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 .
Response to Amendment
The amendment filed on 8/26/2026 has been entered. Claim(s) 1 and 17-18 is/are currently amended. Claim(s) 3-6, 11-15 and 19 has/have been cancelled. Claim(s) 1-2, 7-10, 16-18 and 20 is/are pending and is/are under examination in this office action.
The amended abstract has been entered.
Response to Arguments
Applicant's argument filed on 8/26/2026, with respect to objection of specification has been fully considered and is persuasive. The objection is withdrawn.
Applicant's argument filed on 8/26/2026, with respect to 112(a) rejection has been fully considered but is not persuasive. See the 112(a) rejection below.
Applicant's argument filed on 8/26/2026, with respect to 103 rejection has been fully considered but is not persuasive.
Applicant argued that there is no teaching or suggestion of any materials in the combination of Buchanan and Aoshima aiding environmental degradation. These environmental problems related to using fossil-based fuel sources that may be impacted by biomass-based sources, do not address or solve the bio-persistent harm caused by synthetic lines polluting water resources favoring fishing. Simply put, Aoshima argues suppressing hydrolysis and deterioration which hinders environmental degradation of a hypothetical Buchanan/Aoshima product. Again, Applicant submits that suppressing hydrolysis and decreasing deterioration are not properties one skilled in the art would investigate or look to for solving the recognized problems associated with the environmental consequences and harm of synthetic fishing line. This alleged basis of improving hydrolysis and degradation properties does not lead to creating lines or nets that are environmentally degradable using the present composition. In other words, there is not a reasonable basis that makes the claims unpatentable in view of the combination of Buchanan and Aoshima.
In response, the claims are directed to a composition of a product. Degradability is a property of the product. “Products of identical chemical composition cannot 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. “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)). See MPEP 2112.01. Since the prior art teaches the same product as the current invention, the recited property is expected to be present.
Nevertheless, the primary reference Buchanan teaches that its product enhances biodegradability [abstract]. Aoshima teaches a biomass-resource-derived polyester resin that is also biodegradable [0029, 0113].
Aoshima provided four motivations to use raw materials of the polyester is obtained from biomass resources: (1) suppressing hydrolysis which will otherwise be accelerated by impurities contained therein; (2) decreasing deterioration in mechanical properties such as tensile elongation; (3) contributing greatly to the resolution of environmental problems and depletion problems of fossil fuel resources; and (4) being available at a very low cost [0033]. Even if motivation (1) is not needed for synthetic fishing line, as applicant suggests, decreasing deterioration in mechanical properties such as tensile elongation is desirable for synthetic fishing line; contributing to environmental protection and lowering the cost of the product are also desirable.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-2, 7-10, 16-18 and 20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites “an environmentally degradable polymer free of blended aliphatic aromatic polyester segments in the polymer”. This is not supported by the originally filed specification. Applicant pointed out that this limitation is supported in Para. [0007 pgpub]. However, this paragraph only lists examples of suitable degradable polymers. This paragraph does not have any negative limitation that excludes polymers containing blended aliphatic aromatic polyester segments.
Claims 2, 7-10, 16-18 and 20 are rejected likewise as depending on claim 1.
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 1-2, 7-10, 16-18 and 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.
Claim 1 recites “an environmentally degradable polymer free of blended aliphatic aromatic polyester segments in the polymer” which renders the claim indefinite: it is not clear if the aliphatic aromatic polyester segments are in the environmentally degradable polymer or not. If it is in the polymer, as the claim specifies, then these aliphatic aromatic polyester segments are part of the polymer, not separate polymers that are blended with the environmentally degradable polymer. If these aliphatic aromatic polyester segments are blended with the environmentally degradable polymer, then these aliphatic aromatic polyester segments are polymers of themselves and are not in the environmentally degradable polymer. Therefore, the limitation is contradictory to itself. For the purpose of further examination, based on the broadest reasonable interpretation, either case is considered meeting the limitation.
Claims 2, 7-10, 16-18 and 20 are rejected likewise as depending on claim 1.
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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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, 7-10, 16-18 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Buchanan et al. (US 5,446,079), and alternatively in view of Aoshima et al (US 20090171037 A1).
Regarding claim 1, the recited “for fishing lines or fishing nets” represents a statement of intended use that imparts no additional structure beyond the claimed product and need not be taught by the prior art to read on the claimed invention. See MPEP 2111.02(III). Nevertheless, Buchanan discloses a product for fishing lines and fishing nets use [col. 16 lines 28-29].
Buchanan disclose blends of cellulose esters (including cellulose acetate, cellulose acetate propionate, and cellulose acetate butyrate) and aliphatic-aromatic copolyesters which are biodegradable and can be used to make fishing lines, wherein a hydrophobic agent such as glyceryl monostearate made from soybean oil can be added (abstract, claims 1, 7-9, col. 3 lines 20, 42-44, 60-62, col.8 lines 13-19, Example 7, Tables XII and XIII, col. 11 lines 37-47 and col. 21 lines 2-4, col. 34 lines 23-29, col. 35 lines 36-47). Buchanan does not teach any polyester segments in the cellulose esters. Therefore, it is believed that the cellulose ester is free of any aliphatic-aromatic polyester segments in the cellulose ester polymer.
