in step 2B whether the claim recites “significantly more” than the abstract idea. See “2019 Revised Patent Subject Matter Eligibility Guidance,” 84 Fed. Reg. (4): 50-57 (Jan. 7, 2019).
In the instant case, Claims 1-7 are directed toward a system, i.e., apparatus, and Claim 8 is directed toward a method, i.e., process. Thus, each of the claims falls within one of the four statutory categories as required by step 1. Nevertheless, the claims are directed toward the judicial exception of an abstract idea in step 2A prong 1. Independent Claim 1 recites as follows:
Claim 1. A system for the identification of a plastic product to establish its suitability for re-use or recycling, the system comprising:
means to collect a plastic product after its use;
means to identify the product;
means to identify the chemical composition of the product once identified;
means to capture and analyse the physical appearance of the product;
computer processing means to select the subsequent processing step for the product dependent on the identification and analysis data;
said processing step being one of breaking down the product into granular form or re- distributing the product for use.
Independent Claim 8 recites as follows:
Claim 8. A method of selecting a plastic product for re-use or recycling; the method comprising the steps of:
identifying the product, including its initial chemical composition;
capturing and analysing the physical appearance of the product;
selecting, based on the identification and analysis data whether the product should be recycled or re-used.
The bold language above corresponds to the abstract ideas recited in Claims 1 and 8 (whereas the underlined language is language that is addressed in step 2A prong 2 and step 2B). As the bold language above demonstrates, Applicant’s claims are directed toward deciding whether to recycle or reuse a plastic product. Because the instant invention is performing a set of observations, evaluations, and judgments culminating in a selection of a subsequent processing step, it is performing a set of abstract mental processes that can be performed in the human mind. See MPEP § 2106.04(a)(2)(III).
Finding the claims to be directed toward an abstract idea, however, is not the end of the inquiry. Rather, the next step is to determine whether the judicial exception is integrated into a practical application (step 2A prong 2). The revised guidance provides exemplary considerations that are indicative that an additional element or combination of elements may have integrated the exception into a practical application: 1) an additional element reflecting an improvement in the functioning of a computer or an improvement to another technology or technical field, 2) an additional element that implements the judicial exception with a particular machine or manufacture that is integral to the claim, 3) an additional element that effects a transformation or reduction of a particular article to a different state or thing, or 4) an additional element that applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment such that the claim as a whole is more than a drafting effort designed to monopolize the exception. See MPEP § 2106.04(d). Examples where a judicial exception has not been integrated into a practical application include: 1) use of “apply it” or the equivalent, i.e., merely using a computer to implement or perform an abstract idea, 2) an additional element that adds insignificant extra-solution activity to the judicial exception, and 3) an additional element that does no more than generally link the use of the judicial exception to a particular technological environment or field of use. See id.
Applying these considerations to the claims in the instant application, the claims do not integrate the judicial exception into a practical application. The claims fail to recite an improvement of a computer, any improvement to a technology or technical field, any particular machine, any transformation or reduction of a particular article to a different state or thing, or any additional element that uses the judicial exception in a meaningful way. Instead, the claims are merely reciting a set of unknown means to gather data about the plastic product and then the key step of selecting the subsequent processing step for the product merely consists of instructions to implement the abstract idea on a computer (i.e., “computer processing means”), which is insufficient to provide a practical application of the claims and provide subject matter eligibility. See id. Therefore, there is no integration of the abstract idea into a practical application.
If the claims are not integrated into a judicial exception, the Examiner must consider whether there is “significantly more” recited in the claim in step 2B. See MPEP § 2106.05. There is nothing unconventional or inventive in Applicant’s claims for the purpose of analysis under step 2B, e.g., any combination of elements that provide an advance over any technological state of the art. Rather, as noted above, an abstract mental process is merely implemented by a general-purpose computer. Any structure implicit or otherwise that could perform the other steps is performing insignificant extra-solution activity, i.e., mere data gathering, which is insufficient to provide “significantly more.” See MPEP § 2106.05(g). Thus, Applicant’s claims fail to provide “significantly more” than the abstract idea.
