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 § 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 31, 33, and 34 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Andrews et al. (WO 2017/087658).
Considering Claims 31: Andrews et al. teaches a biodegradable tube (¶0101) comprising a blend of polybutylene succinate and polyhydroxyalkanoate in an amount of 85 to 100 weight percent (¶0004; 0115). The tube of Andrews et al. would be capable of functioning as a straw.
Considering Claim 33: Andrews et al. teaches the polyhydroxyalkanoate as having a molecular weight of 500,000 to 1,500,000 Daltons (¶0008).
Considering Claim 34: Andrews et al. teaches the composition as comprising 15 weight percent of calcium carbonate (¶0115).
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.
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 32 and 35-37 are rejected under 35 U.S.C. 103 as being unpatentable over Andrews et al. (WO 2017/087658) as applied to claim 31 above.
Considering Claim 32: Andrews et al. teaches the composition of claim 31 as shown above.
Andrews et al. teaches the polyhydroxyalkanoate as being a copolymer of hydroxybutryate and 25 to 85 weight percent of hydroxyhexanoate (¶0041). The amount of hydroxyhexanoate and hydroxybutryate units overlaps with the claimed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05. It would have been obvious to a person having ordinary skill in the art to have used the monomers of Andrews et al. in the claimed amounts, and the motivation to do so would have been, as Andrews et al. suggests, to impart a desirable glass transition temperature (¶0041).
Considering Claim 35: Andrews et al. teaches adding erucamide to the composition (¶0084).
Andrews et al. is silent towards the amount of erucamide added to the composition. However, the amount of erucamide would control the blocking of the composition, and thus would be considered a result effective variable. It would have been obvious to a person having ordinary skill in the art to have optimized the amount of erucamide through routine optimization and the motivation to do so would have been, as Andrews et al. suggests, to limit the blocking of the mixture during processing.
Considering Claim 36: Andrews et al. teaches adding a cellulose compound to the composition (¶0085).
Andrews et al. is silent towards the amount of cellulose compound. However, the amount of cellulose would control the nucleation of the polyesters (¶0085) and thus would be considered a result effective variable. It would have been obvious to a person having ordinary skill in the art to have optimized the amount of cellulose through routine experimentation, and the motivation to do so would have been, as Andrews et al. suggests, to control the nucleation of the polymers.
Considering Claim 37: Andrews et al. teaches adding a plasticizer from the claimed groups to the composition (¶0080).
Andrews et al. is silent towards the amount of plasticizer. However, the amount of plasticizer would control the processability of the composition (¶0080), and thus would be considered a result effective variable. It would have been obvious to a person having ordinary skill in the art to have optimized the amount of plasticizer through routine experimentation, and the motivation to do so would have been, as Andrews et al. suggests, to control the processability of the polyester composition.
Claim 38 is rejected under 35 U.S.C. 103 as being unpatentable over Andrews et al. (WO 2017/087658) as applied to claim 31 above, and further in view of Ma et al. (Macromol. Mater. Eng. 2012, 297, 402-410).
Considering Claim 38: Andrews et al. teaches the composition of claim 31 as shown above. Andrews et al. teaches the composition as comprising 15 weight percent of calcium carbonate (¶0115). Andrews et al. teaches adding erucamide to the composition (¶0084).
Andrews et al. is silent towards the amount of erucamide added to the composition. However, the amount of erucamide would control the blocking of the composition, and thus would be considered a result effective variable. It would have been obvious to a person having ordinary skill in the art to have optimized the amount of erucamide through routine optimization and the motivation to do so would have been, as Andrews et al. suggests, to limit the blocking of the mixture during processing.
Andrews et al. does not teach the biodegradable product as being a reaction product formed from the reactive extrusion of polybutylene succinate and a polyhydroxyalkanoate. However, Ma et al. teaches a reactive extrusion product of a polyhydroxybutryate, polybutylene succinate, and 0.2 to 1.0 weight percent of dicumyl peroxide (pg. 403). Andrews et al. and Ma et al. are analogous art as they are concerned with the same field of endeavor, namely polyester blends. It would have been obvious to a person having ordinary skill in the art to have used the reactive extrusion blend of Ma et al. in the blend of Andrews et al., and the motivation to do so would have been, as Ma et al. suggests, to improve the tensile toughness of the blend compared to a blend that is not reacted with the peroxide (Abstract, pg. 409).
Claims 14, 17, 18, 22-25, and 31-37 are rejected under 35 U.S.C. 103 as being unpatentable over Andrews et al. (WO 2017/087658) in view of Ganatra et al. (US 2018/0339129) and Scheer et al. (US 2008/0153940).
Considering Claims 14 and 31: Andrews et al. teaches a method for making a biodegradable tube (¶0101) comprising melt blending polyhydroxyalkanoate with an additional compositable polymer, calcium carbonate (¶0108) and erucamide (¶0084) at 150 to 190 ºC/300 to 375 ºF (¶0108) and forming pellets from the blend (¶0108), followed by profile extrusion to form a tube (¶0046).
