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 Interpretation
The construction of claims 2-4 and 14-16 is peculiar insofar as it appears to be Applicants’ intent that the ranges attached to the amounts of polyhydroxyalkanoate and ethylene-vinyl acetate copolymer sum to 100% yet there is a third required component making its own contribution to the total weight of the composition. For the purpose of evaluating the instant invention against the prior art, it has been presumed that the stated quantities of polyhydroxyalkanoate and ethylene-vinyl acetate copolymer in percentage terms are indeed meant to equal 100 so as to define a ratio only between these and the defined amount of the citrate acid ester is reported relative to 100 parts total of the two polymers.
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 1, 13, 18, and the claims dependent therefrom 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.
Claims 1 and 13 both employ the phrase “or similarly functional materials” without anywhere in the original disclosure defining what this may mean in association with each of the polyhydroxyalkanoate, ethylene-vinyl acetate copolymer, and citric acid ester plasticizer. Hence, the full intended scope of the claims cannot be ascertained. It is strongly suggested that Applicant merely remove the problematic phrase.
Claim 7 fails to specify whether the molecular weight indicated is a number averaged- or weight averaged molecular weight.
Regarding claim 19, although the Examiner will concede to “shish-kebab… orientation” apparently being a term of art having appeared in at least a few dozen distinct disclosures, the Examiner nevertheless harbors concerns as to whether or not it is suitably well established as to have a fully recognizable scope by one of ordinary skill in the art. If by, shish-kebab orientation, Applicant simply refers to one where there is less orientation in one of the machine/transverse direction than in the other, than this characterization would seem to be redundant and may be removed. In any case, clarification 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.
Claims 1-8 and 12-17 are rejected under 35 U.S.C. 103 as being unpatentable over Merrill et al., U.S. Patent Application Publication No. 2019/0136045.
Applicant is directed to the abstract where there is disclosed an oriented film comprising a polylactic acid polymer correlated with the claimed polyhydroxyalkanoate, a polyvinyl acetate with a specified glass transition temperature (Tg), and a plasticizer. Notably, the mixture, itself, has a single Tg consistent with the requirements of the claims.
Paragraphs [0177, 0178], Examples 1 to 5, Table 1, and [0189] together summarize the makeup of several exemplifications of the prior art composition from which cast films are produced (and later oriented according to Examples 6-10) including 74 wt.% of the polylactic acid 4032D, 16 wt.% of one of the five distinct polyvinyl acetate copolymers outlined in Table 1, and 10 wt.% of a polymeric ester plasticizer Hallgreen R-8010. Relevant to the present discussion, at least Vinnapas™ B5, and possibly others, in Example 2 of Table 1 is an ethylene-vinyl acetate copolymer, as may be verified from the attached product data sheet. The plasticizer, it is acknowledged, is not a citric acid ester as claims 1 and 13 mandate but this class of plasticizer constitutes one of the other plasticizer types emphasized in the broader disclosure- see [0037]- and it is the position of the Office that an obvious alternative oriented film-forming composition to those set forth in Examples 1 to 5 would be a similarly-constituted composition, but where Hallgreen R-8010 is replaced with a bio-based citric acid ester. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989).
The relative quantities of polyhydroxyalkanoate and ethylene-vinyl acetate copolymer as disclosed in claims 3, 4, 15, and 16 are not satisfied by the aforementioned exemplifications but the broader description at [0023,0032] allows that the total amount of PLA may span a range from 40-90 wt.% and the polyvinyl acetate component a range from 1% to 50% thus overlapping the corresponding ranges of these claims. Suitable quantities of the plasticizer may vary from 1 to 20 wt.% according to [0034]. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior
art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
As for claims 7 and 17, it may be confirmed from the attached article entitled “Effect of Molecular Weight on the Properties and Structure of Biodegradable Polylactic Acid Melt-blown Nonwovens” available at the URL: https://www.researchgate.net/publication/374435028_Effect_of_molecular_weight_on_the_properties_and_structure_of_biodegradable_Poly-lactic_acid_melt-blown_nonwovens
that polylactic acid 4032D has a molecular weight of about 166,000 at page 4.
Regarding claim 8, the product data sheet for Vinnapas™ B5 does not indicate the ethylene content of the copolymer but, on the other hand, [0029] says of the polyvinyl acetate copolymers that a co-monomer will not constitute generally more than 10% of the total thus establishing overlap at least at 10%. It will be further observed that the instant disclosure does not evidence any criticality in the range set forth in claim 8. Also, “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected [the claimed product and a product disclosed in the prior art] to have the same properties.” Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). Therefore, it is the Examiner’s position that other values of ethylene content encompassed within the teachings of paragraph [0029] will likewise render obvious the claimed range.
