DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Any new grounds of rejection set forth below are necessitated by Applicant’s amendment.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office Action.
Claims 1, 3-5, 7-15 are pending.
Claim Rejections - 35 USC § 103
Claims 1, 3-4, 7-15 are rejected under 35 U.S.C. 103 as being unpatentable over Niizeki et al. (US 2017/0327637) in view of Chen et al. (US 2012/0077905).
Regarding claim 1: Niizeki is directed to a biodegradable resin aqueous dispersion with a biodegradable resin being dispersed in an aqueous solvent under the presence of a non-ionic dispersant, comprising, as the biodegradable resin, a polycaprolactone and a mass ratio of the non-ionic dispersant to biodegradable resin is 0.03 to 0.23. Specifically, the working examples utilize 1.92 parts by weight to 40 parts by weight of the polyester resin, resulting in a ratio of 0.048.
A caprolactone having a weight average molecular weight of 20,000 to 90,000 is not mentioned.
Chen is directed to a biodegradable polymer composition comprising a polycaprolactone used for making a film ([0010] Chen). The polycaprolactone includes commercially available sold by Union Carbide under the trade name Tone™ (e.g. Tone P-300, P-700, P-767 and P-787 having a weight average molecular weight of about 10,000, 40,000, 43,000 and 80,000, respectively) ([0025] Chen). One skilled in the art would have been motivated to select the polycaprolactone as the polycaprolactone of choice in Niizeki since they are commercially available polycaprolactones used in biodegradable compositions.
Selection of polycaprolactone as the sole biodegradable resin results in 100% by weight polycaprolactone based on the total amount of the biodegradable resin.
The compositions of Niizeki are used to make films ([0071]) (equivalent to a film forming agent which is the biodegradable resin aqueous dispersion).
The biodegradable resin including polycaprolactone is not less than 50% by mass per total amount of the biodegradable resin in the working examples.
While Niizeki doesn’t specifically mention the biodegradable resin is fusion bonded, one skilled in the art would expect the composition when heat pressurized by heating rolls and/or pressed would melt and therefore form fusion bonded particles.
Regarding claim 3: The particle size ranges from 1-1000 μm with specific examples of the polyester resin having a particle diameter less than 4.0 μm (Examples 6-7, 10, 14).
Regarding claim 4: The dispersion further comprises an anionic dispersant having a weight average molecular weight of 5,000,000 to 25,000,000 ([0028] NIIZEKI).
Regarding claim 7: Niizeki teaches the composition can be applied or atomized into the surface of a product, e.g. paper coating, and conducting a heat pressurizing process by heating rolls, press, molding and the like. ([0064] Niizeki) (equivalent to a target object and a step of drying the composition to form a film on the surface of the target object). The polyester particles are therefore dried by removing the aqueous solvent to form a film. While Niizeki doesn’t specifically mention the biodegradable resin is fusion bonded, one skilled in the art would expect the composition when heat pressurized by heating rolls and/or pressed would melt and therefore form fusion bonded particles.
Regarding claims 8-13: Selection of polycaprolactone as the sole biodegradable resin results in 100% by weight polycaprolactone based on the total amount of the biodegradable resin.
Regarding claim 14: NIIZEKI discloses a mass ratio of the non-ionic dispersant to biodegradable resin is 0.04 to 0.23. Specifically, the working examples utilize 1.92 parts by weight to 40 parts by weight of the polyester resin, resulting in a ratio of 0.048.
Regarding claim 15: NIIZEKI discloses a mass ratio of the non-ionic dispersant to biodegradable resin is 0.04 to 0.23. Specifically, the working examples utilize 1.92 parts by weight to 40 parts by weight of the polyester resin, resulting in a ratio of 0.048.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Niizeki and Chen as applied to claim 1 above, and further in view Watanabe et al. (US 2022/0016016).
Regarding claim 5: The combination of Niizeki and Chen doesn’t mention an alkyltrimethyl quaternary ammonium salt or a polyoxyethylene dialkylsulfosuccinic acid salt. However, Niizeki mentions a cationic surfactant can be added.
Watanabe is directed to an emulsion cosmetic composition comprising a cationic surfactant of alkyltrimethyl quaternary ammonium salts of stearyltrimethyl ammonium chloride and lauryltrimethyl ammonium chloride. One skilled in the art would have been motivated to have selected the alkyltrimethyl quaternary ammonium salts of Watanabe as the cationic surfactant of choice in Niizeki since Niizeki teaches cationic surfactants can be added, wherein Watanabe teaches specific alkyltrimethyl quaternary ammonium salts used in cosmetic compositions. Therefore, it would have been obvious to one skilled in the art at the time the invention was filed to have selected the alkyltrimethyl quaternary ammonium salts of Watanabe as the cationic surfactant of choice in Niizeki to arrive at claim 5 of the present invention.
