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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 § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1,2,5-10 and 20 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
These composition claims require a specific coefficient of friction value. However, this value is reliant on the method of forming the film (in particular the temperature). See applicant’s comparison examples 3 and 4 (tables 2 and 4) where the same polyester has drastically different COF values depending on the film forming temperature used. ASTM D1894 apparently does not specify a particular film forming temperature as applicant (table 2) performs this test on films made with varying film forming temperatures.
Therefore, COF is meaningless and/or variable for a composition type claim. COF is a suitable limitation only for claims directed to a film.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1,2,5-10,17 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by the Gan article in Polymer Degradation and Stability.
Gan exemplifies (#10) a polyester of butanediol, dimethylterephthalate and adipic acid. The polyester contains 60mol% terephthalate and 40mol% adipate linkages which conforms to applicant’s preferred species and amounts of claims 7 and 10. The Mw is 123,000g/mol and the Mw/Mn is 2.1. Therefore, the Mn must be 58,571g/mol. Its melting point is 1470C (table 1).
This polyester is then formed into a film at 200C above the melting temperature (section 2.4). This film forming temperature is therefore 1670C.
Gan does not report shear viscosity/melt strength (RVE), Mw/q or COF.
However, Gan’s polyester conforms to applicant’s teachings regarding monomeric species (see applicant’s examples 1,2), monomeric ratios (see applicant’s claim 7) and Mn (see applicant’s claim 1). Gan’s film forming temperature nearly matches applicant’s film forming temperature of 1700C of example 1. It is apparent from applicant’s examples and comparisons that the choice of film forming temperature is the main factor determining COF. Note the comparison #3 formed at 1700C provides a COF of “4” and comparison #4 formed at 2700C provides a COF of “32” despite utilizing the same polyester. Because the same monomers, amounts, Mn and film forming temperature as applicant were used, the same properties are expected to result.
In regards to applicant’s dependent claims:
Presumably, claim 2’s shear viscosity is met if the same monomers, ratios and Mn are present for the reference’s polyester.
Claims 1,2,5-10,17 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by the Gan article in Polymer Degradation and Stability.
Gan exemplifies (#9) a polyester of butanediol, dimethylterephthalate and adipic acid. The polyester contains 44mol% terephthalate and 56mol% adipate linkages which conforms almost exactly to applicant’s preferred species and amounts of applicant’s example 1. The Mw is 135,000g/mol and the Mw/Mn is 1.9. Therefore, the Mn must be 71,052g/mol. Its melting point is 1100C (table 1).
This polyester is then formed into a film at 200C above the melting temperature (section 2.4). This film forming temperature is therefore 1300C.
Gan does not report shear viscosity/melt strength (RVE), Mw/q or COF.
However, Gan’s polyester conforms to applicant’s teachings regarding monomeric species (see applicant’s examples 1,2), monomeric ratios (see applicant’s example 1) and Mn (see applicant’s claim 1). Gan’s film forming temperature of 1300C is lower than the 1450C of example 2. It is apparent from applicant’s examples and comparisons that the choice of film forming temperature is the main factor determining COF and the trend shows as the temperature decreases, COF decreases. Note the comparison #3 formed at 1700C provides a COF of “4” and comparison #4 formed at 2700C provides a COF of “32” despite utilizing the same polyester. Apparently lower film forming temperature favor lower COF. Because the same monomers, amounts, Mn and a low film forming temperature were used, the same properties as applicant’s are expected to result.
In regards to applicant’s dependent claims:
Presumably, claim 2’s shear viscosity is met if the same monomers, ratios and Mn are present for the reference’s polyester.
Claims 1,2,5-10,17,18 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Suzuki 2015/0073079.
