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.
Status of Claims
The examiner acknowledges the amendments to claims 1, 3-5, 7, and 9 as well as the addition of claims 101-13 and the cancellation of claims 2, 6, and 8. Claims 1, 3-5, 7, and 9-13 are pending.
Claim Interpretation
The applicant has amended the claims to be directed towards a sealant composition. However, stating in the preamble that the composition is a sealant is intended use and as such, is not given weight when evaluating the patentability of the claims.
Claim Rejections - 35 USC § 112
Claims 1 and 7 have been amended. As a result, the 112(b) rejections of these claims are withdrawn.
Claim Rejections - 35 USC § 101
Claims 7 and 9 have been amended and claim 8 has been cancelled. As a result, the 101 rejections of these claims are withdrawn.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 3-5, 7, and 9-13 are rejected under 35 U.S.C. 103 as being unpatentable over Whitehouse (US 20100305280, US Patent Application Reference #1 from IDS dated 4/19/2023).
Regarding Claim 1,
Whitehouse teaches compositions that are blends of two or more polyhydroxyalkanoate (PHA) polymers (Abstract and para. 155) where one of the monomers can be 3-hydroxybuytrate (Paragraph 18) and the comonomer can be 4-hydroxybutyrate (Paragraph 18) and further teaches that both of these PHA polymers can be copolymers (Paragraph 17). Whitehouse additionally teaches that the two PHA polymers can be made of the same monomers with differing incorporation ratios (Paragraph 19) and further notes the use of 3-hydroxybutyrate along with a variety of second monomers, including 4-hydroxybutyrate (Paragraph 19). Whitehouse also teaches that the molecular weight of the polymers may be from 10,000 to 1,600,000 (Paragraph 22), but more preferably between 200,000 to 650,000 (Paragraph 23), which overlaps with the ranges of the instant claim. While Whitehouse does not specify whether this is the weight average or number average, one of ordinary skill in the art would recognize that with the broad disclosed range that overlaps with both ranges that it would be possible to meet the requirements of both the weight and number averages within this range. Whitehouse further discloses that the amount of each monomer can be between 1 and 99% (Paragraph 18), which overlaps with the ranges of the instant claim. One of ordinary skill in the art, motivated to tailor the composition to the desired use case, would alter both the composition and molecular weight in order to meet the material requirements necessary. As such, it would have been obvious prior to the effective filing date of the instant application to have selected the overlapping portions of the ranges because the selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
Regarding Claims 3 and 10-11,
Whitehouse teaches that the blend can have an adhesive strength of at least 10 N/m2 or at least 1000 N/m2 (Paragraph 110), which when converted to the units of the instant claim would be greater than 2 kg/in. The ordinarily skilled artisan, based upon this teaching, would note that altering the ratios of the copolymers of the composition would result in alteration in the adhesive strength and would be able to adjust this value over a wide range in order to meet requirements for specific use cases. As such, it would have been obvious to have adjusted the composition to have an adhesive strength within the range of the instant claims.
Regarding Claim 4,
Whitehouse teaches that the composition can have a stiffness of at most 250 MPa (Paragraph 106), which allows for stiffness greater than 0.1 MPa and additionally notes that lower stiffness maxima may be used, such as 225, 200, 175, or 150 MPa (Paragraph 106). One of ordinary skill in the art through routine optimization would optimize this value to obtain the desired material properties for the use case. It would have been obvious prior to the effective filing date of the instant application to have set the tensile strength to a suitable value above 0.1 MPa for the desired use case.
Regarding Claim 5,
Whitehouse is silent on the elongation of the current composition. However, this value would be a function of the constituents of the composition and their relative amounts. It would logically follow that because Whitehouse teaches compositions that meet the requirements of the instant application, it necessarily follows that the compositions of Whitehouse would have elongation values that meet this requirement absent the showing of unexpected results.
Regarding Claims 7 and 9,
Whitehouse teaches a method of generating PHA compounds and blending two or more PHA polymers (Paragraphs 157-163) and that the blend can be made using a twin-screw extruder (Paragraph 182), which reads upon mixing. With regard to the ratio of the two polymers, Whitehouse teaches that polymer 1 may comprise 1 to 99% by weight of the composition (Paragraph 116), which contains the range of the instant claim. One of ordinary skill in the art, seeking to optimize material properties such as melt temperature (Paragraph 123) or crystallinity (Paragraph 125) would naturally change the blending percentages to meet the requirements of the desired use case. It would therefore have been obvious prior to the effective filing date of the instant application to have selected the overlapping portion of the ranges because the selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP 2144.05.I.
Regarding Claims 12-13,
Whitehouse is silent on the tensile strength of the composition. However, because Whitehouse discloses compositions comprised of mixtures of polymers that are comprised of the same monomers in overlapping amounts, it would logically follow that these compositions, by virtue of being comprised by the same types of polymers, would have tensile strength that meets the requirements of the instant claims. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP 2112.01.II.
Response to Arguments
Applicant's arguments filed 2/12/2026 have been fully considered but they are not persuasive for the following reasons.
On page 5, the applicant alleges that Whitehouse does not teach copolymers that contain the same comonomers in the ranges of the instant application and that further, Whitehouse does not teach that both polymers of the composition can be copolymers. The examiner disagrees. Whitehouse teaches the use of the monomers required by the instant application (Paragraph 16) in amounts that overlap (Paragraph 18) and with molecular weights that meet the requirements (Paragraphs 22-25) as noted in the rejection. Further, Whitehouse explicitly states that the first polymer may be a copolymer (Paragraph 17) and also states that both polymers can be copolymers containing the same monomers, only differing in the incorporation rates of those monomers (Paragraph 19) and points to copolymers that utilize 3-hydroxybutyrate specifically in combination with other monomers, including 4-hydroxybutyrate (Paragraph 19). As such, Whitehouse speaks directly towards the compositions of the instant application. While the applicant correctly points out that Whitehouse does not teach specific values for the weight average and number average molecular weight specifically, Whitehouse does teach a range of unspecified type of molecular weights that contains both the number average and weight average molecular weights of the instant claims (Paragraphs 22-25), and as such, effectively teaches using polymers of the weight ranges required.
On page 6, the applicant alleges that Whitehouse teaches only compositions for adhesives and not sealants. The examiner disagrees. While stating that the composition is a sealant, this constitutes intended use and is therefore not given weight when determining patentability. However, in the alternative, any composition that is used as an adhesive can be applied to a gap between two surfaces, thus sealing that gap and functioning as a sealant. As such, any composition that can be used to adhere two surfaces together can also be used to seal gaps between two surfaces and therefore be a sealant.
In summation, the arguments presented by the applicant are found to be unpersuasive and, as a result, the rejection is maintained.
Conclusion
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 ADAM J BERRO whose telephone number is (703)756-1283. The examiner can normally be reached M-F 8:30-5.
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/A.J.B./Examiner, Art Unit 1765
/JOHN M COONEY/Primary Examiner, Art Unit 1765
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