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 .
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.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: Claim 3 recites the Tg limitation with respect to the composition, however, the as-filed specification makes clear this Tg limitation (along with Claim 8) is with respect to the bio-based starch mixed ester. (See ¶[0060] of the as-filed specification).
Claim Rejections - 35 USC § 102
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.
Claims 1-7 and 9-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tanaka (U.S. 20030109698).
Tanaka exemplifies mixed starch esters in PCL or PLA compositions. See Table 1 and Table 2. The amount of starch ester exemplified in ¶[0095] is 100 parts and the amount of exemplified PCL/PLA is 30 parts. This 100/130 = 77 wt% of mixed starch ester and 23 wt% of PCL / PLA. The compositions anticipate the bio-based starch ester and biodegradable polymer different from the starch ester of Claim 1, the amounts of Claim 5 and the specific polymer of Claim 6.
The mixed esters exemplified are long chain / short chain (C12, C18, C17, C15) and C2 (acetate). (Example 1-5 in Table 1) and the degree of substitution of the acetate is always higher than that of the long chain (C12, C18, C17, C15) anticipating said limitation of Claim 1’s starch ester. Additionally, Tanaka teaches the individual and total degree of degree of substitution (DS) (OS is a typo for DS) in the range of 2.45 to 2.12 in the table which anticipates the degree of substation of Claim 1, and the total degree of substitution of Claim 4. C12 is laurate and C18 is stearate anticipating Claim 2.
Claim 3 recites the glass transition temperature of the composition and Tanaka teaches the glass transition temperature of the starched mixed ester. Tanaka is silent on the glass transition of the overall compositions exemplified. However, as the compositions of Tanaka have the degree of substitution recited by the starch in total amount and in having more acetate than long chain fatty acid as claimed, are in the overall compositional amount of starch and additionally biopolymer claimed, one of ordinary skill in the art is reasonably suggested exemplified compositions of Tanaka must have the recited glass transition temperature when appropriately tested. This anticipates the range of Claim 3.
Claims 7, 9-12 represent a method comprising steps of preparing the bio-based starch with the same limitations of Claim 1 and then mixing it with a biodegradable polymer. This is the exemplified process of Tanaka anticipating Claim 7’s process. Claim 9, Claim 11, and Claim 12 are anticipated for the same reasons as Claim 4, Claim 5 and Claim 6 above.
Claim 10 recite the method of making the composition in which the bio-based starch mixed ester is made by specific process steps. This is considered product by process for the production of the bio-based starch product. The exemplified process of Tanaka does not contain these process steps. Tanaka does teach the acid anhydrides of fatty acids in production of the starches in ¶[0039]. The resulting starches comprise these fatty acids and acetate as claimed along with degrees of substation as claimed. Therefore, the structure of the starches of Tanaka are reasonably suggested to be the same as those as made by the recited process. Applicant presents no evidence to suggest the process of making the bio-based starches via another method results in structurally different starches from the starches claimed via the recited method especially in light of the degree of substitution requirements also being met by Tanaka and Tanaka also using fatty acids as the long chain substituent.
Claim Rejections - 35 USC § 103
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 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.
Claims 3 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka (U.S. 20030109698).
Claim 3 is considered along with Claim 8 in anticipation that Applicant amends Claim 3 to make the glass transition temperature in Claim 3 with respect to bio-based starch mixed ester rather than the composition.
Tanaka is applied as above under §102.
Tanaka exemplified mixed starches according to the claims with glass transition temperatures outside that of the claimed range of Claim 3/8.
In ¶[0060] Tanaka teaches the glass transition temperature of the starch is from 140 oC to 100 oC which overlaps the range of Claim 3/8.
It would have been obvious for a person having ordinary skill in the art at the time the invention was filed to practice the invention of Tanaka such that the glass transition temperature of the resulting starches is from 100 to 140 oC because Tanaka teaches this range. This overlaps the recited range of Claim 3/8.
