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 .
This Office Action is in response to the amendment and remarks filed 11/5/2025.
Claims 3, 9, 11 and 18 were canceled and claims 20-24 were added. Claims 1-2, 4-8, 10, 12-17 and 19-24 are now pending in the application.
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.
Claims 1-2, 4-8, 10, 12-17 and 19-24 are rejected under 35 U.S.C. 103 as being unpatentable over Whitehouse (US PG Pub 2010/0305280 A1) as listed on the IDS dated 3/3/2023.
Regarding claims 1 and 22-24, Whitehouse teaches blends containing two or more polyhydroxyalkanoates (PHA) and related methods and articles (Abstract), wherein the PHA blends are used for manufacturing articles such as blow molded bottles [0090] wherein the PHA blends are comprised of a first PHA (corresponding to copolymer A of the instant claims) and a second PHA (corresponding to copolymer B of the instant claims), wherein the first PHA is a copolymer consisting of a comonomer I-A and a comonomer I-B; the second PHA is a copolymer consisting of a comonomer 2-A and a comonomer 2-B (claim 1), wherein in a preferred embodiment the PHA blend is poly 3-hydroxybutyrate-co-6%-3-hydroxyhexanoate blended with poly 3-hydroxybutyrate-co-33%-4-hydroxybutyrate (blends 8 and 9 in Table 3) thereby reading on copolymer (A) being a copolymer of 3-hydroxybutyrate wherein hydroxyhexanoate reads on the “other” hydroxyalkanoate, and further reading on copolymer (B) being a copolymer of 3-hydroxybutyrate, wherein the content of the first PHA is 78 pbw and 65.4 pbw and the second PHA is 22 and 34.6 pbw (Table 3, Ref 8 and 9) thereby reading on the claimed range of from 40-90 wt% for copolymer (A) and from 10 to 60 wt% of copolymer (B) and the claimed range of from 65 wt% to 90 wt% for copolymer (A) and from 10 wt% to 35 wt% of copolymer (B) as required by claim 24.
Whitesides does not particularly teach the “other” hydroxyalkaonate units in the copolymer (B) is 3-hydroxyhexanoate units in the preferred embodiment.
However, Whitesides teach the PHAs may be any combination of copolymers and further teach the 3-hydroxyhexanoates as a functional equivalent to 4-hydroxybutyrate [0135-0137]. Case law has held that substituting known equivalents for the same purpose is prima facie obvious. (MPEP 2144.08.I.). Therefore, it would have been obvious to one of ordinary skill in the art to substitute a 3-hydroxyhexanoate for the 4-hydroxybutyrate of the second PHA of Whitesides thereby arriving at the claimed invention.
Whitesides does not teach the molar content of the 3-hydroxybutyrate to the other hydroxyalkonate units in the first and second PHA.
However, Whitesides teaches in a preferred embodiment the PHA blend is poly 3-hydroxybutyrate-co-6%-3-hydroxyhexanoate blended with poly 3-hydroxybutyrate-co-33%-4-hydroxybutyrate (blends 8 and 9 in Table 3, [0180]). One of ordinary skill in the art at the time the invention was made would have considered the invention to have been obvious because the 6% of 3-hydroxybuyrate taught by Whitesides overlap the instantly claimed range (1 mol% to 6 mol%) and 33% of 4-hydroxybutyrate taught by Whitesides overlap the instantly claimed range (at least 24 mol% or more) and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, MPEP 2144.05.
Whitesides is further silent on the fracture energy of the molded article as required by instant claims 1 and 23 and further silent still on the flexural modulus of claim 22.
However, the properties of fracture energy and flexural modulus are mechanical properties. Whitesides teaches PHA blends are useful in the fabrication of articles that are both durable (e.g. high impact articles) and flexible [0133]. The fracture energy and flexural modulus will affect the resulting durability and flexibility of the final blow molded article. Therefore, the fracture energy and flexural modulus can be optimized to reach the desired durability and flexibility via a routine optimization. The case law has held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Thus, it would have been obvious to one having ordinary skill in the art at the time of the invention was made to adjust the durability and flexibility (fracture energy and flexural modulus) of the intended application (blow molded article) via a routine optimization, thereby obtaining the present invention.
Regarding claims 2 and 8-9, Whitesides does not teach the average molar content of the other hydroxyalkanoate units in total monomer units.
However, Whitesides teaches the same amounts of the copolymer A and B as set forth above and further teach overlapping molar contents for each of the other hydroxyalkanoate units within copolymer (A) and (B) as set forth above. As such it would be expected that the average molar content of the other hydroxyalkanoate units in total monomer units would also be overlapping with the claimed ranges, MPEP 2144.05.
Regarding claim 4, Whitesides teaches a nucleating agent [0094].
