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
Applicant’s amendment filed on October 3, 2025 has been entered. Claim 1 has been amended. Claim 2 has been cancelled. As such, Claims 1, 3-10, and 14-19 are currently pending in the application.
Claim Rejections - 35 USC §§ 102/103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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, 3-10, and 14-19 are rejected under 35 U.S.C. 102(a)(1) as anticipated by Japanese Patent Application Publication No. 2011-157660 to Kazuya (English translation obtained from PE2E database) (“Kazuya”) or, in the alternative, under 35 U.S.C. 103 as obvious over Kazuya in view of U.S. Patent Application Publication No. 2013/0065046 to Krishnaswamy (“Krishnaswamy”).
With regard to Claim 1, Kazuya discloses a biodegradable nonwoven fabric for heat molding comprising fibers formed from polylactic acid-based polymer. See, e.g., Abstract, page 1, entire document. Kazuya discloses that the fabric has a basis weight in the range of from 10 gsm to 250 gsm, page 4, and provides examples of fabrics having a basis weight 50 gsm (Example 1), 100 gsm (Example 7), 150 gsm (Example 2), and 250 gsm (Example 6). Kazuya discloses that the nonwoven fabric has an elongation in the MD of 50% or more, such as 70% to 300% at a temperature of 120 degrees C. Page 3. However, Kazuya does not specifically disclose the property of a dimensional change rate in the MD at 80 to 140 degrees C. as ±4%. Nonetheless, it is reasonable to presume that such a property is inherent to Kazuya. Support for the presumption is found because Kazuya discloses the use of similar materials, i.e. polylactic acid-based filaments, made by similar processes, i.e., spun melting the filaments, to product similar end use products, i.e. biodegradable food packaging. The burden is upon the Applicant to show otherwise. The Patent and Trademark Office can require applicants to prove that prior art products do not necessarily or inherently possess characteristics of claimed products where claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes; burden of proof is on applicants where rejection based on inherency under 35 U.S.C. § 102 or on prima facie obviousness under 35 U.S.C. § 103, jointly or alternatively, and Patent and Trademark Office’s inability to manufacture products or to obtain and compare prior art products evidences fairness of this rejection. In re Best, Bolton, and Shaw, 195 USPQ 431 (CCPA 1977). In the alternative, the dimensional change rate property would be obvious to provide. Krishnaswamy is also related to the utilization of polylactic acid in biodegradable materials. See, e.g., Abstract, entire document. Krishnaswamy teaches that their polylactic acid-based materials can be used in nonwoven fibers and filaments. Paragraphs [0037] and [0137]. Krishnaswamy teaches that properties of polylactic acid, such as modulus, tensile strength, toughness and elongation, can all be improved by incorporating polyhydroxyalkanoate into the polylactic acid. Paragraphs [0006], [0008], [0009], and [0174] and Figures 2-5. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide a dimensional change rate of ±4% in the MD at 80 to 140 degrees C. in the nonwoven fabric disclosed by Kazuya by incorporating polyhydroxyalkanoates into the polylactic acid to improve the properties of the polylactic acid, such as modulus, tensile strength, toughness and elongation, as shown to be known by Krishnaswamy. The properties of the polylactic acid of Kazuya, as modified by Krishnaswamy, would be similar to the properties of the claimed invention because the composition is similar and must therefore exhibit the same properties. M.P.E.P. 2112.01. A similar inherency/obviousness analysis over Kazuya, alone, or alternatively, over Kazuya in view of Krishnaswamy applies to the storage modulus properties recited in Claims 3 and 9, the tear strength property of Claim 4, maximum value of the loss tangent in Claim 8, and the R/Ave value recited in Claim 10. With regard to Claim 5, Kazuya discloses the birefringence of the fibers is 0.001 to 0.010, page 4, and provides an example of fibers having a birefringence of 0.003 (Example 1). With regard to Claim 6, Kazuya discloses that the fibers comprise 0.5% to 30%, by weight, of an aliphatic ester copolymer. Pages 1-2. With regard to Claim 7, Kazuya discloses that the fiber diameter is in the range of 10 to 40 microns. Page 3. With regard to Claim 14, Kazuya teaches that the nonwoven fabric can be thermoformed with large stretching. Page 5. As such, it is reasonable to presume that the molding index of the molded body is at least 1.1; otherwise a large stretch would not be present. A similar inherency/obviousness analysis over Kazuya, alone, or alternatively, over Kazuya in view of Krishnaswamy applies to the R/Ave value recited in Claim 15, the elongation change of Claim 16, the change in capacity of the container recited in Claim 17, the degree of orientation of the nonwoven fabric recited in Claim 18, and the crystallinity recited in Claim 19.
