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 .
Claim Rejections - 35 USC § 103
Claims 1-24 are rejected under 35 U.S.C. 103 as being unpatentable over Ponti et al. (US 2019/0160796 A1) in view of Siegenthaler et al. (US 2011/0313075 A1).
Regarding Claim 1, Ponti teaches a multilayer film comprising a first layer A and at least one second layer B. (Claim 1 of Ponti).
Ponti teaches layer B can 30-95% of an aliphatic-aromatic polyester comprising of the following components:
a dicarboxylic component containing with respect to the total dicarboxylic component: e1) 35-70% by moles of units deriving from at least one aromatic dicarboxylic acid, e2) 65-30% by moles of units deriving from at least one saturated aliphatic dicarboxylic acid, and e3) 0-5% by moles of units deriving from at least one unsaturated aliphatic dicarboxylic acid;
a diol component comprising with respect to the total diol component: f1) 95-100% by moles of units deriving from at least one saturated aliphatic diol, and f2) 0-5% by moles of units deriving from at least one unsaturated aliphatic diol;
vii) 0.1-50% by weight, with respect to the sum of components vi.-x., of at least one polymer of natural origin;
viii) 1-40% by weight, with respect to the sum of components vi.-x, of at least one polyhydroxyalkanoate;
ix) 0-15% by weight, with respect to the sum of components vi.-x, of at least one inorganic filler; and
x) 0-5% by weight, with respect to the sum of components vi.-x, of at least one cross-linking agent and/or chain extender comprising at least one compound having two and/or multiple functional groups including isocyanate, peroxide, carbodiimide, isocyanurate, oxazoline, epoxide, anhydride divinylether groups and mixtures thereof. (Claim 1 of Ponti).
These ranges overlap the claimed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. (MPEP §2144.05).
Ponti teaches layer A can comprise i) 60-100% by weight of at least one aliphatic-aromatic polyester; ii) 0-20% by weight of at least one aliphatic polyester; iii) 0-40% by weight of at least one polyhydroxyalkanoate; v) 0-5% by weight, of at least one cross-linking agent and/or a chain extender comprising at least one compound having two and/or multiple functional groups including isocyanate, peroxide, carbodiimide, isocyanurate, oxazoline, epoxy, anhydride or divinyl ether groups and mixtures thereof; iv) 0-10% by weight of at least one filler. (Paragraph 0109).
Ponti also teaches layer A can comprise i) 30-70% by weight of at least one aliphatic-aromatic polyester; ii) 20-60% by weight of at least one aliphatic polyester; iii) 1-20% by weight of at least one polyhydroxyalkanoate; v) 0-5% by weight of at least one cross-linking agent and/or a chain extender comprising at least one compound having two and/or multiple functional groups including isocyanate, peroxide, carbodiimide, isocyanurate, oxazoline, epoxy, anhydride or divinyl ether groups and mixtures thereof; iv) 0-10% by weight, of at least one filler. (Paragraph 0103).
These ranges overlap the claimed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. (MPEP §2144.05).
Ponti teaches the aliphatic-aromatic polyester can comprise a dicarboxylic component comprising with respect to the total dicarboxylic component: a1) 35-70% by moles of units deriving from at least one aromatic dicarboxylic acid, a2) 65-30% by moles of units deriving from at least one saturated aliphatic dicarboxylic acid, and a3) 0-5% by moles of units deriving from at least one unsaturated aliphatic dicarboxylic acid; and d) a diol component comprising with respect to the total diol component: b1) 95-100% by moles of units deriving from at least one saturated aliphatic diol, and b2) 0-5% by moles of units deriving from at least one unsaturated aliphatic diol. (Claim 2 of Ponti).
These ranges overlap the claimed ranges recited for the aliphatic-aromatic polyester composition of layer A. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. (MPEP §2144.05).
Ponti teaches the aliphatic polyester in layer A can comprise a dicarboxylic component comprising succinic acid (c1) and azelaic acid (c2). Ponti teaches a diol component comprising d1) 95-100% by moles of units deriving from at least one aliphatic dicarboxylic acid; d2) 0-5% by moles of units deriving from at least one unsaturated aliphatic dicarboxylic acid. (Paragraph 0037-0044).
Ponti does not teach the mole% of the succinic acid and the azelaic acid in the aliphatic polyester.
Siegenthaler teaches an aliphatic polyester comprising succinic acid, azelaic acid, 1,4-butdainoel and a chain extender and/or cross linker. (Claim 11 of Siegenthaler). Siegenthaler teaches 90 to 99.5 mol% of succinic and 0.5 to 10 mol% of azelaic acid. (Claim 11 of Siegenthaler). This range overlaps the claimed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. (MPEP §2144.05). Siegenthaler teaches this mole% range for the acids improves the biodegradability and hydrolysis resistance of the resulting aliphatic polyester. (Paragraph 0012-0015). Thus, it would have been obvious to one with ordinary skill in the art to use the succinic and azelaic acids in the claimed range as taught by Siegenthaler in the aliphatic acid in layer of A of Ponti to improve biodegradability of the polymer.
Regarding Claim 2-3, Ponti teaches the a1 can be 1 to 99 mol% of terephthalic acid, its esters or salts and 99 to 1 mol% of 2,5-furandicarboxylic acid, its esters or salts. (Paragraph 0030).
Regarding Claims 4-6, Ponti teaches the saturated aliphatic dicarboxylic acid comprises mixtures comprising at least 50% moles of succinic acid, adipic acid, azelaic acid, sebacic acid, brassylic acid, their C1-C24 esters, salts and mixtures thereof. (Paragraph 0033).
