DETAILED ACTION
Notice of Pre-AIA or AIA Status
As previously set forth: The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
As previously set forth: The claims have an effective date of the filing of the foreign priority: 6/12/20
Response to Arguments
Applicant argues all polyesters do not function equivalently and the data submitted in the remarks shows such.
The Examiner disagrees. The data can not be considered because it is not in affidavit form. It is additionally noted that the data is inconsistent with the specification data in that commas are used in the numbers. See In re Soni and In re Piasecki
Applicant argues the specification data shows an unexpected result for hardwood lignin vs. softwood lignin.
The Examiner disagrees. Any showings of unexpected results must be commensurate with the claims.
Regarding combination with PBAT: Applicant does show an unexpected result compared to SWL however the HWL is one exemplified embodiment and is a mixture of formulas I and II, wherein only select R’s are exemplified. Applicant can only claim what has been shown to be unexpected, herein it is the use of I AND II and only the exemplified R. Applicant should declare what the R group is, and, limit the claims to the exemplified R group, the use of I and II, and the use of 50-90% PBAT.
Regarding PCL: PCL is not shown in combination with SWL, thus, it is unclear if unexpected results stem from the chemically modified lignin. Further, PCL is only shown in amounts of 60-90 wt%. It is unclear if unexpected results persist for the 50-90 wt%. If unexpected results were found for HWL/PCL the claims would need to be amended to be commensurate in scope with such. Arguments drawn to the improvement of PCL by blending with HWL are not persuasive because they are not commensurate with the closest prior art, e.g. blending of a polyester with lignin is known.
Applicant argues the use of PBAT and PLC are from a long list of plastics, Applicant argues the use of SWL is from a list of lignins. Applicant argues the unexpected results make the combinations of Samac, Peace and Alwadani, and, Samec, Peace and Slaghek, nonobvious.
The Examiner disagrees. Though the combinations may be picked from a list of possible options, it has been held that though a specific embodiment is not taught as preferred makes it no less obvious, also, that the mere fact that a reference suggests a multitude of possible combinations does not in and of itself make any one of those combinations less obvious, see Merck v. Biocraft, 10 USPQ2d 1843 (Fed Cir 1985). Further, the unexpected results are not persuasive for reasons already set forth above. As such arguments herein are not found persuasive and the rejections stand as previously set forth.
Regarding the double patenting rejection Applicant argues there is no incentive to single out hardwood lignin from the long list, and, Samec discloses a different modified lignin.
The Examiner disagrees. As set forth above, that an option is picked from a list makes it no less obvious than any other combination. Further, ‘914 is used to meet the lignin modification and Samec is only used as analgous art to teach different lignins that may be mixed with polyesters. Arguments herein are thusly not persuasive.
Claim Objections
Claims 1, 3, 4, and their dependents, is objected to because of the following informalities:
Applicant has amended the claims however, as previously set forth, the polymer names should not be capitalized. Appropriate correction is required.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Samec in view of Peace and Alwadani (Modification of Kraft lignin with dodecyl glycidyl ether, ChemistryOpen 2019 8 1258-1266-reference already of record).
This rejection is as previously set forth, reiterated below in its entirety in italics.
Samec discloses polymeric materials comprising modified lignin (title). Said materials comprise a first polymer and a second polymer wherein the second polymer is modified lignin (abstract). The modified lignin may be the reaction product of methyl cis-9-octadecanoate epoxide [0072]. The first polymer may be 1-99% of the composition [0085] and the second polymer (modified lignin) may also be 1-99% of the composition [0086], wherein optional compatibilizers may be used [0083] but no other components are required.
Samec includes elements as set forth above. Samec discloses the first polymer can be a polyester [0084], but does not disclose those of claim 1.
