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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2/18/2026 has been entered.
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.
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. (equivalent to ([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 2/18/2026 (herein “Remarks”) have been fully considered but they are not persuasive.
Applicant argues (p. 5-6 Remarks) Niizeki is a spherical monodispersed polyester resin particle, the particle does not form a film since a minimum film forming temperature is high. Even when a solvent is removed and dried, the particle separated from the spherical monodisperse polyester resin aqueous dispersion, a solid particulate is observed. FIGS 1 to 3. The polyesters of A-D do not form a film since the minimum film forming temperature is high. Chen does not alleviate the deficiencies.
This argument is not found persuasive since claim 1 recites the biodegradable resin aqueous dispersion is a film forming agent. These limitations perform a function of performing as a film forming agent. Nizeki specifically lists the polyester resin particles could be used as “mechanical property improving agent for films” at [0071]. Therefore, one skilled in the art would conclude the dispersion of Nizeki could perform the function of a film forming agent.
Applicant argues (p. 7-8 Remarks) during the interview 9/11/25 the Examiner indicated an amendment which incorporated claim 2 would clarify the polycaprolactone is contained in the aqueous dispersion in a considerable amount. Further, Niizeki does not specifically disclose or suggest the use of polycaprolactone having the specific molecular weight. While Chen is cited, Chen merely discloses commercially available products. Therefore, there is no motivation for the skilled person to adopt polycaprolactone having the specific molecular weight of claim 1.
This argument is not found persuasive since selection of polycaprolactone results in 100% by mass of the biodegradable resin. Further, 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. In other words, a specific polycaprolactones must be selected, wherein Chen teaches commercially available resins used in biodegradable compositions.
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
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