DETAILED ACTION
This is an Office action based on application number 18/248,873 filed 13 April 2023, which is a national stage entry of PCT/KR2021/008553 filed 6 July 2021, which claims priority to KR10-2020-0149833 filed 11 November 2020. Claims 1, 3, and 7-10 are pending. Claims 2 and 4-6 are canceled.
Amendments to the claims, filed 30 June 2026, have been entered into the above-identified application.
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 .
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 3, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Azerraf et al. (WIPO International Publication No. WO 2019/229759 A1 with equivalent document US Patent Application Publication No. US 2021/0206150 A1 used for citation purposes) (Azerraf) in view of Shoseyov et al. (WIPO International Publication No. WO 2012/014213 A1) (Shoseyov), Mukai et al (US Patent Application Publication No. US 2011/0281487 A1), Frey et al. (US Patent Application Publication No. US 2011/0275520 A1) (Frey) and Takenaka et al. (US Patent Application Publication No. US 2008/0262150 A1) (Takenaka).
Regarding instant claims 1, 3, and 8:
Azerraf discloses an article having a layered structure of the form ABC, wherein layer A is a substrate layer, and layer B is a cellulose nanomaterial (paragraph [0046]).
Azerraf further discloses that articles of the invention are fully biodegradable (paragraph [0022]).
Azerraf further discloses that the substrate layer A is a nanocellulose/polymer film (paragraph [0266]). Wherein the polymer is a biodegradable polymer inclusive of polylactic acid, polycaprolactone, and polybutylene succinate (paragraphs [0269-0270]) (i.e., a base layer formed from a biodegradable resin).
Azerraf further discloses that the nanocellulose in the nanocellulose/polymer film is any cellulose nanomaterial defined in their disclosure (paragraph [0046]) inclusive of cellulose nanocrystals (CNC) (paragraph [0060]).
Azerraf further discloses that WO 2012/014213 to Shoseyov (incorporated by reference) provides examples of said CNCs (paragraph [0061]).
Shoseyov discloses that said CNCs have a width of 10-20 nm (page 11, fourth paragraph).
Said layer A of Azerraf meets the claimed base layer. Said CNCs meet the claimed fine particles.
Azerraf further discloses that the layer B is a cellulose nanomaterial inclusive of cellulose nanofibrils (CNFs) having a diameter of 5-60 nm (paragraph [0062]).
Said cellulose nanofibrils meet the claimed cellulose nanofibers.
The size range of both the CNCs and CNFs of Azerraf encompass embodiments wherein the diameter of the nanocellulose employed in the coating composition is greater than diameter of the fine particles employed in the resin composition.
Azerraf further discloses that the layer B comprises a blend of cellulose material and PVOH at a ratio between 0.0001:1 to 1:000.1 CNC to PVOH (paragraph [0042]), which includes the claimed range amount of the nanocellulose in the coating composition; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art' a prima facie case of obviousness exists.” See MPEP § 2144.05.
With regard to the claimed particle size deviation:
Azerraf further teaches that nano-sized cellulose nanocrystals possess interesting size-dependent structural and optical properties, and the ability to play with the processing variables provides the ability to control the structure, composition, size, and level of dispersion of such nanocrystals (paragraphs [0002-0003]).
Since the instant specification is silent to unexpected results, the specific size deviation of the cellulose nanomaterial in the coating layer is not considered to confer patentability to the claims. As the structural and optical properties of compositions and structures comprising the cellulose nanocrystals are variables that can be modified, among others, by adjusting the particle size characteristics of the cellulose nanomaterial, the precise particle size distribution would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the particle size distribution of the cellulose nanocrystals in Azerraf to obtain the desired structural and optical properties (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
With regard to the claimed amount of fine particles within the biodegradable resin composition:
Azerraf does not explicitly disclose the amount of fine particles within the biodegradable resin composition. Azerraf does not explicitly disclose that the coating composition is pretreated by at least one method selected from the group consisting of ultrasonic pretreatment, agitation pretreatment, and hydrophobic pretreatment. Azerraf does not explicitly disclose the claimed rate of change of light transmittance of the coating composition. Azerraf does not explicitly disclose that the biodegradable resin comprises polybutylene adipate terephthalate.
With regard to the claimed amount of fine particles within the biodegradable resin composition:
Frey discloses biodegradable polymers that hydrolyze quickly in the environment (paragraph [0018]).
Frey discloses that said biodegradable polymers comprise a polymeric matrix material and a second polymeric material incorporated into the polymeric matrix (paragraph [0020]).
