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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 February 13, 2026 has been entered.
Response to Arguments
Applicant's arguments filed August 12, 2025 with respect to the rejections under 35 U.S.C. 103 have been fully considered but they are not persuasive. Applicant argues that the water degradability reduction rate (Equation 5) and MnA features are not met by Chen as Chen is primarily directed to obtaining a copolymer having a high weight-average molecular weight of about 100,000 g/mol to 600,000 g/mol. However, Chen teaches that the copolyester has a weight-average molecular weight (Mw) range of 100,000 g/mol to 600,000 g/mol and a molecular weight distribution (Mw/Mn) of 1.2-3 ([0024]-[0026]). The distribution of number-average molecular weight is directly related to the weight-average molecular weight through the molecular weight distribution (MWD). The range of number-average molecular weight values taught by Chen are considered to be:
M
W
D
=
M
w
M
n
,
t
h
u
s
M
n
=
M
w
M
W
D
M
n
=
100,000
g
/
m
o
l
3
≈
33,000
g
/
m
o
l
M
n
=
600,000
g
/
m
o
l
1.2
≈
500,000
g
/
m
o
l
Thus, the molecular weight distribution of the copolyester described by Chen is construed to overlap with the claimed range, thus satisfying the claimed MnA. While it remains the position of the Office that the instant claims do not recite or require a “pretreatment step,” Chen meets the limitations set forth within the claims, including MnA, which Applicant presently alleges is a structural limitation that results from said “pretreatment step” (see pg. 15, para. 1 of the Remarks filed February 6, 2026). Therefore, even if, arguendo, the instant claims recited a pretreatment process limitation, “product-by-process claims are limited by and defined by the process” and “determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Applicant alleges that Comparative Examples 1 and 4, in which a pretreatment step is not performed and the X/Y value is in the claimed range of 0.8 to 3.0 as these examples exhibit ISI values outside of the claimed range. However, it is the position of the Examiner that Comparative Examples 1 and 4, which lack a pretreatment step and do not satisfy the claimed impact strength index, are not commensurate in scope with regard to the presence or absence of a pretreatment step because these examples also differ from the examples that are in accordance with the invention in variables besides the presence or absence of a pretreatment step, notably in MnA, which Applicant alleges is a structural difference that arises from the pretreatment step (see pg. 15, para. 1 of the Remarks filed February 6, 2026). Therefore, there is insufficient evidence that any property differences that arise from the comparative examples are due to the presence of a pretreatment step, which the Office notes is not required by the presently elected claims.
With respect to Applicant’s argument that there is no legal basis for a requirement that there would need to be evidence of the structural changes imparted by a pretreatment step that give rise to the claimed properties with only the claimed ingredients, it is the position of the Office that “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). That is, the product as claimed must be shown to be patentably distinct from that of the prior art in order as a result of the process in order to overcome the rejection of record.
Applicant argues that the ‘751 patent does not disclose the claimed impact strength index and therefore does not render obvious the instantly claimed invention. However, the functional property limitations recited in the instant application (i.e., impact strength index) and the ‘751 patent appear to naturally arise and be achieved by a composition with all the claimed ingredients. Accordingly, the instant claims are not patentably distinct from that of the ‘751 patent.
Applicant’s arguments and amendments have been considered and are fully addressed in the remarks above and rejections below.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-12 and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Chen et al. (US20060142536, hereinafter referred to as “Chen”).
As to Claim 1: Chen teaches a biodegradable copolyester having the structure ([0024]):
PNG
media_image1.png
134
854
media_image1.png
Greyscale
which comprises a repeat unit comprising a first diol residue and an aromatic dicarboxylic acid (i.e., the unit having y repeat units in the structure above) and a second repeat unit comprising a second diol residue and an aliphatic dicarboxylic acid residue (i.e., the unit having y units in the structure above) ([0024]). Chen further teaches that the copolymer is prepared by an aromatic monomer (a) reacting with a diol monomer (b), followed by adding an aliphatic monomer (c) ([0035]), and further teaches that the molar ratio of the monomer (a) to monomer (c) may be 35:65 to 60:40 ([0042]).
