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 .
Response to Amendment
The declaration under 37 CFR 1.132 filed 7/15/2026 is insufficient to overcome the rejection of claim 1 based upon 35 USC 103 as set forth in the last Office action because: the further information provided in the data presented in the declaration is still not commensurate in the claim scope
Whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support. In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. See MPEP 716.02(d).
Specifically, the declaration references only a PBSAz compound comprising 20% azaelic acid. However, this range does not encompass the entire range of a dicarboxylic acid component with 53-95% succinic acid, 5-27% azaelic acid, and a diol component comprising 100% butane diol stated in claim 1.
Additionally, the declaration only teaches a range of PBSAz as 30-38% of the total composition and the PBS content of 16.9-24.9% of the total composition. The declaration also teaches PBSAz is 54%-69% and PBS is 31%-45% of components (i) and (ii). This range does not encompass the entire range of claim 1 which teaches a range of 0-30% PBS and 25-65% PBSAz.
Additionally the declaration teaches a range of PLA of 27.2-29.4%. This range does not encompass the entire range of claim 1 which teaches a range of 23-43% polyhydroxyalkanoate.
The declaration teaches 15-17.3% filler. This range does not encompass the entire range of claim 1 which teaches a range of 10-20%.
The declaration also teaches a chain extender/crosslinking agent is an oleamide of plant origin which comprises 0.6% of the composition this does not overlaps with the claimed range of 0-0.5% chain extender. The declaration does not fully encompass the claimed ranges of 0-0.5%.
Additionally, claim 1 allows any polyhydroxyalkanoate while the declaration references only a single polyhydroxyalkanoate, claim 1 allows for any filler while the declaration teaches only 1 filler, and claim 1 allows for any chain extender and/or crosslinking agent while the declaration teaches only a plant based oleamide. Therefore, the data of the declaration is not commensurate in scope with the claims. The examiner recommends amending claim 1 to fall within the scope of the declaration and to indicate through arguments and or further evidence that the scope of the claims falls within the claimed scope of the 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.
Claims 1-3, and 7-22 are rejected under 35 U.S.C. 103 as being unpatentable over Siegenthaler US 20130005895A1 as evidenced by Torres, E., et al., Improved Mechanical, Thermal and Hydrophobic Properties of PLA Modified with Alkoxysilanes by Reactive Extrusion Process. Polymers 2021, 13, 2475, Tashiro US9617462B2, PLA Resin Grades and Applications, Natureworks 2005, and Elementis Microtalc IT Extra Datasheet 2019.
Regarding claims 1 and 22, Siegenthaler teaches a polymer composition (Abstract). Siegenthaler teaches the composition comprises 50-80% polyester. This overlaps with the claimed range of 5-70%. Siegenthaler also teaches that the polyester comprises 90-99.5 mol% succinic acid (Paragraph [0004]), 98-102 mol% 1,4 butanediol (Paragraph [0006]), and from 0-10mol% of a C6-C20 dicarboxylic acid (Paragraph [0005]), where the dicarboxylic acid component can be azelaic acid (Paragraph [0078]). This overlaps with the claimed range of 53-95% succinic acid, 100% butanediol, and 10-27% azelaic acid. Siegenthaler also teaches this polyester can be polybutylene succinate co azelate (Paragraph [0078)
In Siegenthaler polybutylene succinate and polybutylene succinate-co-azelate are recited in parallel as equally suited alternatives. (Paragraph [0074] and [0078]). It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose. Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to use both polybutylene succinate and polybutylene succinate-co-azelate as polymer (i) and polymer (ii).
Siegenthaler is silent with respect to suitable amounts when using a combination of equivalent polyesters.
Nevertheless, the obviousness analysis may “take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). For example, the analysis may “include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion.” Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009). The Patent Trial and Appeal Board has held that mixing equivalent components in a 1:1 ratio represented no more than application of the “logic, judgment, and common sense available to the person of ordinary skill” in the art. Ex parte Swanzy, Appeal 2017-004875 at 8-9.
In this case, Siegenthaler recognizes PBS and PBSA as equivalents as indicated above. It would have would have been prima facie obvious, using no more than ordinary creativity, logic, judgment, and common sense, to combine PBS and PBSA in equal amounts (i.e., in a 1:1 ratio) based on the fact that both are disclosed in parallel as being equally suitable for use in this capacity. Siegenthaler’s polyester component is present in a total amount of 50-85 wt% (p. 1, [0003]). Combining PBS and PBSA in a 1:1 ratio will therefore result in a composition comprising 25-42.5 wt% PBS and 25-42.5 wt% PBSA. These ranges overlap the claimed amounts for (i) and (ii).
