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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on May 26, 2026 has been entered.
Claim Objections
Applicant is advised that should claim 1 be found allowable, claim 17 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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.
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, 4-8 and 10-14 are rejected under 35 U.S.C. 103 as being unpatentable over Grubbs, III et al. (US 2020/0048493) in view of Doi et al. (Macromolecules 1990, 23, 26-31) as evidenced by CD Bioparticles Blog (Brief Introduction of Xanthan Gum, 2023).
Considering Claim 1: Grubbs, III et al. teaches a composition comprising 25 to 65 weight percent (¶0006) of a polyhydroxybutyrate (¶0006; 0009); a rheology modifier (¶0041); and a surfactant (¶00040) in an amount of 0.01 to 5 weight percent (¶0050). Grubbs, III et al. teaches an example comprising 0.05% of xanthum gum as the rheology modifier (¶0073). CD Bioparticles Blog shows that Xanthan gum has a coiled/non-spherical structure (pg. 3).
Grubbs, III et al. teaches the amount of surfactant as overlapping the with the claimed range of less than 0.3% by weight. 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). It would have been obvious to a person of ordinary skill in the art to have used the surfactant in the overlapping portion of the claimed range, and the motivation to do so would have been, as Grubbs, III et al. suggests, to ensure the stability of the polymer in the dispersion with minimum cost.
Grubbs, III et al. teaches the dispersion as having an average particle size of 10 nm to 50 microns (¶0038). This overlaps with the claimed range. 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). It would have been obvious to a person of ordinary skill in the art to have prepared a dispersion with the overlapping portion of the claimed range, and the motivation to do so would have been, it is a suitable particle size for the coatings.
Grubbs, III et al. does not teach the polyhydoxyalkanoate as comprising 0.1 to 20% of a 4-hydroxybutryate. However, Doi et al. teaches a poly(3-hydroxybutyrate-co-4-hydroxybutyrate) comprising 10 or 17% of 4-hydroxybutyrate units (pg. 26). Grubbs, III et al. and Doi et al. are analogous art as they are concerned with the same field of endeavor, namely polyhydroxyalkanoate compositions. It would have been obvious to a person of ordinary skill in the art to have used the copolymer of Doi et al. in the composition of Grubbs, III et al., and the motivation to do so would have been, as Doi et al. suggests, it has high biodegradability compared to other polyhydroxyalkanoates (Abstract).
Considering Claim 2: Grubbs, III et al. teaches the molecular weight of the polymer as being from 150,000 to 600,000 Daltons (¶0010).
Considering Claim 4: Grubbs, III et al. teaches the surfactant as being non-ionic or anionic (¶0012).
Considering Claim 5: Grubbs, III et al. teaches adding a defoaming agent to the dispersion (¶0022).
Considering Claims 6 and 7: Grubbs, III et al. teaches the rheology modifier as being a gum such as xanthum gum, acrylate, or urethane (¶0052).
Considering Claim 8: Grubbs, III et al. teaches the surfactant as being polyvinyl alcohol (¶0012).
Considering Claim 10: Grubbs, III et al. teaches an example comprising 0.05% of xanthum gum as the rheology modifier (¶0073).
Considering Claim 11: Grubbs, III et al. teaches the coating weight as being 2 to 25 g/m2 (¶0066).
Considering Claim 12: Grubbs, III et al. teaches the Cobb value as being less than 20 g/m2 (¶0070).
Considering Claim 13: Grubbs, III et al. teaches coating a paper material (¶0065).
Considering Claim 14: Grubbs, III et al. teaches preparing an aqueous dispersion of the polyhydroxyalkanoate, and adding the additives to the dispersion (¶0073).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Grubbs, III et al. (US 2020/0048493) in view of Doi et al. (Macromolecules 1990, 23, 26-31) as evidenced by CD Bioparticles Blog (Brief Introduction of Xanthan Gum, 2023)as applied to claim 8 above, and further in view of Leimann et al. (Journal of Applied Polymer Science, 2013, 3093-3098).
Considering Claim 9: Grubbs, III et al. and Doi et al. collectively teach the composition of claim 8 as shown above. Grubbs, III et al. teaches the surfactant as being polyvinyl alcohol (¶0012).
Grubbs, III et al. does not teach the molecular weight or degree of hydrolysis of the polyvinyl alcohol. However, Leimann et al. teaches using a polyvinyl alcohol with a molecular weight of 78,000 and a degree of hydrolysis of 88 mol% as a surfactant for a polyhydroxyalkanoate (pg. 3093). Grubbs, III et al. and Leimann et al. are analogous art as they are concerned with the same field of endeavor, namely polyhydroxyalkanoate dispersions. It would have been obvious to a person of ordinary skill in the art to have used the polyvinyl alcohol of Leimann et al. as the surfactant of Grubbs, III et al., and the motivation to do so would have been, as Leimann et al. suggests, it is a suitable surfactant for dispersing polyhydroxyalkanoates.
