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 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.
Claims 1, 4, and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Merrington et al. (WO 2015/048589) in view of Ohme et al. (US 2004/0242803).
Considering Claim 1: Merrington et al. teaches a blend comprising polylactic acid (4:6-16) and cellulosic particles derived from lignocellulose materials (6:3-24, Table 14). Merrington et al. teaches the particulate cellulosic material as having a particle size of 20 to 50 microns (6:22-24, Table 14).
The lignocellulose material is microground without chemical treatment to remove the non-cellulosic components, and thus would contain the non-cellulosic material. The cellulose material can contain all the plant material, including cellulose, hemicellulose and lignin (6:27-7:2). Merrington et al. teaches the lignocellulose material as being wood flour having the claimed particle size (6:3-24), which reads on sawmill waste lignocellulosic biomass.
Merrington et al. does not teach the claimed plasticizer. However, Ohme et al. teaches a polylactic acid composition (¶0025) comprising reinforcing fibers (¶0106) and a plasticizer that can be diethyl phthalate, butylbenzyl phthalate, dioctyl phthalate, 2-ethylhexyl azelate, tricresyl phosphate, diphenyl-2-ethylhexyl phosphate, or epoxidized soybean oil (¶0058-65). It would have been obvious to a person of ordinary skill in the art to have used the plasticizers of Ohme et al. as the plasticizer of Merrington et al. (relied upon in the final rejection), and the motivation to do so would have been, as Ohme et al. suggests, they are common plasticizers for polylactic acid (¶0058).
Considering Claims 4 and 5: Merrington et al. teaches cellulose particles as being 5 to 70 weight percent (2:27-29), and teaches that examples having 70 weight percent were prepared (13:8-10).
Claims 8, 11, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Merrington et al. (WO 2015/048589) in view of Ohme et al. (US 2004/0242803).
Considering Claim 8: Merrington et al. teaches an article/device (9:15-25) made from a blend comprising polylactic acid (4:6-16) and cellulosic particles derived from lignocellulose materials (6:3-24, Table 14). Merrington et al. teaches the particulate cellulosic material as having a particle size of 20 to 50 microns (6:22-24, Table 14).
The lignocellulose material is microground without chemical treatment to remove the non-cellulosic components, and thus would contain the non-cellulosic material. The cellulose material can contain all the plant material, including cellulose, hemicellulose and lignin (6:27-7:2). Merrington et al. teaches the lignocellulose material as being wood flour having the claimed particle size (6:3-24), which reads on sawmill waste lignocellulosic biomass.
Merrington et al. does not teach the claimed plasticizer. However, Ohme et al. teaches a polylactic acid composition (¶0025) comprising reinforcing fibers (¶0106) and a plasticizer that can be diethyl phthalate, butylbenzyl phthalate, dioctyl phthalate, 2-ethylhexyl azelate, tricresyl phosphate, diphenyl-2-ethylhexyl phosphate, or epoxidized soybean oil (¶0058-65). It would have been obvious to a person of ordinary skill in the art to have used the plasticizers of Ohme et al. as the plasticizer of Merrington et al. (relied upon in the final rejection), and the motivation to do so would have been, as Ohme et al. suggests, they are common plasticizers for polylactic acid (¶0058).
Considering Claims 11 and 12: Merrington et al. teaches cellulose particles as being 5 to 70 weight percent (2:27-29), and teaches that examples having 70 weight percent were prepared (13:8-10).
Claims 15, and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Merrington et al. (WO 2015/048589) in view of Ohme et al. (US 2004/0242803).
Considering Claims 15 and 20: Merrington et al. teaches an article/device (9:15-25) made from a blend comprising polylactic acid (4:6-16) cellulosic particles derived from lignocellulose materials (6:3-24, Table 14). Merrington et al. teaches the particulate cellulosic material as having a particle size of 20 to 50 microns (6:22-24, Table 14). The article is prepared by grinding/comminuting the cellulose material; mixing the polylactic acid and cellulose material in an extruder, and molding the material to create the article (8:18-28).
The lignocellulose material is microground without chemical treatment to remove the non-cellulosic components, and thus would contain the non-cellulosic material. The cellulose material can contain all the plant material, including cellulose, hemicellulose and lignin (6:27-7:2). Merrington et al. teaches the lignocellulose material as being wood flour having the claimed particle size (6:3-24), which reads on sawmill waste lignocellulosic biomass.
Merrington et al. does not teach the claimed plasticizer. However, Ohme et al. teaches a polylactic acid composition (¶0025) comprising reinforcing fibers (¶0106) and a plasticizer that can be diethyl phthalate, butylbenzyl phthalate, dioctyl phthalate, 2-ethylhexyl azelate, tricresyl phosphate, diphenyl-2-ethylhexyl phosphate, or epoxidized soybean oil (¶0058-65). It would have been obvious to a person of ordinary skill in the art to have used the plasticizers of Ohme et al. as the plasticizer of Merrington et al. (relied upon in the final rejection), and the motivation to do so would have been, as Ohme et al. suggests, they are common plasticizers for polylactic acid (¶0058).
Considering Claim 18: Merrington et al. teaches injection molding the composition to form the article (8:26-27).
Considering Claim 19: Merrington et al. teaches cellulose particles as being 5 to 70 weight percent (2:27-29), and teaches that examples having 70 weight percent were prepared (13:8-10).
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Merrington et al. (WO 2015/048589) in view of Ohme et al. (US 2004/0242803) as applied to claim 15 above, and further in view of Liu (Powder Technology, 193, 2009, 208-213).
Considering Claim 17: Merrington et al. and Saeidlou et al. collectively teach the process of claim 15 as shown above. Merrington et al. teaches the particulate cellulose material as having a particle size of 20 to 50 microns (6:22-24).
Merrington et al. does not teach sieving the particles prior to mixing. However, Liu teaches that sieving is a conventional means of sorting particles to ensure the desired particle size (pg. 208). It would have been obvious to a person having ordinary skill in the art to have sieved the cellulosic material prior to mixing, and the motivation to do so would have been to provide uniform particle sizes for the composite.
Response to Arguments
Applicant's arguments filed September 29, 2025 have been fully considered but they are not persuasive, because:
A) The applicant’s argument that Merrington teaches a preference for compositions without additives is not persuasive. Merrington explicitly teaches the addition of plasticizers (Claim 11). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994). See MPEP § 2123.
B) The applicant’s argument that Ohme et al. teaches away from using polylactic acid as the sole biodegradable polymer is not persuasive. A prior art reference that "teaches away" from the claimed invention is a significant factor to be considered in determining obviousness. However, "the nature of the teaching is highly relevant and must be weighed in substance. A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 553, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994) (Claims were directed to an epoxy resin based printed circuit material. A prior art reference disclosed a polyester-imide resin based printed circuit material, and taught that although epoxy resin based materials have acceptable stability and some degree of flexibility, they are inferior to polyester-imide resin based materials. The court held the claims would have been obvious over the prior art because the reference taught epoxy resin based material was useful for the inventor’s purpose, applicant did not distinguish the claimed epoxy from the prior art epoxy, and applicant asserted no discovery beyond what was known to the art.).
While Ohme et al. teaches the problems with using polylactic acid as the sole polymer, these same problems are discussed in Merrington. Merrington teaches that the inclusion of the lignocellulose materials overcome the problems discussed in Ohme et al. (pg. 1-2). Further, Merrington contemplates using polymer blends, but opts against their use due ot higher production costs, reduced biodegradability and sustainability (2:15-18).
Thus, the teachings as a whole do not teach away from using polylactic acid as the sole biodegradable polymer in the composition.
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