Siegenthaler also teaches the polymer comprises 15-50% by weight of polylactic acid (Paragraph [0008]). This reads on the claimed “polyhydroxyalkanoate.” Examples of the preferred PLAs include Natureworks 6201D (Paragraph [0054]) Torres teaches that the melting point of 6201D is 168C. This reads on the claimed range of greater than 160C. Torres teaches that the heat of fusion of 6201D is 43.8 J/g (Page 10, Table 6). This falls within the claimed range of greater than 10 J/g.
Siegenthaler teaches that composition can comprise 10-40% fillers (Paragraph [0056]). This overlaps with the claimed range of 10-20 wt% of filler.
Siegenthaler also teaches that the composition comprises a chain extender which is .05-1 wt% of the polyester. This overlaps with the claimed range of 0-.5wt% the total composition (Paragraph [0007]).
Siegenthaler’s amounts of polyester, diol, dicarboxylic acid, PLA, filler, and chain extender overlap the claimed ranges. A prima facie case of obviousness exists where the claimed ranges overlap the prior art ranges. See MPEP 2144.05. Therefore, Claim 1 is obvious over Siegenthaler
Regarding claims 2 and 3, Siegenthaler teaches on the limitations of claim 1. Siegenthaler teaches that the polyester may contain 0.05-1 wt% of branching agent based on the weight of polyester (Paragraph [0007]). Siegenthaler also teaches that this branching agent can be glycerol (Paragraph [0042]). Siegenthaler teaches an example composition (Paragraph [0076]) where the glycerol comprises 0.2 mol% based on the dicarboxylic acid component. This overlaps with the claimed range of 0.05-3% and reads on the claimed “glycerol” branching component.
Regarding claims 8, 19, and 20, Siegenthaler teaches on the limitations of claim 1. As stated above Siegenthaler teaches that the composition contains polylactic acid (Abstract). This reads on the claimed “polyesters of lactic acid.”
Regarding claims 9 , Siegenthaler teaches on the limitations of claim 1 as described above. Siegenthaler teaches that the PLA used can be 6201D (Paragraph [0054]). Torres teaches that the melting point of 6201D is 168C. Torres teaches that the heat of fusion of 6201D is 43.8 J/g (Page 10, Table 6). This falls within the claimed ranges of 10-93J/g and 160-200C.
Regarding claim 10, Siegenthaler teaches on the limitations of claim 1. Tashiro teaches 6201D has a D-lactic acid content of 1.2% (Tashiro, Col. 9, Lines 50-51). This reads on the claimed at least “97% w/w” of L-lactic acid content. PLA Resin Grades and Applications, Natureworks teaches that 6201D has a melt flow index of 15-30g/10min as according to ASTMD 1238, the melting temperature is 160-170C, and the glass transition temperature is 55-60C.(Page 3). This reads on the claimed ranges of 20-100g/ 10min, 160-200C for the melting temperature, and 55-65C for the glass transition temperature. Torres teaches that heat of fusion is 43.8 J/g. This falls within the claimed range of 10-93 J/g.
Regarding claims 11, Siegenthaler in view of Torres teaches on the limitations of claim 1. Siegenthaler also teaches that the filler can be talc (Paragraph [0056]). This reads on the claimed “talc.”
Regarding claim 12, Siegenthaler teaches on the limitations of claim 1. Siegenthaler teaches the use of talc as a filler (Paragraph [0056]). Siegenthaler also teaches the use of Microtalc IT Extra as a commercially available talc in the examples (Paragraph [0086]). Elementis Microtalc IT Extra Datasheet teaches that the median particle size is 1.8 microns. (Page 2). This falls within the claimed range of less than 10 microns.
Regarding claim 13, Siegenthaler in view of Torres teaches on the limitations of claim 1. Siegenthaler teaches that polyfunctional chain extenders can be added to the composition (Paragraph [0041]). These polyfunctional chain extenders can be difunctional, isocyanurates, oxazolines, or epoxides (Paragraph [0041]). This reads on the claimed chain extender having two or more functional groups bearing isocyanurate, oxazoline, or epoxide groups.
