DETAILED ACTION
Applicant’s response filed on 06/26/2026 has been fully considered. Claims 1-16 and 35-37 are pending. Claims 1, 3-6, 10, and 11 are amended. Claims 17-34 are canceled. Claims 35-37 are new.
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
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Claim Rejections - 35 USC § 112
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.
Claim 5 is 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 5 recites the limitation “the polyhydroxyalkanoate particles are recovered from biomass and subsequent purification processes without of the polyhydroxyalkanoate particles to a temperature exceeding about 50°C” in lines 1-4, which is indefinite because it is unclear how “without of the polyhydroxyalkanoate particles to a temperature exceeding about 50°C” limits “the polyhydroxyalkanoate particles are recovered from biomass and subsequent purification processes”. Based on the specification of the instant application [095, 0117], for further examination of the claims, this limitation is interpreted as “the polyhydroxyalkanoate particles are recovered from biomass and subsequent purification processes without exposure of the polyhydroxyalkanoate particles to a temperature exceeding about 50°C”.
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 1-12, 14, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Osumi et al. (WO 2020/100598 A1, machine translation in English used for citation, made of record on 10/17/2025).
Regarding claims 1 and 3, Osumi teaches a method for producing an aqueous polyhydroxyalkanoate dispersion comprising a step of feeding an aqueous polyhydroxyalkanoate dispersion having polyhydroxyalkanoate particles with a median diameter of 1 to 5 µm and a solid concentration of less than 50% by weight through a tubular membrane with an inner diameter of 4 to 10 mm and an average pore size of 0.05 to 0.5 µm, thereby concentrating the solids concentration to 50% by weight or more [0011], wherein the solid concentration of the polyhydroxyalkanoate aqueous dispersion before being sent through the tubular membrane and concentrated is less than 45% by weight [0012], wherein the method further comprises before the above step, a step of obtaining a polyhydroxyalkanoate aqueous dispersion from polyhydroxyalkanoate-containing bacterial cells obtained by culturing a polyhydroxyalkanoate-producing bacterium [0015], wherein the PHA aqueous dispersion that is fed into the tubular membrane has a PHA particle median diameter of 1 to 5 µm [0020], wherein the PHA aqueous dispersion to be concentrated in the above step of the method is an aqueous dispersion in which PHA particles are dispersed in water, and it is sufficient that the PHA particles have a median diameter of 1 to 5 µm and a solids concentration of less than 50 wt % [0022], wherein the aqueous dispersion to be concentrated is a PHA aqueous dispersion obtained by producing PHA using a PHA-producing microorganism and then chemically and/or physically and/or biologically treating the microorganism in water [0022], wherein the step of concentrating the PHA aqueous dispersion is carried out after culturing a PHA-producing microorganism and separating and purifying the PHA from the microorganism [0022], wherein the median diameter of the PHA particles in the PHA aqueous dispersion can be adjusted by controlling the culture time when PHA is produced by culturing the PHA-producing bacterium [0030], wherein the PHA aqueous dispersion to be concentrated in the above step may contain other components in addition to water and PHA particles [0032], wherein other components include dispersants that are water-soluble polymers, anionic surfactants that are sodium dodecyl sulfate, sodium dodecylbenzenesulfonate, sodium cholate, sodium deoxycholate, or sodium oleate, or preservatives that are potassium sorbate, sodium benzoate, hinokitiol, or paraben [0032], wherein the contents of other components can be selected appropriately [0032], wherein the method for producing a PHA aqueous dispersion may include other steps in addition to the above step, such as a step of adding the other components to the PHA aqueous dispersion obtained by the above step [0044], wherein the PHA aqueous dispersion obtained by the method can be used as a raw material for coatings [0045], which reads on a biodegradable aqueous mixture for coating substrates, the mixture comprising 50 weight percent or less water and 50 weight percent or more solids, wherein the solids comprise greater than 0 weight percent polyhydroxyalkanoates based on total dry weight of the solids, and wherein the polyhydroxyalkanoates are polyhydroxyalkanoate particles have a moisture content of greater than 0% by weight prior to mixing with the water and a Dv 90 particle size of 1 to 5 microns, as determined using ISO 8130-13:2019.
Osumi does not teach with sufficient specificity that the mixture comprises from about 35 to about 75 weight percent water and from about 25 to about 65 weight percent solids. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to optimize the solids concentration of Osumi’s polyhydroxyalkanoate aqueous dispersion produced by Osumi’s method to be from 50% by weight to about 65% by weight and to optimize the concentration of water in Osumi’s polyhydroxyalkanoate aqueous dispersion produced by Osumi’s method to be from about 35% by weight to 50% by weight. The proposed modification would read on the mixture comprises from about 35 to 50 weight percent water and from 50 to about 65 weight percent solids as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for optimizing fluidity of Osumi’s polyhydroxyalkanoate aqueous dispersion produced by Osumi’s method because Osumi teaches that the method for producing an aqueous polyhydroxyalkanoate dispersion comprises a step of feeding an aqueous polyhydroxyalkanoate dispersion having polyhydroxyalkanoate particles with a median diameter of 1 to 5 µm and a solid concentration of less than 50% by weight through a tubular membrane with an inner diameter of 4 to 10 mm and an average pore size of 0.05 to 0.5 µm, thereby concentrating the solids concentration to 50% by weight or more [0011], that the solid content of the PHA aqueous dispersion obtained in the above step is 50% by weight or more, preferably 52% by weight or more, and more preferably 54% by weight or more [0043], that the upper limit is not particularly limited, but from the viewpoint of ensuring the fluidity of the PHA aqueous dispersion, it is preferably 65% by weight or less, and more preferably 60% by weight or less [0043], and that the PHA aqueous dispersion obtained by the method can be used as a raw material for coatings [0045], which means that the solids concentration and the concentration of water in Osumi’s polyhydroxyalkanoate aqueous dispersion produced by Osumi’s method would have affected fluidity of Osumi’s polyhydroxyalkanoate aqueous dispersion produced by Osumi’s method.
Osumi does not teach with sufficient specificity that the solids comprise from about 40 to about 99 weight percent polyhydroxyalkanoates based on total dry weight of the solids. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use Osumi’s other components that are dispersants that are water-soluble polymers, anionic surfactants that are sodium dodecyl sulfate, sodium dodecylbenzenesulfonate, sodium cholate, sodium deoxycholate, or sodium oleate, or preservatives that are potassium sorbate, sodium benzoate, hinokitiol, or paraben to modify Osumi’s aqueous polyhydroxyalkanoate dispersion produced by Osumi’s method, and to optimize the contents of Osumi’s other components in Osumi’s aqueous polyhydroxyalkanoate dispersion to be from 1% by weight to 60% by weight based on the total weight of Osumi’s other components and Osumi’s polyhydroxyalkanoates. The proposed modification would read on the solids comprise from about 40 to about 99 weight percent polyhydroxyalkanoates based on total dry weight of the solids as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for modifying stability of Osumi’s aqueous polyhydroxyalkanoate dispersion, for modifying an ability of Osumi’s aqueous polyhydroxyalkanoate dispersion to coat a substrate, for modifying preservation of Osumi’s aqueous polyhydroxyalkanoate dispersion or a coating made therefrom, for optimizing stability of Osumi’s aqueous polyhydroxyalkanoate dispersion, for optimizing an ability of Osumi’s aqueous polyhydroxyalkanoate dispersion to coat a substrate, and/or for optimizing preservation of Osumi’s aqueous polyhydroxyalkanoate dispersion or a coating made therefrom because Osumi teaches that the PHA aqueous dispersion to be concentrated in the above step may contain other components in addition to water and PHA particles [0032], that other components include dispersants that are water-soluble polymers, anionic surfactants that are sodium dodecyl sulfate, sodium dodecylbenzenesulfonate, sodium cholate, sodium deoxycholate, or sodium oleate, or preservatives that are potassium sorbate, sodium benzoate, hinokitiol, or paraben [0032], that the contents of other components can be selected appropriately [0032], that the method for producing a PHA aqueous dispersion may include other steps in addition to the above step, such as a step of adding the other components to the PHA aqueous dispersion obtained by the above step [0044], and that the PHA aqueous dispersion obtained by the method can be used as a raw material for coatings [0045], which means that the contents of Osumi’s other components in Osumi’s aqueous polyhydroxyalkanoate dispersion in % by weight based on the total weight of Osumi’s other components and Osumi’s polyhydroxyalkanoates would have affected stability of Osumi’s aqueous polyhydroxyalkanoate dispersion, an ability of Osumi’s aqueous polyhydroxyalkanoate dispersion to coat a substrate, and/or preservation of Osumi’s aqueous polyhydroxyalkanoate dispersion or a coating made therefrom.