Suzuki (table 1) blends 100 parts A-1, 100 parts B-1, 50 parts B-2 and 25 parts C-1. B-1 (paragraph 69) is PBAT Ecoflex which is a polyester of butanediol, adipic acid and terephthalic acid (paragraph 15) which are applicant’s preferred three monomers making up the polyester (see applicant’s example 1). Inherently, Ecoflex has approximately equal amounts of adipic acid and terephthalic acid (see page 1082 of the Mecking article in Angewande Chemie). Inherently, Ecoflex has a Mn of 46,700 daltons
(see paragraph 74 of Kaufman 2005/0208294). This blend is then formed into a film at 1200C – 1400C (paragraph 73) or a sheet at 1500 – 1600C (paragraph 79).
Suzuki does not report shear viscosity/melt strength (RVE), Mw/q or COF.
However, Suzuki’s polyester conforms to applicant’s teachings regarding monomeric species (see applicant’s examples 1,2), monomeric ratios (see applicant’s claim 7) and Mn (see applicant’s claim 1). Suzuki’s film forming temperature is slightly below applicant’s film forming temperature of 1450C of example 2. It is apparent from applicant’s examples and comparisons that the choice of film forming temperature is the main factor determining COF and the trend shows as the temperature decreases, COF decreases. Note the comparison #3 formed at 1700C provides a COF of “4” and comparison #4 formed at 2700C provides a COF of “32” despite utilizing the same polyester. Apparently lower film forming temperature favor lower COF. Because the same monomers, amounts, Mn and a low film forming temperature were used, the same properties as applicant’s are expected to result.
In regards to applicant’s dependent claims:
Presumably, claim 2’s shear viscosity is met if the same monomers, ratios and Mn are present for the reference’s polyester.
Suzuki’s film thickness is 20µ or 41µ (table 1) which meets claim 18 and can be used for packaging (paragraph 52).
Claims 1,2,5-10,17,18 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kaufman 2005/0208294.
Kaufman (table 2,3) forms films of Ecoflex. Inherently, Ecoflex is a polyester of butanediol, adipic acid and terephthalic acid which are applicant’s preferred three monomers making up the polyester (see applicant’s example 1) with approximately equal amounts of adipic acid and terephthalic acid (see page 1082 of the Mecking article in Angewande Chemie). Inherently, Ecoflex has a Mn of 46,700 daltons (paragraph 74). Film forming is conducted at 1700C (paragraph 62).
Kaufman does not report shear viscosity/melt strength (RVE), Mw/q or COF.
However, Kaufman’s polyester conforms to applicant’s teachings regarding monomeric species (see applicant’s examples 1,2), monomeric ratios (see applicant’s claim 7) and Mn (see applicant’s claim 1). Kaufman’s film forming temperature is the same as applicant’s film forming temperature of 1700C in example 1. It is apparent from applicant’s examples and comparisons that the choice of film forming temperature is the main factor determining COF and the trend shows as the temperature decreases, COF decreases. Note the comparison #3 formed at 1700C provides a COF of “4” and comparison #4 formed at 2700C provides a COF of “32” despite utilizing the same polyester. Because the same monomers, amounts, Mn and a low film forming temperature were used, the same properties as applicant’s are expected to result.
In regards to applicant’s dependent claims:
Presumably, claim 2’s shear viscosity is met if the same monomers, ratios and Mn are present for the reference’s polyester.
Kaufman’s film thickness is 25µ (table 2,3) which meets claim 18 as “packaging” is nothing more than future intended use for the film.
Claims 1,2,5-10,17,18 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ponti WO2017/216150.
Ponti exemplifies (#1) forming a blend of 29.7 parts poly(butylene adipate co butylene terephthalate), 9.1 parts polylactic acid and 1 part masterbatch. The poly(butylene adipate co butylene terephthalate) has 47.5mol% terephthalic acid and therefore 52.5mol% adipic acid. These are species and amounts identical to applicant’s example 1.