Claims 15 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Grubbs, III et al. (US 2020/0048493) in view of Doi et al. (Macromolecules 1990, 23, 26-31) as evidenced by CD Bioparticles Blog (Brief Introduction of Xanthan Gum, 2023)as applied to claim 1 above, and further in view of George et al. (US Pat. 5,977,250).
Considering Claims 15 and 16: Grubbs, III et al. and Doi et al. collectively teach the composition of claim 1 as shown above.
Grubbs, III et al. teaches the surfactant as being non-ionic or anionic (¶0012). However, George et al. teaches cationic or zwitterionic/amphoteric surfactants as being functionally equivalent to non-ionic and anionic surfactants in polyhydroxyalkanoate dispersions (3:36-4:3). Grubbs, III et al. and George et al. are analogous art as they are concerned with the same field of endeavor, namely polyhydroxyalkanoate dispersions. It would have been obvious to a person of ordinary skill in the art to have substituted a cationic or zwitterionic surfactant for the surfactant of Grubbs, III et al., as in George et al., and the motivation to do so would have been, as George et al. suggests, they are functional equivalents (3:34-4:3).
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Grubbs, III et al. (US 2020/0048493) in view of Doi et al. (Macromolecules 1990, 23, 26-31) as evidenced by CD Bioparticles Blog (Brief Introduction of Xanthan Gum, 2023).
Considering Claim 17: Grubbs, III et al. teaches a composition comprising 25 to 65 weight percent (¶0006) of a polyhydroxybutyrate (¶0006; 0009); a rheology modifier (¶0041); and a surfactant (¶00040) in an amount of 0.01 to 5 weight percent (¶0050). Grubbs, III et al. teaches an example comprising 0.05% of xanthum gum as the rheology modifier (¶0073). CD Bioparticles Blog shows that Xanthan gum has a coiled/non-spherical structure (pg. 3).
Grubbs, III et al. teaches the amount of surfactant as overlapping the with the claimed range of less than 0.3% by weight. 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). It would have been obvious to a person of ordinary skill in the art to have used the surfactant in the overlapping portion of the claimed range, and the motivation to do so would have been, as Grubbs, III et al. suggests, to ensure the stability of the polymer in the dispersion with minimum cost.
Grubbs, III et al. teaches the dispersion as having an average particle size of 10 nm to 50 microns (¶0038). This overlaps with the claimed range. 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). It would have been obvious to a person of ordinary skill in the art to have prepared a dispersion with the overlapping portion of the claimed range, and the motivation to do so would have been, it is a suitable particle size for the coatings.
Grubbs, III et al. does not teach the polyhydoxyalkanoate as comprising 0.1 to 20% of a 4-hydroxybutryate. However, Doi et al. teaches a poly(3-hydroxybutyrate-co-4-hydroxybutyrate) comprising 10 or 17% of 4-hydroxybutyrate units (pg. 26). Grubbs, III et al. and Doi et al. are analogous art as they are concerned with the same field of endeavor, namely polyhydroxyalkanoate compositions. It would have been obvious to a person of ordinary skill in the art to have used the copolymer of Doi et al. in the composition of Grubbs, III et al., and the motivation to do so would have been, as Doi et al. suggests, it has high biodegradability compared to other polyhydroxyalkanoates (Abstract).
Response to Arguments
Applicant's arguments filed May 26, 2026 have been fully considered but they are not persuasive, because:
A) The applicant’s argument that Grubbs, III et al. does not teach the particle size of the polyhydroxybutyrate is not persuasive. Grubbs, III et al. teaches the dispersion as having an average particle size of 10 nm to 50 microns (¶0038). As the dispersion of Grubbs, III et al. is a dispersion of solid polyhydroxybutyrate in water, the particle size would correspond to the size of the solid polyhydroxybutyrate.
B) In response to applicant's argument that the amount of surfactant control the uniformity of the dispersion and redispersion properties, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). It would have been obvious to a person of ordinary skill in the art to have used the surfactant in the overlapping portion of the claimed range, and the motivation to do so would have been, as Grubbs, III et al. suggests, to ensure the stability of the polymer in the dispersion with minimum cost.
C) In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, it would have been obvious to a person of ordinary skill in the art to have used the copolymer of Doi et al. in the composition of Grubbs, III et al., and the motivation to do so would have been, as Doi et al. suggests, it has high biodegradability compared to other polyhydroxyalkanoates (Abstract).
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM J HEINCER whose telephone number is (571)270-3297. The examiner can normally be reached M-F 7:30-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 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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/LIAM J HEINCER/Primary Examiner, Art Unit 1767
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