Osumi does not teach that the polyhydroxyalkanoate particles have a moisture content of at least about 1% by weight period to mixing with the water. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to optimize an amount of water in Osumi’s polyhydroxyalkanoate particles in Osumi’s aqueous polyhydroxyalkanoate dispersion that is to be concentrated and that is obtained from Osumi’s polyhydroxyalkanoate-containing bacterial cells obtained by culturing Osumi’s polyhydroxyalkanoate-producing bacterium to be at least about 1% by weight, based on the weight of Osumi’s polyhydroxyalkanoate particles. The proposed modification would read on the polyhydroxyalkanoate particles have a moisture content of at least about 1% by weight period to mixing with the water as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for optimizing obtainment of Osumi’s polyhydroxyalkanoate particles that have a particle median diameter of 1 to 5 µm, and for optimizing obtainment of Osumi’s aqueous polyhydroxyalkanoate dispersion because Osumi teaches that the method further comprises before the above step, a step of obtaining a polyhydroxyalkanoate aqueous dispersion from polyhydroxyalkanoate-containing bacterial cells obtained by culturing a polyhydroxyalkanoate-producing bacterium [0015], that the PHA aqueous dispersion that is fed into the tubular membrane has a PHA particle median diameter of 1 to 5 µm [0020], that the solid concentration of the polyhydroxyalkanoate aqueous dispersion before being sent through the tubular membrane and concentrated is less than 45% by weight [0012], that the PHA aqueous dispersion to be concentrated in the above step of the method is an aqueous dispersion in which PHA particles are dispersed in water [0022], that the aqueous dispersion to be concentrated is a PHA aqueous dispersion obtained by producing PHA using a PHA-producing microorganism and then chemically and/or physically and/or biologically treating the microorganism in water [0022], that the step of concentrating the PHA aqueous dispersion is carried out after culturing a PHA-producing microorganism and separating and purifying the PHA from the microorganism [0022], that the median diameter of the PHA particles in the PHA aqueous dispersion can be adjusted by controlling the culture time when PHA is produced by culturing the PHA-producing bacterium [0030], that the solids concentration of the PHA aqueous dispersion to be concentrated is less than 50% by weight, and from the viewpoint of more effectively enjoying the effects of the invention, it is preferably less than 45% by weight, more preferably less than 40% by weight, and even more preferably less than 35% by weight [0031], that the lower limit of the solid content is not particularly limited, but from the viewpoint of ensuring productivity, it is preferably 18% by weight more, more preferably 20% by weight or more, and even more preferably 25% by weight or more [0031], and that before the above step, the method may include a step of culturing the PHA-producing bacteria and a step of obtaining a PHA aqueous dispersion from the PHA-containing bacterial obtained by the culture [0044], which means that an amount of water in Osumi’s polyhydroxyalkanoate particles in Osumi’s aqueous polyhydroxyalkanoate dispersion that is to be concentrated and that is obtained from Osumi’s polyhydroxyalkanoate-containing bacterial cells obtained by culturing Osumi’s polyhydroxyalkanoate-producing bacterium in % by weight, based on the weight of Osumi’s polyhydroxyalkanoate particles, would have affected obtainment of Osumi’s polyhydroxyalkanoate particles that have a particle median diameter of 1 to 5 µm, and obtainment of Osumi’s aqueous polyhydroxyalkanoate dispersion.
Regarding claim 2, Osumi teaches that the method for producing an aqueous polyhydroxyalkanoate dispersion comprises a step of feeding an aqueous polyhydroxyalkanoate dispersion having polyhydroxyalkanoate particles with a median diameter of 1 to 5 µm and a solid concentration of less than 50% by weight through a tubular membrane with an inner diameter of 4 to 10 mm and an average pore size of 0.05 to 0.5 µm, thereby concentrating the solids concentration to 50% by weight or more [0011], wherein the solid concentration of the polyhydroxyalkanoate aqueous dispersion before being sent through the tubular membrane and concentrated is less than 45% by weight [0012], wherein the method further comprises before the above step, a step of obtaining a polyhydroxyalkanoate aqueous dispersion from polyhydroxyalkanoate-containing bacterial cells obtained by culturing a polyhydroxyalkanoate-producing bacterium [0015], wherein the PHA aqueous dispersion that is fed into the tubular membrane has a PHA particle median diameter of 1 to 5 µm [0020], wherein the PHA aqueous dispersion to be concentrated in the above step of the method is an aqueous dispersion in which PHA particles are dispersed in water, and it is sufficient that the PHA particles have a median diameter of 1 to 5 µm and a solids concentration of less than 50 wt % [0022], wherein the aqueous dispersion to be concentrated is a PHA aqueous dispersion obtained by producing PHA using a PHA-producing microorganism and then chemically and/or physically and/or biologically treating the microorganism in water [0022], wherein the step of concentrating the PHA aqueous dispersion is carried out after culturing a PHA-producing microorganism and separating and purifying the PHA from the microorganism [0022], wherein the median diameter of the PHA particles in the PHA aqueous dispersion can be adjusted by controlling the culture time when PHA is produced by culturing the PHA-producing bacterium [0030], which reads on wherein the polyhydroxyalkanoate particles have a moisture content of greater than 0% by weight prior to mixing with the water.