The dependent claims 2-7 are merely reciting further embellishments of the abstract idea and do not amount to anything that is significantly more than the abstract idea itself. Claims 2, 3, and 5 recite further data gathering activities, which are insignificant extra-solution activity. See MPEP § 2106.05(g). Claims 4, 6, and 7 recite events that happen after the mental observation, which are insignificant extra-solution activities. See MPEP § 2106.05(g). In other words, none of the dependent claims recite an improvement to a technology or technical field or provide any meaningful limitations that, in an ordered combination provide “significantly more” or providing any integration into a practical application. Rather, the dependent claims are merely further reciting features that are just as abstract as independent Claims 1 and 8. Therefore, Claims 1-8 are directed to non-statutory subject matter and are rejected as ineligible subject matter under 35 U.S.C. § 101.
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 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.
Claims 1-8 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by Al-Thani (US 2021/0283661 A1).
Claim 1. Al-Thani teaches: A system for the identification of a plastic product to establish its suitability for re-use or recycling, the system comprising:
means to collect a plastic product after its use (see, e.g., at least ¶ 34 teaching “intake,” i.e., collection, of the plastic container into the recycling and reuse facility 100);
means to identify the product (see, e.g., ¶ 32 teaching that the invention utilizes a tag scanner 106 that can be an optical scanner or RFID scanner that can identify the plastic container as described, e.g., in ¶ 35 where it teaches that “The information related to the plastic container 102 may identify a date the plastic container 102 was produced or first left the facility 100, a quantity of times that the plastic container 102 has been used (e.g., refilled, reused, etc.), a unique identifier for the plastic container 102, environmental conditions experienced by the plastic container 102 (e.g., over time or since the last time the facility 100 processed the plastic container 102), former contents of the plastic container 102, and/or the like”);
means to identify the chemical composition of the product once identified (see, e.g., ¶ 29 teaching that the chemical composition of a plastic product can breakdown over time and ¶ 42 teaching utilized a “swab and reader system or a spectroscopy system that can analyze a degradation of the plastic container 102;” see further ¶s 4, 8, 38, 40, 43, 64, and 69 teaching analyzing a swab for the presence of a chemical compound such as BPA);
means to capture and analyse the physical appearance of the product (see, e.g., ¶ 32 teaching that the invention utilizes a tag scanner 106 that can be an optical scanner; see also ¶s 30, 38, and 42 teaching using an optical scanner or other means to analyze the physical appearance such as to determine whether the container is dirty, has a label, etc. as part of the assessment regarding whether the container can be recycled or reused);
computer processing means to select the subsequent processing step for the product dependent on the identification and analysis data (see Figure 1a feature 108 teaching a server device that processes the information and causes the plastic container 102 to be assessed; see also Figure 1b feature 130 teaching server device 108 performing one or more actions based on the result of the assessment of the plastic container 102; see additionally ¶s 36 and 44 disclosing substantially the same);
said processing step being one of breaking down the product into granular form or re- distributing the product for use (see, e.g., ¶s 6, 10, 44, 47, 65, and 73 teaching shredding the plastic container, i.e., breaking it down into granular form; see also, e.g., at least ¶s 45-46 teaching refilling and redistributing the plastic containers that are suitable for reuse, such as by placing it on a pallet and a vehicle).
Claim 2. Al-Thani teaches the limitations of Claim 1. Al-Thani further teaches: A system according to claim 1, wherein the means to identify the product comprises one or more cameras (see, e.g., ¶ 32 teaching that the invention utilizes a tag scanner 106 that can be an optical scanner; see also ¶ 42 teaching using an optical scanner to determine dirt or a spectroscopy system that can analyze a degradation of the plastic container).
