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 1-25 are rejected under 35 U.S.C. 103 as being unpatentable over Ponti et al. (US 2019/0160796 A1) in view of White et al. (US 5,480,962 A)
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 teaches the dicarboxylic component can comprise a mixture of multiple acids, including succinic acid and azelaic acid. (Paragraph 0044).
Ponti does not teach the mole% of the succinic acid and the azelaic acid in the aliphatic polyester.
White teaches an aliphatic polyester for use in packaging (Abstract; Column 9, Lines 1) comprising succinic acid and azelaic acid as the dicarboxylic component. (Abstract; Column 8, Lines 10-15). White teaches the molar amount of succinic acid can range from 65 to 95 mol% and azelaic acid can range from 5 to 35 %. (Column 3, Lines 50-67). White teaches this range ensure proper elongation and the proper crystallinity of the resulting aliphatic polyester, when the polyester is used in a film. (Column 3, Lines 50-67). These ranges overlap the claimed ranges. Thus, as it would have been obvious to one with ordinary skill in the art to use the claimed range of succinic acid to azelaic acid as taught by White to ensure a proper polyester is formed.
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.
White teaches an aliphatic polyester for use in food packaging (Abstract; Column 9, Lines 1) comprising succinic acid and azelaic acid as the dicarboxylic component. (Abstract; Column 8, Lines 10-15). White teaches the molar amount of succinic acid can range from 65 to 95 mol% and azelaic acid can range from 5 to 35 %. (Column 3, Lines 50-67). White teaches this range ensure proper elongation and the proper crystallinity of the resulting aliphatic polyester, when the polyester is used in a film. (Column 3, Lines 50-67). These ranges overlap the claimed ranges. Thus, as it would have been obvious to one with ordinary skill in the art to use the claimed range as taught by White to ensure a polyester that can be used for films is formed.
Regarding Claims 8-10, Ponti teaches one of the acids can be azelaic acid, as discussed above. White teaches the c2 is azelaic acid, as discussed above.
White teaches an aliphatic polyester for use in food packaging (Abstract; Column 9, Lines 1) comprising succinic acid and azelaic acid as the dicarboxylic component. (Abstract; Column 8, Lines 10-15). White teaches the molar amount of succinic acid can range from 65 to 95 mol% and azelaic acid can range from 5 to 35 %. (Column 3, Lines 50-67). White teaches this range ensure proper elongation and the proper crystallinity of the resulting aliphatic polyester, when the polyester is used in a film. (Column 3, Lines 50-67). These ranges overlap the claimed ranges. Thus, as it would have been obvious to one with ordinary skill in the art to use the claimed range as taught by White to ensure a polyester that can be used for films is formed.
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).
Regarding Claim 25, 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). 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 teaches the dicarboxylic component can comprise a mixture of multiple acids, including succinic acid and azelaic acid. (Paragraph 0044).
Ponti does not teach the mole% of the succinic acid and the azelaic acid in the aliphatic polyester.
White teaches an aliphatic polyester for use in food packaging (Abstract; Column 9, Lines 1) comprising succinic acid and azelaic acid as the dicarboxylic component. (Abstract; Column 8, Lines 10-15). White teaches the molar amount of succinic acid can range from 65 to 95 mol% and azelaic acid can range from 5 to 35 %. (Column 3, Lines 50-67). White teaches this range ensure proper elongation and the proper crystallinity of the resulting aliphatic polyester, when the polyester is used in a film. (Column 3, Lines 50-67). These ranges overlap the claimed ranges. Thus, as it would have been obvious to one with ordinary skill in the art to use the claimed range as taught by White to ensure a polyester that can be used for films is formed.
Response to Arguments
Applicant’s arguments have been fully considered.
Applicant argues that Ponti does not suggest selecting succinic acid along with a different aliphatic acid, such as azelaic acid. This argument is found unpersuasive. Ponti recites
“The saturated aliphatic dicarboxylic acids in component e1 are preferably selected from saturated C2-C24, preferably C4-C13, more preferably C4-C11 dicarboxylic acids, their C1-C24, preferably C1-C4, alkyl esters, their salts and mixtures thereof. Preferably the saturated aliphatic dicarboxylic acids are selected from succinic acid, 2-ethylsuccinic acid, glutaric acid, 2-methylglutaric acid, adipic acid, pimelic acid, suberic acid, azelaic acid, sebacic acid, undecanedioic acid, dodecanedioic acid, brassylic acid, hexadecanedioic acid, octadecanedioic acid and their C1-24 alkyl esters.” (Paragraph 0044)
Thus, as Ponti teaches multiple types of acids are suitable, including succinic acid and azelaic acid, one of ordinary skill in the art would clearly select from a list recited by Ponti and form copolyesters are suitable for the purposes for forming a layer in a multilayer biodegradable film.
Applicant argues one of ordinary skill in the art would not look to White to determine the molar percent in the aliphatic polyester. This argument is found unpersuasive, as one of ordinary skill in the art would look to the prior art to determine suitable weight percentage after selecting a mixture of succinic and azelaic acid, as Ponti already teaches a mixture of succinic acid and azelaic acid are suitable for forming a biodegradable polyester. White teaches a suitable diacid molar range suitable for biodegradable polyester, where the molar ratio allows sufficient crystallization for a polyester to be used in films and superior properties to only succinate polyesters. (Abstract; Column 2)
Applicant argues White does not discuss a multilayer film. This argument is found unpersuasive. The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Here, White is used to teach a molar ratio for succinic acid and azelaic acid in an aliphatic copolyester that is suitable for biodegradable polymer that has improved properties and sufficient crystallization to aid in film formation over succinic polyesters alone
Applicant argues Ponti is concerned with disintegrablility and White is concerned with biodegradability. This argument is found unpersuasive. Ponti teaches film should be biodegradable (Abstract) and White also focuses on forming a copolyesters this biodegradable. (Column 1).
Applicant argues there is no reasonable expectation of success for selecting the diacids. This argument is found unpersuasive. As discussed above, Ponti teaches a combination of diacids is suitable for forming the aliphatic copolyester. White teaches this diacid mol% range is suitable for forming a film. (Column 3). Thus, there is a reasonable expectation of success of using the molar range for the diacids used in Ponti, as Ponti states these acids mixtures are suitable and White teaches these molar ranges allow for film formation.
Applicant argues there is hindsight bias in the combination of Ponti and White. This argument is found unpersuasive. 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). Here, Ponti teaches the use of two diacids, succinic and azelaic, is suitable for an aliphatic polyester for forming a layer in a film and White teaches the molar range for succinic and azelaic acids leads to a copolyester with improved properties and the crystallinity to be used in films. Thus, one of ordinary skill in the art would use the molar range taught by White to the diacids in Ponti to yield a biodegradable polyester with improved properties sufficient to be used in films.
The 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
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/Michael Zhang/Primary Examiner, Art Unit 1781
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