Osumi does not teach that the polyhydroxyalkanoate particles have a moisture content of at least about 5% by weight prior to mixing with the water. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to optimize an amount of water in Osumi’s polyhydroxyalkanoate particles in Osumi’s aqueous polyhydroxyalkanoate dispersion that is to be concentrated and that is obtained from Osumi’s polyhydroxyalkanoate-containing bacterial cells obtained by culturing Osumi’s polyhydroxyalkanoate-producing bacterium to be at least about 5% by weight, based on the weight of Osumi’s polyhydroxyalkanoate particles. The proposed modification would read on the polyhydroxyalkanoate particles have a moisture content of at least about 5% by weight prior to mixing with the water as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for optimizing obtainment of Osumi’s polyhydroxyalkanoate particles that have a particle median diameter of 1 to 5 µm, and for optimizing obtainment of Osumi’s aqueous polyhydroxyalkanoate dispersion because Osumi teaches that the method further comprises before the above step, a step of obtaining a polyhydroxyalkanoate aqueous dispersion from polyhydroxyalkanoate-containing bacterial cells obtained by culturing a polyhydroxyalkanoate-producing bacterium [0015], that the PHA aqueous dispersion that is fed into the tubular membrane has a PHA particle median diameter of 1 to 5 µm [0020], that the solid concentration of the polyhydroxyalkanoate aqueous dispersion before being sent through the tubular membrane and concentrated is less than 45% by weight [0012], that the PHA aqueous dispersion to be concentrated in the above step of the method is an aqueous dispersion in which PHA particles are dispersed in water [0022], that the aqueous dispersion to be concentrated is a PHA aqueous dispersion obtained by producing PHA using a PHA-producing microorganism and then chemically and/or physically and/or biologically treating the microorganism in water [0022], that the step of concentrating the PHA aqueous dispersion is carried out after culturing a PHA-producing microorganism and separating and purifying the PHA from the microorganism [0022], that the median diameter of the PHA particles in the PHA aqueous dispersion can be adjusted by controlling the culture time when PHA is produced by culturing the PHA-producing bacterium [0030], that the solids concentration of the PHA aqueous dispersion to be concentrated is less than 50% by weight, and from the viewpoint of more effectively enjoying the effects of the invention, it is preferably less than 45% by weight, more preferably less than 40% by weight, and even more preferably less than 35% by weight [0031], that the lower limit of the solid content is not particularly limited, but from the viewpoint of ensuring productivity, it is preferably 18% by weight more, more preferably 20% by weight or more, and even more preferably 25% by weight or more [0031], and that before the above step, the method may include a step of culturing the PHA-producing bacteria and a step of obtaining a PHA aqueous dispersion from the PHA-containing bacterial obtained by the culture [0044], which means that an amount of water in Osumi’s polyhydroxyalkanoate particles in Osumi’s aqueous polyhydroxyalkanoate dispersion that is to be concentrated and that is obtained from Osumi’s polyhydroxyalkanoate-containing bacterial cells obtained by culturing Osumi’s polyhydroxyalkanoate-producing bacterium in % by weight, based on the weight of Osumi’s polyhydroxyalkanoate particles, would have affected obtainment of Osumi’s polyhydroxyalkanoate particles that have a particle median diameter of 1 to 5 µm, and obtainment of Osumi’s aqueous polyhydroxyalkanoate dispersion.
Regarding claim 4, Osumi teaches that the method for producing an aqueous polyhydroxyalkanoate dispersion comprises a step of feeding an aqueous polyhydroxyalkanoate dispersion having polyhydroxyalkanoate particles with a median diameter of 1 to 5 µm and a solid concentration of less than 50% by weight through a tubular membrane with an inner diameter of 4 to 10 mm and an average pore size of 0.05 to 0.5 µm, thereby concentrating the solids concentration to 50% by weight or more [0011], wherein the method further comprises before the above step, a step of obtaining a polyhydroxyalkanoate aqueous dispersion from polyhydroxyalkanoate-containing bacterial cells obtained by culturing a polyhydroxyalkanoate-producing bacterium [0015], wherein the aqueous dispersion to be concentrated is a PHA aqueous dispersion obtained by producing PHA using a PHA-producing microorganism and then chemically and/or physically and/or biologically treating the microorganism in water [0022], wherein the step of concentrating the PHA aqueous dispersion is carried out after culturing a PHA-producing microorganism and separating and purifying the PHA from the microorganism [0022], wherein the PHA is poly(3-hydroxybutyrate) (PHB), poly(3-hydroxybutyrate-co-hydroxyvalerate) (PHBV), poly(3-hydroxybutyrate-co-3-hydroxyvalerate-co-3-hydroxyhexanoate) (P3HB3HV3HHH), poly(3-hydroxybutyrate-co-3-hydroxyhexanoate) (PHBH), poly(3-hydroxybutyrate-co-4-hydroxybutyrate) (P3HB4HB), poly(3-hydroxybutyate-co-3-hydroxyoctanoate), poly(3-hydroxybutyrate-co-3-hydroxyoctadecanoate), or poly(3-hydroxybutrate-co-3-hydroxy-4-methylvalerate) (P3HB3H4MV) [0027], wherein the median diameter of the PHA particles in the PHA aqueous dispersion can be adjusted by controlling the culture time when PHA is produced by culturing the PHA-producing bacterium [0030], which reads on wherein the polyhydroxyalkanoates have a melting point and the polyhydroxyalkanoate particles are recovered from biomass and subsequent purification processes without exposure of the polyhydroxyalkanoate particles to a temperature exceeding a temperature which is about 5°C below the melting point of the polyhydroxyalkanoates, prior to mixing with the water to form the aqueous mixture as claimed.
Regarding claim 5, Osumi teaches that the method for producing an aqueous polyhydroxyalkanoate dispersion comprises a step of feeding an aqueous polyhydroxyalkanoate dispersion having polyhydroxyalkanoate particles with a median diameter of 1 to 5 µm and a solid concentration of less than 50% by weight through a tubular membrane with an inner diameter of 4 to 10 mm and an average pore size of 0.05 to 0.5 µm, thereby concentrating the solids concentration to 50% by weight or more [0011], wherein the method further comprises before the above step, a step of obtaining a polyhydroxyalkanoate aqueous dispersion from polyhydroxyalkanoate-containing bacterial cells obtained by culturing a polyhydroxyalkanoate-producing bacterium [0015], wherein the aqueous dispersion to be concentrated is a PHA aqueous dispersion obtained by producing PHA using a PHA-producing microorganism and then chemically and/or physically and/or biologically treating the microorganism in water [0022], wherein the step of concentrating the PHA aqueous dispersion is carried out after culturing a PHA-producing microorganism and separating and purifying the PHA from the microorganism [0022], wherein the median diameter of the PHA particles in the PHA aqueous dispersion can be adjusted by controlling the culture time when PHA is produced by culturing the PHA-producing bacterium [0030], which reads on wherein the polyhydroxyalkanoate particles are recovered from biomass and subsequent purification processes without of the polyhydroxyalkanoates particles to a temperature exceeding about 50°C, prior to mixing with the water to form the aqueous mixture as claimed.
Regarding claim 6, Osumi teaches that the method for producing an aqueous polyhydroxyalkanoate dispersion comprises a step of feeding an aqueous polyhydroxyalkanoate dispersion having polyhydroxyalkanoate particles with a median diameter of 1 to 5 µm and a solid concentration of less than 50% by weight through a tubular membrane with an inner diameter of 4 to 10 mm and an average pore size of 0.05 to 0.5 µm, thereby concentrating the solids concentration to 50% by weight or more [0011], and that the dispersion is a suspension [0048], which reads on wherein the mixture is a suspension as claimed.
Regarding claim 7, Osumi teaches that the method for producing an aqueous polyhydroxyalkanoate dispersion comprises a step of feeding an aqueous polyhydroxyalkanoate dispersion having polyhydroxyalkanoate particles with a median diameter of 1 to 5 µm and a solid concentration of less than 50% by weight through a tubular membrane with an inner diameter of 4 to 10 mm and an average pore size of 0.05 to 0.5 µm, thereby concentrating the solids concentration to 50% by weight or more [0011], wherein the PHA aqueous dispersion to be concentrated in the above step may contain other components in addition to water and PHA particles [0032], wherein other components include dispersants that are water-soluble polymers, anionic surfactants that are sodium dodecyl sulfate, sodium dodecylbenzenesulfonate, sodium cholate, sodium deoxycholate, or sodium oleate, or preservatives that are potassium sorbate, sodium benzoate, hinokitiol, or paraben [0032], wherein the contents of other components can be selected appropriately [0032], which reads on wherein the solids comprise greater than 0 weight percent polyhydroxyalkanoates based on the total dry weight of the solids.
