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 .
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.
Election/Restrictions
Applicant’s election without traverse of Group I Claims 22-30 and 42-50 in the reply filed on June 9, 2026 is acknowledged.
Foreign Priority
As of the date of posting of this action, September 23, 2026, there does not appear to be a certified copy of the foreign priority document or any acknowledge (failure or otherwise) that said document was attempted to be retrieved by the Priority Document Exchange (PDX) system.
Claim Objections
Applicant is advised that should claim 45 be found allowable, claims 49 and 50 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
As discussed in the rejection of record, the use of the terms “first” and “second in Claim 49 and 50 do not change the scope of these claims from that of Claim 45 in that there is no first or second PHA resin positively recited by Claim 22.
Note the composition of Claim 22 recites a composition comprising a PHA resin. There is no first or second label in Claim 22 or requirements for multiple PHA resins in the composition (emphasis added) and, for consideration of “further comprises” amendments, the composition further comprising a second PHA resin is appropriate.
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.
Claim 25-27 is 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 26 depends from itself which renders the claim indefinite.
Claim 25 recite the biodegradable composition of Claim 22 comprising a different polymer than that which is recited by Claim 22 without reciting “further comprising”. Further, many of the resins recited by Claim 25 are PHA resins (such as PLA). Therefore, it is unclear what PHA resin is required by the claims; a PHA resin different than the PHA resins recited by Claim 25 or if the Claim 25 if the PHA resin of Claim 22 is required to be the PHA resins of Claim 25. Note there is no further comprising language involved in Claim 25 to clarify the situation. Further, this renders Claim 26 and Claim 27 indefinite as PLA is a PHA resin and these claims recite, essentially, a blend of PHA resins with itself.
Note independent claim of the initially filed claims required the PHA resin to have a 4-hydroxybutyrate monomer while the instant Claim 22 does not have this limitation. Additionally, initially filed Claims 2 and 3 have dropped the 4-hydroxybutyrate monomer limitations in the corresponding pending Claims 23 and Claim 24. This monomer recitation resolves many issues involving the indefiniteness.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
And/or
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 22-24, 28-42, 44-50 are rejected under 35 U.S.C. 102(a)(1) and/or 35 U.S.C. 102(a)(2) as being anticipated by Mihayashi (WO2022097528 reference made to included Global Dossier English translation) as evidenced by Cambridge Polymer Group.
In ¶[0086] Mihayashi exemplifies a composition comprising poly 3 hydroxybutyrate / 3 hydroxyhexanoate copolymer (a biodegradable polymer) with a MFR (165 oC and 5 kg) of 12 g/10 min with a molecular weight of 321,000 (weight average see ¶[0042]).
The recited composition has no other components recited. Therefore, the polymer itself reads on the composition as claimed. In this case, the MFR anticipates the MFR of Claim 23. As evidenced by Cambridge Polymer Group, melt flow (or measure of viscosity) has a known inverse relationship with molecular weight (highlighted region). The exemplified polymer of Mihayashi above is also reasonably suggested to be a linear polymer (no branching agents) as none are mentioned and the mol % adds to 100 mol %.
Therefore, as the weight average molecular weight of the resin polymer is in the range of Claim 30 and has a molecular weight of 321,000 (a condition of Claim 30) and is a PHA resin, one of ordinary skill in the art is reasonably suggested, when tested accordingly, must have the MFR recited by Claim 22 and also Claim 30 (different MFR test conditions in Claim 22, Claim 23 and Claim 30) which anticipates Claim 22, Claim 23 and Claim 30.
Additionally, Mihayashi teaches the above PHA (¶[0086) used in a composition comprising additional agents such as waxes (erucamide lubricant (¶[0055] (also known as a slip or fluidizing agent) and pentaertythrol (nucleating agent (¶[0055]) The composition is taught to have a weight average molecular weight of 300,000 and MFR (165 oC / 5kg ) of 16.7 g/10 min. For the same reason above with respect to MFR, viscosity and molecular weight, one of ordinary skill in the art is reasonably suggested, when tested accordingly, must have the MFR recited by Claim 22 and also Claim 30 (different MFR test conditions in Claim 22, Claim 23 and Claim 30) which anticipates Claim 22, Claim 23 and Claim 30. Pigments and dyes, UV absorbers, antioxidants, sliding property improver are also taught in ¶[0055] which renders Mihayashi sufficiently specific to anticipate Claim 28.
Note the MFR limitation of Claim 23 is to the PHA resin in the composition rather than the overall compositions considering claim 22 to encompass the entire composition.
The poly 3 hydroxybutyrate / 3 hydroxyhexanoate copolymer (a biodegradable polymer) anticipates Claim 29 and Claim 49. (see also ¶[0038])
With respect to Claim 24, Claim 24 recites a “second PHA resin” without requiring any other (or a first PHA resin) being present in the composition from which it depends. Therefore, the term “second” is considered a label that does not impart any structure onto the claim limitations. As there is a PHA resin according to the claim 24 (See above Claim 23) Claim 24 is anticipated.
