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 .
Election/Restrictions
Claim 22 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected method, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 1/24/2024.
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 2-3 and 10-20 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.
Regarding claims 2-3, and 10-19, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claims 10 and 20, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim Rejections - 35 USC § 102
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.
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.
Claim(s) 1, 5-7, 11-17, and 20 is/are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Lanuza (US2018/0128583 A1).
Regarding claim 1, Lanuza discloses an injection moulded biodegradable [0049] component comprising: a) 60 to 99 wt.% of a biodegradable film-grade bioplastic [0051];
and; b) 0 to 40 wt.% of filler comprising a biodegradable polymer and a non-toxic mineral [0052].
Regarding claim 5, Lanuza discloses wherein the biodegradable film-grade bioplastic is of oil, and/or vegetable and/or starch origin [0045].
Regarding claim 6, Lanuza discloses wherein the biodegradable film-grade bioplastic is a polyester [0040].
Regarding claim 7, Lanuza teaches further comprising at least one elastomeric polymer [0039].
Regarding claim 11, Lanuza teaches comprising 5 to 35 wt.% of filler, preferably 10 to 30 wt.% of filler, more preferably 15 to 25 wt.% of filler [0052].
Regarding claims 12-13, Lanuza teaches wherein the filler comprises less than 85 wt.% of the non-toxic mineral, preferably less than 80 wt.%, more preferably less than 75 wt.% [0016]; wherein the filler comprises more than 45 wt.% of the non-toxic mineral, preferably more than 50 wt.%, more preferably more than 55 wt.%, even more preferably more than 60 wt.% [0016].
Regarding claim 14, Lanuza teaches wherein the filler comprises less than 50 wt.% of the biodegradable polymer, preferably less than 45 wt.%, more preferably less than 40 wt.% [0051-0052].
Regarding claim 15, Lanuza teaches wherein the filler comprises more than 15 wt.% of the biodegradable polymer, preferably more than 20 wt.%, more preferably more than 25 wt.%, even more preferably more than 30 wt.% [0049].
Regarding claim 16, Lanuza teaches wherein the non-toxic mineral is a carbonate or salt, preferably an alkali earth metal carbonate or salt, such as calcium carbonate (claim 8).
Regarding claim 17, Lanuza teaches wherein the biodegradable polymer is a thermoplastic polymer, preferably a polyester, preferably selected from polylactic acid (PLA) and/or a Polyhydroxyalkanoate, preferably PLA (claim 10).
Regarding claim 20, Lanuza discloses the injection moulded biodegradable component wherein the component is an ammunition component [abstract].
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.
Claim(s) 2-3 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lanuza (US2018/0128583 A1), as applied to claim 1, in view of Hanley (US2022/0056623 A1).
Regarding claim 2, Lanuza does not explicitly disclose wherein the biodegradable film-grade bioplastic has a tensile strength between 10 and 60 MPa, preferably between 15 and 50 MPa, more preferably 20 and 40 MPa. However, Lanuza’s biodegradable film-grade bioplastic structure is similar to the applicant’s structure and thus, has similar properties. Therefore, the claimed physical properties implicitly would have been achieved by the composite structure as claimed and rendered obvious (MPEP 2112.01(I,II)). If it is the applicant’s position that this would not be the case: (1) evidence would need to be presented to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients, amounts, process steps, and process conditions.
Further, analogous art, Hanley, discloses the strength of biodegradable material [0076] has a strength of 15 MPa to 100 MPa [0083] which overlaps with applicant’s range of 10 and 60 MPa. Therefore, it would have bene obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated a range of 10 and 60 MPa as taught by Hanely since MPEP 2144.05 discloses In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. It would have been obvious to one having ordinary skill in the art to have determined the optimum values of the relevant process parameters through routine experimentation in the absence of a showing of criticality.
Regarding claim 3, Lanuza does not explicitly disclose wherein the biodegradable film-grade bioplastic has a melt flow rate between 0.5 and 10 g/10min, preferably 1 and 9 g/10min, more preferably 2 to 7 g/10min, most preferably 2 to 5 g/10min or the film-grade bioplastic has a melting temperature of between 85 and 150 °C, preferably between 95 and 145 °C, more preferably between 105 and 125 0C. However, Lanuza’s biodegradable film-grade bioplastic structure is similar to the applicant’s structure and thus, has similar properties. Therefore, the claimed physical properties implicitly would have been achieved by the composite structure as claimed and rendered obvious (MPEP 2112.01(I,II)). If it is the applicant’s position that this would not be the case: (1) evidence would need to be presented to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients, amounts, process steps, and process conditions.
Further, analogous art, Hanley, discloses wherein the biodegradable film-grade bioplastic has a melting temperature of between 85 and 150 °C, preferably between 95 and 145 °C, more preferably between 105 and 125 0C [0047]. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated a range of between 85 and 150 °C, preferably between 95 and 145 °C, more preferably between 105 and 125 0C as taught by Hanely since MPEP 2144.05 discloses In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. It would have been obvious to one having ordinary skill in the art to have determined the optimum values of the relevant process parameters through routine experimentation in the absence of a showing of criticality.
Regarding claim 9, Lanuza does not explicitly disclose wherein the biodegradable film-grade bioplastic has a young modulus value between 100 and 300 MPa. However, Lanuza’s biodegradable film-grade bioplastic structure is similar to the applicant’s structure and thus, has similar properties. Therefore, the claimed physical properties implicitly would have been achieved by the composite structure as claimed and rendered obvious (MPEP 2112.01(I,II)). If it is the applicant’s position that this would not be the case: (1) evidence would need to be presented to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients, amounts, process steps, and process conditions.
