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 .
Information Disclosure Statement
The information disclosure statements (IDS) submitted on January 29, 2024, February 26, 2025, July 10, 2025 and October 10, 2026 were considered by the examiner.
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.
Claims 1, 10-12, 17-19, 21 and 22 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by US 2024/0165936 (Zimmer et al.).
Regarding claim 1, Zimmer discloses a biodegradable multilayer (compostable) film, which comprises a substrate layer (2) and a biodegradable resin layer (5) (see paragraphs 0025, 0055 (where compostable PHA is discussed) and 0067-0068, Figure 1), wherein the biodegradable resin layer comprises a polyhydroxyalkanoate (PHA) resin including PHA (see paragraphs 0025 and 0055), the biodegradable resin layer has a heat-sealing strength of between 0.5 and 1.02 kgf/15 mm (5 and 10 N/15 mm) (see paragraph 0038), which is within the claimed range of 0.5 to 15 kgf/15 mm, and the biodegradable multilayer film has a water vapor transmission rate of 1.0 to 0.1 g/m2-atm-day (see paragraph 0025), which is within the claimed range of 3 g/m2-atm-day or less, and an oxygen transmission rate of between 1.0 to 0.1 cc/m2-atm-day (see paragraph 0025), which is within the claimed range of 10 cc/m2-atm-day of less.
Regarding claim 10, Zimmer also discloses that the biodegradable multilayer film may further comprise an adhesive layer (7), the adhesive layer comprising acrylic or urethan based resins (see paragraph 0071).
Regarding claim 11, Zimmer also discloses that the biodegradable multilayer film further comprises at least one polymer resin such as polybutylene terephthalate (PBAT), polylactic acid (PLA) polybutene succinate (PBS), polybutylene succinate-adipate (PBSA), or polyethylene (PE) (see paragraph 0025 where it is stated the resin layer (5) may comprises at least one layer of the above, and an additional polyethylene layer).
Regarding claim 12, Zimmer also discloses that the biodegradable resin layer may additionally comprise a mineral filler (see paragraph 0025), as recited in the claim.
Regarding claims 17-19 and 21, Zimmer does not specifically state that the biodegradable multilayer film is prepared by melt-extruding the PHA resin on the substrate layer including all the claimed steps; however, the patentability of a product does not depend on its method of production, but on the product itself (see MPEP 2113). The claimed multilayer film does not include any structural feature differentiating it from the multilayer film disclosed by Zimmer.
Regarding claim 22, Zimmer also discloses an environmentally friendly packaging material comprising the biodegradable multilayer film of claim 1 (see paragraph 0001).
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.
Claims 1, 10-12, 17-19, 21 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over US 2022/0161980 (Park et al.) in view of US 2016/0257098 (Nissenbaum et al.).
Regarding claim 1, Park discloses a biodegradable multilayer film, which comprises a substrate layer (paper layer 11) and a biodegradable resin layer (film layer 12) (see paragraphs 0030 and 0034),
Wherein the biodegradable resin layer comprises PHA resin including PHA, the biodegradable resin layer has a heat sealing strength of 2 kgf/15 mm (see paragraph 0011), which is within the claimed range of 0.5 to 15 kgf/15 mm, and
a biodegradable multilayer film has a water vapor transmission rate of 0.01-1 g (cc)/m2-atm-day (see abstract), which is within the claimed range of 3 g/m2-atm-day or less and an oxygen transmission rate of .01-1 g (cc)/m2-atm-day (see abstract), which is within the claimed range of 10 cc/m2-atm-day or less.
The Park reference refers to PHA as polyhydroxyaldehyde (see paragraph 0009), which the examiner acknowledges as different from the claimed polyhydroxyalkanoate; however, the polyhydroxyaldehyde PHA of Park is discussed amongst other known biodegradable films such as PBAT, PBS, PHA, and PCL, which are known to be used as alternatives to polyhydroxyalkanoate in the biodegradable film technology (see Nissenbaum paragraph 0012). It therefore would have been obvious to one having ordinary skill in the art before the effective filing date to use polyhydroxyalkanoate (PHA) as the PHA biodegradable film layer of Park.
Regarding claim 10, Park also discloses that the biodegradable multilayer film further comprises an adhesive layer, and the adhesive layer may include polyvinyl alcohol (PVA), ethylene vinyl acetate (EVA), or acrylic resins (see paragraphs 0014-0015).
Regarding claim 11, Park also discloses that the biodegradable multilayer film may further comprise at least one polymer resin layer that comprises at least one of polybutylene adipate terephthalate (PBAT), polylactic acid (PLA), polybutylene succinate (PBS), thermoplastic starch (TPS), or polypropylene (PP) (see paragraph 0034 where it is explained that the film layer may be a mixture of at least two of the above).
