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 § 103
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.
Claims 1,2,4,5,8-10,12 and 16-19 rejected under 35 U.S.C. 103 as being unpatentable over Nemoto 2015/0018513.
Nemoto exemplifies (#4) polymerizing 99 parts of a 90/10 L-lactide/ D-lactide mixture (“Nemoto’s 1st monomer” or applicant’s “monomer I”) with 1 mol% lauryl alcohol initiator (paragraph 124) and DBU catalyst (paragraph 128). This is applicant’s step (1). Nemoto (paragraph 126) then polymerizes additional 90/10 L-lactide/ D-lactide mixture (“Nemoto’s 2nd monomer” or applicant’s “monomer II”) in the presence of the first step’s product. This qualifies as applicant’s step (2). The result is a polylactide of 135,000g/mol Mn (table 1) which meets applicant’s >45,000.
The mass ratio of monomers in the first step to the second step is 0.5:7.5 Therefore, the theoretical Mn of the prepolymer to the theoretical Mn of the final polymer is 0.5:8 or 6:100 meeting applicant’s M2:P ratio.
The 1 mole of lauryl alcohol and 100 moles of lactides provides an initiator:monomer mass ratio of:
1 x 186g/mol initiator
------------------------------- = 0.0127 g init/g lactides or 1.3:98.7
100 x 146g/mol lactides
This ratio is below applicant’s 5:95 minimum.
However, Nemoto (paragraph 43) suggests up to 5mol initiator per 100 mol lactide. The examiner calculates anywhere from 4.1 to 5 mol of lauryl alcohol per 100 mol lactide provides amounts within applicants initiator:monomer weight ratio range and would have been obvious.
Nemoto does not measure/report the hydroxyl value of polylactic acid stage (I) polymer in order to make applicant’s theoretical Mn calculation for the stage (I) prepolymer.
However, the hydroxyl value can be estimated from the knowledge that each mol of lauryl alcohol initiator provides 1 mol of hydroxyl groups to 100mol of monomer. For example, at 4.1 mol lauryl alcohol per 100 mol lactide, the hydroxyl value would be:
4.1 mol -OH mol lactide 1000mmol KOH 56.1mg KOH
------------------ X ---------------- X ----------------------- X --------------- = 16.0mgKOH/g 100mol lactide 144g lactide mol -OH mmol KOH
According to applicant’s formula of page 12 line 22,
Mn = 56.1 x functionality of initiator x 1000/ hydroxyl value
56.1 x 1 x 1000 /16.0 = 3,500 theoretical Mn
The aforementioned 4.1 to 5 mol of lauryl alcohol per 100 mol lactide provides theoretical Mn within applicant’s 1000-5000 range and would have been obvious based on paragraph 43’s teachings.
The Mw of the lauryl alcohol is 186g/mol. Applicant’s M1:M2 (at 4.1mol% lauryl alcohol) would therefore be:
186g/mol:3500g/mol or 5:100.
To summarize, a choice of 4.1 to 5mol% lauryl alcohol initiator instead of the cited example’s 1mol% would result in a hydroxyl value that provides a Mn of stage 1 prepolymer within applicant’s range as well as applicant’s claimed weight ratio of initiator:monomer. These amounts also satisfy applicant’s M1:M2 and M2:P requirements.
In regards to applicant’s dependent claims:
The DBU catalyst does not qualify as one of applicant’s claim 5 catalysts. However, Nemoto (paragraph 33) does suggest such alternative catalysts.
The cited example has a 99% conversion (table 1) which is higher than applicant’s claimed 90-98% conversion of claim 10. However, Nemoto (paragraph 102) suggests 2% residual monomer (ie 98% conversion).
Step (1) feed (paragraph 141) was carried out continuously – meeting applicant’s claim 12.
Claims 6 and 7 rejected under 35 U.S.C. 103 as being unpatentable over Nemoto 2015/0018513 in view of Komazawa 2010/0324229.
Nemoto applies as explained above.
Nemoto (paragraph 33) suggests metal catalysts such as tin octylate as an alternative to DBU, but does not teach particular amounts thereof.
Komazawa similarly produces polylactic acid. Komazawa (paragraph 50) teaches metal catalysts such as tin octylate are to be used in amounts of 0.001-0.5mol% relative to the lactide monomer. Given tin octylate’s Mw of 405g/mol and lactide Mw of 144g/mol, the above mol ratio would be 0.0028 – 1.41wt% tin octylate relative to the lactide monomer. This overlaps applicant’s claim 6 and 7’s catalyst amounts.