Osumi does not teach with sufficient specificity that the solids comprise from about 40 to about 50 weight percent polyhydroxyalkanoates based on the total dry weight of the solids. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use Osumi’s other components that are water-soluble polymers, anionic surfactants that are sodium dodecyl sulfate, sodium dodecylbenzenesulfonate, sodium cholate, sodium deoxycholate, or sodium oleate, or preservatives that are potassium sorbate, sodium benzoate, hinokitiol, or paraben to modify Osumi’s aqueous polyhydroxyalkanoate dispersion produced by Osumi’s method, and to optimize the contents of Osumi’s other components in Osumi’s aqueous polyhydroxyalkanoate dispersion to be from 50% by weight to about 60% by weight based on the total weight of Osumi’s other components and Osumi’s polyhydroxyalkanoates. The proposed modification would read on the solids comprise from about 40 to about 50 weight percent polyhydroxyalkanoates based on the total dry weight of the solids as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for modifying stability of Osumi’s aqueous polyhydroxyalkanoate dispersion, for modifying an ability of Osumi’s aqueous polyhydroxyalkanoate dispersion to coat a substrate, for modifying preservation of Osumi’s aqueous polyhydroxyalkanoate dispersion or a coating made therefrom, for optimizing stability of Osumi’s aqueous polyhydroxyalkanoate dispersion, for optimizing an ability of Osumi’s aqueous polyhydroxyalkanoate dispersion to coat a substrate, and/or for optimizing preservation of Osumi’s aqueous polyhydroxyalkanoate dispersion or a coating made therefrom because Osumi teaches that the PHA aqueous dispersion to be concentrated in the above step may contain other components in addition to water and PHA particles [0032], that other components include dispersants that are water-soluble polymers, anionic surfactants that are sodium dodecyl sulfate, sodium dodecylbenzenesulfonate, sodium cholate, sodium deoxycholate, or sodium oleate, or preservatives that are potassium sorbate, sodium benzoate, hinokitiol, or paraben [0032], that wherein the contents of other components can be selected appropriately [0032], that the method for producing a PHA aqueous dispersion may include other steps in addition to the above step, such as a step of adding the other components to the PHA aqueous dispersion obtained by the above step [0044], and that the PHA aqueous dispersion obtained by the method can be used as a raw material for coatings [0045], which means that the contents of Osumi’s other components in Osumi’s aqueous polyhydroxyalkanoate dispersion in % by weight based on the total weight of Osumi’s other components and Osumi’s polyhydroxyalkanoates would have affected stability of Osumi’s aqueous polyhydroxyalkanoate dispersion, an ability of Osumi’s aqueous polyhydroxyalkanoate dispersion to coat a substrate, and/or preservation of Osumi’s aqueous polyhydroxyalkanoate dispersion or a coating made therefrom.
Regarding claim 8, Osumi teaches that the method for producing an aqueous polyhydroxyalkanoate dispersion comprises a step of feeding an aqueous polyhydroxyalkanoate dispersion having polyhydroxyalkanoate particles with a median diameter of 1 to 5 µm and a solid concentration of less than 50% by weight through a tubular membrane with an inner diameter of 4 to 10 mm and an average pore size of 0.05 to 0.5 µm, thereby concentrating the solids concentration to 50% by weight or more [0011], which reads on wherein the mixture comprises 50 weight percent or less water and 50 weight percent or more solids.
Osumi does not teach with sufficient specificity that the mixture comprises from about 45 to about 55 weight percent water and from about 45 to about 55 weight percent solids. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to optimize the solids concentration of Osumi’s polyhydroxyalkanoate aqueous dispersion produced by Osumi’s method to be from 50% by weight to about 55% by weight and to optimize the concentration of water in Osumi’s polyhydroxyalkanoate aqueous dispersion produced by Osumi’s method to be from about 45% by weight to 50% by weight. The proposed modification would read on the mixture comprises from about 45 to 50 weight percent water and from 50 to about 55 weight percent solids as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for optimizing fluidity of Osumi’s polyhydroxyalkanoate aqueous dispersion produced by Osumi’s method because Osumi teaches that the method for producing an aqueous polyhydroxyalkanoate dispersion comprises a step of feeding an aqueous polyhydroxyalkanoate dispersion having polyhydroxyalkanoate particles with a median diameter of 1 to 5 µm and a solid concentration of less than 50% by weight through a tubular membrane with an inner diameter of 4 to 10 mm and an average pore size of 0.05 to 0.5 µm, thereby concentrating the solids concentration to 50% by weight or more [0011], that the solid content of the PHA aqueous dispersion obtained in the above step is 50% by weight or more, preferably 52% by weight or more, and more preferably 54% by weight or more [0043], that the upper limit is not particularly limited, but from the viewpoint of ensuring the fluidity of the PHA aqueous dispersion, it is preferably 65% by weight or less, and more preferably 60% by weight or less [0043], and that the PHA aqueous dispersion obtained by the method can be used as a raw material for coatings [0045], which means that the solids concentration and the concentration of water in Osumi’s polyhydroxyalkanoate aqueous dispersion produced by Osumi’s method would have affected fluidity of Osumi’s polyhydroxyalkanoate aqueous dispersion produced by Osumi’s method.
Regarding claim 9, Osumi teaches that the PHA is poly(3-hydroxybutyrate-co-3-hydroxyvalerate) (PHBV), poly(3-hydroxybutyrate-co-3-hydroxyhexanoate) (PHBH), or poly(3-hydroxybutyrate-co-3-hydroxyoctanoate) [0027], and that when the PHA has a repeating structural unit of 3-hydroxybutyrate, the average composition ratio of the repeating structural unit is preferably 80 to 99 mol % from the viewpoint of the balance between flexibility and strength of the PHA [0028], which optionally reads on wherein the polyhydroxyalkanoates comprise a polyhydroxyalkanoate copolymer comprises from 80 to 99 mole percent hydroxybutyrate monomer repeat units and from 1 to 20 mole percent monomer units selected from hydroxyvalerate, hydroxyhexanoate, and hydroxyoctanoate as claimed.
Osumi does not teach a specific embodiment wherein the polyhydroxyalkanoates comprise a polyhydroxyalkanoate copolymer comprising from about 75 to about 99 mole percent hydroxybutyrate monomer repeat units and from about 1 to about 25 mole percent monomer repeat units selected from the group consisting of hydroxyvalerate, hydroxyhexanoate, hydroxyoctanoate, and hydroxydecanoate. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select the average composition ratio of Osumi’s 3-hydroxybutyrate in Osumi’s PHA that is poly(3-hydroxybutyrate-co-3-hydroxyvalerate) (PHBV), poly(3-hydroxybutyrate-co-3-hydroxyhexanoate) (PHBH), or poly(3-hydroxybutyrate-co-3-hydroxyoctanoate) to be 80 to 99 mol %. The proposed modification would read on the polyhydroxyalkanoates comprise a polyhydroxyalkanoate copolymer comprises from 80 to 99 mole percent hydroxybutyrate monomer repeat units and from 1 to 20 mole percent monomer units selected from hydroxyvalerate, hydroxyhexanoate, and hydroxyoctanoate as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for improving flexibility and strength of Osumi’s polyhydroxyalkanoate because Osumi teaches that the PHA is poly(3-hydroxybutyrate-co-3-hydroxyvalerate) (PHBV), poly(3-hydroxybutyrate-co-3-hydroxyhexanoate) (PHBH), or poly(3-hydroxybutyrate-co-3-hydroxyoctanoate) [0027], and that when the PHA has a repeating structural unit of 3-hydroxybutyrate, the average composition ratio of the repeating structural unit is preferably 80 to 99 mol % from the viewpoint of the balance between flexibility and strength of the PHA [0028].