Peace discloses lignin composites (title). Said composites comprise mixing a modified lignin with a polymeric matrix (Fig 1). The polymeric matrix may be a polyester such as polybutyrate adipate terephthalate, polybutylene succinate and polycaprolactone [0032]. Peace thusly teaches these to be suitably known species of polyester resin for mixing with modified lignins to form polymer composites.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include in Samec the use of polybutyrate adipate terephthalate and/or polycaprolactone, as taught by Peace, since these are recognized in the art as suitably known polyesters for mixing with modified lignins to form composites. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), wherein the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination.
Samec and Peace include elements as set forth above. Samec discloses compositions comprising modified lignins and polymers. The modified lignin may have various linkers and alkyl groups attached thereto [0054-0055], including glycidyl based compounds [0072]. Samec does not disclose glycidyl ether based modifications to the lignin.
Alwadani discloses modification of lignin via dodecylglycidylether (title). Said modification increases the thermal stability of the lignin (page 1264 first paragraph), and, the modification embraces/overlaps the alkyl modifications of Samec. The use of dodecyl glycidylether will give the I-S and II-S substituents of claims 1, 2 with R being a C12 (dodecyl) alkyl group.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include in Samec the modified lignin of Alwadani, or the type of modification used by Alwadani, since it is recognized in the art as a suitably known modification method in the art to achieve the same (and very similar) endgroups thereof. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), wherein the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination.
Elements above meet claims 1-4. Where the lignin is derived from is a product by process limitation and is not pertinent unless Applicant shows a distinct product is produced. Further, hardwood is disclosed in [0045-Samec], the species of such (Eucalyptus) is a product by process limitation, alternatively meeting claim 5. The composition may only be the 2 polymers, e.g. nothing else is essential to Samec, as required by claim 6. The composition is extruded and injection molded [0091], as required by claim 7, wherein the 2 polymers are mixed and extruded at temperatures from 180-250C [0091], as required by claim 8. Injection molding is done at temps above 180C [0092] wherein the extruded product can be in pellet form [0091], as required by claim 9.
Claim(s) 1-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Samec in view of Peace in further view of Slaghek (EP 2918627).
This rejection is as previously set forth, reiterated below in its entirety in italics.
Samec and Peace include elements as set forth above. Samec discloses compositions comprising modified lignins and polymers. The modified lignin may have various linkers and alkyl groups attached thereto [0054-0055], including glycidyl based compounds [0072]. Samec does not disclose glycidyl ether based modifications to the lignin.
Slaghek discloses modification of lignin to give those endgroup formulas of the abstract. Said modification is exemplified to be ethylhexyl glycidyl ether [0039]. Said modifications can include all the various R’ groups of the abstract or [0014]. Although the structure of the abstract looks different from claim 1, it seems since the reactant is a glycidyl group, the same end formula is expected. E.G. since ethylhexyl glycidyl ether is used, the same structures as I-S and II-S would be expected. The modified lignin product may be used in resins, plastics and other applications [0006], thus embracing the use of Semec. The use of ethylhexyl glycidyl ether seems to give the I-S and II-S substituents of claims 1-2.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include in Samec the modified lignin of Slaghek, or the type of modification used by Slaghek, since it is recognized in the art as a suitably known modification method in the art to achieve the same (and very similar) endgroups thereof. See Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), wherein the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination.
Elements above thusly meet claims 1-9
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 1-9 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 7-9 of copending Application No. 17928914 in view of Samec.
This rejection is as previously set forth, reiterated below in its entirety in italics
Claims 1 and 2 of ‘914 discloses the same composition as instant claims 1-6 except softwood lignin is disclosed whereas the instant application requires hardwood lignin. Samec includes elements set forth above and discloses the lignin for modified lignins may be derived from soft wood or hard wood [0045-Samec). Thus it would have been obvious to one of ordinary skill in the art to use hardwood instead of softwood, as taught by Samec, since these are recognized as functional equivalents. Claims 7-9 meet instant claims 7-9, respectively, wherein the species of hardwood (instant claim 5) is a product by process limitation and bears no weight unless Applicant shows a distinct product is produced.
This is a provisional nonstatutory double patenting rejection.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/ALICIA BLAND/ Primary Examiner, Art Unit 1759