Regarding claim 14, Siegenthaler in view of Torres teaches on the limitations of claim 1. Siegenthaler teaches that the polymer composition has sufficient heat resistance to hold hot food or drinks (Paragraph [0013]). This reads on the claimed resistance to deformation at high temperatures. Siegenthaler does teach that the composition is biodegradable according to EN 13432 (Paragraph [0085], Table 6, and Paragraph [0060]. Siegenthaler also teaches that the composition has suitable biodegradability according to EN 13432 from 50microns to 2mm. This overlaps with the claimed range of “up to 1mm.”
Regarding claim 15, Siegenthaler in view of Torres teaches on the limitations of claim 1. Siegenthaler is also silent on the composition containing THF. Therefore, this reads on the claimed “less than 30mg/kg” of THF.
Regarding claim 16, Siegenthaler in view of Torres teaches on the limitations of claim 1.Siegenthaler also teaches that the composition can be used to make “game box inserts (Paragraph [0064]). This reads on the claimed “rigid containers.”
Regarding claim 17, Siegenthaler in view of Torres teaches on the limitations of claim 1. Siegenthaler also teaches that the composition can be used to make trays (Paragraph [0065]). This reads on the claimed “trays.”
Regarding claim 18, Siegenthaler teaches on the limitations of claim 1. Siegenthaler also teaches forming articles by injection molding (Paragraph [0014]) and does not require heat treatment after injection molding. Siegenthaler is silent on the conservative elastic modulus of the articles. Nevertheless, products of identical chemical compositions cannot have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of obviousness has been established. See MPEP 2112.01. Siegenthaler’s article as described above will therefore necessarily possess the claimed conservative elastic modulus.
Regarding claim 21, Siegenthaler teaches a polymer composition (Abstract). Siegenthaler also teaches that this composition contains 50-85% by weight of a polyester (Paragraph [0003]). Siegenthaler also teaches that the polyester comprises 90-99.5 mol% succinic acid (Paragraph [0004]), 98-102 mol% 1,4 butanediol (Paragraph [0006]), and from 0-10mol% of a C6-C20 dicarboxylic acid (Paragraph [0005]), where the dicarboxylic acid component can be azelaic acid (Paragraph [0078]). This overlaps with the claimed range of 53-95% succinic acid, 100% butanediol, and 5-27% azelaic acid. Siegenthaler teaches he polyester can be polybutylene succinate co azelate (Paragraph [0078]).
In Siegenthaler polybutylene succinate and polybutylene succinate-co-azelate are recited in parallel as equally suited alternatives. (Paragraph [0074] and [0078]). It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose. Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to use both polybutylene succinate and polybutylene succinate-co-azelate as polymer (i) and polymer (ii).
Siegenthaler is silent with respect to suitable amounts when using a combination of equivalent polyesters.
Nevertheless, the obviousness analysis may “take account of the inferences and creative steps that a person of ordinary skill in the art would employ.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). For example, the analysis may “include recourse to logic, judgment, and common sense available to the person of ordinary skill that do not necessarily require explication in any reference or expert opinion.” Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009). The Patent Trial and Appeal Board has held that mixing equivalent components in a 1:1 ratio represented no more than application of the “logic, judgment, and common sense available to the person of ordinary skill” in the art. Ex parte Swanzy, Appeal 2017-004875 at 8-9.
In this case, Siegenthaler recognizes PBS and PBSA as equivalents as indicated above. It would have would have been prima facie obvious, using no more than ordinary creativity, logic, judgment, and common sense, to combine PBS and PBSA in equal amounts (i.e., in a 1:1 ratio) based on the fact that both are disclosed in parallel as being equally suitable for use in this capacity. Siegenthaler’s polyester component is present in a total amount of 50-85 wt% (p. 1, [0003]). Combining PBS and PBSA in a 1:1 ratio will therefore result in a composition comprising 25-42.5 wt% PBS and 25-42.5 wt% PBSA. These ranges overlap the claimed amounts for (i) and (ii).
Conclusion
THIS ACTION IS MADE FINAL. 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 LILY SLOAN whose telephone number is (703)756-5875. The examiner can normally be reached 9 AM - 5 PM Pacific.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached at (571)270-7733. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
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/LILY K SLOAN/
Examiner, Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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