Claim 3. Al-Thani teaches the limitations of Claim 2. Al-Thani further teaches: A system according to claim 2, wherein the means to capture the physical appearance of the product comprises one or more cameras (see, e.g., ¶ 32 teaching that the invention utilizes a tag scanner 106 that can be an optical scanner; see also ¶ 42 teaching using an optical scanner to determine dirt or a spectroscopy system that can analyze a degradation of the plastic container; see further ¶s 30 and 38 teaching using an optical scanner or other means to analyze the physical appearance such as to determine whether the container is dirty, has a label, etc. as part of the assessment regarding whether the container can be recycled or reused).
Claim 4. Al-Thani teaches the limitations of Claim 1. Al-Thani further teaches: A system according to claim 1, wherein the plastic product is waste container and the system further includes means to empty the container (see, e.g., ¶s 4, 8, 64, and 69 teaching determining whether the container leaches a threshold amount of a chemical, i.e., whether any of the contents emptied from the container are identified as a particular chemical; see additionally ¶ 43 teaching removing chemicals, dirt, labels, etc. from the plastic container; see further ¶ 49 teaching that the plastic container is a waste container).
Claim 5. Al-Thani teaches the limitations of Claim 4. Al-Thani further teaches: A system according to claim 5, wherein the emptied contents are identified by one or more cameras (see, e.g., ¶ 29 teaching that the chemical composition of a plastic product can breakdown over time and ¶ 42 teaching utilized a “swab and reader system or a spectroscopy system that can analyze a degradation of the plastic container 102;” see further ¶s 4, 8, 38, 40, 43, 64, and 69 teaching analyzing a swab for the presence of a chemical compound such as BPA).
Claim 6. Al-Thani teaches the limitations of Claim 4. Al-Thani further teaches: A system according to claim 4, wherein the system further includes means to sanitise the container once emptied (see, e.g., at least ¶s 6, 8, 45, 65, and 68 teaching sanitizing the plastic container).
Claim 7. Al-Thani teaches the limitations of Claim 1. Al-Thani further teaches: A system according [to] claim 1, further including means to heat the product to thereby soften the material (see, e.g., ¶s 44 and 47 teaching electromechanical devices 114 melting the plastic container 102 or shredded plastic to recycle and reform the plastic).
Claim 8. Al-Thani teaches: A method of selecting a plastic product for re-use or recycling[,] the method comprising the steps of:
identifying the product, including its initial chemical composition (see, e.g., ¶ 29 teaching that the chemical composition of a plastic product can breakdown over time and ¶ 42 teaching utilized a “swab and reader system or a spectroscopy system that can analyze a degradation of the plastic container 102;” see further ¶s 4, 8, 38, 40, 43, 64, and 69 teaching analyzing a swab for the presence of a chemical compound such as BPA);
capturing and analysing the physical appearance of the product (see, e.g., ¶ 32 teaching that the invention utilizes a tag scanner 106 that can be an optical scanner; see also ¶s 30, 38, and 42 teaching using an optical scanner or other means to analyze the physical appearance such as to determine whether the container is dirty, has a label, etc. as part of the assessment regarding whether the container can be recycled or reused);
selecting, based on the identification and analysis data whether the product should be recycled or re-used (see, e.g.., Figure 1b feature 130 teaching server device 108 performing one or more actions based on the result of the assessment of the plastic container 102; see also, e.g., Figures 4-6 teaching exemplary flowcharts that determine, based on identified and analyzed data regarding a plastic waste container, whether the container is appropriate for recycling or reuse).
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant’s disclosure: Morgan et al., US 9,393,569 B2; Alon et al., US 2024/0109227 A1; Kumar et al., US 2022/0203407 A1; Sutton, US 12,090,520 B2; O’Brien et al., WO 2021/119602 A1.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAN P MINCARELLI whose telephone number is (571)270-5909. The examiner can normally be reached Monday through Friday, 8:00 AM to 4:30 PM Eastern Time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nathan C. Uber, can be reached at (571)270-3923. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
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/JAN P MINCARELLI/
Primary Examiner, Art Unit 3626
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