DETAILED ACTION
Claim Status
Claims 1, 4-8, 10-12, 14-18, 21, 24-33 is/are pending.
Claims 1, 4-8, 10-12, 14-18, 21, 24-33 is/are rejected.
Claims 2-3, 9, 13, 19-20, 22-23 is/are cancelled by Applicant.
The Examiner notes that the Applicant’s statements regarding the “Status of the Claims” in the Response filed 07/17/2025 appears to be incorrect.
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 .
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.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 35 U.S.C. 119(e) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994)
The disclosure of the prior-filed application, Application No. JP 2018-0067297 (Published Application JP 2019-178206 A), filed 03/30/2018, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
Application No. JP 2018-067297 (filed 03/30/2018) (Published Application JP 2019-178206 A) does not provide adequate support for: (i) a film piercing characteristic as recited in claims 15-16.
However, Application Nos. JP 2018-161612 (filed 08/30/20218) (Published Application JP 2020-122131 A) and JP 2019-0019067 (filed 02/04/2019) provide support for a film piercing characteristic.
Therefore, for the purposes of examination:
Claims 1, 4-8, 11-12, 14, 17-18, 21, 24-33 have an effective priority date
of 03/30/2018.
Claims 15-16 have an effective priority date of 08/30/2018.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 4-8, 11-12, 14-18, 21, 24-33 is/are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 1, 29, the disclosure as originally filed states that “the content of the additional resins is preferably 70 parts by mass or less and particularly preferably 50 parts by mass or less based on 100 parts by mass of the total of the aliphatic polyester-based resin (A), the polyhydroxyalkanoate (B), and the additional resins” (Published Application US 2020/0384745, paragraph 0148). However, the disclosure as originally filed does not provide support for the limitation “wherein the solid comprises no more than 20% by mass of additional resins, relative to total solid mass” (emphasis added). Contrary to Applicant’s assertions, the Comparative Examples in the specification (which do not reflect Applicant’s invention) cannot be used to provide support with respect to limitations on the amount of additional resin in the solid composition of the claimed invention as a whole (i.e., total solid mass).
Claims 4-8, 11-12, 14-18, 21, 24-28, 30-33 are dependent on one or more of the above claims and therefore incorporate the above-described new matter.
Examiner’s comments / suggestions with respect to addressing the outstanding issues of new matter under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, introduced by the Claim Amendments filed 07/17/2025.
In view of: (i) the persistent issues regarding the limited scope of the showings provided by the Specification and the third INAGAKI Declaration filed 09/23/2024 -- in particular, limitations on the combined amount of components (A)+(B)+(C) in the claimed solid as a whole (see the detailed discussion in the previous Office Action mailed 02/27/2025, pages 17-22); and (ii) the limited support provided by the inventive Examples in the specification with respect to ranges for the individual amounts and the combined amount of components (A), (B), (C); the Examiner suggests the possibility of using the transitional phrase “consisting essentially of” (which limits the scope of a claim to the specified materials or steps which do not materially affect the basic and novel characteristic(s) of the claimed invention) with respect to the composition of the solid as a whole, IF accompanied by a statement on the record clearly and explicitly identifying what Applicant considers to be the “basic and novel characteristic(s) of the claimed invention”. (see MPEP 2111.03 (III.)) The use of “consisting essentially of” (if accompanied by a clear identification of what Applicant considers to be the “basic and novel characteristic(s) of the claimed invention”) would permit the presence of other components in the claimed solid, as long as those other components do not materially affect the asserted “basic and novel characteristic(s) of the claimed invention”.
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 rejections under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, (regarding indefiniteness) in the previous Office Action mailed 02/27/2025 have been withdrawn in view of the Claim Amendments filed 07/17/2025.
Claim Rejections - 35 USC § 103 (AIA )
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.
The rejections under 35 U.S.C. 103 based on JP 2017-132967 (OKURA-JP ‘967), in view of KRISHNASWAMY (US 2012/0108743) (and further in view of additional secondary reference) in the previous Office Action mailed 02/27/2025 have been withdrawn in view of the new grounds of rejection necessitated by the Claim Amendments filed 07/17/2025.
However, the withdrawal of these rejections does NOT constitute a concession as to the applicability or non-applicability of the previously cited prior art to the previously presented claims or to the claims as presently amended. Upon the resolution of the outstanding issues with respect to new matter, the previous rejections under 35 U.S.C. 103 may be reinstated and/or modified.
Response to Arguments
Applicant’s arguments filed 07/17/2025 have been considered but are moot in view of the new ground(s) of rejection under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, (regarding new matter) in the present Office Action necessitated by the Claim Amendments filed 07/17/2025.
However, the Examiner makes no concessions regarding the applicability or non-applicability of the previously cited prior art to the previously presented claims or to the claims as presently amended. Discussion of the merits and applicability of the previously cited prior art references are suspended pending the resolution of the new rejections under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, (regarding new matter).
(A) The Examiner again notes that the third INAGAKI Declaration filed 09/23/2024 only makes generalized qualitative evaluations with respect to the performance of Additional Experiments I-IX. The absence of specific experimental data with respect to Additional Experiments I-IX in Table D may limit the evidentiary value of the Declaration with respect to Additional Experiments I-IX.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
WILLIAMS ET AL (US 2021/0244860) disclose blends of PBS(A), PHA copolymers, and additives suitable for forming tubular articles.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Vivian Chen (Vivian.chen@uspto.gov) whose telephone number is (571) 272-1506. The examiner can normally be reached on Monday through Thursday from 8:30 AM to 6 PM. The examiner can also be reached on alternate Fridays.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Callie Shosho, can be reached on (571) 272-1123. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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October 16, 2025
/VIVIAN CHEN/Primary Examiner, Art Unit 1787