Claims 1, 3-10, and 14-19 are rejected under 35 U.S.C. 102(a)(1) as anticipated by Japanese Patent Application Publication No. 2015-074842 to Takafumi et al. (English translation obtained from PE2E database) (“Takafumi”) or, in the alternative, under 35 U.S.C. 103 as obvious over Takafumi in view of Krishnaswamy.
With regard to Claim 1, Takafumi discloses a biodegradable nonwoven fabric subjected to thermocompression bonding comprising filaments formed from polylactic acid-based polymer. See, e.g., Abstract, page 1, entire document. Takafumi discloses that the basis weight of the biodegradable nonwoven fabric is in the range of 10 to 30 gsm. Page 4; see also Examples. Takafumi does not specifically disclose the properties of nonwoven fabric elongation in the MD of 50% or more and a dimensional change rate in the MD at 80 to 140 degrees C. as ±4%. Nonetheless, it is reasonable to presume that these properties are inherent to Takafumi. Support for the presumption is found because Takafumi discloses the use of similar materials, i.e. polylactic acid-based filaments, made by similar processes, i.e., spun melting the filaments, to product similar end use products, i.e. biodegradable food packaging. The burden is upon the Applicant to show otherwise. The Patent and Trademark Office can require applicants to prove that prior art products do not necessarily or inherently possess characteristics of claimed products where claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes; burden of proof is on applicants where rejection based on inherency under 35 U.S.C. § 102 or on prima facie obviousness under 35 U.S.C. § 103, jointly or alternatively, and Patent and Trademark Office’s inability to manufacture products or to obtain and compare prior art products evidences fairness of this rejection. In re Best, Bolton, and Shaw, 195 USPQ 431 (CCPA 1977). In the alternative, the dimensional rate change property would be obvious to provide. Krishnaswamy is also related to the utilization of polylactic acid in biodegradable materials. See, e.g., Abstract, entire document. Krishnaswamy teaches that their polylactic acid-based materials can be used in nonwoven fibers and filaments. Paragraphs [0037] and [0137]. Krishnaswamy teaches that properties of polylactic acid, such as modulus, tensile strength, toughness and elongation, can all be improved by incorporating polyhydroxyalkanoate into the polylactic acid. Paragraphs [0006], [0008], [0009], and [0174] and Figures 2-5. It would have been obvious to a person having ordinary skill in the art at the time of filing the invention to provide an elongation of 50% or more in the machine direction at 120 degrees C. and a dimensional change rate of ±4% in the nonwoven fabric disclosed by Takafumi by incorporating polyhydroxyalkanoates into the polylactic acid to improve the properties of the polylactic acid, such as modulus, tensile strength, toughness and elongation, as shown to be known by Krishnaswamy. The properties of the polylactic acid of Takafumi, as modified by Krishnaswamy, would be similar to the properties of the claimed invention because the composition is similar and must therefore exhibit the same properties. M.P.E.P. 2112.01. A similar inherency/obviousness analysis over Takafumi, alone, or alternatively, over Takafumi in view of Krishnaswamy applies to the storage modulus properties recited in Claims 3 and 9, the tear strength property of Claim 4, maximum value of the loss tangent in Claim 8, and the R/Ave value recited in Claim 10. With regard to Claim 5, Takafumi discloses the birefringence is in the range of 0.005 to 0.025, page 5, and provides Examples of the birefringence value being 0.008 (Figure 3) and 0.006 (Figure 4). With regard to Claim 6, Takafumi discloses that a 12 gsm nonwoven web of fibers comprising polylactic acid is coated with a 3 gsm nonwoven web of fibers comprising polybutylene succinate, Example 9, which would provide the polylactic acid-based fibers with a coating of an aliphatic ester copolymer in an amount of 20% by weight (3 gsm polybutylene succinate coating a 15 gsm total weight fabric). With regard to Claim 7, Takafumi discloses the fiber diameter is 15 microns to 40 microns, page 4, such as about 20 microns or about 30 microns. See Examples. With regard to Claim 14, Takafumi teaches that the nonwoven fabric can be thermocompression bonded. Examples. As such, it is reasonable to presume that the molding index of the molded body is at least 1.1 due to the compression in combination with the polymer melting in the heat. A similar inherency/obviousness analysis over Takafumi, alone, or alternatively, over Takafumi in view of Krishnaswamy applies to the R/Ave value recited in Claim 15, the elongation change of Claim 16, the change in capacity of the container recited in Claim 17, the degree of orientation of the nonwoven fabric recited in Claim 18, and the crystallinity recited in Claim 19.