Mn is not reported for this polyester although an MFR of 11g/10min is specified (page 27 line 3) which is reasonably close to the 4.8g/10min of applicant’s example 1. The reference’s higher MFR would presumably have an Mn lower than the Mn of applicant’s example. The 4.8g/10min is within the more general teachings of 5-30dl/g (page 9 of spec) when converting mass flowrate to volumetric flow rate. For these reasons, an Mn>40,000 is assumed. Secondly, the reference (page 6 line 25) refers to Mn’s of >40,000. Given the common inventor/assignee, applicant should comment on this poly(butylene adipate co butylene terephthalate)’s Mn.
Film forming is conducted at 1700C (page 28 line 13) which is the same as applicant’s film forming temperature in example 1.
Ponti does not report shear viscosity/melt strength (RVE), Mw/q or COF.
However, Ponti’s polyester conforms to applicant’s teachings regarding monomeric species (see applicant’s examples 1,2), monomeric ratios (see applicant’s claim 7) and Mn (see applicant’s claim 1). Kaufman’s film forming temperature is the same as applicant’s film forming temperature of 1700C in example 1. It is apparent from applicant’s examples and comparisons that the choice of film forming temperature is the main factor determining COF and the trend shows as the temperature decreases, COF decreases. Note the comparison #3 formed at 1700C provides a COF of “4” and comparison #4 formed at 2700C provides a COF of “32” despite utilizing the same polyester. Because the same monomers, amounts, Mn and a low film forming temperature were used, the same properties as applicant’s are expected to result.
In regards to applicant’s dependent claims:
Presumably, claim 2’s shear viscosity is met if the same monomers, ratios and Mn are present for the reference’s polyester.
Ponti’s film thickness is 10µ (page 28 line 15) which meets claim 18 and can be used as packaging (page 2 line 33).
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 1,2,5-10, 17,18 and 20 rejected under 35 U.S.C. 103 as being unpatentable over the Gan article or Suzuki 2015/0073079 or Kaufman 2005/0208294 or Ponti WO2017/216150 in view of Bastioli 2013/0217836.
Each of the primary references apply as explained above and fail to report the “Mw/q” value.
Bastioli (paragraphs 10,117) teaches that “Mw/q” should be <9,000 for biodegradable polyester films and can be varied by one of ordinary skill.
It would have been obvious to ensure the primary reference’s “Mw/q” is within known acceptable values for biodegradable polyester films.
Applicant’s declaration of 2/10/26 requires the following:
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1,2,5-10,17,18 and 20 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. Applicant’s claim 1 requires a polyester having a “Poisson’s ratio” of a certain value. Applicant’s Poisson’s ratio is a ratio of the polyester’s shear viscosity to melt strength – each measured under relatively exotic conditions. Applicant’s specification gives no specific guidance how to make such a polyester having the required Poisson’s ratio and simultaneously meeting the Mw/q limitation. There would be undue experimentation for one of ordinary skill to make such a polyester meeting the Poisson’s Ratio ad Mw/q of applicant’s claims.
MPEP 2164.01(a) lists factors to consider when evaluating undue experimentation. In the present case, the following factors favor a finding of undue experimentation:
Breadth of Claims: Broad. Claim 1 fails to limit the polyester to any particular species of monomers. There is no upper limit for the polyester’s molecular weight.
State of the prior art; No prior art has been located that even mentions the version of “Poisson’s Ratio” of applicant’s claims for aliphatic-aromatic polyesters. Values for the particular melt strength relied on for calculating the Poisson’s Ratio cannot be found in the prior art for the PBAT type polyesters preferred by applicant.
Level of Predictability in the Art; Producing polyester with the required Poisson’s Ratio cannot be considered “predictable” if no prior art recognizes such a property
Amount of Direction Provided by Inventor; Generic polyester formation information is provided including Mn, preferred species of aliphatic diacids, aromatic diacids, and relative amounts thereof. However, applicant’s declaration of 2/10/26 shows that meeting the preferred species of monomers in the preferred amounts (sample C) does not necessarily lead to the required Poisson’s Ratio. Additionally, Sample C’s shear viscosity is relatively close to Sample A and B, meaning their Mn’s must also be close. Therefore, applicant’s own evidence leads one to the conclusion that the original specification’s directions were insufficient.