Regarding claim 10, Osumi teaches that the PHA is poly(3-hydroxybutyrate-co-3-hydroxyhexanoate) (PHBH) [0027], which reads on wherein the polyhydroxyalkanoates comprise poly-3-hydsroxybutyrate-co-3-hydroxyhexanoate as claimed.
Regarding claim 11, Osumi teaches that the PHA is poly(3-hydroxybutyrate-co-3-hydroxyhexanoate) (PHBH) [0027], and that when the PHA has a repeating structural unit of 3-hydroxybutyrate, the average composition ratio of the repeating structural unit is preferably 80 to 99 mol % from the viewpoint of the balance between flexibility and strength of the PHA [0028], which optionally reads on wherein the poly-3-hydroxybutyrate-co-3-hydroxyhexanoate comprises from 80 to 88 mole percent hydroxybutyrate and from 2 to 20 mole percent hydroxyhexanoate.
Osumi does not teach a specific embodiment wherein the poly-3-hydroxybutyrate-co-3-hydroxyhexanoate comprises from about 85 to about 98 mole percent hydroxybutyrate and from about 2 to about 15 mole percent hydroxyhexanoate. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to optimize the average composition ratio of Osumi’s 3-hydroxybutyrate in Osumi’s PHA that is poly(3-hydroxybutyrate-co-3-hydroxyhexanoate) (PHBH) to be about 85 to about 98 mol %. The proposed modification would read on wherein the poly-3-hydroxybutyrate-co-3-hydroxyhexanoate comprises from about 85 to about 98 mole percent hydroxybutyrate and from about 2 to about 15 mole percent hydroxyhexanoate as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for optimizing flexibility and strength of Osumi’s polyhydroxyalkanoate because Osumi teaches that the PHA is poly(3-hydroxybutyrate-co-3-hydroxyhexanoate) (PHBH) [0027], and that when the PHA has a repeating structural unit of 3-hydroxybutyrate, the average composition ratio of the repeating structural unit is preferably 80 to 99 mol % from the viewpoint of the balance between flexibility and strength of the PHA [0028].
Regarding claim 12, Osumi teaches that the PHA is poly(3-hydroxybutyrate-co-3-hydroxyvalerate-co-3-hydroxyhexanoate) (P3HB3HV3HH) [0027], and that when the PHA has a repeating structural unit of 3-hydroxybutyrate, the average composition ratio of the repeating structural unit is preferably 80 to 99 mol % from the viewpoint of the balance between flexibility and strength of the PHA [0028], which optionally reads on wherein the polyhydroxyalkanoates comprise a polyhydroxyalkanoate terpolymer made up from 80 to 99 mole percent monomer repeat units of 3-hydroxybutyrate, greater than 0 and less than 20 mole percent monomer repeat units of 3-hydroxyhexanoate, and greater than 0 and less than 20 mole percent monomer repeat units of a third 3-hydroxyalkanoate having 5 carbon atoms.
Osumi does not teach a specific embodiment wherein the polyhydroxyalkanoates comprise a polyhydroxyalkanoate terpolymer made up from about 75 to about 99.9 mole percent monomer repeat units of 3-hydroxybutyrate, from about 0.1 to about 25 mole percent monomer repeat units of 3-hydroxyhexanoate, and from about 0.1 to about 25 mole percent monomer repeat units of a third 3-hydroxyalkanoate having from 5 to 12 carbon atoms. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to select the average composition ratio of Osumi’s 3-hydroxybutyrate in Osumi’s PHA that is poly(3-hydroxybutyrate-co-3-hydroxyvalerate-co-3-hydroxyhexanoate) (P3HB3HV3HH) to be 80 to 99 mol %. The proposed modification would read on wherein the polyhydroxyalkanoates comprise a polyhydroxyalkanoate terpolymer made up from 80 to 99 mole percent monomer repeat units of 3-hydroxybutyrate, greater than 0 and less than 20 mole percent monomer repeat units of 3-hydroxyhexanoate, and greater than 0 and less than 20 mole percent monomer repeat units of a third 3-hydroxyalkanoate having 5 carbon atoms, which would read on the claimed ranges. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for improving flexibility and strength of Osumi’s polyhydroxyalkanoate because Osumi teaches that the PHA is poly(3-hydroxybutyrate-co-3-hydroxyvalerate-co-3-hydroxyhexanoate) (P3HB3HV3HH) [0027], and that when the PHA has a repeating structural unit of 3-hydroxybutyrate, the average composition ratio of the repeating structural unit is preferably 80 to 99 mol % from the viewpoint of the balance between flexibility and strength of the PHA [0028].
Regarding claim 14, Osumi teaches that the method for producing an aqueous polyhydroxyalkanoate dispersion comprises a step of feeding an aqueous polyhydroxyalkanoate dispersion having polyhydroxyalkanoate particles with a median diameter of 1 to 5 µm and a solid concentration of less than 50% by weight through a tubular membrane with an inner diameter of 4 to 10 mm and an average pore size of 0.05 to 0.5 µm, thereby concentrating the solids concentration to 50% by weight or more [0011], wherein the PHA aqueous dispersion to be concentrated in the above step may contain other components in addition to water and PHA particles [0032], wherein other components include dispersants that are water-soluble polymers that are polyvinyl alcohol, methyl cellulose, ethyl cellulose, hydroxymethyl cellulose, or hydroxyethyl cellulose [0032], wherein the contents of other components can be selected appropriately [0032], wherein the method for producing a PHA aqueous dispersion may include other steps in addition to the above step, such as a step of adding the other components to the PHA aqueous dispersion obtained by the above step [0044], wherein the PHA aqueous dispersion obtained by the method can be used as a raw material for coatings [0045], which optionally reads on the solids further comprise greater than 0 weight percent and less than 100 weight percent, based on the total dry weight of the solids, of a polymer selected from poly(vinyl alcohol), and polysaccharides.
