DETAILED ACTION
Claim Status
Claim(s) 1, 3-5, 7-10, 12-15, 17-19 is/are pending.
Claim(s) 1, 3-5, 7-10, 12-15, 17-19 is/are rejected.
Claim(s) 2, 6, 11, 16, 20 is/are cancelled by Applicant.
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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Claim Rejections - 35 USC § 103 (AIA )
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 3, 10, 12, 17-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over:
VAN TRUMP ET AL (US 2020/0369872),
in view of UEDA ET AL (US 2007/0027247),
and in view of AUCEJO ROMERO ET AL (US 2013/0143988),
and in view of HERREMA (US 2017/0268026),
and in view of WU ET AL (US 2007/0196644),
and in view of WANDNER (US 2020/0332113),
and in view of IMIFABI - HiTalc Premium - HTP Ultra 5c and/or IMIFABI - HiTalc Premium - HTP Ultra 10c,
and in view of OTSUKA ET AL (US 2021/0355277),
and in view of KLINGEBERG ET AL (US 2019/0085214).
VAN TRUMP ET AL ‘872 discloses polyhydroxyalkanoate (PHA)-based compositions, wherein the compositions comprise:
• 50-95 wt% of a PHA copolymer containing structural units formed from:
(1) 55-99.5 mol% of 3-hydroxybutyrate;
(2) as little as 0.01 mol% of a second hydroxyalkanoate monomer (e.g., 4-hydroxybutyrate; 3-hydroxyvalerate; etc.);
(3) 1-35 mol% of a third hydroxyalkanoate monomer containing 6-22 carbon atoms (e.g., in certain preferred embodiments, 3-hydroxyhexanoate, etc.), wherein the third monomer can be present in amounts greater than the second monomer;
wherein the PHA copolymer has a weight average molecular weight (Mw) of about 50,000 to about 7.5 million Daltons;
wherein certain preferred embodiments of the PHA copolymer comprise: 3-hydroxybutyrate; 3-hydroxyvalerate; and 3-hydroxyhexanoate;
wherein certain preferred embodiments of the PHA copolymer comprise: about 84 to about 99.5 mol% of 3-hydroxybutyrate; about 0.1 to about 1 mol% of the second PHA monomer; and about 0.4 to about 15 mol% of the third PHA monomers;
• 5-50 wt% of one or more additional biodegradable copolymer(s) (e.g., polylactic acid, other biodegradable polymers, etc. or mixtures thereof);
• optionally 0.01-20 wt% of a nucleating agent (additionally and/or alternatively corresponding to the recited “auxiliary agent”);
• 1-40 wt% of a filler (e.g., montmorillonite, clays, talc, kaolinite, bentonite, nano-clay, or mixtures thereof) (additionally and/or alternatively corresponding to the recited “auxiliary agent”;
• optionally various other additives.
The PHA-based compositions can be formed using melt blending (e.g., in an extruder), and used to make: (i) extruded articles; or (ii) an aqueous dispersion. (entire document, e.g., line 0003-0006, 0008, 0012, 0016-0017, 0020-0024, 0026-0027, 0031-0033, 0040-0042, 0044-0046, 0048-0054, etc.) However, the reference does not specifically discuss modified layer silicates or barrier properties or the chemical composition of talc.
UEDA ET AL ‘247 discloses that it is well known in the art to incorporate layered silicates (e.g., montmorillonite, etc. which is optionally surface-treated with an organic compound) into biodegradable polyester compositions (e.g., biodegradable polyesters derived from 3-hydroxybutyric acid, lactic acid, etc.), wherein the layered silicate preferably has a interlayer distance at least 2.5 nm, and is present in amounts of 0.05-20 parts by mass (based 100 parts biodegradable polyester) in order to improve the gas barrier properties and other characteristics (e.g., mechanical properties and/or heat resistance) of the biodegradable polyester composition. The reference also discloses that talc can be utilized both as a crystallization promoting agent and as a filler. (paragraph 0007-0008, 0020-0022, 0029-0031, 0036, 0038, 0047, etc.)
