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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 1-20 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation more than 20 g/10 min, and the claim also recites more than 22 g/10 min, more than 24 g/10 min, more than 25 g/10 min which is the narrower statement of the range/limitation. In the present instance, claim 2 recites the broad recitation more than 206 g/10 min, and the claim also recites more than 28 g/10 min, more than 30 g/10 min, more than 32 g/10 min which is the narrower statement of the range/limitation. In the present instance, claim 7 recites the broad recitation between 5,000 and 500,000 g/mol, and the claim also recites between 7,500 and 250,000 g/mol, between 10,000 and 150,000 g/mol which is the narrower statement of the range/limitation. In the present instance, claim 13 recites the broad recitation higher than 0.8 GPa, and the claim also recites higher than 1.0 GPa, higher than 1.5 GPa which is the narrower statement of the range/limitation. In the present instance, claim 14 recites the broad recitation more than 90 cm, and the claim also recites more than 100 cm, more than 110 cm which is the narrower statement of the range/limitation. In the present instance, claim 15 recites the broad recitation at least 40 oC, and the claim also recites at least 45 oC, at least 50 oC which is the narrower statement of the range/limitation. In the present instance, claim 18 recites the broad recitation container, and the claim also recites food container which is the narrower statement of the range/limitation. In the present instance, claim 19 recites the broad recitation less than 0.8 mm, and the claim also recites 0.5-0.8 mm which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Accordingly dependent claims 2-20 are indefinite.
Regarding claims 1-2, 7, 12-15, and 18-19, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Description of examples or preferences is properly set forth in the specification rather than the claims. If stated in the claims, examples and preferences may lead to confusion over the intended scope of a claim. In those instances where it is not clear whether the claimed narrower range is a limitation, a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph should be made. The examiner should analyze whether the metes and bounds of the claim are clearly set forth [see MPEP 2173.05(d)].
Claim 3: alternative expressions are permitted if they present no uncertainty or ambiguity with respect to the question of scope or clarity of the claims. One acceptable form of alternative expression, which is commonly referred to as a Markush group, recites members as being “selected from the group consisting of A, B and C.” See Ex parte Markush, 1925 C.D. 126 (Comm’r Pat. 1925) [See MPEP 2173.05(h)].
Claim 11: the phrase “according to claim 1 any one of the preceding claims” renders claim 11 indefinite. Claim 11 will be interpreted as according to claim 1.
Claim 14 is vague and indefinite because of the recitation of “described in the specification.” Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Claim 14 contains the trademark/trade name DEMAG IntElect2 75/420-250. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe the curable sealer and, accordingly, the identification/description is indefinite. See MPEP 2173.05(u).
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.
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) 1-6, 8-11, 13-18 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Van Heemst et al. (US 2012/0296015) in view of Ito et al. (US 2010/0028657), when taken with NatureWorks 6251D Data Sheet.
Regarding claims 1-6 and 11: Van Heemst et al. (US ‘015) discloses biodegradable compositions [abstract], wherein Example 2 [Ex. 2; 0043; 0045; 0047; Table 1, Ex. 2] contains 31.5 parts starch, 15 parts Vinnex 2504 (polyvinylacetate/ethylene [0032-0033]), 8 parts Vinnex 2510 (polyvinyl acetate [0032-0033]), 45 parts PLA (polylactic acid [0034]), 0.5 parts magnesium stearate (lubricant [0030]), 10 parts water, 30 parts glycerol, 1 part palm oil (lubricant [0030]), and 3 parts diacetin {corresponding to ~ 10 wt Vinnex 2504; 6 wt% Vinnex 2510 (total 16 wt% polyvinyl acetates); 31 wt% PLA; 1 wt% lubricants (palm oil + magnesium stearate)} [Ex. 2; 0043; 0045; 0047; Table 1, Ex. 2]. Van Heemst et al. (US ‘015) discloses injection molding the composition of Ex. 3 into a test sample [0047].
Van Heemst et al. (US ‘015) does not specifically disclose the PLA having a MFR of more than 20 g/10 min. However, Ito et al. (US ‘657) discloses compositions containing polylactic acid for producing injection molded articles [abstract; 0001; 0087], wherein the polylactic acid can have a MFR of 177 g/10 min @ 240 oC (NatureWorks 6251D; MFR of 70-85 g/10 min @ 210 oC and 2.16 kg) [0033; 0117]. Van Heemst et al. (US ‘015) and Ito et al. (US ‘657) are analogous art because they are concerned with a similar technical difficulty, namely the preparation of compositions containing polylactic acid for producing injection molded articles. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined polylactic acid having a MFR of 70-85 g/10 min @ 210 oC and 2.16 kg, as taught by Ito et al. (US ‘657) in the invention of Van Heemst et al. (US ‘015), and would have been motivated to do so since Ito et al. (US ‘657) suggests polylactic acid having a MFR of 70-85 g/10 min @ 210 oC and 2.16 kg is suitable for injection molding [0033; 0087; 0117].
NatureWorks 6251D Data Sheet provides evidence for a MFR of 70-85 g/10 min @ 210 oC and 2.16 kg [§ Physical Properties].
Regarding claim 8: Van Heemst et al. (US ‘015) discloses vinylacetate polymers.
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) [See MPEP 2113].