Osumi does not teach that the solids further comprise from about 1 weight percent to about 25 weight percent, based on the total dry weight of the solids, of a polymer selected from the group consisting of poly(lactic acid), poly(caprolactone), poly(ethylene sebecate), poly(butylene succinate), poly(butylene succinate-co-adipate), poly(butylene adipate terephthalate), poly(vinyl acetate), poly(vinyl alcohol), poly(3-hydroxypropionate), polysaccharides, and mixtures thereof. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use Osumi’s other components that are dispersants that are water-soluble polymers that are polyvinyl alcohol, methyl cellulose, ethyl cellulose, hydroxymethyl cellulose, or hydroxyethyl cellulose to modify Osumi’s aqueous polyhydroxyalkanoate dispersion produced by Osumi’s method, and to optimize the contents of Osumi’s other components in Osumi’s aqueous polyhydroxyalkanoate dispersion to be from 1% by weight to 25% by weight based on the total weight of Osumi’s other components and Osumi’s polyhydroxyalkanoates. The proposed modification would read on the solids further comprise from 1 weight percent to 25 weight percent, based on the total dry weight of the solids, of a polymer selected from poly(vinyl alcohol), and polysaccharides as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for modifying stability of Osumi’s aqueous polyhydroxyalkanoate dispersion, and/or for optimizing stability of Osumi’s aqueous polyhydroxyalkanoate dispersion because Osumi teaches that the PHA aqueous dispersion to be concentrated in the above step may contain other components in addition to water and PHA particles [0032], that other components include dispersants that are water-soluble polymers that are polyvinyl alcohol, methyl cellulose, ethyl cellulose, hydroxymethyl cellulose, or hydroxyethyl cellulose [0032], that the contents of other components can be selected appropriately [0032], that the method for producing a PHA aqueous dispersion may include other steps in addition to the above step, such as a step of adding the other components to the PHA aqueous dispersion obtained by the above step [0044], and that the PHA aqueous dispersion obtained by the method can be used as a raw material for coatings [0045], which means that the contents of Osumi’s other components in Osumi’s aqueous polyhydroxyalkanoate dispersion in % by weight based on the total weight of Osumi’s other components and Osumi’s polyhydroxyalkanoates would have affected stability of Osumi’s aqueous polyhydroxyalkanoate dispersion.
Regarding claim 16, the Office recognizes that all of the claimed physical properties are not positively taught by Osumi, namely that the biodegradable aqueous mixture has a Brookfield viscosity from about 1 to about 5,500 centipoise, when measured in accordance with ISO 1652. However, Osumi renders obvious all of the claimed ingredients, amounts, process steps, and process conditions of the biodegradable aqueous mixture of claim 1 as explained above. Furthermore, the specification of the instant application recites that once prepared, the biodegradable aqueous mixture typically has a Brookfield viscosity from about 1 to about 5,500 centipoise, when measured in accordance with ISO 1652 [077]. Therefore, the claimed physical properties would naturally arise from the biodegradable aqueous mixture that is rendered obvious by Osumi. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01(I)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). If it is the applicant’s position that this would not be the case: (1) evidence would need to be presented to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients, amounts, process steps, and process conditions.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Osumi et al. (WO 2020/100598 A1, machine translation in English used for citation, made of record on 10/17/2025) as applied to claim 1, and further in view of Grubbs et al. (US 2020/0048493 A1, cited in IDS).
Regarding claim 13, Osumi renders obvious the biodegradable aqueous mixture of claim 1 as explained above.
Osumi does not teach that the polyhydroxyalkanoates have a weight average molecular weight from about 50,000 Daltons to about 2.5 million Daltons, as determined by ASTM D5296-05. However, Grubbs teaches polyhydroxyalkanoates that have a weight average molecular weight from about 50,000 Daltons to about 2.5 million Daltons [0010], that are present in a dispersion [0010] that is a biodegradable aqueous dispersion for coating food contact substrates [0006], and that the PHA are PHA particles [0063]. Osumi and Grubbs are analogous art because both references are in the same field of endeavor of a biodegradable aqueous mixture for coating substrates, the mixture comprising water and solids comprising polyhydroxyalkanoates in the form of polyhydroxyalkanoate particles. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use Grubbs’s weight average molecular weight from about 50,000 Daltons to about 2.5 million Daltons as the weight average molecular weight of Osumi’s polyhydroxyalkanoate in Osumi’s polyhydroxyalkanoate particles in Osumi’s aqueous polyhydroxyalkanoate dispersion produced by Osumi’s method. The proposed modification would read on the polyhydroxyalkanoates have a weight average molecular weight from about 50,000 Daltons to about 2.5 million Daltons, as determined by ASTM D5296-05 as claimed. One of ordinary skill in the art would have been motivated to do so because Grubbs teaches that a weight average molecular weight from about 50,000 Daltons to about 2.5 million Daltons is beneficial for being a suitable weight average molecular weight for polyhydroxyalkanoates [0010], that the PHA are beneficial for being useful as PHA particles [0063], and that the polyhydroxyalkanoates are beneficial for being useful in a dispersion [0010] that is a biodegradable aqueous dispersion for coating food contact substrates [0006], which would have been beneficial for providing a weight average molecular weight that is suitable for Osumi’s polyhydroxyalkanoate in Osumi’s polyhydroxyalkanoate particles in Osumi’s aqueous polyhydroxyalkanoate dispersion produced by Osumi’s method because Osumi teaches that the method for producing an aqueous polyhydroxyalkanoate dispersion comprises a step of feeding an aqueous polyhydroxyalkanoate dispersion having polyhydroxyalkanoate particles with a median diameter of 1 to 5 µm and a solid concentration of less than 50% by weight through a tubular membrane with an inner diameter of 4 to 10 mm and an average pore size of 0.05 to 0.5 µm, thereby concentrating the solids concentration to 50% by weight or more [0011], and that the PHA aqueous dispersion obtained by the method can be used as a raw material for coatings [0045].
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Osumi et al. (WO 2020/100598 A1, machine translation in English used for citation, made of record on 10/17/2025) as applied to claim 1, and further in view of Okuya et al. (JP 2002-121288 A, cited in IDS, machine translation in English used for citation, made of record on 05/12/2023).
Regarding claim 15, Osumi renders obvious the biodegradable aqueous mixture of claim 1 as explained above.
Osumi does not teach that the solids further comprise poly(lactic acid). However, Okuya teaches a polylactic acid resin that is a biodegradable resin that is present in an aqueous biodegradable resin dispersion [0007] that optionally further comprises polyhydroxybutyrate [0009], wherein the biodegradable resin aqueous dispersion can be used for coating [0006]. Osumi and Okuya are analogous art because both references are in the same field of endeavor of a biodegradable aqueous mixture for coating substrates, the mixture comprising water and polyhydroxyalkanoates. Before the effective filing date of the claimed invention, one of ordinary skill in the art would have found it obvious to use Okuya’s polylactic acid resin to substitute for a fraction of Osumi’s other components in Osumi’s aqueous polyhydroxyalkanoate dispersion produced by Osumi’s method. The proposed modification would read on the solids further comprise poly(lactic acid) as claimed. One of ordinary skill in the art would have been motivated to do so because it would have been beneficial for modifying biodegradable properties of Osumi’s aqueous polyhydroxyalkanoate dispersion produced by Osumi’s method because Okuya teaches that the polylactic acid resin is beneficial for being a biodegradable resin [0007], for being useful in combination with polyhydroxybutyrate that is a biodegradable resin [0009], and for being useful in an aqueous biodegradable resin dispersion [0007], and that the biodegradable resin aqueous dispersion is beneficial for being useful for coating [0006], which would have been desirable in Osumi’s aqueous polyhydroxyalkanoate dispersion produced by Osumi’s method because Osumi teaches that the method for producing an aqueous polyhydroxyalkanoate dispersion comprises a step of feeding an aqueous polyhydroxyalkanoate dispersion having polyhydroxyalkanoate particles with a median diameter of 1 to 5 µm and a solid concentration of less than 50% by weight through a tubular membrane with an inner diameter of 4 to 10 mm and an average pore size of 0.05 to 0.5 µm, thereby concentrating the solids concentration to 50% by weight or more [0011], that the PHA is poly(3-hydroxybutyrate) [0027], that PHA is a biodegradable plastic [0002], and that the PHA aqueous dispersion to be concentrated in the above step may contain other components in addition to water and PHA particles [0032].
