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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 7/2/2026 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-6, 8, 9 and 22-23 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The limitation “wherein the polymer additive composition is free of added biological entities having a polyester-degrading activity” is not supported by the original specification. The specification does not support the breadth of “biological entities”.
Claim 21 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The limitation “without enzymatic degradation by added biological entities” is not supported by the original specification.
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.
Claim(s) 1, 2, 5, 6, 8 and 22-23 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhao et al. (CN 108221079A).
Regarding claims 1, 5, 6 and 23: Zhao et al. teach a polymer composition comprising 96 wt% polycaprolactone and 3 wt% of hydroxyapatite [Examples]. Since the claimed amount of the claimed catalyst is present, it is effective to catalyze biodegradation of the polycaprolactone. The courts have stated that 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. In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990). See also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). "Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established." Further, if it is the applicant's position that this would not be the case, evidence would need to be provided to support the applicant's position.
Regarding claim 2: Zhao et al. teach a particle size of 20-30 nm [0014; Examples].
Regarding claim 8: The granules of Zhao et al. [Examples] is considered to be a masterbatch pellet.
Regarding claim 22: Zhao et al. teach a length (a size) of 200-250 nm (0.2 to 0.25 microns) [0014; Examples].
Claim(s) 21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhao et al. (CN 108221079A).
Zhao et al. teach a polymer composition comprising 96 wt% polycaprolactone and 3 wt% of hydroxyapatite [Examples].
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) 3, 4 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhao et al. (CN 108221079A) as applied to claims 1 and 2 above further in view of Guemard et al. (2018/0142097).
Regarding claims 3 and 4: Zhao et al. fail to teach a thermoplastic carrier polymer.
However, Guemard et al. teach in an analogous composition that adding polyethylene terephtahate [0070-0071; 0088] advantageously improves the properties of the composition [0070].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add polyethylene terephthalate as taught by Guemard et al. to the composition of Zhao et al. to advantageously improve the properties of a degradable polymer composition.
Regarding claim 9: The granules of Zhao et al. [Examples] is considered to be a masterbatch pellet.
Claim(s) 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Guemard et al. (2018/0142097).
Guemard et al. teach an additive composition comprising 65 to 95% of polycaprolactone (biodegradable poymer) [0010; Example 6] and 2 to 25 wt% of at least one anti-acid filler (biodegradation catalyst) [0052, 0078].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select hydroxyapatite [0052] as the anti-acid filler in Guemard et al. The hydroxyapatite of Guemard et al. is “effective to catalyze biodegradation”.
The ranges taught overlap the claimed ranges.
The subject matter as a whole would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention, since it has been held that choosing the overlapping portion, of the range taught in the prior art and the range claimed by the applicant, has been held to be a prima facie case of obviousness, see In re Malagari, 182 USPQ 549, In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976) and MPEP 2144.05.
The claim contains product by process limitations. Process limitations in product claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. "In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "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). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). The limitation “catalyzed…without enzymatic degradation by added biological entities” is a product by process limitation that does not provide a structural difference from Geumard et al.
Response to Arguments
Applicant's arguments filed 7/2/2026 have been fully considered but they are not persuasive.
The applicant has made the argument that Guemard requires biological entities having a polyester-degrading activity. This is not persuasive because claim 21 contains product by process limitations that do no exclude a biodegradation catalyst in the final structure.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN USELDING whose telephone number is (571)270-5463. The examiner can normally be reached on M-F 8am to 6:30pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN E USELDING/ Primary Examiner, Art Unit 1763