Regarding claim 5, Whitesides teaches talc (Table 5) thereby reading on an inorganic filler and further teach the filler in an amount of 30 pbw thereby reading on the claimed range of from 1 to 30 parts by weight.
Regarding claim 6, Whitesides teaches the content of the first PHA is 78 pbw and 65.4 pbw and the second PHA is 22 and 34.6 pbw (Table 3, Ref 8 and 9) thereby reading on the claimed range of from 45-85 wt% for copolymer (A) and from 15 to 55 wt% of copolymer (B).
Regarding claim 7, Whitesides teaches the content of the first PHA is 78 pbw and 65.4 pbw and the second PHA is 22 and 34.6 pbw (Table 3, Ref 8 and 9) thereby reading on the claimed range of from 50 to 80 wt% for copolymer (A) and from 20 to 20 wt% of copolymer (B).
Regarding claim 10, Whitesides teaches the weight average molecular weight of each of the PHA blend components be at least about 10,000 Daltons to at most about 2,000,000 Daltons based on weight average molecular weight [0119] which reads on the claimed range of from 20 x104 to 200 x 104 (corresponding to 200,000 – 2,000,000) of claim 10.
Regarding claim 12, Whitesides teaches cross-linking agents as optional ingredients [0044] and the preferred embodiments are not crosslinked therefore the article of Whitesides is considered to read on having no crosslinked structure.
Regarding claim 13, Whitesides teaches the first PHA copolymer contains at most about 15 percent by weight of comonomer 1-B [0039] thereby overlapping with the claimed range of 1-5 mol% of the other hydroxyalkanoate in the copolymer (A).
Regarding claims 14-15, Whitesides teaches the PHA blend is poly 3-hydroxybutyrate-co-6%-3-hydroxyhexanoate blended with poly 3-hydroxybutyrate-co-33%-4-hydroxybutyrate (blends 8 and 9 in Table 3, [0180]). The 33% of the 4-hydroxybutyrate is interpreted as overlapping with the claimed range of 24-99 mol% of claim 14 and with the claimed range of 24 mol to 50 mol% of claim 15. See the overlapping case law as set forth above for claim 1.
Regarding claims 16-17, Whitesides teaches the blends further comprise an additive selected from polybutylene succinate and polylactic acid [0040] thereby reading on the polyesters as required by the instant claims.
Regarding claim 19, the amount of the additional resin can be at most 30 weight percent [0170] thereby reading on the claimed range of 30 parts by less per 100 parts by weight of the total resin component.
Regarding claims 20 and 21, Whitesides does not teach the average molar content of the other hydroxyalkanoate units in total monomer units.
However, the PHA blend of Whitesides is poly 3-hydroxybutyrate-co-6%-3-hydroxyhexanoate blended with poly 3-hydroxybutyrate-co-33%-4-hydroxybutyrate (blends 8 and 9 in Table 3, [0180]).
The 6% is substantially close to that of the 5 mol% as required by the instant claim 20 and the 33% is substantially close to that of the 30 mol% as required by the instant claim 21. One of ordinary skill would have expected compositions that are in such close proportions to those in prior art to be prima facie obvious and to have the same properties. Titanium Metals Corp., 227 USPQ 773 (CA FC 1985).
Response to Arguments
Applicant's arguments filed 11/5/2025 have been fully considered but they are not persuasive. Regarding the 103 rejections over Whitesides, Applicant states “the latter poly-3-hydroxybutyrate-co-33%-4-hdyroxybutyrate is NOT the claimed copolymer of 3-hydroxybutyrate units and 3-hydroxyhexanoate units”. In response, attention is directed to the rejection as set forth above, wherein Whitesides teach the hydroxyhexanoate and hydroxybutyrate units are functionally equivalent and interchangeable in the copolymers. Further, case law has held that disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or non-preferred embodiments (In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971)). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments (MPEP 2123.I.).
Applicant further teaches the blends 8 and 9 are not blow molded bottles. In response, attention is drawn to the disclosure of Whitesides, wherein Whitesides teaches manufacturing articles such as blow molded bottles [0090]. Further, case law has held that disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or non-preferred embodiments (In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971)). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments (MPEP 2123.I.).
Applicant further states that one of ordinary skill in the art would not arrive at the fracture energy based on the disclosure of Whitesides. In response, attention is drawn to the disclosure of Whitesides, wherein Whitesides teaches blends are useful in the fabrication of articles that are both durable (e.g. high impact articles) and flexible [0133]. As such, the fracture energy and flexural modulus will affect the resulting durability and flexibility of the final blow molded article. Therefore, the fracture energy and flexural modulus can be optimized to reach the desired durability and flexibility via a routine optimization.
It if for these reasons that applicant’s arguments are not found persuasive.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/ARRIE L REUTHER/Supervisory Primary Examiner, Art Unit 1764