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 .
The amendment filed August 20, 2026 has been entered.
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.
Claims 28-38 and 42 are rejected under 35 U.S.C. 103 as being unpatentable over Desrousseaux (WO 2017/198786; paragraph number to corresponding US 2019/0218360) in view of Pawloski (US 2017/0100861).
Claim 28: Desrousseaux discloses a process for degrading a plastic product including at least one polymer (abstract). The process includes a) a pretreatment step to physically change the structure of the plastic so as to increase the surface area of the plastic product (¶¶ 92-93); and b) depolymerizing at least one target polymer of the pretreated plastic product (¶¶ 74-75); wherein the pretreatment step a) is performed at a temperature at which the plastic product is in a partially or totally molten state (¶¶ 46-47); and wherein depolymerizing step b) is performed by contacting the plastic product with a depolymerase able to degrade at least one polymer of the plastic product in a liquid medium including the depolymerizing agent (¶ 94).
Desrousseaux is silent as to the pretreatment being foaming. However, Pawloski discloses a process for degrading a plastic product including at least one polymer (abstract), including a) foaming the plastic product (¶¶ 75-83); and b) depolymerizing a target polymer of the foamed product (¶¶ 39-44), wherein the step of foaming is performed at a temperature at which the plastic product is in a molten state (¶¶ 71, 75-83), and wherein the depolymerizing is performed by contacting the plastic product with a depolymerase able to degrade at least one polymer of the plastic product (¶ 39). As taught by Pawloski, the resulting foamed polyester is biodegradable, i.e., subject to enzymatic decomposition such as by microorganisms, and is intended to be broken down by composting after use (¶¶ 39-41). The foaming converts the solid polyester into a cellular material having cells on the order of 50 to 150 microns, which is a plastic product having a greatly increased surface area for a given mass of polymer. It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the application to have chosen foaming as the pretreatment step in Desrousseaux because: i. Desrousseaux expressly teaches that the pretreatment step should increase the surface of contact between the polymers and the enzymes (¶ 93) and foaming, as taught by Pawloski, was a known technique for producing plastics having a large surface area, and ii. Pawloski teaches that a foamed polyester remains biodegradable by enzymatic action and is designed to be broken down biologically after use (¶¶ 39-41), so that a skilled person would have had a reasonable expectation that a foamed plastic product could be enzymatically depolymerized as taught by Desrousseaux. Applying a known technique (foaming) to a known process (Desrousseaux) to obtain the very improvement the primary reference calls for (increased polymer-enzyme contact surface) is the use of a known technique to improve a similar process in the same way, and the prior art itself supplies the teaching, suggestion and motivation for the modification. Moreover, to the extent the modification is seen as substituting foaming for one of the other surface-increasing pretreatments disclosed by Desrousseaux, it is the simple substitution of one known surface-increasing pretreatment for another to obtain predictable results.
Claim 29: Desrousseaux discloses the amorphization step being performed at a temperature above the Tc of the target polymer (claim 17); Pawloski discloses the foaming step being performed at a temperature above the Tc of the target polymer (¶¶ 71, 75-83).
Claims 30-31: Pawloski discloses the foaming being implemented with CO2 (¶¶ 71, 75-83).
Claims 32-33: Pawloski discloses the foaming being implemented with citric acid (¶ 51).
Claim 34: Pawloski discloses the foamed plastic product including a blowing agent at 0.05 to 90 % blowing agent, which would be expected to result in the product exhibiting a porosity rate above 20%, or overlapping the claimed range.
Claims 35-37: Pawloski discloses cooling the product to a temperature below the Tc of the target polymer rapidly by skipping the annealing step, to induce rapid crystallization (¶ 71).
Claim 38: Pawloski discloses the foaming being performed in an extruder (¶¶ 75-83).
Claim 42: Pawloski discloses the plastic product including PLA (¶ 48).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 28-33, 38 and 42 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 10,767,026 (‘026) in view of Pawloski (US 2017/0100861) and Desrousseaux.