Regarding claim 12, Park also discloses that the biodegradable resin layer further comprises at least one biodegradable resin selected from polybutylene adipate terephthalate (PBAT), polylactic acid (PLA), polybutylene succinate (PBS), or thermoplastic starch (TPS), (see paragraph 0034 where it is explained that the film layer may be a mixture of at least two of the above).
Regarding claim 17-19 and 21, Park does not specifically state that the biodegradable multilayer film is prepared by melt-extruding the PHA resin on the substrate layer including all the claimed steps; however, the patentability of a product does not depend on its method of production, but on the product itself (see MPEP 2113). The claimed multilayer film does not include any structural feature differentiating it from the multilayer film disclosed by Park.
Regarding claim 22, Park also discloses an environmentally friendly packaging material, which comprises the biodegradable multilayer film of claim 1 (see paragraph 0001).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over US 2024/0165936 (Zimmer et al.).
Regarding claim 2, Zimmer discloses a biodegradable multilayer (compostable) film as discussed above. The biodegradable multilayer film disclosed by Zimmer further comprises a barrier layer of an ethylene vinyl alcohol resin (3) (see paragraphs 0025, 0067-0070, and 0076 Figure 1), and
The biodegradable multilayer film has a thickness of around 70.05 micrometers (see paragraphs 0066-0070 and 0081 where 60 micrometers (paper layer (6)) + 5 micrometer (PHA coating layer (5)) + 0.05 micrometer (50 nm metallic layer (4)) + 5 micrometers (EVOH layer (3)) = 70.05 micrometers), which is within the claimed range of 30 to 350 micrometers, the barrier layer (EVOH (3)) accounts for around 7% (5 micrometers/70.05 micrometers * 100 = 7%) of the thickness of the biodegradable multilayer film, which is within the claimed range of 10% or less.
In the discussed embodiment it is disclosed that the thickness of the biodegradable resin layer (5) (PHA) and the barrier layer (layers 3 and 4) are both around 5 micrometers (see paragraphs 0066-0070); however, Zimmer teaches that the biodegradable resin layer and the EVOH barrier layer may range from 2 to 8 micrometers (see paragraph 0043), with no requirement that they are the same thickness. Thus, it would have been obvious to one having ordinary skill in the art before the effective filing date that an embodiment is possible where the thickness of the barrier layer is half or less than the thickness of the biodegradable resin layer, yielding a thickness ratio of the biodegradable resin layer and the barrier layer within the range of 1:0.1 to 0.5. The reference further states that an extremely thin layer on the order of 1 to 10 micrometers is desired for the barrier layer and provides excellent barrier properties and flexibility (see paragraph 0076), which would further motivate one having ordinary skill in the art to make the barrier layer as thin as possible.
Claims 3-5, 7, 8 and 23-27 are rejected under 35 U.S.C. 103 as being unpatentable over US 2024/0165936 (Zimmer et al.) in view of WO 2013/184822 (Krishnaswamy et al.), of record.
Zimmer discloses a biodegradable (compostable) multilayer film as discussed above.
Regarding claim 3, Zimmer does not state that the PHA resin comprises a polyhydroxyalkanoate copolymer resin comprising a 4-hydroxybuyrate (4-HB) repeat unit in an amount of 0.1 to 60% by weight based on a total weight of the polyhydroxyalkanoate copolymer resin; however, Krishnaswamy teaches that utilizing a PHA resin comprising a 4-hydroxybutyrate (4-HB) repeat unit in an amount of 25 to 50% by weight provides a renewable resource for biodegradable thermoplastic laminates with improved properties without making noise when handled (see paragraphs 0009, 0012 and 0068). It would have been obvious to one having ordinary skill in the art before the effective filing date to use 4-hydroxybutyrate as the Zimmer PHA in an amount of 25 to 50% by weight, which is within the claimed range of 0.1 to 60% by weight, in order to achieve improved properties as taught by Krishnaswamy.
Regarding claim 4, Zimmer in view of Krishnaswamy discloses a multilayer film as discussed above. Zimmer also discloses that the biodegradable resin layer comprises at least one layer of a polymer coating of PHA (see paragraph 0025), thus a configuration having a first resin layer and a second resin layer is envisaged. Zimmer also discloses that the heat-sealing strength between each layer is above between 0.5 and 1.02 kgf/15 mm (5 and 10 N/15 mm) (see paragraph 0038), which is within the claimed range of 0.5 to 15 kgf/15 mm, and overlaps the claimed ranges of 1 to 15 kgf/15 mm and 1 to 12 kgf/15 mm. 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).