The examiner submits that the cellulose ester reads on the claimed environmentally degradable polymer comprising a cellulosic polymer.
Buchanan teaches the preparation of the copolyester using 1,4-butanediol as a monomer [col.11 lines 67-68], which read on the claimed additive including polyol sources.
The recited “wherein the degradable composition is free of degradable polymers and additives not produced from renewable materials” is a product-by-process limitation. Product-by-process claims are not limited to the manipulations of the recited steps, only to the structure implied by the steps. If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the product was made by a different process. See MPEP 2113(1). The products obtained through the claimed process are degradable polymers and additives. Since Buchanan teaches the same degradable polymers and additives, the recited limitation does not gain patentable weight.
Alternatively, in the same field of endeavor, Aoshima teaches a biomass-resource-derived polyester used for fishing lines and fish nets [0245] comprising as a main repeating unit thereof a dicarboxylic acid unit and a diol unit, wherein at least one of the dicarboxylic acid and diol used as raw materials of the polyester is obtained from biomass resources [0015] for the benefits of suppressing hydrolysis which will otherwise be accelerated by impurities contained therein, decreasing deterioration in mechanical properties such as tensile elongation, contributing greatly to the resolution of environmental problems and depletion problems of fossil fuel resources, and lowering the cost of the raw material [0033]. The diols include 1,4-butanediol [0078] which is prepared from biomass-resource [0322-0323].
It would have been obvious to one of ordinary skill in the art at the time of filing to use biomass-resource-derived 1,4-butanediol to make Buchanan’s aliphatic-aromatic polyester for the aforementioned benefits.
Polyhydroxyalkanoate is only optional in Buchannan’s teaching [col.13 lines 58-60]. Therefore, the recited “wherein the degradable composition does not comprise polyhydroxyalkanoate” is met.
Regarding claim 2, the recited “wherein the degradable polymer comprises components from …” is a product-by-process limitation. Product-by-process claims are not limited to the manipulations of the recited steps, only to the structure implied by the steps. If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the product was made by a different process. See MPEP 2113(1). The product obtained through the claimed process is the degradable polymer. The same product could be achieved through a different process, for example by synthesis. Since Buchanan teaches the same product, the claim is unpatentable. Nonetheless, the limitations of claim 2 can be found in Buchanan et al. at claims 7-9, where it discloses the cellulose or cellulose monoacetate.
Regarding claims 7-9, the recited “wherein the additive comprises components from …” is a product-by-process limitation. Product-by-process claims are not limited to the manipulations of the recited steps, only to the structure implied by the steps. If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the product was made by a different process. See MPEP 2113(1). The product obtained through the claimed process is the additive. The same product could be achieved through a different process, for example by synthesis. Since Buchanan teaches the same product, the claim is unpatentable. Nonetheless, the limitations of claims 7-9 can be found in Buchanan et al. at col. 11, lines 37-47 and col. 21, lines 2-4, where it discloses the hydrophobic agent such as glyceryl monostearate made from soybean oil.
Regarding claim 10, the recited limitations are product-by-process limitations. Product-by-process claims are not limited to the manipulations of the recited steps, only to the structure implied by the steps. If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the product was made by a different process. See MPEP 2113(1). The products obtained through the claimed processes are the degradable polymers the additives. The same products could be achieved through a different process, for example by synthesis. Since Buchanan teaches the same products, the claim is unpatentable. Nonetheless, the limitations of claim 10 can be found in Buchanan et al. at col. 11, lines 46-47, where it discloses the glyceryl monostearate.
Regarding claims 16-17, the recited degradation process is an inherent property based on the substantially same components as claimed. Nonetheless, the limitations of claims 16 and 17 can be found in Buchanan et al. at col. 18, lines 60-65, where it discloses the biodegradation caused by microbial population.
Regarding claim 18, the recited degradation is an inherent property based on the substantially same components as claimed.
Regarding claim 20, the recited “manufactured using …” is a product-by-process limitation. Product-by-process claims are not limited to the manipulations of the recited steps, only to the structure implied by the steps. If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the product was made by a different process. See MPEP 2113(1). The product obtained through the claimed process is the degradable composition. The same product could be achieved through a different process, for example by synthesis. Since Buchanan teaches the same product, the claim is unpatentable. Nonetheless, the limitations of claim 20 can be found in Buchanan et al. at col. 19, line 30, where it discloses the extrusion.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANGTIAN XU whose telephone number is (571)270-1621. The examiner can normally be reached Monday-Thursday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached on (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JIANGTIAN XU/Primary Examiner, Art Unit 1762