As for claim 12, nucleants with an average particle size compliant with that claimed are mentioned in [0055].
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.
Claims 1-10 and 12-17 are rejected under 35 U.S.C. 103 as being unpatentable over Whitehouse, U.S. Patent Application Publication No. 2012/0149844 in view of Whitehouse et al., WO 2009/129499.
Whitehouse is directed to polyhydroalkanoate compositions that have been made more impact resistant by the incorporation of a vinyl acetate homo/copolymer. The compositions are useful in the manufacture of films for various packaging applications [0148] and it is advantageous to anneal the films to impart further puncture/tear resistance according to [0154]. The makeup of exemplary compositions is summarized in Table 1. VINNEX®LL2510 is characterized in [0165] as being a vinyl acetate/ ethylene copolymer and is added in quantities in at least Example 4 anticipatory of claims 3, 4, 15, and 16. (It follows that the amount of polyhydroxyalkanoate is, likewise, anticipated.)
The exemplified compositions also contain a nucleant (claim 12) added as a masterbatch. Whereas the Examples are devoid of a citric acid ester compound, it is noted that one other way of introducing the nucleant component contemplated in [0129] is to formulate a dispersion of said nucleant in acetylcitrate tributyrate, offered commercially as Citroflex® A-4, by milling it so that dispersed nucleant particles with a particle size of less than 5 microns are prepared. A desired concentration of the nucleant in plasticizer is not revealed but [0133] says the wet-milled nucleant dispersions are made according to the teachings of WO 2009/129499. Example 2 of that reference says that 33% w/w dispersions are prepared as was true of the masterbatches in the Examples of the primary reference. See [0177]. Hence, it would be obvious to use amounts of the dispersed nucleant comparable to those indicated when formulating as a masterbatch. In the tables, the amount of masterbatch is varied between 1.8 and 3 parts. If the same amount of a nucleant dispersion is added, there would be between .67(1.8) and 0.67(3), or 1.2 to 2 wt.%, of the aforementioned citric acid ester compound. According to an attached product data sheet available at the URL:
https://www.products.palmerholland.com/products/citroflex-a-4
Citroflex® A-4 is a bio-based material thus satisfying claim 6.
As for claims 7 and 17, the molecular weight of the polyhydroalkanoate (PHA) employed in the examples is not divulged but [0109] indicates a preference for PHA with a Mw of between 100,000 and 700,000 g/mol.
Concerning claim 9, P3HB-4HB is shorthand for poly(3-hydroxybutyrate-co-4-hydroxybutyrate). As for claim 10, peroxide branching agents are contemplated in [0113] and formulations containing a peroxide in corresponding quantities are summarized in Table 4, Examples 27 and 30. Acrylic crosslinking agents anticipatory of the so-called co-agents are delineated in [0118].
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Whitehouse, U.S. Patent Application Publication No. 2012/0149844 in view of Whitehouse et al., WO 2009/129499 as applied to claims 1-9 and 12-17 above, and further in view of the article entitled “Moisture Absorption Beahvior and its Impact on the Mechanical Properties of Celluolose Whisker-based Polyvinylacetate Nanocomposites” authored by Mathew et al., and publish in Polymer Engineering and Science (2011) pr 2136-2142.
Whitehouse is not forthcoming as to the vinyl acetate content of VINNEX®LL2510 but Mathew at Table 1 and page 2137 under the heading EXPERIMENTAL states that this product has an ethylene content of 13%. Accordingly, the vinyl acetate content will be 87%. (As an aside, the Examiner appreciates the seeming contradiction in Mathew characterizing this product as a homopolymer. To the extent that it also articulates an ethylene content, and because Whitehouse identifies the commercial product as an ethylene copolymer, this contradiction will be attributed to typographical error.)
Allowable Subject Matter
Claim 18-19, 22, and 23 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims. Merrill mentioned generically heating operations that may precede and follow the orienting steps but they are described in sufficiently vague terms as to not make clear that annealing will have occurred.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARC S ZIMMER whose telephone number is (571)272-1096. The examiner can normally be reached M-F 8:30-5:00.
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February 19, 2026
/MARC S ZIMMER/Primary Patent Examiner, Art Unit 1765