AUCEJO ROMERO ET AL ‘988 discloses that it is well known in the art to incorporate a modified phyllosilicate (e.g., montmorillonite, etc. which is surface-treated with an organic compound) in polymeric compositions (e.g., biodegradable polymers, such as, but not limited to, polylactic acid, etc.) in order to reduce both water vapor transmission and oxygen transmission (OTR) properties (e.g., but not limited to, WVTR values of 3.17 g-mm/m2-day or less for a phyllosilicate content of about 4 wt%, etc.). (paragraph 0005, 0019-0020, 0031-0033, 0051, etc.; Table 1, etc.)
HERREMA ‘026 discloses that it is well known in the art incorporate additional polymers into polyhydroxyalkanoate (PHA)-based compositions, wherein the PHA-based compositions contain can contain 70-99 wt% PHA and 0.1-30 wt% non-PHA polymers (e.g., polylactic acid, polypropylene carbonate, etc.), in addition to function-improving additives (e.g., nucleating agent, compatibilizer, mold release agent, filler, etc.) in order to modify and/or improve various functional and performance properties of the PHA-based compositions. (paragraph 0053, 0126, 0135, etc.)
WU ET AL ‘644 discloses that it is well known in the art to utilize surface-treated inorganic fillers (e.g. phyllosilicates such as talc, etc.) in order to improve compatibility with polymers and/or improve dispersibility in polymers (e.g., polyesters, etc.), wherein the treated filler(s) can be used to enhance one or more physical properties (e.g., nucleation, barrier property, stiffness, fire retardancy, thermal stability, etc.) in the polymer films. The reference further discloses that surface-treated high aspect ratio fillers (e.g., phyllosilicates such as talc, etc.) can have multiple functions in polymer films, such as, but not limited to: (i) a barrier improving agent by forcing penetrating species to follow more tortuous paths through a polymer; and (ii) a crystal nucleation agent which reduces crystallite size and increases crystallite quantity, which in turn also improves barrier properties. (paragraph 0004-0005, 0011, 0017-0020, 0032, 0034-0039, 0047, 0054-0058, 0060, etc.)
WANDNER ‘113 discloses that it is well known in the art that utilize talc-based mineral filler as an additive in thermoplastic polymers (e.g., polyesters, etc., for production of films, etc.), wherein the talc has an ideal (i.e., theoretical) composition with a SiO2 content of 36.4 wt% and a MgO content of 31.9 wt%. The reference further discloses that naturally occurring talc typically has a SiO2 content of 55-65 wt% and a MgO content of 30.5-32 wt%. The reference further discloses that talc used as additives (e.g., filler, etc.) desirably has a typical SiO2 content of 55-65 wt% and a MgO content of 27-35 wt%, wherein the talc-based mineral filler advantageously has an average particle size d50 of 0.1 to 20 microns (preferably 0.3-2.5 microns; more preferably 0.4-1.0 microns), wherein the talc-based mineral filler also preferably has an upper grain size d95 of less than 10 microns (more preferably less than 6 microns; especially preferably less than 4.5 microns) -- for example, but not limited to, “IITP UltraTM” Talc (which appears to be a misspelling of “HTP UltraTM” Talc) from Imi Fabi, which is stated to have an SiO2 content of 61.5 wt% and a MgO content of 31.0 wt%, and a d50 of 0.65 microns. The reference further discloses that it is well known in the art to subject talc-based fillers to surface treatment to provide better coupling and adhesion to a polymer matrix. (paragraph 0078-0084, etc.)