Andrews et al. does not teach pelletizing and drying the polyhydroxyalkanoate prior to the extrusion. However, Ganatra et al. teaches drying pellets of polyhydroxyalkanoate prior to extrusion (¶0047). Andrews et al. and Ganatra et al. are analogous art as they are concerned with the same field of endeavor, namely biodegradable polyester tubes. It would have been obvious to a person of ordinary skill in the art to have dried pellets of polyhydroxyalkanoate prior to extrusion, as in Ganatra et al., and the motivation to do so would have been, as Ganatra et al. suggests, to prevent hydrolysis during extrusion (¶0047).
Andrews et al. does not teach the claimed temperature of profile extrusion. However, Scheer et al. teaches profile extrusion a biodegradable polyester tube at less than 160 ºC/320 ºF (Example 3). Andrews et al. and Scheer et al. are analogous art as they are concerned with the same field of endeavor, namely biodegradable polyester tubes. It would have been obvious to a person of ordinary skill in the art to have used the profile extrusion conditions of Scheer et al. in the process of Andrews et al., and the motivation to do so would have been, as Scheer et al. suggests, they are suitable for extrusion of the compositions (¶0051).
Considering Claims 17 and 32: Andrews et al. teaches the composition of claim 31 as shown above.
Andrews et al. teaches the polyhydroxyalkanoate as being a copolymer of hydroxybutryate and 25 to 85 weight percent of hydroxyhexanoate (¶0041). The amount of hydroxyhexanoate and hydroxybutryate units overlaps with the claimed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05. It would have been obvious to a person having ordinary skill in the art to have used the monomers of Andrews et al. in the claimed amounts, and the motivation to do so would have been, as Andrews et al. suggests, to impart a desirable glass transition temperature (¶0041).
Considering Claims 18 and 33: Andrews et al. teaches the polyhydroxyalkanoate as having a molecular weight of 500,000 to 1,500,000 Daltons (¶0008).
Considering Claims 22 and 34: Andrews et al. teaches the composition as comprising 15 weight percent of calcium carbonate (¶0115).
Considering Claims 23 and 35: Andrews et al. teaches adding erucamide to the composition (¶0084).
Andrews et al. is silent towards the amount of erucamide added to the composition. However, the amount of erucamide would control the blocking of the composition, and thus would be considered a result effective variable. It would have been obvious to a person having ordinary skill in the art to have optimized the amount of erucamide through routine optimization and the motivation to do so would have been, as Andrews et al. suggests, to limit the blocking of the mixture during processing.
Considering Claims 24 and 36: Andrews et al. teaches adding a cellulose compound to the composition (¶0085).
Andrews et al. is silent towards the amount of cellulose compound. However, the amount of cellulose would control the nucleation of the polyesters (¶0085) and thus would be considered a result effective variable. It would have been obvious to a person having ordinary skill in the art to have optimized the amount of cellulose through routine experimentation, and the motivation to do so would have been, as Andrews et al. suggests, to control the nucleation of the polymers.
Considering Claims 25 and 37: Andrews et al. teaches adding a plasticizer from the claimed groups to the composition (¶0080).
Andrews et al. is silent towards the amount of plasticizer. However, the amount of plasticizer would control the processability of the composition (¶0080), and thus would be considered a result effective variable. It would have been obvious to a person having ordinary skill in the art to have optimized the amount of plasticizer through routine experimentation, and the motivation to do so would have been, as Andrews et al. suggests, to control the processability of the polyester composition.
Claims 26 and 38 is rejected under 35 U.S.C. 103 as being unpatentable over Andrews et al. (WO 2017/087658) in view of Ganatra et al. (US 2018/0339129) and Scheer et al. (US 2008/0153940) as applied to claim 31 above, and further in view of Ma et al. (Macromol. Mater. Eng. 2012, 297, 402-410).
Considering Claims 26 and 38: Andrews et al., teaches the composition of claim 31 as shown above. Andrews et al. teaches the composition as comprising 15 weight percent of calcium carbonate (¶0115). Andrews et al. teaches adding erucamide to the composition (¶0084).
Andrews et al. is silent towards the amount of erucamide added to the composition. However, the amount of erucamide would control the blocking of the composition, and thus would be considered a result effective variable. It would have been obvious to a person having ordinary skill in the art to have optimized the amount of erucamide through routine optimization and the motivation to do so would have been, as Andrews et al. suggests, to limit the blocking of the mixture during processing.
Andrews et al. does not teach the biodegradable product as being a reaction product formed from the reactive extrusion of polybutylene succinate and a polyhydroxyalkanoate. However, Ma et al. teaches a reactive extrusion product of a polyhydroxybutryate, polybutylene succinate, and 0.2 to 1.0 weight percent of dicumyl peroxide (pg. 403). Andrews et al. and Ma et al. are analogous art as they are concerned with the same field of endeavor, namely polyester blends. It would have been obvious to a person having ordinary skill in the art to have used the reactive extrusion blend of Ma et al. in the blend of Andrews et al., and the motivation to do so would have been, as Ma et al. suggests, to improve the tensile toughness of the blend compared to a blend that is not reacted with the peroxide (Abstract, pg. 409).
Response to Arguments
Applicant’s arguments with respect to claims 14, 17, 18, 22-26, and 31-38 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM J HEINCER whose telephone number is (571)270-3297. The examiner can normally be reached M-F 7:30-5:00.
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/LIAM J HEINCER/Primary Examiner, Art Unit 1767
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