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 .
Claim Rejections - 35 USC § 112
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.
Claim 14 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 14 recites the polyester based resin is a copolymer that has a structural unit derived from a tri- or higher functional component. However, the polyester based resin of claim 1 is selected from the group consisting of polybutylene glutarate azelate (PBGAz), polybutylene succinate sebacate (PBSSe), polybutylene sebacate terephthalate (PBSeT), and polybutylene glutarate brassylate (PBGBr) {difunctional components}. The transitional phrase “consisting of” excludes any element, step, or ingredient not specified in the claim. In re Gray, 53 F.2d 520, 11 USPQ 255 (CCPA 1931); Ex parte Davis, 80 USPQ 448, 450 (Bd. App. 1948) (“consisting of” defined as “closing the claim to the inclusion of materials other than those recited except for impurities ordinarily associated therewith.”) [see MPEP 2111.03; 2173.05(h)]. 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.
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) 1-2, 5, 8-9, 11-13 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Taguchi (JP 2004-2687) (IDS 11/25/22) in view of Auffermann et al. (US 2012/0232191), when taken with Yoshida et al. (US 2007/0224402). An English machine translation of Taguchi (JP 2004-2687) for citation.
Regarding claims 1 and 12-13: Taguchi (JP ‘687) discloses biodegradable resin compositions containing a biodegradable resin and a protein dry powder [abstract], wherein Example 2 [Ex. 2; 0021] contains 95 part by mass Bionele #3001 (polybutylene succinate adipate [0012]) and 5 parts by mass corn gluten meal {corresponding to ~ 5.3 parts corn gluten meal per 100 parts polybutylene succinate adipate} [Ex. 2; 0021]. Taguchi (JP ‘687) discloses films [0008].
Taguchi (JP ‘687) does not disclose polybutylene succinate sebacate as the biodegradable polyester. However, Auffermann et al. (US ‘191) discloses films containing polyesters [abstract] such as polybutylene succinate adipate and polybutylene succinate sebacate [0059]. Taguchi (JP ‘687) and Auffermann et al. (US ‘191) are analogous art because they are concerned with a similar technical difficulty, namely the preparation of polyester films. 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 polybutylene succinate sebacate, as taught by Auffermann et al. (US ‘191) in the invention of Taguchi (JP ‘687), and would have been motivated to do so since Auffermann et al. (US ‘191) discloses polybutylene succinate adipate and polybutylene succinate sebacate as equivalent polyesters [0059] [see also MPEP 2144.06].
Yoshida et al. (US ‘402) provides evidence that Bionele #3001 is polybutylene succinate adipate [0019].
Regarding claim 2: Taguchi (JP ‘687) and Auffermann et al. (US ‘191) disclose polybutylene succinate sebacate; enthalpy of fusion (ΔHm) of 92.9 J/g [see instant specification 0129].
Regarding claim 5: Taguchi (JP ‘687) discloses the protein dry powder has an average particle size of 40 µm or less [0016].
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); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) [See MPEP 2144.05].
Regarding claims 8-9: Taguchi (JP ‘687) discloses extruding the composition, and press molding the extrudate into a sheet [Ex. 1; 0020].
Regarding claims 11 and 15: Taguchi (JP ‘687) and Auffermann et al. (US ‘191) discloses the basic claimed composition [as set forth above with respect to claim 1 above]; wherein Taguchi (JP ‘687) discloses the protein dry powder can be corn gluten meal or milk casein [0009].
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].
Claim(s) 4 and 6-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Taguchi (JP 2004-2687) (IDS 11/25/22) in view of Auffermann et al. (US 2012/0232191), when taken with Yoshida et al. (US 2007/0224402) as applied to claim 1 above, when taken with Anderson, T. J.; Lamsal, B. P. Cereal Chem. 2011, 88, 356-362. An English machine translation of Taguchi (JP 2004-2687) for citation.
Regarding claims 4 and 6-7: Taguchi (JP ‘687) and Auffermann et al. (US ‘191) discloses the basic claimed composition [as set forth above with respect to claim 1 above]; wherein Taguchi (JP ‘687) discloses corn gluten meal [Ex. 2; 0021] (CGM) contains zein having a molecular weight of 19,000-22,000 Da, and a composition of nitrogen atoms originating from the protein of 15 mass% [see instant specification 0138; Table 1].
Anderson, T. J.; Lamsal, B. P. Cereal Chem. 2011, 88, 356-362 provides evidence for zein in CGM having a molecular weight of 19,000-22,000 Da [abstract].
Allowable Subject Matter
Claim 10 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The combination of Taguchi (JP 2004-2687) and Auffermann et al. (US 2012/0232191) does not disclose biodegrading the resin composition in sea water in the presence of a protein.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-10 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Taguchi (JP 2004-2687) (IDS 11/25/22) was relied on for disclosing biodegradable resin compositions containing a biodegradable resin and a protein dry powder [abstract], wherein Example 2 [Ex. 2; 0021] contains 95 part by mass Bionele #3001 (polybutylene succinate adipate [0012]) and 5 parts by mass corn gluten meal {corresponding to ~ 5.3 parts corn gluten meal per 100 parts polybutylene succinate adipate} [Ex. 2; 0021].
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.
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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/MICHAEL F PEPITONE/Primary Examiner, Art Unit 1767