Working examples; There are no examples provided by applicant for making the polyester. Nor is a trade-named polyester given. Instead, applicant merely starts (examples 1-2 on page 11 of specification) with a previously prepared polyester already possessing the required Poison’s ratio.
Quantity of Experimentation to Make the Polyester: Excessive. With the multiple possibilities for the monomers to make the polyester and the lack of any guidance of which variables lead to changes in the Poisson’s Ratio, one of ordinary skill is left to blindly polymerize polyesters – hoping one might have the required Poisson’s Ratio (as well as Mw/q and COF).
Applicant's arguments filed 2/10/26 have been fully considered but they are not persuasive.
Applicant argues that the coefficient of friction test value is not indefinite because the testing condition is now present in the claim.
This is not convincing. There is no reason to believe ASTM D1894 requires any specific film forming temperature. This film forming temperature affects the coefficient of friction test value as shown by applicant’s own examples. The same polyester exhibits different COF values depending on what temperature was used during film forming. One cannot even assume applicant’s claim intends the tested film to have been formed at a specific temperature because applicant’s examples employ different film forming temperatures.
If a hypothetical polyester meets applicant’s COF when film formed at 1450C but lies outside applicant’s COF range when formed at 1700C, does this polyester meet the claims or not?
Applicant argues that Gan does not report RVE, Mw/q or COF.
Nonetheless, Gan’s polyesters inherently do have some RVE, Mw/q and COF value. Applicant does not comment on what these inherent values are. Gan provides the polymerization conditions such that his polyesters reproduced.
Suzuki and Kaufman identify their polyesters as the commercial polymer “ECOFLEX”. ECOFLEX inherently does have some RVE, Mw/q and COF value. Applicant does not comment on what these inherent values are.
Ponti’s poly(butylene adipate co butylene terephthalate) has 47.5mol% terephthalic acid and therefore 52.5mol% adipic acid. Its MFR is 11g/10min. Inherently, this polyester does have some RVE, Mw/q and COF value. Applicant does not comment on what these inherent values are.
Each of the rejections provide a rationale for inherency for the claimed properties (ie same preferred monomers, same relative amounts, same Mn). These are the only factors provided by applicant for making the claimed polyester and therefore must be sufficient for shifting the burden of proof to applicant (MPEP2112 V.).
Instead of measuring (or even estimating) these inherent properties for the cited prior art, applicant reports the properties for some other polyester (ie sample C) in the declaration. It is not clear that sample C corresponds reasonably closely to any of the cited prior art polyesters.
Additionally, sample C’s unusually high melt strength (ie 3 vs 1 of the other samples) despite similar MFR and Mn raises the suspicion that sample C was actually a branched poly(1,4-butylene adipate-co-1,4-butylene terephthalate). In other words, a tri or higher functional branching agent having been included (without being disclosed in the declaration). If this is the case, sample C has no bearing on the cited prior art as the prior art polyesters included no branching agents. Applicant (page 8 of latest response) recognizes melt strength’s dependence on branching.
If the declaration was convincing that the cited prior art lacks the required Poisson’s Ratio, then the same declaration is evidence of non-enablement.
Applicant’s specification provides no details how to ensure achieving the Poisson’s Ratio. The cited prior art provides the same (or higher) level of detail as applicant does for producing the polyester. If these details are insufficient for the prior art to make the claimed polyester, then applicant’s specification is also deficient.
The first office action called on applicant to comment on the inherent Mn of Ponti’s Mn. This request was ignored. Given the common inventor/assignee, the inherent Mn of Ponti’s polyester is assumed to meet applicant’s requirement.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID J BUTTNER/Primary Examiner, Art Unit 1765 4/17/26
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