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 .
Election/Restrictions
Claim 6 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on July 7, 2025.
Applicant’s election without traverse of Group I claims 1-5 in the reply filed on July 7, 2025 is acknowledged.
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.
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.
Claims 1, 2 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Hermes et al. (U.S. Pat. 5,256,762).
Regarding claims 1 and 2: Hermes et al. teaches a copolymer/polyester having a predetermined monomeric sequence (abstract) comprising such monomers as glycolic acid/2-hydroxyacetic acid, and α-hydroxybutyric acid/2-hydroxybutyric acid (col. 4 lines 44-55), which have a hydroxyl group only at the 2-position. Hermes et al. also discloses β-hydroxybutyric acid (col. 4 lines 44-55), which is a hydroxycarboxylic acid having a hydroxy group at a position other than a 2-position/3-hydroxybutyrate. Hermes et al. further teaches that the polyester can be formed having a predetermined monomeric sequence including any conceivable combination of the various hydroxyacids described above (col. 4 lines 55-63). Since two monomers of the same hydroxycarboxylic acid can be next to each other (see col. 4 lines 55-63), and the “homopolymer segment” in the claim does not define how many repeat units are required to be considered a homopolymer segment, then a person having ordinary skill in the art would consider at least two units of the same hydroxycarboxylic acid to be a homopolymer segment, while the rest of the polymer would be a copolymer segment containing at least two hydroxycarboxylic acids selected from the hydroxycarboxylic acid (A) and the hydroxycarboxylic acid (B). Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to construct a polymer having a homopolymer segment composed of at least two units selected from the hydroxycarboxylic acid (A) and the hydroxycarboxylic acid (B) and a copolymer segment containing at least two acids selected from the hydroxycarboxylic acid (A) and the hydroxycarboxylic acid (B) and would have been motivated to do so since Hermes et al. teaches that any conceivable combination of the various hydroxyacids can be sequenced to form a polyester.
Regarding claim 4: Hermes et al. teaches glycolic acid/2-hydroxyacetic acid, and β-hydroxybutyric acid/3-hydroxybutyric acid (col. 4 lines 44-55). Hermes et al. also teaches that the polyester can be formed having a predetermined monomeric sequence including any conceivable combination of the various hydroxyacids described above (col. 4 lines 55-63). Since two monomers of the same hydroxycarboxylic acid can be next to each other (see col. 4 lines 55-63), and the “homopolymer segment” in the claim does not define how many repeat units are required to be considered a homopolymer segment, then a person having ordinary skill in the art would consider at least two units of the same hydroxycarboxylic acid to be a homopolymer segment, while the rest of the polymer would be a copolymer segment containing at least two hydroxycarboxylic acids selected from the hydroxycarboxylic acid (A) and the hydroxycarboxylic acid (B).
Claims 3 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Hermes et al. (U.S. Pat. 5,256,762) as applied to claim 1 set forth above and in view of in view of Skraly et al. (US 2008/0275208).
Regarding claim 3: Hermes et al. teaches α-hydroxybutyric acid/2-hydroxybutyric acid, β-hydroxybutyric acid/3-hydroxybutyrate and hydroxyvaleric acid (col. 4 lines 44-55). Hermes et al. also teaches that the polyester can be formed having a predetermined monomeric sequence including any conceivable combination of the various hydroxyacids described above (col. 4 lines 55-63). Since two monomers of the same hydroxycarboxylic acid can be next to each other (see col. 4 lines 55-63), and the “homopolymer segment” in the claim does not define how many repeat units are required to be considered a homopolymer segment, then a person having ordinary skill in the art would consider at least two units of the same hydroxycarboxylic acid to be a homopolymer segment, while the rest of the polymer would be a copolymer segment containing at least two hydroxycarboxylic acids selected from the hydroxycarboxylic acid (A) and the hydroxycarboxylic acid (B).
Hermes et al. teaches hydroxyvaleric acid, which has five carbons, instead of 3-hydroxyhexanoic acid which has six carbons. However, Skraly et al. teaches a similar copolymer using 3-hydroxyhexanoate (abstract). Hermes et al. and Skraly et al. are analogous art since they are both concerned with the same field of endeavor, namely polyhydroxyalkanoate copolymers. Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to replace the hydroxyvaleric acid of Hermes et al. with the 3-hydroxyhexanoate of Skraly et al. and would have been motivated to do so since they can be produced by biological systems through genetic engineering.
Regarding claim 5: Hermes et al. teaches glycolic acid/2-hydroxyacetic acid, and β-hydroxybutyric acid/3-hydroxybutyric acid (col. 4 lines 44-55) and hydroxyvaleric acid (col. 4 lines 44-55). Hermes et al. also teaches that the polyester can be formed having a predetermined monomeric sequence including any conceivable combination of the various hydroxyacids described above (col. 4 lines 55-63). Since two monomers of the same hydroxycarboxylic acid can be next to each other (see col. 4 lines 55-63), and the “homopolymer segment” in the claim does not define how many repeat units are required to be considered a homopolymer segment, then a person having ordinary skill in the art would consider at least two units of the same hydroxycarboxylic acid to be a homopolymer segment, while the rest of the polymer would be a copolymer segment containing at least two hydroxycarboxylic acids selected from the hydroxycarboxylic acid (A) and the hydroxycarboxylic acid (B).
Hermes et al. teaches hydroxyvaleric acid, which has five carbons, instead of 3-hydroxyhexanoic acid which has six carbons. However, Skraly et al. teaches a similar copolymer using 3-hydroxyhexanoate (abstract). Hermes et al. and Skraly et al. are analogous art since they are both concerned with the same field of endeavor, namely polyhydroxyalkanoate copolymers. Before the effective filing date of the claimed invention a person having ordinary skill in the art would have found it obvious to replace the hydroxyvaleric acid of Hermes et al. with the 3-hydroxyhexanoate of Skraly et al. and would have been motivated to do so since they can be produced by biological systems through genetic engineering.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Megan McCulley whose telephone number is (571)270-3292. The examiner can normally be reached Monday - Friday 9-5:30.
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/MEGAN MCCULLEY/
Primary Examiner, Art Unit 1767
Prosecution Insights