Response to Arguments
Applicant's arguments filed 8/10/2026 (herein “Remarks”) have been fully considered but they are not persuasive.
Applicant argues (p. 6 Remarks) as noted in the9/17/25 and 2/18/26 responses, Niizeki is directed to a spherical monodispersed polyester resin particle does not form a film since a MFT is too high. Even when solvent is removed and died the particle the spherical state is maintained. See Figs. 1-3 Niizeki.
This argument is not found persuasive. Figures 1-3 of Niizeki are at 500 micron magnification, and one skilled in the art cannot conclude the coatings do not form films. Upon further consideration, the present invention indicates the films are suitable in cosmetic and coating materials, and the like ([0070] PGPUB). Hence, the composition applied to a surface of a molded article or fabrics. Alternatively, the composition can be made into a composite by adding to a pulp slurry and then making paper ([0064] Niizeki), either of which results in a film. A film broadly interpreted in light of the specification includes coatings, cosmetics, paper, etc. as taught in Niizeki.
Applicant argues (p. 6-7 Remarks) The working examples including Polyesters A – D. These particles do not form a film since MFT is high, noting polylactic acid has a melting point of 164 ˚C. [0024] Niizeki describes the object of the invention by utilizing the fluidity and lubricity possessed by the spherical monodispersed polyester resin particles. However, if fusion bonded polycaprolactone is used, it would be clear the object of Niizeki would be impossible to achieve. Further, Niizeki merely states the resin particles can be used for film applications, although does not describe the aqueous dispersion itself forms a film as in the claimed invention.
This argument is not found persuasive since it not clear why the fluidity and lubricity of Niizeki would be impossible to achieve Chen’s polycaprolactone were included in Niizeki. Niizeki specifically teaches that polycaprolactone can be used ([0038] Niizeki). Further, it is not clear why the polyester would be required to melt to form a film. Finally, claims 1 and 7 do not exclude the dispersion used for film applications.
Applicant argues (p. 7-8 Remarks) Applicant provides the following explanation of Niizeki spherical monodispersed polyester resin particles that have a high melting point. Even if the skilled artisan attempted to form a film by applying a dispersion containing monodisperse polyester resin particles, a film would not be formed. [0071] of Niizeki merely states the polyester resin particles can be used as mechanical improving agents for films or a slipperiness improving agent for plastic films.
This argument is not found persuasive since a film forming agent of claim 1 used as mechanical improving agents for films or a slipperiness improving agent for plastic films is nevertheless a film. Paragraph [0071] of Niizeki lists many applications that are films.
Applicant argues (p. 8-9 Remarks) additionally, [0024] Niizeki describes the objective is to provide a cosmetic product having fine extensibility and scrubbing effect. This is accomplished by Niizeki utilizing the fluidity and lubricity possessed by the spherical monodispersed polyester resin particles. Therefore, a film as in [0071] the contact area of the spherical monodispersed polyester resin particles with the substrate is extremely small, resulting in low friction and thus good lubricity. Polycaprolactone tends to cause particle fusion and readily forms a film. Consequently, the contact area with the substrate increases, which leads to higher friction, a decrease in lubricity, and disappearance of fluidity.
This argument is not found persuasive since Niizeki already teaches the composition can comprise polycaprolactone at [0038]. Further, the rejection of record does not require removing the polyester and replace with polycaprolactone.
Applicant argues (p. 8-11 Remarks) a biodegradable resin dispersion that is fusion bonded to form a film is not obvious over Niizeki and Chen. The interview 7/8/26 raised that while hating and cooling could theoretically occur, it is not intended or expected that excessive heating or rolling could theoretically occur. Applicant cites pages 1-3 of the present specification.
This argument is not found persuasive since the claims do not exclude a further step of heating and rolling. Further, it is well settled that "reading a claim in light of the specification, to thereby interpret limitations explicitly recited in the claim, is a quite different thing from ‘reading limitations of the specification into a claim, to thereby narrow the scope of the claim by implicitly adding disclosed limitations which have no express basis in the claim." MPEP 2111.
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 ROBERT T BUTCHER whose telephone number is (571)270-3514. The examiner can normally be reached Telework M-F 9-5 Pacific Time Zone.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lanee Reuther can be reached at (571) 270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT T BUTCHER/Primary Examiner, Art Unit 1764
