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.
3. Claim 1 has been amended and claims 1-4 are pending as amended on 05/21/26.
4. The new ground of rejection set forth below for claims are necessitated by Applicant's amendment filed on 05/21/26. In particular, claim 1 has been amended to change recitation “a content of the polymer A is 51 to 99.9 parts by mass and a content of the polymer B is 0.1 to 49 parts by mass with respect to a total of 100 parts by mass of the polymer A” to “a content of the polymer A is 60 to 99.9 parts by mass and a content of the polymer B is 0.1 to 40 parts by mass with respect to a total of 100 parts by mass of the polymer A.” Now, the scope of independent claim 1 and the claims depends from claim 1 are changed. For this reason, the present action is properly made final.
5. Any rejections and/or objections made in the previous Office action and not repeated below are hereby withdrawn.
6. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Priority
7. This application is a 371 of PCT/JP2022/005457 02/10/2022.
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 JAPAN 2021-021543 02/15/2021 filed on 08/10/23.
Information Disclosure Statement
8. The information disclosure statement (IDS) submitted on 03/20/26 was filed after the mailing date of the non-final Office action on 02/26/26. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Response to Amendment
9. Applicant's amendment filed on 05/21/26, has been fully considered and entered.
Response to Arguments
10. Applicant's arguments with respect to rejection of claims 1-4 under 35 U.S.C. 102(a)(1) as being anticipated by Pachekosk (W. M. Pachekosk et al, Thermal, Mechanical and Morphological Properties of Poly (Hydroxybutyrate) and Polypropylene Blends After Processing, Materials Research, Vol. 12, No. 2, 159-164, 2009) as evidenced from Alves (M. I. Alves et al, Poly(3-hydroxybutyrate)-P(3HB): Review of Production Process Technology, Industrial Biotechnology, Vol. 13, No. 4, 192-208, 2017) filed on 05/21/26, have been fully considered but are moot in view of amendment. Previous rejections have been withdrawn.
11. Applicants arguments regarding double patent rejection has been noted.
However, filing of a terminal disclaimer cannot be held in abeyance since that filing "is
necessary for further consideration of the rejection of the claims" MPEP 804 (I) (B) (1).
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 1-4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3 of copending Application No. 18/580687. Although the claims at issue are not identical, they are not patentably distinct from each other because both claimed inventions are directed to a composition comprising olefin based polymer and poly(3-hydroxyalkanoate) based polymer, wherein copending claim additionally discloses polymer B-2 and the entire composition is a resin composition. Regarding instant claims 1-2, the copending claim 1 discloses a composition comprising an olefin based polymer A, and poly(3-hydroxyalkanoate) based polymer (read on polymer B), wherein content of the olefin-based polymer is 70 to 95 parts by mass, a content of the poly(3-hydroxyalkanoate) based polymer is 1 to 15 parts by mass, fall into instant claim 1 range of a content of the polymer A is 60 to 99.9 parts by mass and a content of the polymer B is 0.1 to 40 parts by mass or claim 2 range of a content of the polymer A is 60.1 to 99.9 parts by mass and a content of the polymer B is 0.1 to 39.9 parts by mass, wherein the melting point of poly(3-hydroxyalkanoate) based polymer is 150 to 220 °C.
Regarding instant claims 3-4, the copending claim 3 discloses a polypropylene homopolymer.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by
Sadi (R. K. Sadi et al, Compatibilization of polypropylene/poly(3-hydroxybutyrate) blends, Journal of Applied Polymer Science, 2012, 123, 3511-3519).
Regarding claims 1-4, Sadi discloses a composition comprising a blend of polyhydroxybutyrate (PHB) and polypropylene (PP) in the amount of PP/PHB= 80/20, wherein the melting point of polyhydroxybutyrate (PHB) is 175 °C (page 3512, column 2, lines 28-29, table I), fall into claim 1 range of a content of the polymer A is 60 to 99.9 parts by mass and a content of the polymer B is 0.1 to 40 parts by mass with respect to a total of 100 parts by mass of the polymer A and the polymer B or claim 2 range of a content of the polymer A is 60.1 to 99.9 parts by mass and a content of the polymer B is 0.1 to 39.9 parts by mass with respect to a total of 100 parts by mass of the polymer A and the polymer B, wherein the polymer B is a poly (3-hydroxyalkanoate)-based polymer having a melting point of 150 °C or higher, and wherein polymer A is olefin-based polypropylene, meeting the requirements of claims 1-4
Conclusion
References Inoac Corp (JP 2008239858) and Kaneka Corp (JP 200677063) were cumulative in nature to the above rejection and thus not set forth.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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