Response to Arguments
Applicant’s arguments filed October 3, 2025 have been fully considered but they are not persuasive.
Applicant argues that Kazuya does not disclose a storage temperatures and periods of time between embossing and felt calendering. Applicant argues that Takafumi does not disclose aging or storage steps, nor does it disclose a felt calendering process. Applicant concludes that it is reasonably considered that the feature of dimensional change rate in the MD direction at 80 degrees C. to 140 degrees C. is +/-4% or less. However, despite Kazuya and Takafumi not having an anticipatory disclosure of the storage temperature and time periods, the patentability of a product does not depend upon its method of production. When an Applicant intends to rely on examples in the specification to show lack of inherency or non-obviousness, the Applicant should clearly state how the examples of the present invention are commensurate in scope with the claims and how the comparative examples are commensurate in scope with the applied prior art. In this instance, neither of the prongs are satisfied. First, Applicant has not shown how the examples of the present invention are commensurate in scope with the claims. Claim 1 allows for the fabric to have a basis weight up to 350 gsm. However, none of the examples have a basis weight above 310 gsm. Second, Applicant has not shown how the comparative examples are commensurate in scope with the applied prior art. Example 1 of Kazuya mixes polybutylene succinate with polylactic acid having a melt flow index of 44 g/10 min., spinning at temperature of 230 degrees C., extruding a web having a basis weight of 50 gsm, fiber diameter of 32 microns, and filament birefringence of 0.003. This web is temporarily bonded by embossing, then thermally press bonded with a felt calender. Examples 2-9 vary the conditions in a minimal manner, such as by altering fabric basis weight, fiber spinning speed, and fiber diameter. However, Applicant does not disclose how the comparative examples in the specification are commensurate in scope with the examples of Kazuya. Kazuya discloses that the elongation of their polylactic-acid based nonwoven fabrics at 120 degrees C. is greater than 50%, preferably in the range of 70% to 300%. Page 3. However, several of the comparative examples of Applicant’s specification possess elongation values at 120 degrees C. outside of the range disclosed by Kazuya. Moreover, none of the comparative examples are formulated in a manner that is similar to Kazuya. Example 4 of Takafumi provides polylactic acid having a melt flow index of 12 g/10 min, spun at a fiber diameter of 30 microns to produce a nonwoven fabric having a basis weight of 20 gsm, then subjecting the nonwoven fabric to partial thermocompression. Examples 6 and 7 vary the conditions of Example 4 in a minimal manner, such as by altering fiber diameter. However, Applicant does not disclose how the comparative examples in the specification are commensurate in scope with the examples of Takafumi. Which comparative examples map to the relevant examples of Takafumi? Which comparative examples map to the relevant examples of Kazuya? If some of the comparative examples possess the claimed property of having a dimensional change rate in the MD direction at 80 degrees C. to 140 degrees C. is +/-4% or less, then why are those comparative examples not relevant to the teachings of Takafumi or Kazuya?
Applicant argues that Krishnaswamy discloses a film with improved elongation by adding PHA to PLA, but is not related to a nonwoven fabric, nor does it disclose an aging or storage step. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In this instance, Kazuya and Takafumi are cited as primary references to show that the structural features of the nonwoven fabric.
Applicant argues that Comparative Examples 1-3, 7, and 8 of the specification exhibit dimension change rates outside of the range of +/-4% or less, resulting in inferior moldabilities. However, Applicant provided sufficient evidence that Comparative Examples 1-3, 7, and 8 are commensurate in scope with the examples of the cited references.
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.
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JEREMY R. PIERCE
Primary Examiner
Art Unit 1789
/JEREMY R PIERCE/Primary Examiner, Art Unit 1789