DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Any new grounds of rejection set forth below are necessitated by Applicant’s amendment. For this reason, the present action is properly made final.
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, 4-13, 15-19, 21 are pending. Claims 1-6, 13, 14, 17, 19 were elected in the reply filed on 4/15/2025.
Claim Rejections - 35 USC § 103
Claims 1, 4, 6, 12-13, 17, 19 are rejected under 35 U.S.C. 103 as being unpatentable over Lu et al. (US 2018/0148573) in view of Rosen (US 2015/0125639).
Regarding claim 1: Lu is directed to a biodegradable polyester composition comprising:
(i) 60-100 parts by weight of an aromatic polyesters including polybutylene adipate terephthalate (PBAT) ([0020] Lu),
(ii) 0 to 35 parts by weight of an inorganic filler, whereby the inorganic filler selected from dolomite and/or calcium carbonate ([0011] [0021] Lu)
(iii) 0 to 35 parts of an organic filler including natural starch (equivalent to a starch of vegetable origin) ([0021] Lu)
(iv) 0-4 part by weight of a plasticizer including a polyol of glycerol, or an oil of vegetable origin of epoxidized soybean oil ([0024] Lu)
(v) 0-35 parts of an organic and/or inorganic filler including talc (a hydrated magnesium silicate) (see claims 1, 6 Lu)
(vi) 0-40 parts by weight of an aliphatic polyester of polylactic acid (claim 1 Lu). Selection of zero parts polylactic acid results in a composition comprising 0% PLA. Embodiment 1 of Lu demonstrates a composition comprising 0% PLA.
Lu doesn’t mention the inorganic filler of dolomite and/or calcium carbonate has a polished surface.
Rosen is directed to a biodegradable and compostable composition comprising (i) 30-50 % by weight of a biodegradable polyester, (ii) 20-40 % by weight of a filler composition comprising dolomite particles having a polished surface, (iii) 20-40 % by weight of starch from vegetable origin, and (iv) 1-5 % by weight of a binding agent comprising a resin ester of vegetable origin. The polished dolomite particles are mixed with pine ester and subsequently added to the plastic composition in the working examples ([0096]-[0098] Rosen) (equivalent to dolomite particles have been pre-treated with said at least one oil of vegetable origin to form a lubricant).
One skilled in the art would have been motivated to have selected particles having a polished surface in Lu since the have substantially no sharp edges remaining on the surface of the filler particles, wherein removing substantially all the sharp edges of the filler particles will increase tear strength and will limit the apparatus wear during processing thereof ([0015]-[0016] Rosen). Selection of a polished filler particle is well within the skill level of one of ordinary skill in the art. Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have selected particles having a polished surface in Lu to arrive at claim 1 of the present invention.
Regarding claim 4: Lu doesn’t mention any particle size of the inorganic filler.
Rosen teaches the inorganic filler particles including dolomite have a particle size of less than 10 μm ([0014] Rosen). One skilled in the art would have been motivated to have selected the particles of Rosen as the particles in Lu for requite strength ([0014] Rosen). Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have selected the particles of Rosen as the particles in Lu to arrive at claim 2 of the present invention.
Regarding claim 6: Lu doesn’t mention pre-treating the dolomite and/or calcium carbonate particles with said oil of vegetable origin and/or polyol.
However, case law holds that selection of any order of mixing ingredients is prima facia obvious. In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.). MPEP 2144.04 (IV)(C). In the present case, while the pre-treating the dolomite and/or calcium carbonate particles with said oil of vegetable origin and/or polyol is not mentioned, a prima facia case of obviousness if provided.
Alternatively, it is not clear what the pre-treatment is in regards to. Further, the composition is mixed together and further extruded ([0039]), and therefore is equivalent to a pre-treatment in the sense that it is treated prior to extrusion.
Regarding claim 13: The composition can be used for making may be used for preparing shopping bag, compost bag, mulching film, protective cover film, silo film, film strip, fabric, non-fabric, textile, fishing net, bearing bag, garbage bag and the like ([0033] Lu).
Regarding claim 17: Lu doesn’t mention granules made from the composition.
Rosen teaches the method of preparing the composition comprises extruding the mixture into granules of the plastic composition. One skilled in the art would have been motivated to have extruded the mixture into granules to preparing a plastic film to be used for making waste bags, plastic bags plastic bags for fruit, sanitary towels or other
applications in which permeable plastic film is preferred ([0071] Rosen) or plant pots, urns, and coffins ([0072] Rosen). Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have extruded the mixture of Lu into granules.
Regarding claim 19: A use of the composition is disclosed.
Claims 5, 21 are rejected under 35 U.S.C. 103 as being unpatentable over Lu and Rosen as applied to claim 1 above, and further in view of Willett et al. (US 7,037,959).
Regarding claim 5: The combination of Lu and Rosen doesn’t mention a particle size of the starch of a vegetable origin.
Willett is directed to a biodegradable composition comprising starch granules derived from a vegetable having a particle size of less than 50 μm. One skilled in the art would have been motivated to have selected the starch granules of Willett as the starch of choice in Lu since they are preferred (col. 8 ll. 1-10 Willett). Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have selected the starch granules of Willett as the starch of choice in Lu to arrive at claim 5 of the present invention.
Regarding claim 21: Lu doesn’t mention 40-50% by weight of an aliphatic polyester that is not PLA.
