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 .
Election/Restrictions
Claims 32-33 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected election, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 2/12/2026.
Response to Amendment
The amendment filed on 7/27/2026 has been entered. Claim(s) 22-25 and 27-30 is/are currently amended. Claim(s) 22-33 is/are pending with claim(s) 32-33 withdrawn from consideration. Claim(s) 22-31 is/are under examination in this office action.
Response to Arguments
Applicant's argument filed on 7/27/2026, with respect to 103 rejection has been fully considered but is not persuasive.
Applicant argued that Bewsher is directed to the solution of a problem very different from that which is solved by the present invention.
In response, the solution of a problem is a statement of intended use that imparts no additional structure beyond the claimed product and need not be taught by the prior art to read on the claimed invention. See MPEP 2111.02(III).
Applicant argued that Bewsher broadly lists carnauba wax, beeswax, paraffin wax, candelilla wax, montan wax, polyethylene wax, microcrystalline waxes and various others as being alternative waxes for use in his process. See paragraphs [0038] and [0039] of Bewsher. There is no indication that carnauba wax may be significantly better than any of the other waxes for any given purpose. Bewsher has no teaching that carnauba wax is unique, that carnauba wax is superior for PLA-heat seal films, or that other waxes fail.
In response, Bewsher lists 15 preferred waxes with carnauba wax being the first in the list [0039]. A genus encompassing 20 species is sufficient to anticipate a single claimed species. See In re Petering, 301 F.2d 676, 133 USPQ 275 (CCPA 1962); MPEP 2131.02(III). If 1 out of 20 is sufficient to establish anticipation, it seems reasonable to conclude that 1 out of 15 is sufficient to support a prima facie finding of obviousness. In addition, carnauba wax is the wax used in all Examples of Bewsher. This further supports the obviousness of selecting carnauba wax.
Applicant argued that the data in Table 2 shows that carnauba wax gives better performance than other waxes in terms of heat sealability and blocking resistance.
In response, the observation result in Table 2 only shows “o” and “x”. The examiner submits that these rating systems are arbitrary and do not allow the examiner to check the details of the differences or significance of the difference. Concrete data (e.g., test values, photos, etc.) are more convincing.
In addition, whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980); MPEP 716.02(d). In the instant case, the examples are not commensurate in scope with the claims. For instance, claim 1 recites “1 to 14% by mass of the carnauba wax is blended relative to a mass of the polylactic acid”; but the example only uses 2.8% by mass of the carnauba wax blended relative to a mass of the polylactic acid (8 parts of 30% carnauba wax relative to 85.2 parts of PLA); it is not known if 1% or 14% of carnauba wax will result in similar effect. Since the examples are not reasonably commensurate with the full scope of claimed materials, and the Applicant has not provided any additional information that would allow one skilled in the art to extend the results associated with the data to the full scope of the claim, the examples cannot be relied upon to establish non-obviousness of the claimed invention.
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.
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.
Claim(s) 22-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bewsher et al (US 20230235166 A1).
Regarding claims 22-25, Bewsher teaches an aqueous biopolymer dispersion composition comprising: a biopolymer including polylactic acid and a wax including carnauba wax [abstract and 0038].
It would have been obvious to one of ordinary skill in the art at the time of filing to select polylactic acid as the biopolymer, and to select carnauba wax as the wax in Bewsher’s composition, as these are expressly disclosed as being useful in this capacity. It has been established that selection of a known material based on its suitability for its intended use is prima facie obvious (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)). See MPEP 2144.07.
Bewsher teaches that the dispersion comprises 10-80 wt% of the biopolymer (polylactic acid) [claim 2] and 1-12 wt% of the wax (carnauba wax) [claim 11]. Therefore, the amount of carnauba wax is 1.25 wt% or more relative to polylactic acid, as calculated by the examiner. This amount overlaps the claimed 1-14 wt%, 2-14 wt%, 6-14 wt%, and 6-8 wt% as recited in claims 22, 23, 24, and 25 respectively. A prima facie case of obviousness exists where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" (MPEP 2144.05.I).