With respect to Claims 42, 44, 45, 46, 47, 48, 49, 50, in ¶[0038] Mihayashi teaches P3HB3HH and P3HB4HB are particularly preferred. The exemplified PHA is P3HB3HH with a mol ratio of 95/5. As P3HB4HB is particularly preferred, one of ordinary skill in the art can at once envisage using P3HB4HB as the copolymer of the examples using the same molar ratio as exemplified (95/5). As 3HB and 4HB are isomers, they have the same molecular weight. Therefore, for any given molecular weight of the polymer, molar ratio is the same as weight ratio for this reason. Therefore, the at once envisaged P3HB4HB copolymer has a 95 wt% 3HB / 5 wt% 4HB distribution of 3HB and 4HB which anticipates Claims 42, Claim 44, Claim 45, Claim 46, Claim 47, Claim 48, Claim 49, Claim 50 in light of the above interpretation of second PHA resin. Note the immediately envisage 3HB/4HB also includes the same MFR as exemplified and therefore, the above MFR analysis of Claim 22, Claim 23, Claim 24, and Claim 30 is reasonably suggested to still apply and anticipate these MFR limitations.
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.
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 22-24, 28-42, 44-50 are rejected under 35 U.S.C. 103 as being unpatentable over Mihayashi (WO2022097528 reference made to included Global Dossier English translation) as evidenced by Cambridge Polymer Group.
Mihayashi is applied as above under §102.
Considering the claims as requiring two different PHA resins, Mihayshi does not exemplify PHA compositions which have two different PHA resins.
However, in ¶[0038] Mihayashi teaches P3HB4HB copolymers along with P3HB3HH copolymers which are exemplified. Mihayashi also teaches P3HB3HH and P3HB4HB copolymers are particularly preferred in ¶[0038] and teaches in ¶[0037] the PHA resin used in the inventio may be a mixture of copolymers.
Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the invention of Mihayashi by using a mixture of the taught PHA resins (or in other words a blend of PHA copolymers) because Mihayashi teaches this in ¶[0037]. One of ordinary skill in the art would have been motivated to use a blend of P3HB3HH and P3HB4HB because the P3HB3HH is already exemplified particularly preferred and P3HH4HB is also particularly preferred by Mihayashi. Further, one of ordinary skill in the art would have been motivated to choose the P3HB4HB to have the same mol ratio of commoners (3HB and 4HB) and also the MFR of the P3HB3HH as this is an already exemplified combination of molar ratios of comonomers and MFR.
As above under the §102 rejection, molar ratios of the same isomers (3HB / 4HB) equate to weight ratios for a given molecular weight of polymer as these isomers have the same molecular weight. The above modification results in a biodegradable composition which has a P3HB/3HH of 12 g/10 min MFR (165 oC / 5 kg)(or first PHA resin) and a 95 wt% 3HB / 5 wt% 3HB copolymer of 12 g/10 min MFR (165 oC / 5 kg)(or second PHA resin). This reads over Claim 22, Claim 23, Claim 24, Claim 29, Claim 30, Claim 42, Claim 44, Claim 45, Claim 46, Claim 47, Claim 48, Claim 49, Claim 50 for the same reasons as discussed above in the §102 regarding the MFR limitations.
Claims 22-30 and 42-50 are rejected under 35 U.S.C. 103 as being unpatentable over Krishnaswamy (U.S. 20130065046) in view of Mihayashi (WO2022097528 reference made to included Global Dossier English translation) as evidenced by Cambridge Polymer Group.
Krishnaswamy teaches biodegradable compositions that may be made into non-woven fibers (¶[0037) and are melt processed.
The compositions comprise PLA and a PHA polymer based on 3- and 4-hydroxybutyate monomers. See Table 1, PHA blends of 3HB (3-hydroxybutyrate) and P3HB4HB (4HB=4-hydroxybutyrate) copolymers with 8-14wt% 4HB and separately 25-33 wt% 4HB units or 38-42 wt% 4HB units. (¶[0151-0156] and Tables 1-3) The exemplified amounts of PLA and PHA is generally 65-70 wt% PLA and 30 wt% PHA.
Krishnaswamy does not teach the MFR of any PLA or PHA and does not teach or suggest the MFR of the overall biodegradable composition nor the weight average molecular weight of the PHA polymers. However, the PHA polymers of Krishnaswamy must have an MFR (at any of the temps and loads recited by the instant claims) and must have a weight average molecular weight associated with them. Krishnaswamy teaches weight average molecular weights of 50,000 to 800,000 for the PHA component in ¶[0105].