Applicant presents no data to demonstrate an unexpected effect to difference in glass transition temperature of starch in the resulting compositions.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 8-13 of copending Application No. 18/227669. Although the claims at issue are not identical, they are not patentably distinct from each other because Claims 1, 8-13 of 18/227669 recite the same limitations as instant Claims 1-6 but for being limited to a product or film while the instant claims are simply compositional in nature.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 7-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8-13 of copending Application No. 18/227669 in view of Tanaka (U.S. 20030109698).
Claim 1, 8-13 of 18/227669 recite a product made from a composition of bio-based starch and biodegradable polymer but do not recite how to make the product / composition as claimed by instant Claims 7-12.
Tanaka, working in the field of making films and products with bio-based starch mixed esters and biodegradable polymers similar to 18/227669, exemplifies a process in making the films of PCL or PLA and starch using long chain fatty acids as claimed in which the starch is prepared and then mixed with the desired biodegradable polymer.
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the invention of Claim 1, 8-13 of 18/227669 by using the process of Tanaka to produce the film / product of 18/227669 because Tanaka teaches the exemplified preparation and mixing method for making films. This represents the application of known techniques, preparing starch and then mixing it with biodegradable polymers to make films, to yield the predictable result of a film of the composition recited by Claim 1, 8 of 18/227669.
This reads over Claims 7-9, 11-12.
Claim 10 recite the method of making the composition in which the bio-based starch mixed ester is made by specific process steps. This is considered product by process for the production of the bio-based starch product. The exemplified process of Tanaka does not contain these process steps. Tanaka does teach the acid anhydrides of fatty acids in production of the starches in ¶[0039]. The resulting starches comprise these fatty acids and acetate as claimed along with degrees of substation as claimed. Therefore, the structure of the starches of Tanaka are reasonably suggested to be the same as those as made by the recited process. Applicant presents no evidence to suggest the process of making the bio-based starches via another method results in structurally different starches from the starches claimed via the recited method especially in light of the degree of substitution requirements also being met by Tanaka and Tanaka also using fatty acids as the long chain substituent.
This is a provisional nonstatutory double patenting rejection.
Claim 1-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 of copending Application No. 18/227663 in view of Tanaka (U.S. 2003010969).
Claims 1-4 of 18/227663 read over the biobased starch of instant Claims 1-4 but do not teach or suggest the recited biodegradable polymer of instant Claim 1.
Tanaka, working in the field of making films and products with bio-based starch mixed esters and biodegradable polymers similar to 18/227663, exemplifies a process in making the films of PCL or PLA and starch using long chain fatty acids as claimed in which the starch is prepared and then mixed with the desired biodegradable polymer. Additionally, Tanaka teaches the biobased starches of the invention permit the use of significantly less plasticizer in compositions of the starch with biodegradable polymers. ¶[0063]
18/227663 does not claim any use of the biobased starch recited but the exemplified starches of Tanaka mee the limitation of the claimed starches of 18/227663 indicating these kinds of starches are known to be used according to how Tanaka is using them.
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to practice the invention of Claim 1-4 of 18/227663 such that a biodegradable polymer such as PLA and PCL (exemplified by Tanaka) are added to the compositions of 18/277663 in similar ratios exemplified by Tanaka (77 wt% starch 23 wt% PLA/PCL) in a process of making the starches then mixing them with PCL/PLA because Tanaka teaches these kinds of starches can be thermoplasticized without the use of oily plasticizer and they are used with existing biodegradable polymers and exemplifies such a process of making the overall compositions. (¶[0063]) This represents the use of combination of known prior art elements, bio based starches with biodegradable polymers, to produce the predictable result of a thermoplasticized starch composition as claimed.
Claims 1-4 of 18/227663 read over instant Claims 1-4, exemplified PCL / PLA and amounts as discussed above reads over Claims 5-6 and the method of making the compositions reads over Claims 7-9 and 11-12. Instant Claim 10 is read over by Claim 5 of 18/227663
This is a provisional nonstatutory double patenting rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER M RODD whose telephone number is (571)270-1299. The examiner can normally be reached 7 am - 3:30 pm (Pacific).
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/Christopher M Rodd/Primary Examiner, Art Unit 1766