Allowable Subject Matter
Claims 35-37 are 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:
Regarding claim 35, Osumi et al. (WO 2020/100598 A1, machine translation in English used for citation, made of record on 10/17/2025) renders obvious the biodegradable aqueous mixture of Claim 1 as explained above.
Osumi does not teach that the polyhydroxyalkanoates are derived from a PHA cake containing polyhydroxyalkanoate particles having a moisture content of at least about 1% by weight prior to mixing with the water and a Dv 90 particle size of no more than about 10 microns, as determined using ISO 8130-13:2019, wherein the PHA cake comprises a polyhydroxyalkanoate content of from about 30% to about 95% by weight. The prior art of record do not teach or suggest polyhydroxyalkanoates that are derived from a PHA cake containing polyhydroxyalkanoate particles having a moisture content of at least about 1% by weight prior to mixing with the water and a Dv 90 particle size of no more than about 10 microns, as determined using ISO 8130-13:2019, wherein the PHA cake comprises a polyhydroxyalkanoate content of from about 30% to about 95% by weight, wherein the polyhydroxyalkanoates are polyhydroxyalkanoate particles, in combination with the biodegradable aqueous mixture of claim 1. Furthermore, the prior art of record do not teach or suggest polyhydroxyalkanoates that read on such polyhydroxyalkanoates in combination with the biodegradable aqueous mixture of claim 1.
Regarding claim 36, Osumi et al. (WO 2020/100598 A1, machine translation in English used for citation, made of record on 10/17/2025) renders obvious the biodegradable aqueous mixture of Claim 1 as explained above.
Osumi does not teach that the polyhydroxyalkanoates are derived from a PHA cake containing polyhydroxyalkanoate particles having a moisture content of at least about 5% by weight prior to mixing with the water and a Dv 90 particle size of no more than about 8 microns, as determined using ISO 8130-13:2019, wherein the PHA cake comprises a polyhydroxyalkanoate content of from about 30% to about 95% by weight. The prior art of record do not teach or suggest polyhydroxyalkanoates that are derived from a PHA cake containing polyhydroxyalkanoate particles having a moisture content of at least about 5% by weight prior to mixing with the water and a Dv 90 particle size of no more than about 8 microns, as determined using ISO 8130-13:2019, wherein the PHA cake comprises a polyhydroxyalkanoate content of from about 30% to about 95% by weight, wherein the polyhydroxyalkanoates are polyhydroxyalkanoate particles, in combination with the biodegradable aqueous mixture of claim 1. Furthermore, the prior art of record do not teach or suggest polyhydroxyalkanoates that read on such polyhydroxyalkanoates in combination with the biodegradable aqueous mixture of claim 1.
Regarding claim 37, Osumi et al. (WO 2020/100598 A1, machine translation in English used for citation, made of record on 10/17/2025) renders obvious the biodegradable aqueous mixture of Claim 1 as explained above.
Osumi does not teach that the polyhydroxyalkanoates are derived from a PHA cake comprising from 60 (+/- 10) % PHA and 40 (+/- 10) % liquid, by weight. The prior art of record do not teach or suggest polyhydroxyalkanoates that are derived from a PHA cake comprising from 60 (+/- 10) % PHA and 40 (+/- 10) % liquid, by weight, wherein the polyhydroxyalkanoates are polyhydroxyalkanoate particles, in combination with the biodegradable aqueous mixture of claim 1. Furthermore, the prior art of record do not teach or suggest polyhydroxyalkanoates that read on such polyhydroxyalkanoates in combination with the biodegradable aqueous mixture of claim 1.
Response to Arguments
Applicant’s arguments, see p. 6-7, filed 06/26/2026, with respect to the rejection of claims 1-4 and 6-16 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, have been fully considered and are persuasive. The rejection of claims 1-4 and 6-16 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, has been withdrawn.
Applicant's arguments filed 06/26/2026 have been fully considered but they are not persuasive. In response to the applicant’s argument that the amended claims fully comply with 35 U.S.C. 112(b) (p. 7), the amendment to claim 5 makes the claim indefinite and therefore rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. Claim 5 recites the limitation “the polyhydroxyalkanoate particles are recovered from biomass and subsequent purification processes without of the polyhydroxyalkanoate particles to a temperature exceeding about 50°C” in lines 1-4, which is indefinite because it is unclear how “without of the polyhydroxyalkanoate particles to a temperature exceeding about 50°C” limits “the polyhydroxyalkanoate particles are recovered from biomass and subsequent purification processes”.
In response to the applicant’s argument that there is no evidence on the record that Osumi teaches or provides any guidance to utilize a polyhydroxyalkanoate-based cake (PHA cake) in a biodegradable aqueous mixture for coating substrates, that the biodegradable aqueous mixture for coating substrates contains polyhydroxyalkanoate particles having a moisture content of at least about 1% by weight prior to mixing with the water derived from such PHA cake, that the biodegradable aqueous mixture for coating substrates contains polyhydroxyalkanoate particles having a Dv 90 particle size of now more than about 10 microns, as determined using ISO 8130-13:2019 derived from such PHA cake, that where the PHA cake is utilized to form the biodegradable aqueous mixture for coating substrates, the mixture comprises from about 35 to about 75 weight percent water and from about 25 to about 65 weight percent solids or that the solids comprises from about 40 to about 99 weight percent polyhydroxyalkanoates based on the total dry weight of the solids, that the biodegradable aqueous mixture for coating substrates contains polyhydroxyalkanoate particles having a moisture content of at least about 5% by weight prior to mixing with the water derived from such PHA cake, as claimed in Claim 2, that the biodegradable aqueous mixture for coating substrates contains polyhydroxyalkanoate particles having a Dv 90 particle size of no more than about 8 microns, as determined using ISO 8130-13:2019, derived from the PHA cake, how to prepare a PHA cake having the recited properties, that the polyhydroxyalkanoates having a melting point and the polyhydroxyalkanoate particles are recovered from biomass and subsequent purification processes without the temperature of the polyhydroxyalkanoate particles exceeding a temperature which is about 5°C below the melting point of the polyhydroxyalkanoates, prior to mixing with the water to form the aqueous mixture, as claimed in claim 4, that such temperature does not exceed 50°C as claimed in Claim 5, that based on the use of the PHA cake to prepare the biodegradable aqueous mixture coating substrates would select a composition which comprises from about 40 to about 50 weight percent polyhydroxyalkanoates based on the total dry weight of the solids, as claimed in claim 8 or from about 45 to about 55 weight percent water and from about 45 to about 55 weight percent solids as claimed in Claim 9, that the biodegradable aqueous mixture has a Brookfield viscosity from about 1 to about 5,500 centipoise, when measured in accordance with ISO 1652, that when the polyhydroxyalkanoates are derived from PHA cake wherein the PHA cake comprises a polyhydroxyalkanoate content of from about 30 % to about 95 % by weight as required in new Claim 35 and 36 or where the polyhydroxyalkanoates are derived from a PHA cake comprising from 60 % PHA and $0 % liquid, by weight as required in new Claim 37, to utilize a PHA cake to prepare the claimed compositions or disclose, how to prepare such a PHA cake, or to prepare the claimed composition (p. 8-9), it is noted that “a polyhydroxyalkanoate-based cake” or “PHA cake” are not recited in claims 1-12, 14, and 16 that are rejected under 35 U.S.C. 103 as being unpatentable over Osumi et al. (WO 2020/100598 A1). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Claims 1-12, 14, and 16 do not require a polyhydroxyalkanoate-based cake or PHA cake.
