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 .
DETAILED ACTION
All the references cited in the International Search Report have been considered. None is anticipatory. The most pertinent of these references have been applied below.
Election/Restrictions
Applicant’s election with traverse of Group I, Claims 1-4 and 6-18 is acknowledged. All groups are distinct inventions and present a serious burden to the U.S. Patent and Trademark Office based on a proper lack of unity analysis. The traversal is on the ground that the restriction is only proper if the claims are independent or distinct and there would be a serious burden placed on the Examiner if restriction is not required. This is not found persuasive because the issue as to the meaning and intent regarding “independent and distinct” as used in 35 U.S.C 121 and 37 CFR 1.41, which is for national applications, but it is not used for PCT national stage (371) applications. For PCT national stage applications, restriction is based upon unity of invention; restriction of a national stage application does not take into account whether or not the inventions are independent or distinct, and does not take into account burden on the examiner. Furthermore, the examiner asserts the special technical feature, the composition of claim 1, is met by prior arts. See below rejections.
This restriction is made FINAL. The restriction and election of species as stated in the previous office action are repeated here as such.
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.
Claim(s) 3, 10-11, and 13 (is)are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claims 3 and 10-11 recite “the other hydroxyalkanoate units”. It is unclear whether “the other hydroxyalkanoate units” is referred to: on copolymer A, on copolymer B, or on both copolymer A and copolymer B. For examination purpose, all scenarios are considered.
Regarding claim 13, the limitation "preferably” renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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 of this title, 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.
Claim(s) 1-4 and 6-18 is (are) rejected under 35 U.S.C. 103 as being unpatentable over Whitehouse et al. (US 20100305280).
As to claims 1, 3-4, and 6-7, Whitehouse (abs., claims, examples) discloses a resin composition for injection molding (90, claim 5) comprising (Table 2-4, 180-187, Ex.2-4, ref.8) 35 parts of Talc (a layered clay mineral) by 100 parts of the total polyhydroxyalkanoate (PHA) and a blend comprising of poly(3-hydroxybutyrate) (PHB) and poly(3-hydroxybutyrate)-co-11%-4-hydroxybutyrate). Whitehouse (16-18, 88-90, 180) further discloses PHB/poly(3-hydroxybutyrate)-co-11%-4-hydroxyhexanoate) (blends 2-4) and poly(3-hydroxybutyrate)-co-6%-3-hydroxyhexanoate) (78 wt%)/poly(3-hydroxybutyrate)-co-33%-4-hydroxybutyrate) (22 wt%) (blend 8) are functionally equivalent PHA blends for producing relatively flexible and high melting blends of PHA for injection molding. The aforementioned % is referred as wt% (18).
Therefore, it would have been obvious to one of ordinary skill in the art to have replaced blends 2-4 with blend 8 because of their equivalent functionality as primary PHA blends for producing relatively flexible and high melting blends of PHA for injection molding. These conditions appear to equally apply to both productions using similar PHA blends. This adaptation would have obviously yielded instantly claimed composition of claims 1, 3-4, and 6-7.
As to the claimed mol% of other hydroxyalkanoate units of the claimed copolymer (A) in claims 1 and 6, the aforementioned poly(3-hydroxybutyrate)-co-6%-3-hydroxyhexanoate has a 5 mol% of 3-hydroxyhexanoate by the following calculation:
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As to the claimed mol% of other hydroxyalkanoate units of the claimed copolymer (B) in claims 1 and 7, the aforementioned poly(3-hydroxybutyrate)-co-33%-4- hydroxybutyrate) has a 33 mol% of 4- hydroxybutyrate (identical MW of the isomeric monomers).
As to claims 2 and 10-11, blend 8 (poly(3-hydroxybutyrate)-co-6%-3-hydroxyhexanoate) (78 wt%)/poly(3-hydroxybutyrate)-co-33%-4-hydroxybutyrate) (22 wt%)) has a total 11 mol% (falling within the claimed ranges of claim 2) of other hydroxyalkanoate units and a mol% ratio of 89:11 (falling within the claimed ranges of claims 10-11) by the following calculation:
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As to claims 8-9, poly(3-hydroxybutyrate)-co-6%-3-hydroxyhexanoate) in the blends is 78 wt%, and poly(3-hydroxybutyrate)-co-33%-4- hydroxybutyrate) in the blends is 22 wt%.
As to claims 12-13, the Mw of both PHAs in the blends (22-25, 119-120, Table 2) can both be 750k, so the resultant blend would have a Mw of 750k, falling within the claimed range.
As to claims 16-17, the loading of talc is 35 parts of 100 parts of PHA, falling within the claimed range.
As to claim 18, Whitehouse (claim 4, 117) discloses the composition may comprise a third PHA at most about 20 wt%, overlapping with the claimed range. It has been found that where claimed ranges overlap ranges disclosed by the prior art, a prima facie case of obviousness exists - see MPEP 2144.05. The PHA can be derived from biomass (157), the same biomass component used as dispersion acid according to instant pgpub [0058]. Therefore, it would have been obvious to one of ordinary skill in the art to have modified the aforementioned composition and added at most about 20 wt% biomass based PHA, because the resultant composition would yield improved environmental friendliness.
Claim(s) 14-15 is (are) rejected under 35 U.S.C. 103(a) as being unpatentable over Whitehouse et al. (US 20100305280) in view of Koyama et al. (US 20160251494) listed on IDS and ISR.
Disclosure of Whitehouse is adequately set forth in ¶1 and is incorporated herein by reference.
Whitehouse is silent on the claimed particle size.
In the same area of endeavor of producing molds comprising PHA and talc (abs., examples 1 and 6-7, claims, Table 1), Koyama (70) discloses an optimal size range of talc of 0.1-50 microns (overlapping with the range of claim 15) to obtain balanced handleability and impact resistance. It has been found that where claimed ranges overlap ranges disclosed by the prior art, a prima facie case of obviousness exists - see MPEP 2144.05.
Therefore, as to claims 14-15, it would have been obvious to one of ordinary skill in the art to have modified the aforementioned Whitehouse’s composition and replaced the talc with the aforementioned talc (0.1-50 microns) of Koyama, because the resultant composition would yield improved and balanced handleability and impact resistance.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHANE FANG whose telephone number is (571)270-7378. The examiner can normally be reached on Mon-Thurs. 8am-6pm. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached on 571.572.1302. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SHANE FANG/Primary Examiner, Art Unit 1766