IMIFABI - HiTalc Premium - HTP Ultra 5c and/or IMIFABI - HiTalc Premium - HTP Ultra 10c provide evidence that the “HTP Ultra” product line of talc (SiO2 content of 61.5 wt% and a MgO content of 31.0 wt%) have relatively narrow particle size distributions -- i.e.: HTP Ultra 5c has a d99 value of less than 5 microns; HTP Ultra 10c has a d97 value of less than 5 microns. (IMIFABI - HiTalc Premium - HTP Ultra 5c, page 1; IMIFABI - HiTalc Premium - HTP Ultra 10c, page 1)
OTSUKA ET AL ‘277 discloses that it is well known in the art to use high aspect ratio talc filler as a barrier-improving additive in polymer films, wherein the talc filler can be surface-treated to provide improve adhesion to the resin component containing the talc filler. (paragraph 0078-0083, etc.)
KLINGEBERG ET AL ‘214 discloses that it is well known in the art to utilize talc with an average particle diameter of 0.5-5 microns (preferably 2 microns or less) in amounts of 0.1-5 wt% as nucleating agents for biodegradable bio-based polyester compositions in order to provide controlled crystallization and improve various performance properties (e.g., flexibility, dimensional stability, transparency, etc.). The reference further discloses that it is well known in the art to incorporate other additives such as lubricants (e.g., zinc stearate; polyethylene wax, etc.) biodegradable bio-based polyester compositions in order to provide improve handling, anti-blocking, and/or mold release characteristics. (paragraph 0069, 0073, 0076-0077, 0081, etc.)
Regarding claims 1, 3, 10, 12, 19, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize effective amounts of known layered silicates (e.g., organic-modified montmorillonite, etc. as suggested by UEDA ET AL ‘247) as part of the filler component in the PHA-based compositions of VAN TRUMP ET AL ‘872 in order to produce articles (e.g., films, coatings, etc.) with improved and/or enhanced barrier properties.
Further regarding claims 1, 10, 17, one of ordinary skill in the art would have incorporated minor amounts of other known biodegradable polymers (e.g., polypropylene carbonate (PPC), as suggested in HERREMA ‘026) (corresponding to the recited “polyalkylene carbonate”) as an additive in the PHA-based compositions of VAN TRUMP ET AL ‘872 in order to further optimize and/or tailor the functional characteristics (e.g., melt processing characteristics, mechanical properties, durability, biodegradation rates, etc.) for specific end-use applications.
Further regarding claims 1, 10, 17, since: (i) UEDA ET AL ‘247 discloses that the inclusion of layered silicates in biodegradable polyester compositions generally improve gas barrier properties; and (ii) AUCEJO ROMERO ET AL ‘988 discloses that even minor amounts (e.g., about 4 wt%) of modified phyllosilicates can produce biodegradable film compositions with very low WVTR values (e.g., less than 4.3 g/m2-day); one of ordinary skill in the art would have incorporated minor amounts (e.g., 4 wt% or less) of modified layered silicate filler (e.g., montmorillonite, etc.) in order to obtain significantly reduced WVTR values (e.g., less than 4.3 g/m2-day) in addition to excellent gas barrier properties for packaging applications for moisture-content-sensitive and oxygen-sensitive materials (e.g., food, beverages, etc.). Additionally, since: (1) claims 1, 10 use the open term “comprising” regarding the barrier layer composition (which permits the presence of any other component(s) in addition to the explicitly recited components); (2) claim 17 does not explicitly limit the composition of the barrier layer to the explicitly recited components; and (3) it is well known in the art that the water vapor barrier properties of a composite is generally a function of the amount of water vapor barrier-enhancing filler(s), with larger amounts of water vapor barrier-enhancing filler generally resulting in lower WVTR values, typically due to the increased path distance which water vapor molecules are required to travel to penetrate a material, etc.); one of ordinary skill in the art would have incorporated effective amounts of additional known water barrier-enhancing fillers (e.g., a second different modified layered silicate; an unmodified layered silicate; other modified or unmodified platelet-type fillers; etc.), if necessary, in order to obtain packaging with the WVTR values required for specific applications (e.g., less than 4.3 g/m2-day).
