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 .
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.
Priority
3. This application is a 371 of PCT/EP2022/052331 02/01/2022.
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application ITALY 102021000-002135 02/02/2021 filed on 08/01/23.
Information Disclosure Statement
The information disclosure statement (IDS), filed on 08/01/23 has been considered. Please refer to Applicant's copy of the 1449 submitted herewith.
Election/Restrictions
Applicant’s election without traverse of claims 3-12 in the reply filed on 04/06/26 is acknowledged.
Applicant’s fail to elect species in the reply filed on 04/06/26. However, during a telephone conversation with Burton Amernick on 04/29/26 a provisional election was made without traverse for claims 3-11 and species: (a) pentaerythritol, and (b) poly(1,4-butylene adipate-co-1,4-butylene terephthalate). Claim 12 is restricted for non-unity priori. Affirmation of this election must be made by applicant’s in replying this Office action. It has been noted that claim 20 depend from elected claim 10, accordingly, claim 20 is grouped with elected claims 3-11.
Claims 1-20 are pending. Claims 1-2, 12-19 are withdrawn from further consideration by Examiner, 37 CFR 1.142(b), as being drawn to non-election invention/species. Claims 3-11, 20 are examined in this Office action.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 3-11, 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of copending Application No. 18/263755. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are directed to a product obtained by essentially a same process of co-pending claims with one distinction of polyfunctional compounds in copending claim 1 is in the range of 0.2-0.7 mole% overlapping instant claim 3 range of 0.1-0.45 mole%.
A prima facie case of obviousness exists, wherein copending claims discloses polyfunctional compounds in the range of 0.2-0.7 mole%, overlapping the requirement of instant claim 3. See In re Wertheim regarding prima facie cases with overlapping ranges (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) See MPEP § 2144.05).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Objections
Claim 11 is objected to because of the following informalities: Recitation “and” is required between last two features. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 3-11, 20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In claim 3, it states “A biodegradable Biodegradable branched polyester for extrusion coating, characterized by branching obtained by the preparation process of claim 1.” This is indefinite because claim 3 is an independent claim and it should not refer back to limitations in another claim. Claims must stand alone to define the invention and incorporation into independent claims by reference to a preceding claim is not permitted. The metes and bounds of the invention cannot be ascertained and the instant claim is rejected as failing to particularly point out and distinctly claim the invention.
Claims 5, 8, improperly recite the Markush group in the form of “a material is selected from A, B, and C”, which renders the claim indefinite because it is unclear which members of the group are part of the claimed invention. A proper Markush groups may be recited as "a material selected from the group consisting of A, B, and C" or "wherein the material is A, B, or C." See MPEP § 2173.05(h).
Claims 4-11, 20 depends directly or indirectly from rejected claim 3.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
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 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.
Claims 3-11, 20 are rejected under 35 U.S.C. 103 as being unpatentable over Bastioli (US 2011/0020660) in view of Bastioli (US 2009/0005472; hereinafter called “Bastioli-1”).
Regarding claims 3-10, Bastioli discloses a biodegradable branched polyester for extrusion coating, characterized by branching obtained by esterification in presence of diol and dicarboxylic acid components, and at least one polyol polyfunctional compound such as pentaerythritol with the examples of the aliphatic-aromatic polyester such as polybutylene sebacate-co-terephthalate or polybutylene adipate-co-terephthalate with the aromatic acid content in the range of 45 to 60 mole% (para [0005], [0013], [0021]-[0036], [0122], [0130]), fall into claim 10 range of 30 to 70 mole%. Bastioli further discloses shear viscosity of 1200 Pas and Melt strength of 2.9 g (example 3). Applicants have defined in specification, “viscoelastic ratio, RVE. This is calculated from the quotient of shear viscosity and melt strength” (para [0064]) and “The polyester according to the present invention is characterised by a viscosity to melt strength ratio, viscoelastic ratio (RVE)” (para [0076]). Accordingly, in Bastioli shear viscosity/ Melt strength (1200/2.9)= 413.8 is RVE, fall into claim 3 range of less than 40,000 or claim 4 of les than 30,000. Bastioli discloses polyol polyfunctional compound such as pentaerythritol in amount of less than 0.5% but does not disclose the claimed amount of 0.1-0.45 mole%.
However, Bastioli-1 discloses a biodegradable branched polyester for extrusion coating, characterized by branching obtained by esterification in presence of diol and dicarboxylic acid components, and at least one polyol polyfunctional compound such as pentaerythritol with the examples of the aliphatic-aromatic polyester, wherein polyol polyfunctional compound such as pentaerythritol between 0.1 to 2.5 mole% with respect to the total moles of the dicarboxylic component is used to obtain the branched product (para [0011]-[0015], [0031], [0034]-[0035]), encompassing claim 3 ramge of 0.1-0.45 mole%. Bastioli and Bastioli-1 are pertinent to a biodegradable branched polyester for extrusion coating, characterized by branching obtained by esterification in presence of diol and dicarboxylic acid components, and at least one polyol polyfunctional compound such as pentaerythritol with the examples of the aliphatic-aromatic polyester.
At the time of invention, it would have been obvious to one of ordinary skill in the art to use the amount of polyol polyfunctional compound disclosed by Bastioli over the same range as Bastioli-1’s polyol polyfunctional compound, given that both are being used in a similar context for the same purpose, e.g. to obtain the biodegradable branched polyester for extrusion coating.
A prima facie case of obviousness exists for the biodegradable branched polyester, wherein Bastioli-1 discloses polyol polyfunctional compound such as pentaerythritol between 0.1 to 2.5 mole%, encompassing the requirement of claim 3. See In re Wertheim regarding prima facie cases with overlapping ranges (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) See MPEP § 2144.05).
Regarding claim 11, 20, Bastioli expressly discloses the aliphatic-aromatic polyester such as polybutylene sebacate-co-terephthalate or polybutylene adipate-co-terephthalate (example 3-4). Bastioli further expressly discloses terephthalate, and functionally equivalent aromatic acid of the diol derivatives of the aromatic acid such as butanediol-terephthalic acid (para [0027]-[0032]).
It would have been obvious to one having ordinary skill in the art at the time the invention was made to have used the butanediol-terephthalic acid of the claims in the composition of Bastioli to obtain poly(butylene sebacate-co-butylene-terephthalate) because Bastioli teaches that the claimed butanediol-terephthalic acid and the terephthalic acid are functionally equivalent and it is prima facie obvious to substitute art-recognized functional equivalents known for the same purpose, see MPEP § 2144.06; In re Ruff, 256 F.2d 590, 118 USPQ 340 (CCPA 1958).
Conclusion
References Khemani (US 5661193) and Zhou (CN 111100427) were cumulative in nature to the above rejection and thus not set forth.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KUMAR R BHUSHAN whose telephone number is (313)446-4807. The examiner can normally be reached 9.00 AM to 5.50 PM (EST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, RANDY P GULAKOWSKI can be reached at (571)272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KUMAR R BHUSHAN/Primary Examiner, Art Unit 1766
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