Zimmer does not state that the first resin layer is a first PHA resin comprising a 4-hydroxybutyrate (4-HB) repeat unit, and the second resin layer comprises a second PHA resin comprising a 4-hydroxybutyrate (4-HB) repeat unit, wherein the first PHA resin and the second PHA resin are different from each other in terms of the content of a 4-HB repeat unit; however, Krishnaswamy teaches multilayer films formed from PHA resins comprising a 4-hydroxybutyrate (4-HB) which may have different layers of varying compositions (see paragraph 0153). Krishnaswamy discloses PHA resin composition embodiments having 4-hydroxybutyrate (4-HB) repeat units in amounts of 25 to 50% by weight (see paragraphs 0012 and 0084), and other embodiments with 4-hydroxybutyrate (4-HB) repeat units in amounts of 3 to 15% by weight (see paragraph 0078), which are within the claimed ranges of 15 to 60% by weight and 0.1 to 15% by weight. Based on the teaching that compositions described may be processed into multilayer films having varying compositions (see paragraph 0153), and that such multilayer films by weight provides a renewable resource for biodegradable thermoplastic laminates with improved properties without making noise when handled (see paragraphs 0009, 0012 and 0068), one having ordinary skill in the art before the effective filing date would have been motivated to produce a multilayer film having 4-HB repeat units within the claimed ranges that include a 4-HB content differing from each other.
Krishnaswamy also states that the stacked films may have the same or varying thicknesses (see paragraph 0153). An embodiment where the films are the same thickness would have a thickness ratio of 1:1, which is within the claimed range of 1:0.5 to 1.5.
Regarding claim 5, Zimmer in view of Krishnaswamy discloses a multilayer film as discussed above. Krishnaswamy also discloses that the first and second PHA resin have a glass transition temperature of -50° C to -15° C, which overlaps the claimed ranges of -45° C to -10° C and -30° to 80° C (see paragraph 0025). 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).
Krishnaswamy further teaches that the higher the content of 4-HB, the lower the glass transition temperature (see paragraph 0044). Providing a multilayer film with varying compositions containing different amounts of 4-HB as taught in the reference (see paragraph 0153), would produce a configuration where the glass transition temperature of the first PHA resin and the glass transition temperature of the second PHA resin are different from each other.
Regarding claim 7, Zimmer also discloses that the biodegradable multilayer film comprises a structure of substrate layer(2)/barrier layer(3+4)/first resin layer(5)/second resin layer(5) (see Figure 1 and paragraph 0025, where at least one layer for the polymer coating of PHA is discussed).
Regarding claim 8, Zimmer also discloses that the substrate layer (2) comprises polyethylene (see paragraph 0065).
Regarding claim 23, Zimmer in view of Krishnaswamy discloses a biodegradable multilayer film as discussed above. Krishnaswamy also discloses using a polyhydroxyalkanoate copolymer resin comprising a 3-hydroxybutyrate (3-HB) repeat unit as the PHA resin (see paragraphs 0009, 0012 and 0068).
Regarding claim 24, Zimmer in view of Krishnaswamy discloses a biodegradable multilayer film as discussed above. Krishnaswamy also discloses using a polyhydroxyalkanoate copolymer resin comprising a 4-hydroxybutyrate (4-HB) repeat unit as the PHA resin (see paragraphs 0009, 0012 and 0068).
Regarding claim 25, Zimmer in view of Krishnaswamy discloses a biodegradable multilayer film as discussed above. Krishnaswamy also discloses using a polyhydroxyalkanoate copolymer resin comprising a 4-hydroxybutyrate (4-HB) and 3-hydroxybutyrate (3-HB) repeat unit as the PHA resin (see paragraphs 0009, 0012 and 0068).
Regarding claim 26, Zimmer in view of Krishnaswamy discloses a biodegradable multilayer film as discussed above. Krishnaswamy also discloses using a polyhydroxyalkanoate copolymer resin comprising a 3-hydroxybutyrate (3-HB) repeat unit as the PHA resin, in an amount of 35% to 75% by weight (see paragraphs 0009, 0012, 0014 and 0068), which is within the claimed range of 20% by weight or more and 99% weight or less.
Regarding claim 27, Zimmer in view of Krishnaswamy discloses a biodegradable multilayer film as discussed above. Krishnaswamy also discloses that the resin layer comprises a first resin layer and a second resin layer, wherein
the first resin layer comprises a first PHA resin comprising a polyhydroxyalkanoate copolymer resin comprising a 3-hydroxybutyrate (3-HB) repeat unit as the PHA resin (see paragraphs 0009, 0012 and 0068),
And the second resin layer comprises a second PHA resin comprising a polyhydroxyalkanoate copolymer resin comprising a 3-hydroxybutyrate (3-HB) repeat unit as the PHA resin (see paragraphs 0009, 0012, 0068 and 0153).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WENDY L BOSS whose telephone number is (571)272-7466. The examiner can normally be reached 8:30-6:30.
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/WENDY L BOSS/Examiner, Art Unit 1749
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