Further regarding claims 1, 10, since UEDA ET AL ‘247 suggests the use of modified layer silicate in amounts of 0.05-20 parts by mass (based 100 parts biodegradable polyester), this suggested range at least partially overlaps the 1-5 parts by mass (based on 100 parts of the total composite) for modified layered silicate recited in claims 1, 10, 18.
Further regarding claim 1, 10, 17, since VAN TRUMP ET AL ‘872 disclose PHA copolymers containing: (i) about 55-99.5 mol% 3-hydroxybutyrate (corresponding to the recited “3-hydroxybutyric acid”) (molecular weight of ~104); (ii) as little as 0.01 mol% of a secondary monomer (e.g., 4-hydroxybutyrate, 3-hydroxyvalerate, etc.) (molecular weights of ~104 to ~118); and (iii) about 1-35 mol% of 3-hydroxyhexanoate (corresponding to the recited 3-hydroxyhexanoic acid”) (molecular weight of ~ 132); the Examiner has reason to believe that the 3-hydroxybutyrate-based PHA copolymers of VAN TRUMP ET AL ‘872 contain 3-hydroxyhexanoate (corresponding to the recited 3-hydroxyhexanoic acid”) in weight% (i.e., mass%) amounts which at least partially overlap the recited 3-hydroxyhexanoic acid content of 6-11 mass% -- for example (utilizing 4-hydroxybutyrate as the second monomer to simplify calculations):
• a PHA copolymer comprising 64.99 mol% of 3-hydroxybutyrate, 0.01 mol% 4-hydroxybutyrate, and 35 mol% 3-hydroxyhexanoate contains about 41 wt% 3-hydroxyhexanoate (corresponding to the recited 3-hydroxyhexanoic acid”);
• a PHA copolymer comprising 98.99 mol% of 3-hydroxybutyrate; 0.01 mol% 4-hydroxybutyrate; and 1 mol% 3-hydroxyhexanoate; contains about 1.2 wt% 3-hydroxyhexanoate (corresponding to the recited 3-hydroxyhexanoic acid”);
• a PHA copolymer comprising 94.99 mol% of 3-hydroxybutyrate, 0.01 mol% 4-hydroxybutyrate, and 5 mol% 3-hydroxyhexanoate contains about 6.3 wt% 3-hydroxyhexanoate (corresponding to the recited 3-hydroxyhexanoic acid”);
• a PHA copolymer comprising 91.99 mol% of 3-hydroxybutyrate, 0.01 mol% 4-hydroxybutyrate, and 8 mol% 3-hydroxyhexanoate contains about 10 wt% 3-hydroxyhexanoate (corresponding to the recited 3-hydroxyhexanoic acid”);
Further regarding claims 1, 10, 17, one of ordinary skill in the art would have utilized effective amounts of known or commercially available talc (e.g., naturally occurring talc with SiO2 contents of about 55-65 wt% and a MgO content of about 30.5-32 wt% and/or commercially available ultra-fine talc with narrow particle size distributions such as the HTP Ultra Talc product line having d99 or d97 values of less than 5 microns, as disclosed in WANDNER ‘113) which is surface-treated (corresponding to the recited “surface of the talc powder is modified”) (as suggested in WU ET AL ‘644 and WANDNER ‘113 and OTSUKA ET AL ‘277) as part of the filler component (additionally and/or alternatively corresponding to the recited “auxiliary agent”) in the PHA-based compositions of VAN TRUMP ET AL ‘872 as a multi-functional high aspect inorganic filler which functions both as: (i) a crystal nucleation agent to improve crystallization characteristics (e.g., crystallization speed, heat resistance, etc.) (as suggested in KLINGEBERG ET AL ‘214); and (ii) a barrier-improving additive; (as disclosed in WU ET AL ‘644 and OTSUKA ET AL ‘277); in order to produce articles (e.g., films, coatings, etc.) with improved and/or further enhanced barrier properties, crystallization characteristics, and other physical properties (as suggested in WU ET AL ‘644).