The tin octylate is 29wt% tin. Therefore, weight % of tin relative to lactide is 0.00081- 0.41wt%. This is 0.8-4100ppm which overlaps applicant’s amount of metal.
It would have been obvious to employ typical amounts of tin octylate to catalyze Nemoto’s polylactide.
Claim 11 rejected under 35 U.S.C. 103 as being unpatentable over Nemoto 2015/0018513 in view of Komazawa 2010/0324229.
Nemoto applies as explained above.
The cited example of Nemoto uses lower polymerization temperatures than applicant and DBU as catalyst. However, Nemoto (paragraph 33) suggests metal catalysts such as tin octylate as an alternative to DBU.
Komazawa demonstrates (paragraph 117,119,129,130) 1900C polymerization temperatures for two step lactide polymerizations catalyzed by tin octylate.
It would have been obvious to conduct both polymerization steps at 1900C especially when using tin octylate catalyst.
Applicant's arguments filed 5/26/26 have been fully considered but they are not persuasive.
Applicant argues that Nemoto’s examples only have an initiator/lactide ratio of 1.28:98.8 instead of 5:95 minimum now required.
This is true, but ignores the broader teachings of Nemoto (paragraph 43) suggesting up to 5mol initiator per 100 mol lactide. A reference is not limited to its preferred embodiments (MPEP2123).
Applicant states “MPEP 2144.05 explicitly states that for a numerical selection from a broad range, the Examiner cannot conclude obviousness based merely on range overlap”.
This principle cannot be found in MPEP 2144.05. On the contrary, MPEP 2144.05 I. takes the opposite position that where claimed ranges overlap/lie inside ranges disclosed by the prior art a prima facie case of obviousness does exist. (MPEP2144.05).
I. OVERLAPPING, APPROACHING, AND SIMILAR RANGES, AMOUNTS, AND PROPORTIONS
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that ‘suitable protection’ is provided if the protective layer is ‘about’ 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant’s] claimed range."). See also In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941) (The court found that the overlapping endpoint of the prior art and claimed range was sufficient to support an obviousness rejection, particularly when there was no showing of criticality of the claimed range).[AltContent: rect]
The motivation to choose 4.1-5mol% initiator comes from Nemoto’s disclosure itself. This is about 20% of the entire range suggested by Nemoto. Simply choosing to claim less than the entire range suggested by Nemoto is no reason for a finding of patentability. All ratios within the clear teachings of Nemoto are prima face obvious.
Applicant mischaracterizes In re Baird. In re Baird is not directed to the obviousness/unobviousness of numerical ranges. It is directed to species of compounds within a genus.
Arguments regarding M1:M2 are unconvincing.
As explained in the rejection, M1:M2 (initiator Mw:Mn of prepolymer) is met if using 4.1-5mol% of the lauryl alcohol initiator. Even the cited example (without increasing the initiator amount) meets applicant’s >1:100 requirement as shown by:
1 mol -OH mol lactide 1000mmol KOH 56.1mg KOH
------------------ X ---------------- X ----------------------- X --------------- = 3.9mgKOH/g 100mol lactide 144g lactide mol -OH mmol KOH
According to applicant’s formula of page 12 line 22,
Mn = 56.1 x functionality of initiator x 1000/ hydroxyl value
56.1 x 1 x 1000 /3.9 = 14,385 theoretical Mn
M1:M2 is therefore 186/14,385 or 1.3:100.
Arguments regarding M2:P are unconvincing.
This value merely represents the ratio of the amount of monomers in the first step to the total amount of monomers in both steps. For the cited example (whether 1mol% initiator or 4.1mol% initiator) this is 0.5:8 or 6:100 – easily meeting applicant’s requirement.
Applicant argues that the high initiator:lactide ratio improves properties but fails to point out which examples and comparisons illustrate the point. Applicant’s comparison examples are all directed to one-step polymerizations – not the two step polymerization of Nemoto.
Applicant’s position that weighing out the reference’s 1.3:98.7 initiator:monomer ratio in step 1 is drastically more inaccurate that the claimed 5:95 ratio is unsupported by anything of record.
It is also noted that applicant’s original claim 3 considered a ratio of 1.2:98.8 to be acceptable.
Applicant has had multiple opportunities to provide/point out evidence that the initiator:monomer subrange claimed somehow provides unexpected results, but has chosen not to do so. The examiner will not entertain any such showings after final rejection.
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 DAVID J BUTTNER whose telephone number is (571)272-1084. The examiner can normally be reached M-F 9-3pm.
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/DAVID J BUTTNER/Primary Examiner, Art Unit 1765 6/26/26
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