Chen does not teach explicitly teach a number of repeat units or an X/Y ratio. However, given the molecular weight range taught by Chen (Mw = 100,000 to 600,000 g/mol, see ([0024]) and the molar ratio of monomers (a) to (c), the copolymer of Chen would result in a value for number of repeat units which overlaps with the claimed X/Y ratio, e.g., assuming a 300,000 g/mol copolymer formed from (a) = terephthalic acid, (b) = 1,4-butane diol, (c) = adipic acid, which exhibits an aliphatic repeat unit weight of 200.2 g/mol and an aromatic repeat unit weight of 220.2 g/mol. Assuming a monomer (a) to monomer (c) of 60:40, calculating for the number of repeat units, N:
c
o
p
o
l
y
m
e
r
M
w
=
x
M
a
l
i
p
h
a
t
i
c
+
y
M
a
r
o
m
a
t
i
c
=
0.4
N
200.2
g
m
o
l
+
0.6
N
220.21
g
m
o
l
N
=
300,000
210.61
≈
1424
r
e
p
e
a
t
u
n
i
t
s
0.6
1424
=
854
a
r
o
m
a
t
i
c
u
n
i
t
s
;
0.4
1424
=
570
a
l
i
p
h
a
t
i
c
u
n
i
t
s
854
a
r
o
m
a
t
i
c
u
n
i
t
s
570
a
l
i
p
h
a
t
i
c
u
n
i
t
s
≈
1.5
In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Chen suggests, that the overlapping portion is a useful range for relative amounts (i.e., an X/Y ratio) of aliphatic- and aromatic-containing comonomer units within a biodegradable polyester having a balance of processability, mechanical properties, and degradability ([0066]-[0067]).
With regard to the limitation included in Equation 5 wherein “MnA is 50,000 g/mol to 70,000 g/mol,” Chen teaches that the copolyester has a weight-average molecular weight (Mw) range of 100,000 g/mol to 600,000 g/mol and a molecular weight distribution (Mw/Mn) of 1.2-3 ([0024]-[0026]). The distribution of number-average molecular weight is directly related to the weight-average molecular weight through the molecular weight distribution (MWD). The range of number-average molecular weight values taught by Chen are considered to be:
M
W
D
=
M
w
M
n
,
t
h
u
s
M
n
=
M
w
M
W
D
M
n
=
100,000
g
/
m
o
l
3
≈
33,000
g
/
m
o
l
M
n
=
600,000
g
/
m
o
l
1.2
≈
500,000
g
/
m
o
l
Thus, the molecular weight distribution of the copolyester described by Chen is construed to overlap with the claimed range. In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Chen suggests, that the overlapping portion is a useful range for the number-average molecular weight of a biodegradable copolyester having a balance of processability, mechanical properties, and degradability (Abstract, [0066]-[0067]).
Chen is silent towards the impact strength index (ISI) and the experimental values used to calculate the same (i.e., impact absorption energy and hardness).
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. impact strength index, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. 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 that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Chen is silent towards the water degradability reduction rate of the copolyester.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts, having an overlapping molecular weight range, and made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. water degradability reduction rate, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. 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 that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
As to Claims 2-4: Chen teaches the biodegradable polyester resin of claim 1 (supra).
Chen further teaches that the copolymer is prepared by an aromatic monomer (a) reacting with a diol monomer (b), followed by adding an aliphatic monomer (c) ([0035]), and further teaches that the molar ratio of the monomer (a) to monomer (c) may be 35:65 to 60:40 ([0042]).
