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 .
Election/Restrictions
Claim 16, 19, and 20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 08/26/2025.
Applicant’s election without traverse of III-V semiconductors in the election of species of claim 8 in the reply filed on 08/26/2025 is acknowledged.
Claim Status
Claims 16, 19, and 20 have been canceled. Claim 33 is new. Support for new claim 33 can be found in original claim 10. Claims 1-2, 4, 6-8, 11-15, 23, 25-26, 28-29, 31, and 33 are pending.
Claim Objections
Claim 14 is objected to because of the following informalities: the abbreviation PHA is not present in claim 1, and should be inserted for the utmost clarity.
Claim 23 is objected to because of the following informalities: it is clear by the recitation “combinations thereof” that applicants intended to list the nucleating agents of claim 23 as a list of alternatives, however, to be understood as a list of alternatives, the limitation should read “or combinations thereof” instead of “and combinations thereof”.
Appropriate correction is required.
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.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 13, 15, and 23 are 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.
Claim 13 is dependent on claim 8. Claim 8 further limits the semiconductor of claim 1. Claim 13 further limits the weight ratio of the branching agent to co-agent of claim 12. For the purpose of examination, claim 13 has been interpreted as being dependent on claim 12.
Claims 7, 8, and 15 are rejected on the basis that of containing an improper Markush grouping of alternatives. A list of specified alternatives is defined as a Markush group. A Markush group is a closed group of alternatives, i.e., the selection is made from a group “consisting of” (rather than “comprising” or “including”) the alternative members. If a Markush grouping requires a material selected from an open list of alternatives (e.g., “selected from the group comprising” or the recited alternatives), the claim is indefinite because it is unclear what other alternatives are intended to be encompassed by the claim. If a claim is intended to encompass combinations or mixtures of the alternatives set forth in the Markush grouping, the claim may include qualifying language preceding the recited alternatives (such as “at least one member” selected from the group), or within the list of alternatives (such as “or mixtures thereof”). See MPEP 2173.05(h).
Claim 7 is indefinite as it recites, “wherein said polyhydroxyalkanoate is selected from the group consisting of poly(3- hydroxybutyrate), poly(3-hydroxybutyrate-co-3-hydroxyvalerate), poly(3-hydroxybutyrate-co-3- hydroxyvalerate-co-3-hydroxyhexanoate), poly(3-hydroxybutyrate-co-3-hydroxyhexanoate), and poly(3-hydroxybutyrate-co-4-hydroxybutyrate) or combinations thereof.” For proper Markush grouping of a closed group of alternative members, the members of the grouping are listed and the final member is preceded by “and”.
Claim 8 is indefinite as it recites, “wherein said semiconductor is selected form the group consisting of, IV elemental semiconductors, IV compound semiconductors, VI elemental semiconductors, III-V semiconductors, II-VI semiconductors, I-VII semiconductors, IV-VI semiconductors, V-VI semiconductors, II-V semiconductors, I-III-VI2 semiconductors, and layered semiconductors and combinations thereof.” For proper Markush grouping of a closed group of alternative members, the members of the grouping are listed and the final member is preceded by “and”.
Claim 15 is indefinite as it recites the composition of claim 1 further comprises one or more additives, but then lists materials that are not in the alternative. It is unclear if applicants intend to further limit the composition of claim 1 to further comprising additives (a) branching agent, (b) nucleating agent, (c) antioxidant, (d) colorant, and (e) other functional additives; or if applicants intend for the composition of claim 1 to further comprise additives selected from a group consisting of (a), (b), (c), and (d).
Furthermore, regarding (e), applicant’s specification recites “the additive is any compound known to those of skill in the art to be useful in the production of thermoplastics” [00041]. In light of this, the scope and boundaries of the limitation “other functional additives” is unclear.
Claim 23 is rejected as being dependent on claim 15.
Claim 4, 25, and 26 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to reference a claim previously set forth.
Claim 4 is dependent on canceled claim 3. For the purpose of examination, claim 4 has been interpreted as being dependent on claim 2.
Claim 25 is dependent on canceled claim 24. For the purpose of examination, claim 25 has been interpreted as being dependent on claim 23. As claim 26 is dependent on claim 25, it has also been rejected as being of improper dependent form for failing to reference a previous claim.