Further regarding claims 1, 10, 17, since:
(i) WU ET AL ‘644 and WANDNER ‘113 and OTSUKA ET AL ‘277 disclose or suggest the surface treatment of talc filler (corresponding to the recited “surface of the talc powder is modified”) to improve compatibility and/or adhesion to a surrounding polymer matrix material; and
(ii) microvoids (e.g., typically generated by the separation of an incompatible component (e.g., an inorganic filler, etc.) from the surrounding polymeric matrix phase of a film during stretching or tension) is generally undesirable in barrier films because the presence of microvoids typically increase the permeability of polymeric films, which correspondingly decreases the gas and/or water vapor barrier properties of a polymeric film containing microvoids (e.g., microvoided films are commonly used in gas and/or moisture permeable film or membrane applications, etc.); and
(iii) improved compatibility or adhesion between an inorganic filler and the surrounding polymer matrix generally reduces the generation of microvoids, particularly when the polymer films are stretched or subjected to tension;
one of ordinary skill in the art would have subjected the surface of talc filler incorporated in films made from the PHA-based compositions of VAN TRUMP ET AL ‘872 to increase the adhesion between talc filler and the polymeric components in the films and thereby eliminate or reduce the presence of undesirable barrier-reducing microvoids in the PHA-based films of VAN TRUMP ET AL ‘872 in order to produce PHA-based films with excellent gas and water vapor barrier properties (corresponding to the recited “a surface of the talc powder is modified to improve barrier properties of the polyhydroxyalkanoate”).
Regarding claims 17-18, one of ordinary skill in the art would have used a well-known melt blending-granulation preparation method to produce raw materials for articles made from the PHA-based compositions of VAN TRUMP ET AL ‘872.
Regarding claim 19, one of ordinary skill in the art would have utilized the PHA-based compositions of VAN TRUMP ET AL ‘872 containing a barrier-improving layered silicate (e.g., montmorillonite, etc.) in conventional packaging material structures (e.g., as films laminated to layers of other biodegradable packaging materials such as other biodegradable polymer layers, paper, etc.; as coatings formed from aqueous dispersions applied to other known biodegradable packaging materials such as other biodegradable polymer layers, paper, etc.) in order to provide multilayer and/or coated biodegradable packaging products with improved barrier properties.
Claim(s) 4, 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over:
VAN TRUMP ET AL (US 2020/0369872), in view of UEDA ET AL (US 2007/0027247), and in view of AUCEJO ROMERO ET AL (US 2013/0143988), and in view of HERREMA (US 2017/0268026), and in view of WU ET AL (US 2007/0196644), and in view of WANDNER (US 2020/0332113), and in view of IMIFABI - HiTalc Premium - HTP Ultra 5c and/or IMIFABI - HiTalc Premium - HTP Ultra 10c, and in view of OTSUKA ET AL (US 2021/0355277), and in view of KLINGEBERG ET AL (US 2019/0085214),
as applied to claims 1, 3, 10, 12, 17-19 above,
and further in view of DIXON ET AL (US 4,145,525).
DIXON ET AL ‘525 discloses that it is well known in the art to end-cap polyalkylene carbonates (e.g., polypropylene carbonate, etc.) in order to improve thermal stability and increase resistance to thermal degradation. (line 39-68, col. 1; line 38-40, col. 4; etc.)
Regarding claims 4, 13, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize minor amounts of polypropylene carbonate (PPC) which is end-capped to improve thermal stability and heat-resistance (as suggested by DIXON ET AL ‘525) as a property-modifying agent or additive in the PHA-based compositions of VAN TRUMP ET AL ‘872.
