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 § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 7, 9-10, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Asrar et al (US 6,201,083) in view of Bird (WO 2013190274 A2) and Martin (AAPS PharmSciTech, Vol 7, No. 1).
Regarding claim 1, Asrar teaches extrusion coating (Asrar, Col. 2 Line 58) onto a fiber – based substrate (paper) (Asrar, Col. 8 Lines 29-32). Asrar teaches the coating comprises a blend of PHAs which can be copolymers (Asrar, Col. Col. 3 Lines 47-50 and Col. 4 Lines 66-67), therefore polymers that are copolymers, and an additive (Asrar, Col. 11 Lines 28-35). Asrar teaches a linear and branched PHA are mixed and extruded, so it is necessary to use a mixing screw extruder or twin screw extruder (Asrar, Col. 9 Lines 18-26). Initial mixing is therefore carried out in the twin screw extruder, and the twin screw extruder is also used on – line and continuously for extrusion. It is not disclosed that pellets are required. Initial mixing without forming pellets is therefore disclosed. The extrusion is at a line speed of greater than 400 m/min (Asrar, Col. 10 Lines 11-16). The weight of the coating is less than 60 g/m2 (Asrar, Col. 11 Lines 3-6), which overlaps the claimed range of 6-30 g/m2 and therefore establishes a prima facie case of obviousness over the claimed range, see MPEP 2144.05, I.
Asrar is silent regarding kaolin in the amount of at least 10% by weight.
Bird teaches PHA (Bird, Page 3 Line 3) comprising kaolin (Bird, Page 3 Line 11) in the amount of 20 wt% to 40 wt% (Bird, Page 13 Lines 29-33) for the purpose of obtaining biodegradability without compromising mechanical properties (Bird, Page 5 Lines 1-5). Bird’s range lies within the claimed range of at least 10% by weight and therefore satisfies the claimed range, see MPEP 2131.03.
Asrar and Bird are analogous art as they both teach PHA compositions. It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to include kaolin in the claimed amount in the composition of Asrar. This would allow for biodegradability without compromising mechanical properties (Bird, Page 5 Lines 1-5).
Modified Asrar is silent regarding the output of the twin-screw extruder being at least 100 kg/h.
Martin teaches that twin screw extruders that are used in the plastics and food industries have an output of 50 g to 50,000 kg/hr (Martin, Page 6 Par 3), which overlaps the claimed range of at least 100 kg/h and therefore establishes a prima facie case of obviousness over the claimed range, see MPEP 2144.05, I.
Modified Asrar and Martin are analogous art as they both teach twin extruders for plastics. It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to provide for an output of 50 g to 50,000 kg/h for the twin-screw extruder of modified Asrar. This would allow for the output used in the plastics and food industries.
Regarding claim 7, modified Asrar teaches the additive is in granulate form (particulate) (Bird, Page 13 Lines 29-33).
Regarding claim 9, modified Asrar teaches the amount of additive is 20 to 40 wt.% (Bird, Page 13 Lines 29-33), which lies within the claimed range of from 10% to 80% by weight and therefore satisfies the claimed range, see MPEP 2131.03.
Regarding claim 10, modified Asrar teaches the fiber-based substrate is pre-treated (corona treated) prior to coating (Asrar, Col. 8 Lines 33-39).
Regarding claim 15, Asrar teaches extrusion coating (Asrar, Col. 2 Line 58) onto a fiber – based substrate (paper) (Asrar, Col. 8 Lines 29-32). Asrar teaches the coating comprises a blend of PHAs which can be copolymers (Asrar, Col. Col. 3 Lines 47-50 and Col. 4 Lines 66-67), therefore polymers that are copolymers, and an additive (Asrar, Col. 11 Lines 28-35). Asrar teaches a linear and branched PHA are mixed and extruded, so it is necessary to use a mixing screw extruder or twin-screw extruder (Asrar, Col. 9 Lines 18-26). Initial mixing is therefore carried out in the twin screw extruder, and the twin screw extruder is also used on – line and continuously for extrusion. It is not disclosed that pellets are required. Initial mixing without forming pellets is therefore disclosed. The extrusion is at a line speed of greater than 400 m/min (Asrar, Col. 10 Lines 11-16). The weight of the coating is less than 60 g/m2 (Asrar, Col. 11 Lines 3-6), which overlaps the claimed range of 6-30 g/m2 and therefore establishes a prima facie case of obviousness over the claimed range, see MPEP 2144.05, I.
Asrar is silent regarding the additive being in the amount of at least 10% by weight.
Bird teaches PHA (Bird, Page 3 Line 3) comprising kaolin (Bird, Page 3 Line 11) in the amount of 20 wt% to 40 wt% (Bird, Page 13 Lines 29-33) for the purpose of obtaining biodegradability without compromising mechanical properties (Bird, Page 5 Lines 1-5). Bird’s range lies within the claimed range of at least 10% by weight and therefore satisfies the claimed range, see MPEP 2131.03.
Asrar and Bird are analogous art as they both teach PHA compositions. It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to include kaolin in the claimed amount in the composition of Asrar. This would allow for biodegradability without compromising mechanical properties (Bird, Page 5 Lines 1-5).
Modified Asrar is silent regarding the output of the twin-screw extruder being at least 100 kg/h.
Martin teaches that twin screw extruders that are used in the plastics and food industries have an output of 50 g to 50,000 kg/hr (Martin, Page 6 Par 3), which overlaps the claimed range of at least 100 kg/h and therefore establishes a prima facie case of obviousness over the claimed range, see MPEP 2144.05, I.
Modified Asrar and Martin are analogous art as they both teach twin extruders for plastics. It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to provide for an output of 50 g to 50,000 kg/h for the twin-screw extruder of modified Asrar. This would allow for the output used in the plastics and food industries.
Response to Arguments
Applicant’s remarks and amendments filed 11 August 2025 have been fully considered.
Applicant requests withdrawal of the rejections under 35 USC § 112 set forth in the previous grounds of rejection
The rejections under 35 USC § 112 set forth in the previous grounds of rejection have been withdrawn due to the present claim amendments.
Regarding arguments directed to the previous grounds of rejection, on page 5 of the remarks, Applicant argues that Asrar teaches a polyester which is no longer listed in claim 1. This is not found persuasive for the following reasons:
Asrar teaches the PHA may be a copolymer (Asrar, Col. Col. 3 Lines 47-50). Meanwhile, the instant claim 1 broadly lists copolymer as one of the options for the polymer. Therefore, the copolymer PHA of Asrar satisfies the claimed polymer limitation and Applicant’s argument is unpersuasive.
Secondly, on pages 5-6 of the remarks, Applicant argues that Asrar does not teach that the twin-screw extruder is used without forming pellets. This is not found persuasive for the following reason:
Asrar does not disclose that pellets are required. Asrar further does not state that the initial materials are pellets or must be pellets. Asrar renders obvious the broadest reasonable interpretation for initial mixing without forming pellets. Regarding Applicant’s argument that Bird teaches pellets, it is noted that not all of the features of Bird are incorporated into Asrar. The method of Asrar is not modified to include the pellets of Bird. Instead, Bird renders obvious an amount of an additive to be used in the coating of Asrar. Therefore, modified Asrar renders obvious the claimed limitation and Applicant’s argument is unpersuasive.
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.
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/THOMAS J KESSLER/Examiner, Art Unit 1782
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