Further, analogous art, Hanley, discloses wherein the biodegradable film-grade bioplastic he composite material has a tensile strength of 50 MPa or greater, a flexural strength of 50 MPa or greater [0007] which overlaps with applicant’s claim range of 100 and 300 MPA. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated a claim range of 100 and 300 MPA as taught by Hanely since MPEP 2144.05 discloses In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. It would have been obvious to one having ordinary skill in the art to have determined the optimum values of the relevant process parameters through routine experimentation in the absence of a showing of criticality.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lanuza (US2018/0128583 A1), as applied to claim 1, in view of Scheer (US2008/0153940 A1).
Regarding claim 8, Lanuza doesn’t explicitly discloses wherein the biodegradable film-grade bioplastic has an elongation at break value between 250-500%. However, Lanuza’s biodegradable film-grade bioplastic structure is similar to the applicant’s structure and thus, has similar properties. Therefore, the claimed physical properties implicitly would have been achieved by the composite structure as claimed and rendered obvious (MPEP 2112.01(I,II)). If it is the applicant’s position that this would not be the case: (1) evidence would need to be presented to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients, amounts, process steps, and process conditions.
Further, analogous art, Scheer, the biodegradable film-grade bioplastic has an elongation at break value between 284% [0138] which overlaps with applicant’s range of 250-500%. Therefore, it would have bene obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have elongation at break value between 250-500% as taught by Scheer since MPEP 2144.05 discloses In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. It would have been obvious to one having ordinary skill in the art to have determined the optimum values of the relevant process parameters through routine experimentation in the absence of a showing of criticality.
Claim(s) 10 and 18-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lanuza (US2018/0128583 A1), as applied to claim 1, in view of Messina (US2022/0363040 A1).
Regarding claim 10, Lanuza doesn’t explicitly teach wherein the biodegradable film grade bioplastic has a density between 1.0 and 1.5 g/cm3, preferably between 1.15 and 1.35 g/cm3, most preferably between 1.2 and 1.3 g/cm3 such as between 1.23 and 1.29 g/cm3. However, Lanuza’s biodegradable film-grade bioplastic structure is similar to the applicant’s structure and thus, has similar properties. Therefore, the claimed physical properties implicitly would have been achieved by the composite structure as claimed and rendered obvious (MPEP 2112.01(I,II)). If it is the applicant’s position that this would not be the case: (1) evidence would need to be presented to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients, amounts, process steps, and process conditions.
Further, analogous art, Messina, discloses wherein the biodegradable film-grade bioplastic has a density of 1.22 g/cm3 [claim 1] which overlaps with applicant’s claim range of a density between 1.0 and 1.5 g/cm3. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated a claim range of a density between 1.0 and 1.5 g/cm3, as taught by Messina since MPEP 2144.05 discloses In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. It would have been obvious to one having ordinary skill in the art to have determined the optimum values of the relevant process parameters through routine experimentation in the absence of a showing of criticality.
Regarding claim 18, Lanuza does not explicitly teach wherein the filler has a density between 1.7 and 2.3 g/ml, preferably between 1.75 and 2.1 g/ml, more preferably between 1.8 and 2.0 g/m
However, Lanuza’s biodegradable film-grade bioplastic structure is similar to the applicant’s structure and thus, has similar properties. Therefore, the claimed physical properties implicitly would have been achieved by the composite structure as claimed and rendered obvious (MPEP 2112.01(I,II)). If it is the applicant’s position that this would not be the case: (1) evidence would need to be presented to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients, amounts, process steps, and process conditions.
Further, analogous art, Messina, discloses wherein the filler has a density of 1.9 g/cm3 [claim 1] which overlaps with applicant’s claim range of a density between 1.7 and 2.3 g/cm3. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated a claim range of a density between 1.7 and 2.3g/cm3, as taught by Messina since MPEP 2144.05 discloses In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. It would have been obvious to one having ordinary skill in the art to have determined the optimum values of the relevant process parameters through routine experimentation in the absence of a showing of criticality.
Regarding claim 19, Lanuza does not explicitly disclose herein the filler has a melt flow rate between 0.9 and 1.5 g/10 min, preferably between 1.0 and 1.4 g/10 min, most preferably between 1.1 and 1.3 g/ 10 min. However, Lanuza’s biodegradable film-grade bioplastic structure is similar to the applicant’s structure and thus, has similar properties. Therefore, the claimed physical properties implicitly would have been achieved by the composite structure as claimed and rendered obvious (MPEP 2112.01(I,II)). If it is the applicant’s position that this would not be the case: (1) evidence would need to be presented to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients, amounts, process steps, and process conditions.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated a claim range of the filler has a melt flow rate between 0.9 and 1.5 g/10 min, preferably between 1.0 and 1.4 g/10 min, most preferably between 1.1 and 1.3 g/ 10 min, since MPEP 2144.05 discloses In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation (see Messina discloses different melt flow rates [0087, 0090]). It would have been obvious to one having ordinary skill in the art to have determined the optimum values of the relevant process parameters through routine experimentation in the absence of a showing of criticality.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FARAH N TAUFIQ whose telephone number is (571)272-6765. The examiner can normally be reached Monday-Friday: 8:00 am-4:30 pm.
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/FARAH TAUFIQ/ Primary Examiner, Art Unit 1754