Mihayashi, working in the field of melt blown non-woven fibers similar to Applicant and Krishnaswamy, teaches P3HB/3HH (3-hydoxyhexanoate) copolymers (See ¶[0086]) and also P3HB/4HB copolymers as particularly preferred and the exemplified P3HB/4HB is a 321,000 weight average molecular weight PHA polymer with a MFR (165 oC / 5 kg) of 12 g/10 minutes.
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the invention of Krishnaswamy, in particular that of the examples, such that the PHA (P3HB/P4HB) and P3HB resins used by Krishnaswamy had a MFR (165 oC / 5 kg) of 12 g/10 minutes and weight average molecular weight of 321,000 when making non-woven fibers as suggested by Krishnaswamy because Mihayashi teaches and exemplifies melt-blown non-woven fibers using PHA suggested by Krishnaswamy which has these MFR and weight average molecular weights as useful for non-woven fiber compositions.
This represents the simple substation of known prior art elements, MFR and weight average molecular weights for non-woven fiber applications, to yield the predictable result of a non-woven fiber of PLA and PHA suggested by Krishnaswamy.
With respect to the MFR limitation of Claim 22, as evidenced by Cambridge Polymer Group, melt flow (or measure of viscosity) has a known inverse relationship with molecular weight (highlighted region). Considering the MFR with respect to the entire composition and / or the PHA component specifically, the MFR (165 oC / 5 kg) of 12 g/10 minutes and weight average molecular weight of 321,000 PHA as discussed above is also reasonably suggested to be a linear polymer (no branching agents) as none are mentioned and the mol % adds to 100 mol %.
Therefore, as the weight average molecular weight of the resin polymer is in the range of Claim 30 and has a molecular weight of 321,000 (a condition of Claim 30) and is a PHA resin, one of ordinary skill in the art is reasonably suggested, when tested accordingly, must have the MFR recited by Claim 22 and also Claim 30 (different MFR test conditions in Claim 22, Claim 23 and Claim 30) which reads over Claim 22 and Claim 30. Claim 23 and Claim 24 are read over as the modified PHA’s have the MFR in the recited range of Claim 23 and Claim 24.
The above PLA/PHA resin reads over Claim 25, Claim 26, and Claim 27.
Nucleating agents are taught by Krishnaswamy in ¶[0128] which reads over Claim 28.
3-HV and 3-HH are taught as monomers of many of the PHAs in Krishnaswamy (See ¶[0086-0090]. This reads over Claim 29.
Claims 42-50 are read over by the exemplified PHA of Krishnaswamy as the first and second limitations of these claims are considered labels and any of the PHA resins can be labeled first and second.
Note the preamble language of “for melt-blown non-woven fibers” does not impart any structure on the claims as there is no evidence of record to suggest what structure this would be.
In general as multiple §103s (including combined with §102) are made in this action, If Applicant intends to argue there is criticality which gives an unexpected result to the compositions in light of the teachings of the prior art, Applicant is reminded such arguments to unexpected results can only be properly considered when all the factors in MPEP §716.02 are properly taken into account. Overcoming a §103 rejection based on unexpected results requires the combination of three different elements: the results must fairly compare with the prior art, the claims must be commensurate in scope and the results must truly be unexpected. (See MPEP §716.02) Applicant’s showing of allegedly unexpected results must satisfy ALL of these requirements. Additionally, MPEP §716.01(b) states a “nexus” between the claimed invention and the evidence of secondary considerations, such as unexpected results, must be present. The burden rests with Applicant to establish results are unexpected and significant. (MPEP §716.02(b)).
With respect to the fairly comparing requirement, Krishnaswamy teaches PLA/PHA compositions using 4HB PHA and also combinations using 3HB and separate 4HB copolymers. The as-filed specification compares only to PLA composition that do not have PHA in them. Therefore, Krishnaswamy is closer prior art. Additionally, there are no comparisons with respect to MFR on any level (component, overall composition or any other combination recited). Therefore, the fairly recited requirement is not met.
With respect to the commensurate in scope requirement, the claims are not commensurate in scope with any showing of allegedly unexpected results. They simply recite a composition with a certain MFR that comprises PHA (PHA may even be PLA or some PHA that does not even have hydroxybutyrate in it) without amounts or any other kind of limitation to make the claimed scope in line with the showing of allegedly unexpected results. Therefore, the commensurate in scope requirement is not met.
With respect to the truly unexpected requirement, the results appear expected as Krishnaswamy already has PLA and PHA using similar amount of PLA and PHA as Applicant has used in their examples. In other words, when used in melt blown non-woven fiber manufacture, the Krishnaswamy material is reasonably suggested to possess the properties Applicant has found in that use case already (or inherently) as the components are all present. There is no evidence to suggest otherwise at the current time.
“[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). In In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER M RODD whose telephone number is (571)270-1299. The examiner can normally be reached 7 am - 3:30 pm (Pacific).
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/Christopher M Rodd/ Primary Examiner, Art Unit 1766