Claim(s) 5, 7-9, 14-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over:
VAN TRUMP ET AL (US 2020/0369872), in view of UEDA ET AL (US 2007/0027247), and in view of AUCEJO ROMERO ET AL (US 2013/0143988), and in view of HERREMA (US 2017/0268026), and in view of WU ET AL (US 2007/0196644), and in view of WANDNER (US 2020/0332113), and in view of IMIFABI - HiTalc Premium - HTP Ultra 5c and/or IMIFABI - HiTalc Premium - HTP Ultra 10c, and in view of OTSUKA ET AL (US 2021/0355277), and in view of KLINGEBERG ET AL (US 2019/0085214),
as applied to 1, 3, 10, 12, 17-19 above,
and further in view of KAWAHARA ET AL (US 2011/0178211),
and further in view of ALEXY ET AL (US 2014/0039096).
KAWAHARA ET AL ‘211 discloses that it is well known to use organic nucleating agents (e.g., organic sulfonic acid salts such as sulfoisophthalic acid salt, etc.) in combination with inorganic nucleating agents in biodegradable polyester compositions in typical amounts of 0.03-5 parts by mass (based on 100 parts of biodegradable polyester resin) in order to improve crystallization characteristics (e.g., crystallization speed, heat resistance, etc.) (paragraph 0020-0021, 0041-0050, etc.)
ALEXY ET AL ‘096 discloses that it is well known in the art to incorporate multifunctional chain extenders (e.g., epoxy-functional oligomers, etc.) in biodegradable polyester compositions (e.g., polyhydroxyalkanoate / polylactic acid blends, etc.) to improve toughness and modify melt processing properties. (paragraph 0013-0018, etc.)
Regarding claims 5, 7, 14-15, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use effective amounts of a combination of: (i) known organic nucleating agents (e.g., aromatic sulfonate derivative, etc. KAWAHARA ET AL ‘211); and (ii) known inorganic nucleating agents (e.g., talc, as suggested in KLINGEBERG ET AL ‘214); in the PHA-based compositions of VAN TRUMP ET AL ‘872 in order to improve crystallization characteristics (e.g., crystallization speed, heat resistance, etc.) (paragraph 0020-0021, 0041-0050, etc.)
Further regarding claims 5, 8, 15, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use effective amounts of known additives (e.g., compatibilizer, as suggested in ALEXY ET AL ‘096) in the PHA-based compositions of VAN TRUMP ET AL ‘872 in order to improve toughness and modify melt processing properties.
Further regarding claims 5, 9, 15, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use effective amounts of known additives (e.g., lubricant, as suggested in KLINGEBERG ET AL ‘214) in the PHA-based compositions of VAN TRUMP ET AL ‘872 in order to improve mold release and/or anti-blocking properties.
Claim(s) 17-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over:
VAN TRUMP ET AL (US 2020/0369872), in view of UEDA ET AL (US 2007/0027247), and in view of AUCEJO ROMERO ET AL (US 2013/0143988), and in view of HERREMA (US 2017/0268026), and in view of WU ET AL (US 2007/0196644), and in view of WANDNER (US 2020/0332113), and in view of IMIFABI - HiTalc Premium - HTP Ultra 5c and/or IMIFABI - HiTalc Premium - HTP Ultra 10c, and in view of OTSUKA ET AL (US 2021/0355277), and in view of KLINGEBERG ET AL (US 2019/0085214),
as applied to claims 1, 3, 10, 12, 17-19 above,
and further in view of ALEXY ET AL (US 2020/0270450).
ALEXY ET AL ‘450 discloses that it is well known in the art to form biodegradable polyester-based compositions (e.g., polylactic acid / polyhydroxyalkanoate blends, etc.) containing additives by:
• blending the polymeric components and additives (e.g., in an extruder, etc.);
• extruding and granulating the mixed composition;
wherein the granulated composition can be further processed to produce final products (e.g., by melt extrusion of the granules into films, etc.). (paragraph 0016, 0030, 0022-0023, 0026, 0034, 0039, 0046-0047, 0058, 0075, 0082, etc.)
