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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 8/4/2025 has been entered.
Response to Amendment
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior office action.
All outstanding rejections, except for those maintained below, are withdrawn in light of applicant’s amendment filed on 8/4/2025.
Claim Rejections - 35 USC § 102/103
Claims 16, 17, and 23 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Ogawa (JP 2002-363432, machine translation from IDS dated 9/13/2023).
Ogawa discloses a biodegradable plastic composition comprising biodegradable resin and wheat bran flour (abstract). Example 1 includes 80 parts by weight polylactic acid (i.e., aliphatic polyester) and 20 g of a fine powder obtained by grinding and drying wheat bran having a moisture content of less than 5 mass % (paragraph 0030) (paragraph 0030). Ogawa does not disclose amount of cellulose, hemicellulose, and lignin or the relative amount of nitrogen or hemicellulose. Even so, wheat bran is the same material pulverized by Applicant to arrive at the claimed degradation accelerator (e.g., page 78, Table 1). Therefore, Yoon inherently includes the claimed amount of cellulose, hemicellulose, and lignin or the relative amount of nitrogen or hemicellulose since such characteristics are evidently dependent upon the nature of the composition used. Case law holds that a material and its properties are inseparable. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Alternatively, it would have been obvious to one of ordinary skill in the art to expect that the claimed amount of cellulose, hemicellulose, and lignin or the relative amount of nitrogen or hemicellulose given that both Ogawa and Applicant disclose wheat bran powder.
Claim Rejections - 35 USC § 103
Claims 1, 5-10, 12-15, 18, 21, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Ogawa (JP 2002-363432, machine translation from IDS dated 9/13/2023).
With respect to claims 1, 5, and 13, Ogawa discloses a biodegradable plastic composition comprising biodegradable resin and wheat bran flour (abstract). Example 1 includes 80 parts by weight polylactic acid (i.e., aliphatic polyester) and 20 g of a fine powder obtained by grinding and drying wheat bran having a moisture content of less than 5 mass % (paragraph 0030). Ogawa does not disclose amount of cellulose, hemicellulose, and lignin or the relative amount of nitrogen or hemicellulose. Even so, wheat bran is the same material pulverized by Applicant to arrive at the claimed degradation accelerator (e.g., page 78, Table 1). Therefore, Yoon inherently includes the claimed amount of cellulose, hemicellulose, and lignin or the relative amount of nitrogen or hemicellulose since such characteristics are evidently dependent upon the nature of the composition used. Case law holds that a material and its properties are inseparable. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Ogawa teaches that the particulate biodegradable plastic composition can pass through a sieve with a mesh of 150 µm (paragraph 0012) and Example 1 has mass cumulative particle size of 21.5 µm. Ogawa also teaches that fine particle sizes allow for improved mechanical properties forming molded products, including thin products, of high practical value (paragraph 0012)
Ogawa fails to explicitly disclose claimed cumulative particle size of 1-9 µm.
Even so, given that Ogawa teaches that small particle size is desirable for forming desirable thin products, it would have been obvious to one of ordinary skill in the art to utilize cumulative particle size within the claimed range to further improved mechanical properties.
With respect to claim 6, Ogawa states that polybutylene succinate is an example of aliphatic polyester resin (paragraphs 0011 and 0018). Polybutylene succinate is derived from a 1,4-butane diol (aliphatic diol) and succinic acid (aliphatic acid).
With respect to claims 7 and 14, Ogawa states that an example of the biodegradable resin is poly(butylene succinate/terephthalate) (paragraph 0011) which is derived from 1,4-butane diol, succinic acid (aliphatic acid), and terephthalic acid (aromatic diacid).
With respect to claim 8, Example 1 includes process of extruding and injecting molding the biodegradable resin composition to form pellets and a dumbbell-shaped test piece, respectively (paragraph 0030).
With respect to claims 9, 10, and 12, Example 1 includes a process of pulverizing wheat bran which is subsequently passed through a 220 µm sieve (i.e. selecting grains) and dried before mixing with the polylactic acid (paragraph 0030).
With respect to claim 15, Ogawa discloses biodegradation tests which result in degrading the biodegradable resin (paragraph 0031 and 0033) and teaches that adding more wheat bran (i.e., degradation accelerator) accelerates biodegradation (paragraph0043).
With respect to claim 18, Ogawa states that an example of the biodegradable resin is poly-3-hydroxybutyrate (paragraph 0011).
With respect to claims 21 and 22, Ogawa states that additives such as colorant, filler, flame retardant, and antiblocking agent can be added (paragraph 0016).
Claims 19 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Ogawa (JP 2002-363432, machine translation from IDS dated 9/13/2023) in view of Minami (US 2019/0359818).
The discussion with respect to Ogawa in paragraph 6above is incorporated here by reference.
Ogawa discloses that suitable and conventional biodegradable resins such as those produced by microorganism includes poly-3-hydroxybutyrate (a type of polyhydroxyalkanoate) (paragraph 0011) but fails to disclose a copolymer of poly-3-hydroxybutyrate with 3-hydroxyhexanoate and/or 3-hydroxyvalerate.
Minami discloses biodegradable polyester resins and teaches that poly-3-hydroxyalkanoates include poly-3-hydroxybutyrate, poly(3-hydroxybutyrate-co-3-hydroxyhexanoate, and poly(3-hydroxybutyrate-co-3-hydroxyvalerate-co-3-hydroxyhexanoate) can all be used for desirable processability and physical properties (paragraphs 0038, 0041, and 0042).
Given that Ogawa is open to the use of biodegradable polyesters resins such as poly-3-hydroxybutyrate and further given that Minami teaches that copolymers of 3-butyrate with 3-hydroxyhexanoate and/or 3-hydroxyvalerate are equivalent with respect to processability and physical properties, it would have been obvious to one of ordinary skill in the art to utilize the claimed copoly-4-hydroxyalkanoates.
Claims 24 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Ogawa (JP 2002-363432, machine translation from IDS dated 9/13/2023) in view of Oyama (JP 2002-088264, machine translation).
The discussion with respect to Ogawa in paragraph 6 above is incorporated here by reference.
Ogawa discloses that the degradation accelerator is wheat bran or wheat flour and fails to disclose other brans or plant-based degradation accelerators.
Oyama discloses a biodegradable resin composition (abstract) and teaches that a plurality of plant products can be used as a degradation accelerator including brans, germs, and extracts based on rice, corn, and wheat (paragraphs 0007 and 0009).
Given that Ogawa and Oyama are both drawn to biodegradable compositions comprising plant-based biodegradation accelerators, it would have been obvious to one of ordinary skill in the art to utilize alternative to wheat bran or flour such those based on corn or rice as taught by Oyama.
Response to Arguments
Applicant's arguments filed 8/4/2025 have been fully considered but they are not persuasive. Specifically, applicant argues that Ogawa does not fairly disclose or suggest a degradation accelerator having 1-9 µm cumulative particle size which exhibits improved mechanical properties as shown in the 132 declaration filed on 8/4/2025.
Ogawa teaches that the particulate biodegradable plastic composition can pass through a sieve with a mesh of 150 µm (paragraph 0012) and Example 1 has mass cumulative particle size of 21.5 µm. Ogawa also teaches that fine particle sizes allow for improved mechanical properties forming molded products, including thin products, of high practical value (paragraph 0012). Because Ogawa teaches that small particle size is desirable for forming desirable thin products, one of ordinary skill in the art would have expected that mechanical properties would improve by reducing cumulative particle size. Therefore, unexpected results or criticality have not been established for the claimed particle size.
Conclusion
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/VICKEY NERANGIS/Primary Examiner, Art Unit 1763
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