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 .
Response to Amendment
The amendment filed on 7/17/2025 has been entered. Claim(s) 1 is/are currently amended. Claim(s) 3 has/have been cancelled. Claim(s) 1-2 and 4-7 is/are pending and is/are under examination in this office action.
Response to Arguments
Applicant's argument filed on 7/17/2025, with respect to 103 rejection has been fully considered but is not persuasive.
Applicant argued that it would not have been obvious to modify Gao to employ the claimed diameter because Gao intentionally limits the fiber diameter to below 0.1 µm to enhance the mechanical properties of the PBS composite.
In response, Gao only mentions the diameter of the fiber in its material description section [2.1], meaning the fibers used in the experiment have diameter of <0.1 µm. Gao does not teach the requirement of the fiber diameter at all, certainly does not teach away from fiber diameter of 0.1 µm or greater. Therefore, there is no restriction of the fiber diameter. It would have been obvious to one of ordinary skill in the art at the time of filing to select the fiber diameter below and above 0.1 µm.
Applicant argued that the biodegradable resin composition of the invention is blended with fibrous basic magnesium sulfate having an average fiber diameter in a range of 0.1 to 2.0 μm, thereby having higher marine degradability than a conventional one. Moreover, it is possible to produce a molded body having a high flexural modulus by using the biodegradable resin composition of the invention.
In response, the marine degradability and flexural modulus are properties of the product. “Products of identical chemical composition can not have mutually exclusive properties." 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. “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)). See MPEP 2112.01. Since the prior art teaches the same product as the current invention, the recited property is expected to be present. Applicants can rebut a prima facie case of obviousness by showing the criticality of the range, that the claimed range achieves unexpected results relative to the prior art range (MPEP2144.05.III). Applicant failed to do so.
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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
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.
Claim(s) 1-2 and 4-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gao et al (“Thermal, Crystallographic, and Mechanical Properties of Poly(butylene succinate)/Magnesium Hydroxide Sulfate Hydrate Whisker Composites Modified by in Situ Polymerization”, Ind. Eng. Chem. Res. 2017, 56, 3516−3526), alternatively in view of Shimano et al (JP 2010270309 A, machine translation is reference herein).
Regarding claims 1-2 and 4-6, Gao teaches a composition comprising biodegradable aliphatic polyester, poly(butylene succinate) (PBS), and a fibrous magnesium hydroxide sulfate hydrate whisker (MHSH) [P3516 under “Introduction”].
The PBS is a polycondensate of 1,4-succinic acid and 1,4-butanediol (equivalent to 1,4-butylene glycol) [P3517 under section 2.2.2] and reads on the claimed aliphatic polyester biodegradable resin as specified in claims 4-6.
The MHSH reads on the claimed fibrous basic magnesium sulfate, as evidenced by the applicant [0012 spec.].
5-25 parts of MHSH is mixed with about 100 parts of PBS [P3517 under section 2.2.2, P3520 Table 1]. Therefore, MHSH is contained in an amount of 4.8 to 20% when a total mass of the aliphatic polyester biodegradable resin and the fibrous basic magnesium sulfate is 100, Mfalling within the range of 1-70% in claim 2.
Gao further teaches that The MHSH has length of 10−60 μm, and diameter < 0.1 μm [P3517 under section 2.1]. The length falls within the claimed range of 2-100 μm.
The diameter of < 0.1 μm is sufficiently close to the claimed lower limit of 0.1 μm that one of ordinary skill in the art would prima facie expect the MHSH based on these diameters to have the same properties. It would have been obvious to one of ordinary skill in the art at the time of filing to select a diameter of MHSH within the claimed range based on the close proximity to the prior art range and the reasonable expectation of obtaining a product having the same properties. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05.I).
Alternatively, Shimano teaches a resin composition for molding comprising polybutylene succinate [0012] and fibrous magnesium oxysulfate [0047]. The fibrous magnesium oxysulfate has a length of 10 μm, aspect ratio of 20 μm, and diameter of 0.5 μm [0081].
The examiner submits that fibrous magnesium oxysulfate is equivalent to Gao’s MHSH and the claimed fibrous basic magnesium sulfate; and its diameter of 0.5 μm falls within the claimed range of 0.1 to 2.0 μm.
It would have been obvious to one of ordinary skill in the art at the time of the invention to form a PBS-MHSH composite according to Gao including MHSH having average diameter of 0.5 μm, as Shimano demonstrates this diameter to be suitable for similar PBS-MHSH composite. This represents the use of a suitable diameter of MHSH in PBS-MHSH composite which is compositionally similar to those of Shimano and which is used in similar application. "The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 416-21 (2007). See MPEP 2141.
Regarding claim 7, Gao teaches extruding the PBS-MHSH composite into a specimen with the mold temperature of 35 °C [P3517 under section 2.2.3]. Therefore, the specimen reads on the claimed molded body.
Conclusion
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANGTIAN XU whose telephone number is (571)270-1621. The examiner can normally be reached Monday-Thursday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached on (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JIANGTIAN XU/Primary Examiner, Art Unit 1762