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 .
Amended claim 18 now reads on the elected 1st copolymer.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1 and 3-19 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 requires “both” (presumably both 1st and 2nd polymers) not have units of 3-hydroxypropionate. This contradicts the requirement that the 1st polymer be from 3-hydroxypropionate. ”Both” could not be referring to the 3-hydroxyalkanoate or 4-hydroxyalkanoate because 3-hydroxypropionate is a distinct compound from 4-hydroxyalkanoates.
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 1,4-6,8,9 and 13-19 rejected under 35 U.S.C. 103 as being unpatentable over Li 2011/0135863.
Li claims (#1) an article of 5-95% polylactic acid (ie applicant’s 3rd polymer) and 95-5% polyhydroxyalkanoate. The polyhydroxyalkanoate (claim 3) is one or more of poly-3-hydroxypropionate (ie applicant’s 1st polymer), poly-4-hydroxybutyrate (ie applicant’s 2nd polymer), poly-3-hydroxyvalerate (ie applicant’s 2nd polymer), poly-3-hydroxyhexananoate (ie applicant’s 2nd polymer), poly-4-hydroxyhexanoate (ie applicant’s 2nd polymer).
Although no example meets applicant’s ternary mixture, a mixture of polylactic acid with any two of Li’s polyhydroxyalkanoates would have been prima facie obvious.
In regards to applicant’s dependent claims:
The ratio of the two polyhydroxyalkanoates is not given, but any ratio would have been prima facie obvious.
Poly-3-hydroxyvalerate, poly-3-hydroxyhexanoate and poly-4-hydroxyhexanoate have C2, C3 and C2 branches respectively – meeting applicant’s claim 9.
Stearamide may be added (paragraph 46) may be added – meeting applicant’s claim 13.
Adipate plasticizers (paragraph 46) may be added – meeting applicant’s claim 14.
Talc, clay etc (paragraph 55) may be added – meeting applicant’s claim 15.
All three of the polymers are aliphatic polyesters – meeting applicant’s claim 16. Additionally, aliphatic polyester plasticizers may be added (paragraph 46).
Nucleating agents may be added (paragraph 51) – meeting applicant’s claim 17.
Catalysts and crosslinkers may be added (paragraph 51) – meeting applicant’s claim 18.
Various molded articles may be made (claim 19 of Li)– meeting applicant’s claim 19.
Applicant's arguments filed 2/4/26 have been fully considered but they are not persuasive.
Applicant argues that the prior rejections lack the newly required polylactic acid. This is convincing, but requires the new rejection(s).
All withdrawn claims should be rigorously reviewed for proper dependency and suitability for re-joinder. Withdrawn claims that cannot be allowed should be cancelled along with any after final amendment.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID J BUTTNER whose telephone number is (571)272-1084. The examiner can normally be reached M-F 9-3pm.
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/DAVID J BUTTNER/Primary Examiner, Art Unit 1765 3/3/26