In response to the applicant’s argument that there is no evidence on the record that either Grubbs or Okuya teaches the features that Osumi does not teach or suggest (p. 9), the applicant is referring to the limitations referenced in the previous paragraph. The applicant believes that claims 1-12, 14, and 16 require a polyhydroxyalkanoate-based cake or PHA cake, but those claims do not require a polyhydroxyalkanoate-based cake or PHA cake. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Claims 1-12, 14, and 16 do not require a polyhydroxyalkanoate-based cake or PHA cake. Furthermore, Osumi in view of Grubbs renders obvious claim 13, and Osumi in view of Okuya renders obvious claim 15 as explained in the rejection of the claims in this Office action.
In response to the applicant’s argument that Osumi recognizes the problem or discloses any solution to the problem of a method of forming polyhydroxyalkanoate (PHA) that eliminates heated drying processes, need for re-wetting, increased use of surfactants for dispersing, increased energy usage for high shear dispersing/sonication, significant particle agglomeration resulting in increased particle size as compared to that of those resulting from post lysis, and that the term cake is new in this disclosure and has not heretofore been used in the PHA processing industry to describe an end-use material having the properties described above (p. 10), it is noted that “cake”, “PHA cake”, “no heated drying processes”, “no re-wetting”, “surfactants”, “less surfactants”, “less energy use for high shear dispersing/sonication”, and “no significant particle agglomeration” are not recited in claims 1-12, 14, and 16 that are rejected under 35 U.S.C. 103 as being unpatentable over Osumi et al. (WO 2020/100598 A1). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Also, claims 1-12, 14, and 16 are drawn to a biodegradable aqueous mixture and not to a process. The applicant referred to process conditions and to a cake, which are not recited in claims 1-12, 14, and 16.
In response to the applicant’s argument that there is no evidence of record that Osumi discloses or provides guidance to the skilled artisan of how to prepare a coating that provides the recited technical advantages of the Applicants’ composition (p. 11), the “technical advantages” referenced by the applicant refer to a PHA cake, which is not recited in claims 1-12, 14, and 16 that are rejected under 35 U.S.C. 103 as being unpatentable over Osumi et al. (WO 2020/100598 A1). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
In response to the applicant’s argument that there is no evidence of record that Osumi discloses or suggests forming a PHA cake and using the PHA cake formed to prepare formulations of dispersions, colloids, suspensions, coatings, and similar materials, preparing a PHA cake or using it to prepare coatings formulations, that the PHA cakes have a moisture content, that such PHA cakes can have Dv 90 particle size, and that the particle sizes of the particles greater than the median particle size or the presence of agglomerates which could negatively impact the coating properties (p. 11), it is noted that “PHA cake” is not recited in claims 1-12, 14, and 16 that are rejected under 35 U.S.C. 103 as being unpatentable over Osumi et al. (WO 2020/100598 A1). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
In response to the applicant’s argument that there is no evidence of record that Osumi discloses the selection or provides guidance to the selection of the ingredients that are based on the PHA cake components, that where the PHA cake is utilized to form the biodegradable aqueous mixture for coating substrates where the mixture comprises form about 35 toa bout 75 weight percent water and from about 25 to about 65 weight percent solids, that the solids comprise from about 40 to about 99 weight percent polyhydroxyalkanoates based on the total dry weight of the solids, that based on the use of the PHA cake to prepare the biodegradable aqueous mixture for coating substrates to select a composition which comprises from about 40 to about 50 weight percent polyhydroxyalkanoates based on the total dry weight of the solids or from about 45 to about 55 weight percent water and from about 45 to about 55 weight percent solids (p. 11-12), it is noted that “PHA cake” is not recited in claims 1-12, 14, and 16 that are rejected under 35 U.S.C. 103 as being unpatentable over Osumi et al. (WO 2020/100598 A1). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
In response to the applicant’s argument that there is no evidence that Osumi discloses or provides guidance to one skilled in the art that the biodegradable aqueous mixture exhibits a Brookfield viscosity from about 1 to about 5,500 centipoise, when measured in accordance with ISO 1652, that there is no evidence of what the viscosity of either the feed or the product composition disclosed in Osumi was, and that Osumi does not disclose or direct a skilled artisan to the preferred viscosity limits of the composition (p. 12), the Office recognizes that all of the claimed physical properties are not positively taught by Osumi, namely that the biodegradable aqueous mixture has a Brookfield viscosity from about 1 to about 5,500 centipoise, when measured in accordance with ISO 1652. However, Osumi renders obvious all of the claimed ingredients, amounts, process steps, and process conditions of the biodegradable aqueous mixture of claim 1 as explained in the rejection of claim 1 in this Office action. Furthermore, the specification of the instant application recites that once prepared, the biodegradable aqueous mixture typically has a Brookfield viscosity from about 1 to about 5,500 centipoise, when measured in accordance with ISO 1652 [077]. Therefore, the claimed physical properties would naturally arise from the biodegradable aqueous mixture that is rendered obvious by Osumi. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent (MPEP 2112.01(I)). If the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (MPEP 2112.01(II)). If it is the applicant’s position that this would not be the case: (1) evidence would need to be presented to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients, amounts, process steps, and process conditions.
In response to the applicant’s argument that there is no evidence on the record that Osumi discloses or provides guidance to a skilled artisan wherein the polyhydroxyalkanoates are derived from a PHA cake or that the PHA cake comprises a polyhydroxyalkanoate content of from about 30% to about 9% by weigh tor where the polyhydroxyalkanoates are derived from a PHA cake comprise from 60% PHA and 40% liquid (p. 12), it is noted that “PHA cake” is not recited in claims 1-12, 14, and 16 that are rejected under 35 U.S.C. 103 as being unpatentable over Osumi et al. (WO 2020/100598 A1). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
In response to the applicant’s argument that there is no evidence on the record that Osumi teaches or provides guidance to one skilled in the art to utilize a PHA cake to prepare the claimed compositions, how to prepare such a PHA cake, that the disclosure of Osumi does not enable one skilled in the art to prepare the claimed composition, that there is no evidence on the record that Osumi discloses or provides guidance as to how the prepare a PHA cake having the recited properties, that Osumi does not disclose making a PHA cake or how to prevent agglomeration, that Osumi does not disclose or provide guidance to a skilled artisan to prepare PHA cakes and use PHA cakes to prepare aqueous compositions, and that the relevant parameters of the ingredients of the PHA cakes are not disclosed in Osumi (p. 12-13), it is noted that “PHA cake” is not recited in claims 1-12, 14, and 16 that are rejected under 35 U.S.C. 103 as being unpatentable over Osumi et al. (WO 2020/100598 A1). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
In response to the applicant’s argument that there is no evidence on the record that Grubbs or Okuya disclose or motivate one skilled in the art to include any of the features not disclosed in Osumi (p. 13), the applicant is referring to “PHA cake”, which is not recited in claims 1-12, 14, and 16 that are rejected under 35 U.S.C. 103 as being unpatentable over Osumi et al. (WO 2020/100598 A1). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Furthermore, Osumi in view of Grubbs renders obvious claim 13, and Osumi in view of Okuya renders obvious claim 15 as explained in the rejection of the claims in this Office action.
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.
Correspondence
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/DAVID T KARST/ Primary Examiner, Art Unit 1767
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