Frey further discloses that the polymeric matrix ins inclusive of polylactic acids and poly α hydroxyl acid (paragraph [0028]).
Frey further discloses that the second polymeric material is inclusive of cellulose nanocrystals (paragraph [0029-0030]).
Frey teaches that the polymeric matrix has a hydrolytic degradation rate that increases with increased proportion of the second polymeric material (paragraph [0035]).
Frey further teaches that the content of the second polymeric material is in the range of 0.0001%-50% of the weight of the matrix material (paragraph [0021]), which includes the range recited by the claim; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art' a prima facie case of obviousness exists.” See MPEP § 2144.05.
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to use the amount of carbon nanocrystals taught by Frey in producing the biodegradable resin of Azerraf. The motivation for doing so would have been that such an amount is an art-recognized amount of cellulose nanocrystals that increases the hydrolytic degradation of the polymer (i.e., its biodegradability).
Regarding the pretreatment:
Mukai discloses a gas barrier material comprising cellulose fibers (Claim 1).
Mukai discloses that said cellulose fibers are subject to dispersion and pulverization to control desired fiber width and length, wherein said pulverization includes the use of an ultrasonic agitator (paragraph [0087]).
Mukai discloses the fibers produced in part by pulverization treatments have increased light transmittance properties (paragraph [0095]).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to subject the cellulose nanocrystals of Azerraf to a pulverization treatment using at least an ultrasonic agitator. The motivation for doing so would have been to control the size properties of the cellulose materials, and to increase the light transmittance properties of compositions comprising said cellulose materials.
Regarding the claimed rate of change of light transmission:
Azerraf teaches that the multilayered structure of the invention is fully transparent (paragraph [0004]); therefore, one of ordinary skill in the art would conclude that it is within desire of the teachings of Azerraf to ensure that the desired transparency is maintained over the time of the intended use of the product.
Further, Mukai discloses the fibers produced in part by pulverization treatments have increased light transmittance properties (paragraph [0095]).
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP §2112.01(I).
In the instant case, one of ordinary skill in the art would readily conclude that the scope of the prior art combination encompasses a coating composition of cellulose nanocrystals pretreated with an ultrasonic agitator that is substantially identical to that of Applicant’s coating composition and would have the same properties (e.g., the same rate of change of light transmittance. Support for such a position comes from Applicant’s original disclosure, wherein Applicant discloses that those coating compositions that have undergone ultrasonic pretreatment has a maximized enhancement in dispersibility, and that those coatings meeting the claimed change in light transmittance exhibit excellent dispersibility (Specification at page 11, lines 5-11).
Regarding the polybutylene adipate terephthalate:
Takenaka discloses a biodegradable resin composition (Title), wherein said resin is not particularly limited as long as it has an ability to be biodegraded into low-molecular weight compounds by microorganisms in nature, wherein examples are inclusive of polycaprolactone, polybutylene succinate, polylactic acid resin, and polybutylene adipate/terephthalate, and mixtures thereof (paragraph [0014]).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to add to or replace the biodegradable polymers of Azerraf with the polybutylene adipate/terephthalate polymer of Takenaka. The motivation for doing so would have been that Takenaka establishes polybutylene adipate/terephthalate as a functionally equivalent biodegradable polymer to those listed by Azerraf; therefore, there is a reasonable expectation of success that the polymer of Takenaka would be usable in the structure/composition of Azerraf and provide predictable results. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR International Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395 – 97 (2007). See MPEP §2143(B).
Therefore, it would have been obvious to combine Mukai, Takenaka, Frey, and Shoseyov with Azerraf to obtain the invention as specified by the instant claims.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Azerraf in view of Mukai, Takenaka, Frey, and Shoseyov, as applied to claim 1, above, and further in view of Kim et al (US Patent Application Publication No. US 2014/0377547 A1) (Kim) and Sukigara et al. (JP 2005-028615 A).
Regarding instant claim 7:
Azerraf discloses the biodegradable multilayer structure as cited in the rejection of claim 1, above.
Azerraf further discloses that the multilayered structure has an oxygen transmittance rate (OTR) between 0.01 and 15 cc/m2·day and a water vapor transmittance rate (WVTR) of between 0.01 and 20 gr/m2·day (paragraphs [0014-0015]).
Azerraf does not explicitly disclose the specific biodegradability, tensile strength, and tear strength of the multilayer structure.
Kim discloses a biodegradable film (paragraph [0018]).