Claim 28: Claim 1 of ‘026 is directed to a process for degrading a plastic product including at least one polymer including amorphization at least partially the plastic product; and depolymerizing a target polymer of the plastic product, wherein the step of amorphization is performed at a temperature at which the plastic product is in a partially or totally molten state, and wherein the depolymerizing is performed by contacting the plastic product with a depolymerase able to degrade at least one polymer of the plastic product. Claim 1 of ‘026 is silent as to foaming and the depolymerizing being in a liquid medium. However, Desrousseaux discloses a process for degrading a plastic product including at least one polymer (abstract). The process includes a) a pretreatment step to physically change the structure of the plastic so as to increase the surface area of the plastic product (¶¶ 92-93); and b) depolymerizing at least one target polymer of the pretreated plastic product (¶¶ 74-75); wherein the pretreatment step a) is performed at a temperature at which the plastic product is in a partially or totally molten state (¶¶ 46-47); and wherein depolymerizing step b) is performed by contacting the plastic product with a depolymerase able to degrade at least one polymer of the plastic product in a liquid medium including the depolymerizing agent (¶ 94). Pawloski discloses a process for degrading a plastic product including at least one polymer (abstract), including a) foaming the plastic product (¶¶ 75-83); and b) depolymerizing a target polymer of the foamed product (¶¶ 39-44), wherein the step of foaming is performed at a temperature at which the plastic product is in a molten state (¶¶ 71, 75-83), and wherein the depolymerizing is performed by contacting the plastic product with a depolymerase able to degrade at least one polymer of the plastic product (¶ 39). As taught by Pawloski, foaming and depolymerizing the plastic breaks the plastic down into a useful substance (¶¶ 39-41). It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the application to have chosen foaming as the pretreatment step in claim 1 of ‘026 because: i. Desrousseaux expressly teaches that the pretreatment step should increase the surface of contact between the polymers and the enzymes (¶ 93) and foaming, as taught by Pawloski, was a known technique for producing plastics having a large surface area, and ii. foaming and depolymerizing the plastic breaks the plastic down into a useful substance, also taught by Pawloski (¶¶ 39-41).
Claim 29: Desrousseaux discloses the amorphization step being performed at a temperature above the Tc of the target polymer (claim 17); Pawloski discloses the foaming step being performed at a temperature above the Tc of the target polymer (¶¶ 71, 75-83).
Claims 30-31: Pawloski discloses the foaming being implemented with CO2 (¶¶ 71, 75-83).
Claims 32-33: Pawloski discloses the foaming being implemented with citric acid (¶ 51).
Claim 34: Pawloski discloses the foamed plastic product including a blowing agent at 0.05 to 90 % blowing agent, which would be expected to result in the product exhibiting a porosity rate above 20%, or overlapping the claimed range.
Claims 35-37: Pawloski discloses cooling the product to a temperature below the Tc of the target polymer rapidly by skipping the annealing step, to induce rapid crystallization (¶ 71).
Claim 38: Pawloski discloses the foaming being performed in an extruder (¶¶ 75-83).
Claim 42: Pawloski discloses the plastic product including PLA (¶ 48).
Response to Arguments
Applicant's arguments filed August 20, 2026 have been fully considered but they are not persuasive.
Applicant argues “Pawloski teaches in paragraph 41 that composting, not foaming and depolymerization, is the biological process of breaking down organic waste into a useful substance.” Applicant has correctly identified Pawloski paragraph 41 as a definition of composting. Neither that paragraph, nor paragraph 39, is treated as the sole disclosure of the claimed liquid-enzyme step. In particular, paragraph 39 discloses hydrolysis of PLA followed by microbial consumption of lower-molecular-weight products. Paragraph 94 of Desrousseaux and its PLA enzyme example supply the claimed liquid treatment. Pawloski teaches the melt-foaming process. The combination is evaluated on those contributions.
Applicant further argues that amorphization and micronization are different from foaming. Desrousseaux’s amorphization and optional surface-modification pretreatment are distinct. Paragraphs 92-94 discloses pretreatment before amorphization and/or depolymerization. The rejection combination adds Pawloski’s melt-foaming operation while retaining Desrousseaux’s cooling and post-cooling granulation.
Applicant argues that “Desrousseaux teaches that the amorphization step allows one to decrease the degree of crystallinity of a polyester of the plastic product and thereby favors subsequent depolymerization, and that Pawloski teaches an extrusion foam process that induces rapid crystallization.” Paragraph 71 of Pawloski does not establish low crystallinity merely from the absence of annealing. The deformation and nucleation of Pawloski must be considered along with Desrousseaux’s objective of reducing crystallinity. Claim 28’s open transitional phrase permits cooling and granulation between foaming and depolymerization. Foaming is not substituted for the entire amorphization sequence. Desrousseaux explicitly demonstrates enzyme degradation of PLA after melt processing, cooling and micronization, which is more than a general reference to compostability.
With regard to the argument of unexpected results, the relevant question is not whether the result is claimed, but whether the evidence of the result is commensurate in scope with the claims. Claim 28 encompasses any plastic produce including any polymer, foamed to any degree by any chemical or physical method at any temperature at which the product is at least partially molten, and depolymerized by any polymerase in any liquid. A single comparison at one point within this broad claim provides no basis for concluding that the full scope of claim 28 behaves unexpectedly. The PET series establishes a trend for PET, but the PLA example does not compare foamed and unfoamed material under matched enzyme-treatment conditions. The claims do not limit the process to the tested PET conditions or exclude granulation and optional micronization.
Conclusion
THIS ACTION IS MADE FINAL. 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 LARRY THROWER whose telephone number is (571)270-5517. The examiner can normally be reached 9am-5pm MT M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Susan Leong can be reached at 571-270-1487. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LARRY W THROWER/ Primary Examiner, Art Unit 1754
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