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 .
The lined out IDS items were not provided.
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 1-10 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 1’s “substantially consists only” is indefinite as “substantially” and “consists only” are inconsistent.
Claim 5,6,9 and 10’s “changing a content portion” is not understood and is inconsistent with the teachings of the specification. These claims would require first obtaining a 3HB/3HH copolymer, then in a second step altering the relative amounts of each comonomer. This would require: (1) somehow removing of at least one of the comonomers from the previously prepared copolymer or (2) adding additional monomer to the previously prepared copolymer. Applicant provides no explanation how to extract some comonomer from a previously prepared copolymer. Nor does the specification appear to support polymerizing additional monomer onto the terminal(s) of the previously prepared copolymer. Applicant simply chooses a relative amount of each comonomer and produces a copolymer. Other examples utilize different comonomer ratios. Separately prepared examples of different comonomer ratios and therefore different properties does not qualify as “changing a content portion” of a copolymer.
It is unclear what activity a potential infringer would need perform to infringe these process claims.
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 2 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. The claim does not limit claim 1 as claim must also be a copolymer. 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 § 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3,5,7 and 9 rejected under 35 U.S.C. 102(a)(2) as being anticipated by Hashiguchi 2023/0091624.
Hashiguchi exemplifies (paragraph 84) a copolymer of polyhydroxybutyrate-co-3-hydroxyhexanoate. Hashiguchi (paragraph 114-116) then uses a solution of this copolymer to adhere sheets of paper together.
In regards to applicant’s dependent claims:
Hashiguchi (table 1) reports the varying adhesion strength of different polyhydroxybutyrate-co-3-hydroxyhexanoate copolymers having different monomeric ratios. This meets applicant’s claims 5 and 9.
Claims 1-4,7 and 8 rejected under 35 U.S.C. 102(a)(1) as being anticipated by Whitehouse 2006/0247390.
Whitehouse claims (#56) a hot melt adhesive of polyhydroxybutyrate-co-3-hydroxyhexanoate. Although there are six possible polymers listed, the few number of choices render each as anticipated. See MPEP2131.02
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 1-4,7 and 8 rejected under 35 U.S.C. 103 as being unpatentable over Whitehouse 2006/0247390.
Whitehouse applies as explained above.
Although no example of Whitehouse meets applicant’s claim, the copolymer is clearly suggested – rendering obvious applicant’s claims.
Claims 5,6,9 and 10 rejected under 35 U.S.C. 103 as being unpatentable over Whitehouse 2006/0247390 in view of Shotani 5292860.
Whitehouse applies as explained above.
Whitehouse does not clearly teach changing the polyhydroxybutyrate-co-3-hydroxyhexanoate monomer ratio, although hints at changing the copolymer’s properties through changing the monomer composition used (paragraph 91). Whitehouse (paragraph 75) points the reader to Shiotani 5292860 for details in making the polyhydroxybutyrate-co-3-hydroxyhexanoate copolymer.
Shiotani exemplifies various HB/HH ratios (eg example 1-12). Shiotani (col 9 line 43-46) teaches varying properties of the copolymer by adjusting the monomer composition to be polymerized.
It would have been obvious to one of ordinary skill practicing Whitehouse’s invention to make various different polyhydroxybutyrate-co-3-hydroxyhexanoate copolymers of different ratios in order to change the properties of the copolymer.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID J BUTTNER whose telephone number is (571)272-1084. The examiner can normally be reached M-F 9-3pm.
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/DAVID J BUTTNER/Primary Examiner, Art Unit 1765 7/13/26
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