Claims 26 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 26 is dependent on claim 25. Claim 25 limits the activated carbon mesh size to -350x500. Claim 26 further limits the activated carbon and/or nucleating agent to a mesh size of -500. Applicant’s specification recites, “-500 mesh refers to particles that are small enough to mass through a screen of 500 mesh size. In referring to particle distributions, the notation “x” between to mesh sizes refers to a range of sizes. For example, 140x200 refers to a range or bin or carbon particle sizes smaller than 140 mesh and greater than 200 mesh” [p. 00044]. In light of this, the particle sizes of claim 25 and claim 26 are mutually exclusive. Claim 25 limits the particle size to those too large to pass through a screen of 500 mesh size, while claim 26 limits the particle size to those small enough to pass through a screen of 500 mesh size.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claims 1-2, 6-8, 11, 14-15, 23, and 28-29 are rejected under 35 U.S.C. 103 as being unpatentable over Avakian (US 20110193007 A1).
Regarding claims 1 and 8, Avakian teaches a composition comprising polyhydroxyalkanoate (PHA) an functional additives [abstract]. Avakian teaches property modifications of PHA-modifications can be found using functional additives to modify thermal conductivity, and, with these modifications, one can prepare quite sophisticated engineering thermoplastic compositions [p. 0052]. Avakian teaches examples of thermal conductivity include metal nitrides such as boron nitride, which are known in the art to be types of group III-V semiconductors [p. 0053; Wikipedia list of type III-V semiconductors].
Regarding claims 2, 4, and 6; Avakian teaches the PHA may comprise 10-90 wt. % of the composition and the functional additives may comprise 0.1 to 80 wt. % of the composition [p. 0044, 0058, table 1]. Avakian teaches preferable molecular weights for the PHAs are between about 50,000 and 1.5 million Daltons. 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).
Regarding claim 7; Avakian teaches suitable commercial PHA copolymers are selected from the group consisting of polyhydroxybutyrate-co-hydroxyvalerate, polyhydroxybutyrate-co-4-hydroxybutrate, polyhydroxybutyrate-co-3-hydroxyhexanoate, polyhydroxybutyrate-co-3-hydroxyheptanoate, and polyhydroxybutyrate-co-3-hydroxyoctanoate [p. 0023, 0028].
Regarding claim 11; Avakian teaches the composition can include conventional plastics additives (optional additives) in an amount that is sufficient to obtain a desired processing or performance property for the compound [p. 0038]. Avakian teaches the optional additives may comprise 0-30 wt. % of the composition [table 1]. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
Regarding claim 14; Avakian teaches composition is suitable for food and beverage packaging [p. 0071]
Regarding claim 15 and 23; Avakian teaches examples of optional additives include adhesion promoters; biocides (antibacterials, fungicides, and mildewcides), anti-fogging agents; anti-static agents; bonding, blowing and foaming agents; dispersants; fillers and extenders; fire and flame retardants and smoke suppressants; impact modifiers; initiators; lubricants; micas; pigments, colorants and dyes; plasticizers; processing aids; release agents; silanes, titanates and zirconates; slip and anti-blocking agents; stabilizers; stearates; ultraviolet light absorbers; viscosity regulators; waxes; and combinations of them [p. 0039].
Regarding claim 28 and 29; Avakian teaches the PHA may comprise 10-90 wt. % of the composition and the functional additives may comprise 0.1 to 80 wt. % of the composition, and include thermally conductive additives [p. 0044, 0058, table 1]. ]. Avakian teaches examples of thermally conductive additives include metal nitrides such as boron nitride, which are known in the art to be types of group III-V semiconductors [p. 0053; Wikipedia list of type III-V semiconductors]. Avakian teaches examples of optional additives include colorants and dyes [p. 0039]. Avakian teaches the optional additives may comprise 0-30 wt. % of the composition [table 1]. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
Claim 31 is rejected under 35 U.S.C. 103 as being unpatentable over Avakian (US 20110193007 A1) in further view of Markus (US 9085784 B1).
The disclosure of Avakian is described above and is applied here as such.
Avakian teaches optional additives include pigments, colorants, and dyes [p. 0039]. Avakian is silent with respect to blue pigment.
Marcus teaches a blue pigment can be added to PHA-based compositions [c.20, lines 35-37].
Therefore, it would be obvious to one having ordinary skill in the art that blue is a suitable pigment for the composition of Avakian.
Claim 33 is rejected under 35 U.S.C. 103 as being unpatentable over Avakian (US 20110193007 A1) in further view of Koyama (US 20160251494 A1).