Regarding Claim 7, Ponti teaches 0-20% or 20-60% by weight of at least one aliphatic polyester. (Paragraph 0103, 0109) This overlaps the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. (MPEP §2144.05).
Ponti teaches the aliphatic polyester in layer A can comprise a dicarboxylic component comprising succinic acid (c1) and azelaic acid (c2). Ponti teaches a diol component comprising d1) 95-100% by moles of units deriving from at least one aliphatic dicarboxylic acid; d2) 0-5% by moles of units deriving from at least one unsaturated aliphatic dicarboxylic acid. (Paragraph 0037-0044).
Ponti does not teach the mole% of the succinic acid and the azelaic acid in the aliphatic polyester.
Siegenthaler teaches an aliphatic polyester comprising succinic acid, azelaic acid, 1,4-butdainoel and a chain extender and/or cross linker. (Claim 11 of Siegenthaler). Siegenthaler teaches 90 to 99.5 mol% of succinic and 0.5 to 10 mol% of azelaic acid. (Claim 11 of Siegenthaler). This range overlaps the claimed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. (MPEP §2144.05). Siegenthaler teaches this mole % range for the acids improves the biodegradability and hydrolysis resistance of the resulting aliphatic polyester. (Paragraph 0012-0015). Thus, it would have been obvious to one with ordinary skill in the art to use the acids in the claimed range in the aliphatic acid in layer of A of Ponti to improve biodegradability of the polymer.
Regarding Claims 8-10, Ponti teaches one of the acids can be azelaic acid, as discussed above. Siegenthaler teaches the c2 is azelaic acid, as discussed above.
Siegenthaler teaches an aliphatic polyester comprising succinic acid, azelaic acid, 1,4-butdainoel and a chain extender and/or cross linker. (Claim 11 of Siegenthaler). Siegenthaler teaches 90 to 99.5 mol% of succinic and 0.5 to 10 mol% of azelaic acid. (Claim 11 of Siegenthaler). This range overlaps the claimed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. (MPEP §2144.05). Siegenthaler teaches this range for the acids improves the biodegradability and hydrolysis resistance of the resulting aliphatic polyester. (Paragraph 0012-0015). Thus, it would have been obvious to one with ordinary skill in the art to use the acids in the claimed range in the aliphatic acid in layer of A of Ponti to improve biodegradability of the polymer.
Regarding Claim 11, Ponti teaches layer A can comprise iii) 0-40% or 1-20% by weight of at least one polyhydroxyalkanoate. (Paragraph 0103, 0109) This overlaps the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. (MPEP §2144.05).
Regarding Claim 12, Ponti teaches iv) 0-10% by weight of at least one filler. (Paragraph 0103, 0109). This overlaps the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. (MPEP §2144.05).
Regarding Claim 13, Ponti does not specifically teach the composition of the filler iv). However, Ponti teaches talc and calcium carbonate aid in the disintegrability of polyesters. (Paragraph 0163) Thus, it would have been obvious to one with ordinary skill in the art to use the fillers of talc and calcium carbonate as taught by Ponti as component iv) in polyester to further aid in disintegrability.
Regarding Claim 14 Ponti teaches layer A can comprise v) 0-5% by weight, of at least one cross-linking agent and/or a chain extender. (Paragraph 0103, 0109) This overlaps the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. (MPEP §2144.05).
Regarding Claim 15-16, Ponti teaches the aromatic dicarboxylic acids e1 can comprise Ponti teaches the a1 can be 1 to 99 mol% of terephthalic acid, its esters or salts and 99 to 1 mol% of 2,5-furandicarboxylic acid, its esters or salts. (Paragraph 0135).
Regarding Claim 17-19, Ponti teaches e2, saturated aliphatic dicarboxylic acids, can be mixture of adipic acid and azelaic acid and have 5 to 40 mole% of azelaic acid with respect to adipic and azelaic acid. (Paragraph 0138). This overlaps the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. (MPEP §2144.05).
Regarding Claim 20, Ponti teaches 0.1-50% by weight, with respect to the sum of components vi.-x., of at least one polymer of natural origin. (Claim 1 of Ponti). This overlaps the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. (MPEP §2144.05).
Regarding Claim 21, Ponti teaches the arrangement of A/B/A or A/B. (Claim 1 of Ponti; Paragraph 0020).
Regarding Claim 22, Ponti teaches the film should disintegrate under domestic composting conditions according to UNI 1135 in under 180 days. (Paragraph 0207-0209).
Regarding Claim 23-24, Ponti teaches using the film for a food packaging. (Paragraph 0019).
Response to Arguments
Applicant’s arguments have been fully considered.
The prior §112 rejections have been withdrawn, due to Applicant’s amendments.
Applicant argues that one of ordinary skill in the art would not look towards Seigenthaler, as Seigenthaler does not discuss packaging like Ponti. This argument is found unpersuasive. Seigenthaler recites this material can be used in “producing … self-supporting film” and used in “containers and closures for … food applications, … bags” (Paragraph 0071-0072). Therefore, Seigenthaler clearly contemplates this material as packaging for food and non-food related purposes.
Applicant argues that Seigenthaler is not directed to improving the optical clarity of the packaging of Ponti. This argument is found unpersuasive. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
The §103 rejections are maintained.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL ZHANG whose telephone number is (571)270-0358. The examiner can normally be reached Monday through Friday: 9:30am-3:30pm, 8:30PM-10:30PM.
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/Michael Zhang/Primary Examiner, Art Unit 1781
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