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 Objections
Claim 14 is objected to because of the following informalities: In the second to last line, the word “form” is misspelled as “from”: “heating the dry coated substrate to cure the composition to from a biopolymer film”. Appropriate correction is required.
Claims 13 and 16 are substantially identical. It is suggested that either claim 13 or 16 be deleted or amended to a different range.
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 14-15 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.
Claim 14 recites the limitation "an aqueous biopolymer composition of claim 1" in the third line. There is insufficient antecedent basis for this limitation in the claim. It is suggested that this be amended to read “the aqueous biopolymer dispersion composition of claim 1”.
Claim 15 recites the limitation "a coating composition of claim 1" in the third line. There is insufficient antecedent basis for this limitation in the claim. There is no coating composition in claim 1. It is suggested that this be amended to read “the aqueous biopolymer dispersion composition of claim 1”.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 11 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 11 recites the crosslinking agent includes adipic acid, glyoxal and citric acid. Claim 11 depends from claim 10 which recites the crosslinking agent but does not include these species. Thus, claim 11 limits the claim in a manner outside the scope of claim 10 and is an improper dependent claim.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim(s) 1, 3-4, 6-7, 12, 14-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Narutaki (JP 2004-018744) in view of Narutaki (JP 2004/204038).
Narutaki ‘744 teaches an example where 50 parts LPA and 50 parts PBS and 17 parts PVA is extruded together followed by forming into an aqueous dispersion (pg. 16, Example 1). Narutaki ‘744 teaches an example where polycaprolactone replaces the polybutylene succinate (pg. 17, Example 5). The example forms a solid content of 50% where the amount of solids is about 85% polyesters. This gives an amount of polyesters of about 43 wt% and meets claim 4. PVA meets claims 3 and 6.
Narutaki ‘744 does not explicitly recite using a crosslinking agent.
However, Narutaki ‘038 teaches biodegradable resin aqueous dispersions (¶ 1) which include a polyester, an emulsifier, and a crosslinking agent (¶ 7) where the amount of crosslinking agent is 0.1-10 pbw (¶ 7).
It would have been obvious to use a composition including a crosslinking agent because it provides good biodegradability and water resistance (¶ 7).
Narutaki ‘038 teaches the amount of emulsifier (B) is 1-25 pbw (¶7) and that polyvinyl alcohol is the preferred emulsifier (¶ 12). This range overlaps the range of claim 7.
Narutaki ‘744 teaches coating to form a film (pg. 11) including a coating for paper (pg. 13) and paper is a cellulosic substrate. Narutaki teaches after coating a substrate, drying to form a film (pg. 16). Narutaki ‘744 teaches heating the film at 100-120˚C (pg. 14) which meets heating the film. While Narutaki ‘744 does not explicitly recite the heating is to cure the film, the same process step (heating) is being performed.
Claim(s) 5, 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Narutaki (JP 2004-018744) in view of Narutaki (JP 2004/204038) and Sugihara (JP 2004-323640).
The discussion with respect to Narutaki ‘744 and Narutaki ‘038 above is hereby incorporated by reference.
Narutaki ‘744 and Narutaki ‘038 do not explicitly recite a tackifier.
However, Sugihara teaches aqueous dispersions of polyesters for forming films (pg. 1) which includes tackifiers (¶29) including gum rosin, rosin ester, terpene phenol resins (¶ 29). It would have been obvious to one of ordinary skill in the art to use the tackifiers of Sugihara in order to improve the adhesion of the coating (¶26).
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Narutaki (JP 2004-018744) in view of Narutaki (JP 2004/204038) and Kuno (JPH 08-295792).
The discussion with respect to Narutaki ‘744 and Narutaki ‘038 above is hereby incorporated by reference.
Narutaki ‘744 and Narutaki ‘038 do not explicitly recite a rheology modifier.
However, Kuno teaches aqueous dispersions of polyesters for forming coatings (¶ 1, 54) where the coatings include a thickener such as polysaccharides (¶ 50, 53). A thickener is a rheology modifier.
It would have been obvious to use a thickener as taught by Kuno because it allows adjusting the viscosity to various processing methods (¶50).
Allowable Subject Matter
Claims 2, 9-11, 13, 16, 18-20 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and any 112 issues are corrected.
Claim 2 requires a specific blend of polycaprolactone and PBS or PBSA, in combination with the limitations of claim 1.
Claims 9-11, 18 recite details of the crosslinking agent. Claims 19-20 depend from claim 18 and thus contain the allowable subject matter.
Claims 13 and 16 recites the amount of the tackifier which is not present in the prior art.
Relevant prior art includes Narutaki (JP 2004-018744), Narutaki (JP 2004/204038), Kuno (JPH 08-295792), and Sugihara (JP 2004-323640).
None of the prior art describe using polycaprolactone with PBS and/or PBSA (claim 2), using the claimed carboxylic acid/aldehyde crosslinking agents or recite the amount of rheology modifier.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT C BOYLE whose telephone number is (571)270-7347. The examiner can normally be reached Monday-Thursday, 10am-4pm.
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/ROBERT C BOYLE/Primary Examiner, Art Unit 1764