The recited “when used to form a heat sealant layer on a paper substrate, produces a heat sealant layer that has heat sealability at 120°C and blocking resistance at 45°C”, “wherein the heat sealant layer formed from the aqueous dispersion on a paper substrate has heat sealability at 120°C and blocking resistance at 50°C”, “wherein the heat sealant layer formed from the aqueous dispersion on a paper substrate has heat sealability at 110°C and blocking resistance at 50C” are statement of intended use that imparts no additional structure beyond the claimed product and need not be taught by the prior art to read on the claimed invention. See MPEP 2111.02(III). Nevertheless, Bewsher teaches that heat seal at 120 °C is imparted as a sealant [0071, 0075, Tables 15, 17, 20, 23]; and the composition imparts good grease resistance [0071, 0075].
Regarding claim 26, Bewsher teaches that the dispersion composition comprises a stabilizing agent including polyvinyl alcohol; the polyvinyl alcohol has a degree of hydrolysis (HD) of 70% to 98% [0021], meeting the claimed “partially hydrolyzed polyvinyl alcohol” recited in claim 26.
Bewsher teaches that the amount of the polyvinyl alcohol is 1-6 wt% in the dispersion [0022]. Since the dispersion contains 10-80 wt% of polylactic acid and 1-12 wt% of wax as stated above, the amount of polyvinyl alcohol relative to polylactic acid and wax (corresponding to the claimed dispersoid) is 1.1-54.5 wt%, as calculated by the examiner, overlapping the claimed 2.0-10.0 wt% in claim 26. A prima facie case of obviousness exists where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" (MPEP 2144.05.I).
Claim(s) 27-31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bewsher et al (US 20230235166 A1) as applied to claim 22 above, further in view of Koichi et al (JP 2004168927 A, machine translation is referenced herein).
Regarding claims 27-31, the limitations are the same as claims 22-26 except the added 1-15 wt% of plasticizer.
Bewsher teaches that the aqueous dispersion in claim 22 as stated above. Bewsher is silent about the claimed plasticizer.
In the same field of endeavor, Koichi teaches an aqueous dispersion of biodegradable resin and heat-sealable material made from the aqueous dispersion comprising a polyester-based biodegradable resin including polylactic acid-based resin [claim 3] and natural wax such as carnauba wax [P12 last para.]. The dispersion further comprises a plasticizer [abstract], in order to solve the problem for polylactic acid resin that film formation and thermal bonding are difficult unless treatment is performed at high temperatures [bottom of P5]. The content of the plasticizer is 5 to 50 parts by weight per 100 parts by weight of the biodegradable resin [bridging para. of P8-9].
It would have been obvious to one of ordinary skill in the art at the time of filing to 5-50 wt% of plasticizer relative to polylactic acid in Bewsher’s composition, in order to solve the problem of difficult film formation and thermal bonding; and this is expressly disclosed as being suitable for this application. It has been established that selection of a known material based on its suitability for its intended use is prima facie obvious (Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)). See MPEP 2144.07. This amount of plasticizer overlaps the claimed amount of 1 to 15% by mass relative to a mass of the polylactic acid. A prima facie case of obviousness exists where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" (MPEP 2144.05.I).
As stated above, Bewsher’s amount of carnauba wax is 1.25 wt% or more relative to polylactic acid. This amount overlaps the claimed 1-14 wt%, 2-14 wt%, 6-14 wt%, and 6-10 wt% as recited in claims 27, 28, 29, and 30 respectively. Bewsher’s amount of polyvinyl alcohol relative to polylactic acid and wax (corresponding to the claimed dispersoid) is 1.1-54.5 wt%, as stated above, overlapping the claimed 2.0-10.0 wt% in claim 31. A prima facie case of obviousness exists where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" (MPEP 2144.05.I).
Conclusion
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANGTIAN XU whose telephone number is (571)270-1621. The examiner can normally be reached Monday-Thursday.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Jones can be reached on (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JIANGTIAN XU/Primary Examiner, Art Unit 1762
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