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 .
Applicant’s response and amendment to the claims filed on 2/17/2026 are acknowledged. The rejections and objections made in the previous office action are withdrawn in view of the amendment to the claims.
Claims 1-26 are pending.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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 1-2, 4-7, 9, 12-26 are rejected under 35 U.S.C. 103 as being unpatentable over Yang et al. (US 2015/0307671).
Regarding claim 1: Yang is directed to a polymer composition comprising, with respect to the total composition: (see [0014]-[0020]).
(i) 71-91 wt% with respect to the total weight of the composition of at least one aliphatic-aromatic polyester (ii) comprising:
a) a dicarboxylic component comprising, with respect to the total dicarboxylic acid component
a1) 30-60 mol% of at least one aromatic dicarboxylic acid
a2) 40-70 mol% of at least one aliphatic dicarboxylic acid
b) a diol component, with respect to the total diol component:
b1) 100 mol% of at least one saturated aliphatic alkanediol.
(ii) 9-29 wt% by weight of a polymer of second polyester, including those of natural origin, e.g. Origo-Bi ([0076]
(iii) 10-35 wt% of a biodegradable polymer including polyhydroxyalkonate and a polymer of natural origin of starch [0102].
While Yang doesn’t mention a single resin composition simultaneously comprising the aforementioned components in a single composition, it would have been obvious to have selected such a composition since Yang discloses finite number of identified, predictable options and one of ordinary skill in the art could have pursued the known potential solutions with a reasonable expectation of success. Specifically, component ii) a polymer of natural origin and iii) at least one polyhydroxyalkonate are disclosed within claimed amounts, although not specifically mentioned in a single composition. Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have selected composition within the scope of claim 1.
The composition does not comprise a polyalkylene carbonate.
Regarding claim 2: The aromatic dicarboxylic acids are preferably terephthalic acid and ester forming derivatives ([0054]).
Regarding claim 4: The saturated aliphatic dicarboxylic acids are selected from C9-C18 saturated dicarboxylic acids their alkyl ester ([0049]-[0054]).
Regarding claim 5: The saturated aliphatic acids are selected from azelaic acid, sebacic acid, brassylic acid, and their alkyl ester esters and mixtures ([0054]).
Regarding claims 6-7: Suitable diols include 1,4-butanediol disclosed in the working example [0138]. Selection of 1,4-butanediol as the diol results in a polyester comprising at least 50 mol% of 1,4-butanediol.
Regarding claim 9: 0% in moles of at least one hydroxy acid is well within the scope of Yang.
Regarding claim 12: 10-35 wt% of starch is disclosed ([0102]).
Regarding claims 13-15: Preferred biodegradable components include PHB ([0103]) (equivalent to a polyhydroxyalkanoate obtained from 100 mol% hydroxybutyrate).
Regarding claim 16: 0% by weight lactic acid is well within the scope of Yang.
Regarding claim 17: Useful chain extenders include di polyisocyanates and di polyepoxides ([0061]-[0064]).
Regarding claim 18: While claim 18 further limits the inorganic filler, claim 1 includes an amount of 0 wt%, which is well within the scope of Yang. Nevertheless, suitable fillers include kaolin, silicon dioxide (quartz), titanium dioxide, silicate, wollastonite, mica, talcum, and mineral fibers. ([0085]).
Regarding claim 19: Additional polymers are disclosed, including an epoxy containing copolymer ([0109]).
Regarding claim 20: Additives of additive selected from the group consisting of lubricant, anti blocking agent, antistatic, UV absorber, UV stabilizer, thermal stabilizer, dye, pigment, colorant, plasticizer, fertilizer and active crop protection ingredient are disclosed ([0107]).
Regarding claim 21: A film is disclosed ([0033]).
Regarding claim 22: A film having a thickness of 30 um is disclosed ([0130]).
Regarding claims 23-24: Yang doesn't specifically recite a tensile strength of > 15 MPa, an elastic modulus, elongation at break, an elastic modulus, a tear strength in the transverse direction. However, the film produced in Yang is substantially identical to the film produced in the instant invention.
Case law holds that the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP 2112.01(I). In the present case, the film of Yang is substantially identical in composition as that of the present invention, as discussed previously.
Hence, Yang suggests a film having properties within the scope of the claims. Since PTO cannot conduct experiments the proof of burden is shifted to the applicants to establish an unobviousness difference, see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977). See MPEP § 2112.01.
If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant's position; and (2) it would be the Office's position that the application contains inadequate disclosure, since one skilled in the art would not understand how to obtain the claimed properties with only the claimed reactants, claimed amounts, and substantially similar process of making.
Regarding claim 25: The films are primarily used as mulch films for agriculture ([0121]).
Regarding claim 26: The films can be used for bags containing food including fruit and vegetables ([0121]).
Claims 3, 8, 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Yang as applied to claim 1 above, and further in view of Gesti Garcia et al. (WO 2018/158269).
Regarding claim 3: Yang doesn’t mention the aromatic dicarboxylic acid comprises 2,5-furandicarboxlyic acid its esters or salts.
Gesti Garcia is directed to a polymer composition comprising at least one aliphatic-aromatic polyester (ii), (ii) 0-30 wt% of polymers of natural origin such as starch and plant fibers ([0097]) (iii) 1 - 25 wt% of at least one polyhydroxyalkanoate, such as polylactic acid.
The aliphatic aromatic polyesters include polyesters wherein up to 10% by moles includes a 2,5 furandicarboxylic acid (p. 4 Gesti Garcia).
One skilled in the art would have been motivated to have selected the aliphatic aromatic polyester of Gesti Garcia as the aliphatic aromatic polyester of choice in Yang since it was surprisingly found that compositions made comprising the aliphatic aromatic polyester increase the low temperature disintegration rate of films obtained from the composition, while maintaining if not improving their mechanical properties (p. 1 Gesti Garcia).
Regarding claim 8: An aliphatic aromatic polyester of claim 8 is not specifically listed by Yang, although aliphatic aromatic polyesters comprising 1,4-butanediol are within the scope of Yang.
Gesti Garcia Poly(1,4-butylene adipate-co-1,4-butylene
terephthalate) ("PBAT") is disclosed in the working examples ([0156]) (equivalent to an aliphatic diol of 1,4-butanediol, at least 50% in moles of 1,4-butanediol).
One skilled in the art would have been motivated to have selected the aliphatic aromatic polyester of Gesti Garcia as the aliphatic aromatic polyester of choice in Yang since it was surprisingly found that compositions made comprising the aliphatic aromatic polyester increase the low temperature disintegration rate of films obtained from the composition, while maintaining if not improving their mechanical properties (p. 1 Gesti Garcia). Therefore, it would have been obvious to one skilled in the art at the art time the invention was filed to have selected the aliphatic aromatic polyester of Gesti Garcia as the aliphatic aromatic polyester of choice in Yang.
Regarding claim 10: The molecular weight of the polyester i) is 1000-100,000 ([0050]) although a polydispersity index and viscosity is not mentioned.
The molecular weight of the aliphatic-aromatic polyester of Gesti Garcia is ≥ 200000, a polydispersity index of 1.5-10 and an inherent viscosity (measured using an Ubbelohde viscosity meter for solutions in CHC13 of concentration 0.2 g/dl at 25° C.) of more than 0.3 dl/g (p. 10).
Regarding claim 11: The terminal acid group content is preferably less than 100 meq/kg (p. 10).
Response to Arguments
Applicant’s arguments, see Remarks, filed 2/17/2026, with respect to the rejection(s) of claim(s) 1-26 under 35 USC 103(a) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Yang et al. (US 2015/0307671).
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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