Chen does not teach explicitly teach a number of repeat units. However, given the molecular weight range taught by Chen (Mw = 100,000 to 600,000 g/mol, see ([0024]) and the molar ratio of monomers (a) to (c), the copolymer of Chen would result in a value for number of repeat units which would read on at least the claimed wherein the number of the first (i.e., aromatic-containing) repeat unit is greater than the number of second (i.e., aliphatic-containing) repeat unit and overlap with the claimed ranges for the number of first repeat units and second repeat units, e.g., assuming a 300,000 g/mol copolymer formed from (a) = terephthalic acid, (b) = 1,4-butane diol, (c) = adipic acid, which exhibits an aliphatic repeat unit weight of 200.2 g/mol and an aromatic repeat unit weight of 220.2 g/mol. Assuming a monomer (a) to monomer (c) of 60:40, calculating for the number of repeat units, N:
c
o
p
o
l
y
m
e
r
M
w
=
x
M
a
l
i
p
h
a
t
i
c
+
y
M
a
r
o
m
a
t
i
c
=
0.4
N
200.2
g
m
o
l
+
0.6
N
220.21
g
m
o
l
N
=
300,000
210.61
≈
1424
r
e
p
e
a
t
u
n
i
t
s
0.6
1424
=
854
a
r
o
m
a
t
i
c
u
n
i
t
s
;
0.4
1424
=
570
a
l
i
p
h
a
t
i
c
u
n
i
t
s
In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Chen suggests, that the overlapping portion is a useful range for relative amounts of aliphatic- and aromatic-containing comonomer units within a biodegradable polyester having a balance of processability, mechanical properties, and degradability ([0066]-[0067]).
As to Claim 5: Chen teaches the biodegradable polyester resin of claim 1 (supra).
Chen is silent towards the heat shrinkage rate of the copolyester.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount (e.g., pg. 10, lines 13-18 of the instant specification suggest that the copolymer structure affects properties such as heat shrinkage). Therefore, the claimed effects and physical properties, i.e. heat shrinkage, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. 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 that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
As to Claim 6: Chen teaches the biodegradable polyester resin of claim 5 (supra).
Chen is silent towards the thermal deformation index of the copolyester.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount (e.g., pg. 10, lines 13-18 of the instant specification suggest that the copolymer structure affects properties such as shape deformation and heat shrinkage behavior). Therefore, the claimed effects and physical properties, i.e. the thermal deformation index, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. 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 that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
As to Claim 7-9: Chen teaches the biodegradable polyester resin of claim 1 (supra).
Chen is silent towards the impact strength index (ISI) of the copolyester and the experimental values used to calculate the same (i.e., impact absorption energy and hardness).
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. impact strength index and values used to calculate the same, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. 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 that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
As to Claims 10-11: Chen teaches the biodegradable polyester resin of claim 1 (supra).
Chen is silent towards the storage/loss modulus of the copolyester.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. storage or loss modulus, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. 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 that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
As to Claims 12: Chen teaches the biodegradable polyester resin of claim 1 (supra).
Chen is silent towards the loss tangent of the copolyester.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, the reference teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. loss tangent, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. 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 that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
As to Claims 14 and 15: Chen teaches the biodegradable polyester resin of claim 1 (supra).
Chen teaches a biodegradable copolyester having the structure ([0024]):
PNG
media_image1.png
134
854
media_image1.png
Greyscale
wherein m is an integer of 2 to 10, n is an integer of 0 to 8, and p is an integer from 2 to 10 ([0024]-[0025]). Chen further teaches that the copolymer is prepared by an aromatic monomer (a) reacting with a diol monomer (b), followed by adding an aliphatic monomer (c) ([0035]) wherein the aromatic monomer (a) may be terephthalic acid or dimethyl terephthalate ([0043]), the diol monomer (b) may be 1,4-butanediol, 1,3-propanediol, or ethylene glycol (i.e., 1,2-ethanediol) ([0043]), and wherein the aliphatic monomer (c) may be adipic acid, sebacic acid, or succinic acid ([0043]).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Chen et al. (US20060142536, hereinafter referred to as “Chen”) in view of Matsuzono et al. (US20110028678, hereinafter referred to as “Matsuzono”).
As to Claim 16: Chen teaches the biodegradable polyester resin of claim 14 (see above).
Chen further teaches that the copolymer is prepared by an aromatic monomer (a) reacting with a diol monomer (b), followed by adding an aliphatic monomer (c) ([0035]) wherein the aromatic monomer (a) may be terephthalic acid ([0043]), but is silent towards an average particle diameter of said terephthalic acid.
Matsuzono teaches a polyester formed with terephthalic acid having an average particle diameter (D50) of 75 µm and D(90)/D(50) of 1.6 ([0140]), which overlaps with the claimed range for a particle size and further describes a distribution which overlaps with the claimed range for a standard deviation. Chen and Matsuzono are considered analogous art because they are directed towards the same field of endeavor, namely polyesters and synthesis thereof. The ranges of Matsuzono overlaps with the claimed range. In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range taught by Matsuzono for the terephthalic acid of Chen, and the motivation to have done so would have been, as Matsuzono suggests, that the overlapping portion is a useable range for the particle size and distribution/standard deviation of a terephthalic acid comonomer for the synthesis of polyesters that balances handleability/viscosity and limits solid-liquid separation of the acid during reaction ([0079]).
