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
Applicant's election with traverse of Group I (claims 22-31) in the reply filed on 2/12/2026 is acknowledged. The traversal is on the ground(s) that all of the groups include the same special technical feature, as admitted by the examiner. This is not found persuasive because the special technical feature does not make contribution to the prior art, as stated in the restriction requirement.
The requirement is still deemed proper and is therefore made FINAL.
Claims 32-33 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected election, there being no allowable generic or linking claim.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.
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, a stabilizing agent including polyvinyl alcohol, 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, to select polyvinyl alcohol as the stabilizing agent, 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.
The recited “used for a heat sealant” 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). Nevertheless, Bewsher teaches that the dispersion is used for heat sealants [0002, 0071, etc.].
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 “heat sealability at 120°C and blocking resistance at 45°C are imparted as a heat sealant, and the blocking resistance is referred to as blocking resistance between heat seal layers of a paper substrate and blocking resistance between the heat seal layer of the paper substrate and an uncoated surface on a back surface of the paper substrate” is a property of the product. “Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. “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. Since the prior art teaches the same product as the current invention, the recited property is expected to be present. 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 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
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.
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/JIANGTIAN XU/Primary Examiner, Art Unit 1762