Kim further discloses that the film has a tensile strength of 100-600 kg/cm2 to avoid wrinkles generated due to mechanical tension in subsequent processes such as printing and laminating, and to ensure that the film is not brittle and easily fractured or broken due to external impact (paragraph [0023]).
100-600 kg/cm2 is approximately 9.8-58.8 MPa, which overlaps the range recited by the claims; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Kim further discloses that the film has a biodegradability of 95% or more (paragraph [0008]), wherein biodegradability is measured according to KS M3100-1 (2003) (paragraph [0058-0059]).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of the prior art before him or her, to ensure that the multilayer film of Azerraf has the tensile strength and biodegradability described by Kim. The motivation for the controlling the tensile strength would have been to obtain optimal physical properties. The motivation for controlling the biodegradability would have been to maximize the biodegradability property desired by Azerraf.
As to the tear strength:
Sukigara discloses a biodegradable multi-layer film having excellent tear strength and is suitable for garbage bags, general bag films, and general packaging films. Sukigara teaches that the tear strength is improved such that the film does not break when filled (paragraph [0009]).
Sukigara further discloses that the tear strength is 10 mN/μm or more per unit thickness (paragraph [0013]) (i.e., 10N/cm).
Sukigara teaches that when the tear strength is within the described range, a multilayer film having both the desired ultimate tear strength a reduced thickness is achieved, which optimizes transparency and processing factors (paragraph [0027]).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of Azerraf in view of Sukigara before him or her, to ensure that the multilayer film of Azerraf has the tear strength described by Sukigara. The motivation for doing so would have been to avoid breakage during the intended use of the multilayered film, and to achieve a desired ultimate tear strength with an optimized thickness, which optimizes transparency and processing factors.
Therefore, it would have been obvious to combine Kim and Sukigara with Azerraf in view of Mukai, Takenaka, Frey, and Shoseyov to obtain the invention as specified by the instant claim.
Claims 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Azerraf in view of Mukai, Takenaka, Frey, and Shoseyov as applied to claim 1, above, and further in view of Choi et al. (KR20130008820A) (Choi).
Regarding instant claims 9 and 10:
Azerraf discloses a biodegradable multilayer film comprising a barrier layer formed from of a coating composition comprising nanocellulose as cited in the rejection of claim 1, above.
Such a multilayered structure is necessarily formed from a method comprising preparing the base layer from the biodegradable resin and forming a layer having barrier properties from a coating composition comprising nanocellulose.
Azerraf does not explicitly disclose the method of preparing the base layer as recited by the instant claims.
Azerraf does not explicitly disclose the method of preparing the base layer as recited by the instant claims.
However, Choi discloses a biodegradable aliphatic/aromatic copolyester resin having excellent transparency produced by a method comprising (i) reacting an aromatic dicarboxylic acid and an aliphatic glycol in a first esterification reaction; (ii) subjecting a polylactide and an aliphatic dicarboxylic acid in the presence of the reaction product of step (i) and subjecting them to a second esterification reaction; and (iii) subjecting the reaction product of step (ii) to a polycondensation reaction (paragraph [0026]).
Choi further discloses that the aromatic dicarboxylic acid is inclusive of terephthalic acid and ester forming derivatives thereof, and the aliphatic dicarboxylic acid is inclusive of adipic acid (paragraph [0027]).
Choi further discloses that the esterification reactions are carried out at a temperature of 170 to 230°C (paragraph [0030]), which overlaps the ranges recited by the instant claim; however, “in the case where claimed ranges ‘overlap or lie inside ranges disclosed by prior art’ a prima facie case of obviousness exists.” See MPEP § 2144.05.
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of Azerraf in view of Choi before him or her, to use the method of Choi to produce the biodegradable substrate in the structure of Azerraf. The motivation for doing so would have been that such a method produces a product that is biodegradable and has excellent transparency.
Therefore, it would have been obvious to combine Choi with Azerraf in view of Mukai, Takenaka, Frey, and Shoseyov to obtain the invention as specified by the instant claims.
Answers to Applicant’s Arguments
Applicant’s arguments regarding the prior art rejection of record are considered, but are moot due to the altered grounds of rejection necessitated by Applicant’s amendments.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Thomas A Mangohig whose telephone number is (571)270-7664. The examiner can normally be reached M-F 9-5 Eastern.
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/TAM/Examiner, Art Unit 1788 09/09/2026
/HUMERA N. SHEIKH/Supervisory Patent Examiner, Art Unit 1784
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