Claim 17-18 is rejected under 35 U.S.C. 103 as being unpatentable over Chen et al. (US20060142536, hereinafter referred to as “Chen”) in view of Mukherjee et al. (“Dispersion study of nanofibrillated cellulose based poly(butylene adipate-co-terephthalate) composites,” Carbohydr. Polym. 2014, 102, 537-542, hereinafter referred to as “Mukherjee”).
As to Claims 17 and 18: Chen teaches the biodegradable polyester resin of claim 1 (see above).
Chen is silent towards wherein the copolyester comprises nanocellulose.
Mukherjee teaches an analogous aliphatic-aromatic polyester copolymer comprising nanofibrillated cellulose (NFC), which reads on the claimed nanocellulose comprising cellulose nanofiber (i.e., wherein a nanofibril is construed to be a type of nanofiber) (Abstract). Mukherjee further teaches that varieties of nanocellulose having a width (i.e., diameter) of 500 nm to 2 µm and a length of 4 to 20 nm (pg. 1, col. 1, para. 1), which are within the claimed range. Chen and Mukherjee are considered analogous art because they are directed towards the same field of endeavor, namely aliphatic-aromatic polyester copolymers. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to include a nanocellulose with a diameter and length within the claimed range, such as the nanofibrillated cellulose taught by Mukherjee, within the polyester of Chen and the motivation would have been that Mukherjee teaches that nanocellulose is a known additive to aliphatic-aromatic polyesters which improve compositions comprising the same by increasing strength and crystallinity relative to the polyester alone (pg. 1, col. 2, para. 2 of Mukherjee).
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 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 11,667,751 in view of Chen et al. (US20060142536, hereinafter referred to as “Chen”). Although the claims at issue are not identical, they are not patentably distinct from each other because each of the claims contain a biodegradable polyester resin which comprises a first repeat unit comprising a first diol residue and an aromatic dicarboxylic acid residue and a second repeat unit comprising a second diol residue and an aliphatic dicarboxylic acid residue, and further wherein the polyester resin comprises terephthalic acid having a specific particle size distribution, and at least one nanocellulose. Furthermore, both the instant applicant and the ‘751 patent claims recite substantially overlapping compositional ratios for the first and second repeat units (i.e., X/Y ratio and number of repeat units). The functional property limitations recited in the instant application and the ‘751 patent appear to be inherent to the claimed components.
With regard to the limitation included in Equation 5 wherein “MnA is 50,000 g/mol to 70,000 g/mol,” the ‘751 patent does not recite a range for MnA.
Chen teaches that the copolyester has a weight-average molecular weight (Mw) range of 100,000 g/mol to 600,000 g/mol and a molecular weight distribution (Mw/Mn) of 1.2-3 ([0024]-[0026]). The distribution of number-average molecular weight is directly related to the weight-average molecular weight through the molecular weight distribution (MWD). The range of number-average molecular weight values taught by Chen are considered to be:
M
W
D
=
M
w
M
n
,
t
h
u
s
M
n
=
M
w
M
W
D
M
n
=
100,000
g
/
m
o
l
3
≈
33,000
g
/
m
o
l
M
n
=
600,000
g
/
m
o
l
1.2
≈
500,000
g
/
m
o
l
Thus, the molecular weight distribution of the copolyester described by Chen is construed to overlap with the claimed range. In the case where claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range for the number average molecular weight of the ‘751 patent, and the motivation to have done so would have been, as Chen suggests, that the overlapping portion is a useful range for the number-average molecular weight of a biodegradable copolyester having a balance of processability, mechanical properties, and degradability (Abstract, [0066]-[0067]).
Accordingly, the instant claims are not patentably distinct from that of the ‘751 patent.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CULLEN L. G. DAVIDSON IV whose telephone number is (703)756-1073. The examiner can normally be reached M-F 9:30-6:00.
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/C.L.G.D./ Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767
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