Regarding claims 17-18, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a known melt blend-granulation composition preparation method as disclosed in ALEXY ET AL ‘450 to produce raw materials for articles made from the PHA-based compositions of VAN TRUMP ET AL ‘872.
Response to Arguments
Applicant's arguments filed 03/13/2026 have been fully considered but they are not persuasive.
(A) Applicant argues that “Wander does not disclose or suggest that the talc must simultaneously have an average particle size D50 as narrow as 0.5-1.5 µm and an
average particle size D98 ≤ 6 µm, as required in amended claim 1.” However, contrary to Applicant’s assertions, WANDNER ‘113 clearly discloses talc-based mineral filler which desirably has an average particle size d50 of 0.1 to 20 microns (preferably 0.3-2.5 microns; more preferably 0.4-1.0 microns), wherein the above-mentioned talc-based mineral filler also preferably has an upper grain size d95 of less than 10 microns (more preferably less than 6 microns; especially preferably less than 4.5 microns).
Furthermore, the Examiner’s position that WANDNER ‘113 in fact discloses or at least reasonably suggests the use of a talc-based mineral filler which simultaneously exhibit the disclosed d50 values (preferably 0.3-2.5 microns) and the disclosed d98 values is further supported by the disclosed use of “IITP UltraTM” Talc (which appears to be a misspelling of “HTP UltraTM” Talc) from Imi Fabi in WANDER ‘113 as a non-limiting example of a suitable talc-based mineral filler. While WANDNER ‘113 does not explicitly disclose the upper grain size d95 or d98 of the HTP UltraTM Talc used in the Examples of WANDER ‘113, the references IMIFABI - HiTalc Premium - HTP Ultra 5c and IMIFABI - HiTalc Premium - HTP Ultra 10c provide objective evidence that the “HTP Ultra” product line of talc (SiO2 content of 61.5 wt% and a MgO content of 31.0 wt%) have relatively narrow particle size distributions -- i.e.: HTP Ultra 5c has a d99 value of less than 5 microns; HTP Ultra 10c has a d97 value of less than 5 microns; HTP Ultra 5c and HTP Ultra 10c have particle distribution curves in which the percentage of particles with sizes of 6 microns are less appeared to be reached at d95 or higher (e.g., d96 or d97 or d98 or d99). In view of the particle size distribution curves in the IMIFABI - HiTalc Premium - HTP Ultra 5c and IMIFABI - HiTalc Premium - HTP Ultra 10c documents, the Examiner has reason to believe: (i) HTP Ultra 10c would have a d98 value of 6 microns or less; and (ii) other talc materials in the HTP UltraTM Talc product line (e.g., the HTP UltraTM Talc used in the Examples of WANDER ‘113) have a comparably narrow particle distribution and therefore a d98 value which is comparable to HTP Ultra 5c and HTP Ultra 10c (e.g., less than 5-6 microns), which at least partially overlaps the recited d98 of 6 microns or less recited in claims 1, 14, 17, therefore the Examiner has basis for shifting the burden of proof to applicant as in In re Fitzgerald et al., 205 USPQ 594.
(B) Applicant argues that WU ET AL ‘644 and OTSUKA ET AL ‘277 and KLINGEBERG ET AL ‘214 “does not disclose or suggest that the talc powder must simultaneously have an average particle size D50 as narrow as 0.5-1.5 µm and an
average particle size D98 ≤ 6 µm, as required in amended claim 1.” In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Vivian Chen (Vivian.chen@uspto.gov) whose telephone number is (571) 272-1506. The examiner can normally be reached on Monday through Thursday from 8:30 AM to 6 PM. The examiner can also be reached on alternate Fridays.
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May 24, 2026
/Vivian Chen/
Primary Examiner, Art Unit 1787
Prosecution Insights