Willet teaches the composition comprises an aliphatic polyester that is not PLA including commercially available and conventional polyesters known in the art (col. 9 ll. 15-304), which are included in an amount of 1-99 wt% of the composition (col. 3 ll. 17-28 Willett). One skilled in the art would have been motivated to have included an aliphatic polyester in the composition of Lu since they are widely known by one skilled in the art for making biodegradable articles as demonstrated by Willett. Therefore, one skilled in the art would have been motivated to have selected an aliphatic polyester in an amount of 40-50% by weight of the composition.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Lu and Rosen as applied to claim 1 above, and further in view of Meyer et al. (US 2022/0195180).
Regarding claim 21: The combination of Lu and Rosen doesn’t mention polybutylene succinate, although Lu mentions succinic acid aliphatic aromatic copolymers.
Meyer is directed to a composition comprising a mixture of polybutylene succinate and polybutylene succinate-co-adipate and use in making articles thereof, wherein the PBS is used in an amount of 30-75% by mass in a mass ratio of 10;90 to 40:60 PBS to polybutylene succinate-co-adipate ([0034] [0040]-[0041] Meyer). One skilled in the art would have been motivated to have included a combination of PBS and polybutylene succinate-co-adipate for improved properties including biodegradability wherein PBS in particular has properties similar to polyethylene ([0002] [0010] Meyer). Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have included a combination of polybutylene succinate and polybutylene succinate-co-adipate in the composition of Lu to arrive at claim 20 of the present invention.
Meyer discloses a mixture of polybutylene succinate and polybutylene succinate-co-adipate and use in making articles thereof, wherein the PBS is used in an amount of 30-75% by mass in a mass ratio of 10:90 to 40:60 PBS to polybutylene succinate-co-adipate ([0034] [0040]-[0041] Meyer).
Response to Arguments
Applicant's arguments filed 8/26/2025 (herein “Remarks”) have been fully considered but they are not persuasive.
Applicant argues (p. 7-8 Remarks) The rejection relies on impermissible hindsight. Additionally, Claim 1 recites at least one oil of vegetable origin. This is an unmodified oil and is used to pretreat the polished filler particles to create a lubricant. In contrast, Lu teaches a plasticizer including tributyl citrate, glycerol, or epoxidized soybean oil and is not synonymous with oil of vegetable origin.
This argument is not found persuasive since case law holds “[a]ny judgement on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper.” In re McLaughlin 443 F.2d 1392, 1395, 170 USPQ 209, 212 (CCPA 1971). See MPEP 2145 (X)(A). In the instant case, the present office action takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, and therefore impermissible hindsight is not required to arrive at the present invention.
Further, claims must be given their broadest reasonable interpretation. In the present case, tributyl citrate, glycerol, epoxidized soybean oil are all equivalent to an oil of vegetable origin. Glycerol is specifically defined by the present invention as an oil of vegetable origin.
Further, it is well settled that "reading a claim in light of the specification, to thereby interpret limitations explicitly recited in the claim, is a quite different thing from ‘reading limitations of the specification into a claim, to thereby narrow the scope of the claim by implicitly adding disclosed limitations which have no express basis in the claim." MPEP 2111.
Applicant argues (p. 8-9 Remarks) Lu discloses plasticizers, while the present invention utilizes vegetable oils as a lubricant. While Rosen teaches resin ester of vegetable origin as a binding agent, this is not an unmodified lubricant. Adding an epoxidized oil to a composition comes with drawbacks. Moreover, even if one added the oil of Lu, there is no expectation of success.
This argument is not found persuasive since Lu specifically discloses glycerol, which is defined by the present invention as an oil of vegetable origin, and therefore well within the skill level to select the claimed oil of vegetable origin with a reasonable expectation of success.
Applicant argues (p. 9 Remarks) Lu’s Table 1 provides one embodiment with the use of a plasticizer (tributyl citrate). Applicants note the use of plasticizer is always when combined with PLA.
This argument is not found persuasive since "[I]n a section 103 inquiry, 'the fact that a specific [embodiment] is taught to be preferred is not controlling, since all disclosures of the prior art, including unpreferred embodiments, must be considered.'" Merck & Co., Inc. v. Biocraft Laboratories, Inc. 874 F.2d 804, 807 (Fed. Cir. 1989) (quoting In re Lamberti, 545 F.2d 747, 750 (C.C.P.A. 1976)).
Applicant argues (p. 10 Remarks) with regards to claim 5, Applicant notes Willett discloses starch particle size in the context of compositions containing specific hydroxy-functional polyesters (PHEE) and often PLA (e.g. Example 1), a different context from the PLA free composition of the present invention. Thus there is no motivation to combine with Lu/Rosen.
This argument is not found persuasive since Lu already teaches starch. Willett is directed to a biodegradable composition comprising starch granules derived from a vegetable having a particle size of less than 50 μm. One skilled in the art would have been motivated to have selected the starch granules of Willett as the starch of choice in Lu since they are preferred (col. 8 ll. 1-10 Willett).
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT T BUTCHER whose telephone number is (571)270-3514. The examiner can normally be reached Telework M-F 9-5 Pacific Time Zone.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lanee Reuther can be reached at (571) 270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT T BUTCHER/Primary Examiner, Art Unit 1764
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