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 .
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 substantially 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”, or the amount of “substantially free of”.
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 1-6, 8, 9 and 22-23 are 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. The limitation “substantially free of” is indefinite. The instant specification does not provide any indication as to the metes and bounds of the limitation “substantially free of”.
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, 3-6, 8-9 and 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over Guemard et al. (2018/0142097).
Regarding claims 1 and 3-4: 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], and polyethylene terephthalate (carrier polymer) in a blend with polycaprolactone [0070]. Guemard et al. teach adding 0.1% of biological entities having a polyester-degrading activity [0012]. The amount of 0.1% is considered to be “substantially free of” biological entities having a polyester-degrading activity.
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.
Regarding claim 5: Guemard et al. teach 2 to 25 wt% of hydroxyapatite [0052, 0078]. 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.
Regarding claim 6: Guemard et al. teach 65 to 95% of polycaprolactone and polyethylene terephthalate and 2 to 25 wt% of hydroxyapatite [0052, 0078]. Then using a blend of polyesters, the skilled artisan would immediately envisage a 50/50 mixture.
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.
Regarding claims 8-9: Guemard et al. teach that their composition is extruded into strips, which were cut into pieces [0149], which are considered to be a masterbatch pellets.
Regarding claim 23: Guemard et al. teach 2 to 25 wt% of hydroxyapatite [0052, 0078]. 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.
Claim(s) 2 and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Guemard et al. (2018/0142097) as applied to claim 1 above further in view of Butera et al. (2003/0044628).
Guemard et al. fail to teach a particle size for the hydroxyapatite.
However, Butera et al. teach that a hydroxyapatite filler for a polyester composition comprising polyethylene terephthalate should have an average particle size of about 0.3 microns to produce an ultra low haze film [0013-0014; claim 1].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use an average particle size of about 0.3 microns as taught by Butera et al. as the average particle size of the hydroxyapatite in Guemard et al. to produce an ultra low haze film.
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.
Response to Arguments
Applicant's arguments filed 3/2/2026 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 Guemard et al. teach adding 0.1% of biological entities having a polyester-degrading activity [0012]. The amount of 0.1% is considered to be “substantially free of” biological entities having a polyester-degrading activity.
The applicant has made the argument that Guemard uses hydroxyapatite for a different reason than the instant specification. This is not persuasive because the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) ("One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings."); In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991). See MPEP 2144.
Conclusion
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.
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
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