The disclosure of Avakian is described above and is applied here as such.
Avakian teaches boron nitride as a functional additive for the PHA composition [p. 0053]. Avakian is silent with respect to the crystalline structure of boron nitride.
Koyama teaches a composition comprising a PHA and a filler [abstract]. Koyama teaches the inorganic filler also serves as a nucleating agent, further promoting crystallization and improving processability [p. 0073]. Koyama teaches examples of the inorganic filler include hexagonal boron nitride and cubic boron nitride [p. 0081].
In light of this, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to select hexagonal or cubic boron nitride when preparing the composition of Avakian in order to promote crystallization and improve processability of the PHA composition.
Claims 1, 6, 7, 12, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Krishnaswamy (US 20150132512 A1).
Regarding claims 1, 6, and 7; Krishnaswamy teaches a polymer blend composition of comprising a poly-3-hydroxybutyrate-co-4-hydroxybutyrate copolymer (a PHA) having a molecular weight of about 500,000 to about 2,000,000 g/mole [p. 009-0010, 0013, 0071-0072]. ]. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
Krishnaswamy teaches embodiments wherein the composition further includes a nucleating agent, which is selected from cyanuric acid and boron nitride [p. 0020, 0038]. Boron nitride is known in the art to be a III-V semiconductor [Wikipedia list of type III-V semiconductors]. In light of these teachings, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed to prepare a composition comprising a poly-3-hydroxybutyrate-co-4-hydroxybutyrate copolymer and boron nitride.
Regarding claims 12 and 15; Krishnaswamy teaches embodiments wherein the composition is prepared by melt reacting the polymers with a branching agent in the presence of a co-agent (also referred to herein, as a "cross-linking agent"), thereby forming a branched polymer blend [p. 0020, 0034] . Krishnaswamy teaches the branching agent is included at 0.001% to about 0.5% by weight of the blend composition [p. 0020]. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Krishnaswamy (US 20150132512 A1) in further view of Blasius (US 6984694 B2).
Krishnaswamy teaches combining (e.g., mixing or blending) the polymers in the presence of peroxide (branching agent) provides the following benefits compared to combining the polymer blends or mixtures without any reactive chemistry: (1) higher tensile elongation (2) higher tensile toughness (3) improved thermal stability and/or better melt stability (4) improved tear strength and (5) improve impact strength, resulting in a broader processing window for the overall composition and subsequent applications of these compositions in production of articles, films and the like [p. 0047]. Krishnaswamy teaches the use of branching, cross-linking or co-agents further improves the desired properties of the polymer blend composition over the starting compositions without the cross-linking or co-agents and branching agents [p. 0048]. Krishnaswamy teaches branching agents included at 0.001% to about 0.5% by weight of the blend composition [p. 0020, 0046]. However, Krishnaswamy is silent with respect to the weight ratio of the co-agent to branching agent. Krishnaswamy teaches suitable co-agents are described by Blasius and incorporates Blasius by reference in entirety [p. 0135].
Blasius teaches the use of oligomeric and low molecular weight polymeric chain extenders (co-agents) [c. 1, lines 35-57]. Blasius teaches the chain extenders are effective in very low quantities and teaches embodiments wherein the chain extender is present in an amount of 0.5 wt. % or less based on the total weight of the mixture [c. 12, lines 10-20]. Blasius further teaches formulations with an amount of about 0.3 wt. % chain extender can be used in used in less demanding fiber applications such as sheet and tape, whereas formulations with an amount of 0.5 wt. % chain extender can be used in non-food bottles [c. 23, lines 55-60].
In light of the combined teachings of Krishnaswamy and Blasius obviously embrace embodiments capable of satisfying the claimed ratio. Furthermore, the teachings of Blasius and Krishnaswamy show the amount of chain extender (co-agent) to be a result effective variable, impacting the properties of the prepared polymers, as well as their suitable applications. As Krishnaswamy directly teaches the chain extenders of Blasius as suitable co-agents, one having ordinary skill in the art would have a reasonable expectation of success preparing the composition of Krishnaswamy with the co-agents, and amounts thereof, taught by Blasius. The amount of chain extender and branching agent in the composition are recognized as result effective variables, and the optimization of the ratio thereof is considered routine optimization. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Conclusion
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/HOLLEY GRACE HESTER/ Examiner, Art Unit 1766
/RANDY P GULAKOWSKI/ Supervisory Patent Examiner, Art Unit 1766