Regarding claims 9-10: Van Heemst et al. (US ‘015) discloses copolymers of vinylacetate and vinyllaurate (ex. vinylacetate/ethylene/vinyllaurate copolymers) [0032].
An express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982) [see MPEP 2144.06].
Regarding claim 13: Van Heemst et al. (US ‘015) discloses an E-modulus of 1490 MPa (1.490 GPa) [0047; Table 2, Ex. 3].
Regarding claims 14-15: Van Heemst et al. (US ‘015) and Ito et al. (US ‘657) disclose the basic claimed composition [as set forth above with respect to claim 1].
The claimed effects and physical properties, i.e. a spiral flow of more than 90 cm [instant claim 14]; a Tg of at least 40 oC [instant claim 15], would implicitly be achieved, as “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
Regarding claims 16-17 and 20: Van Heemst et al. (US ‘015) discloses mixing the composition of Ex. 3 in an extruder [0045] and injection molding the composition of Ex. 3 into a test sample [0047].
The claimed effects and physical properties, i.e. the article is transparent [instant claim 20], would implicitly be achieved, as “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) [see MPEP 2112.01].
Regarding claim 18: Van Heemst et al. (US ‘015) discloses injection molding the composition of Ex. 3 into a test sample [0035; 0047].
A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim [see MPEP 2111.02].
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Van Heemst et al. (US 2012/0296015) in view of Ito et al. (US 2010/0028657) as applied to claim 1 above, when taken with Vinnex Wacker Chemie AG.
Regarding claim 7: Van Heemst et al. (US ‘015) and Ito et al. (US ‘657) disclose the basic claimed composition [as set forth above with respect to claim 1]; wherein Van Heemst et al. (US ‘015) discloses vinylacetate polymers (ex. Vinnex) having molecular weights (Mw) of 65,000 or 110,000-150,000 [0032-0033].
An express suggestion to substitute one equivalent component or process for another is not necessary to render such substitution obvious. In re Fout, 675 F.2d 297, 213 USPQ 532 (CCPA 1982) [see MPEP 2144.06].
Vinnex Wacker Chemie AG provides evidence for Vinnex polyvinyl acetate polymer having molecular weights (Mw) of 65,000 or 110,000-150,000 suitable for injection molding (ex. 2522 and 2523) [pg. 22-23 and 25].
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Van Heemst et al. (US 2012/0296015) in view of Ito et al. (US 2010/0028657) as applied to claim 1 above, and further in view of Gruber et al. (US 5,594,095).
Regarding claim 12: Van Heemst et al. (US ‘015) and Ito et al. (US ‘657) disclose the basic claimed composition [as set forth above with respect to claim 1]; wherein Van Heemst et al. (US ‘015) discloses lubricants [0030].
Van Heemst et al. (US ‘015) does not disclose epoxidized linseed oil as the lubricant. However, Gruber et al. (US ‘095) discloses compositions containing polylactic acid for producing injection molded articles [abstract; 5:2-12], wherein the composition can contain epoxidized linseed oil as a lubricant [20:38-44]. Van Heemst et al. (US ‘015) and Gruber et al. (US ‘095) are analogous art because they are concerned with a similar technical difficulty, namely the preparation of compositions containing polylactic acid for producing molded articles. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined epoxidized linseed oil, as taught Gruber et al. (US ‘095) in the invention of Van Heemst et al. (US ‘015), and would have been motivated to do so since Gruber et al. (US ‘095) suggests epoxidized linseed oil as a lubricant without the resultant polymer having a greasy texture [20:38-44].
Claim(s) 18-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Van Heemst et al. (US 2012/0296015) in view of Ito et al. (US 2010/0028657) as applied to claim 17 above, and further in view of Bussmann et al. (US 2015/0218368).
Regarding claims 18-19: Van Heemst et al. (US ‘015) and Ito et al. (US ‘657) disclose the basic claimed article [as set forth above with respect to claim 17]; wherein Van Heemst et al. (US ‘015) discloses injection molding [0035].
Van Heemst et al. (US ‘015) does not specifically disclose injection molding a container having a wall thickness of less than 0.8 mm. However, Bussmann et al. (US ‘368) discloses biodegradable compositions for producing thin-walled injection-molded components [abstract], wherein the molding can be a container having a wall thickness of 0.4 to 0.7 mm [0055] and a flow path/wall thickness ratio of at least 200 [0011]. Van Heemst et al. (US ‘015) and Bussmann et al. (US ‘368) are analogous art because they are concerned with a similar technical difficulty, namely the preparation of biodegradable compositions for producing injection-molded articles. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined a container having a wall thickness of 0.4 to 0.7 mm and a flow path/wall thickness ratio of at least 200, as taught Bussmann et al. (US ‘368) in the invention of Van Heemst et al. (US ‘015), and would have been motivated to do so since Bussmann et al. (US ‘368) suggests containers having a wall thickness of 0.4 to 0.7 mm [0055] and a flow path/wall thickness ratio of at least 200 [0011] have good mechanical properties and optimized biodegradability [0011-0012; 0020; 0052-0053].
See attached form PTO-892.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL F PEPITONE whose telephone number is (571)270-3299. The examiner can normally be reached on 7:00 AM - 3:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached on 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL F PEPITONE/Primary Examiner, Art Unit 1767