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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Objections
Claims 36 and 40 objected to because of the following informalities:
Claim 36 recites “to50000:1” in line 4. This should read “to 50000:1.”
Claim 40 recites “to10” in line 2. This should read “to 10.”
Appropriate correction is required.
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.
Claim 29 is 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 29 recites the limitation "the nanoparticles" in line 3 and line 6. There is insufficient antecedent basis for this limitation in the claim. For the purpose of further examination, claim 28 is taken to read on claim 28.
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 27-29 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Pomestchenko et al (US 2018/0208762 A1), as evidenced by Doi (US 7276361 B2).
Pomestchenko teaches a modification method for polyhydroxyalkanoate (preparing electrically conductive composite), wherein the method comprises preparing a PHA liquid phase dispersion, preparing a nanoparticle liquid phase dispersion, and adding the NP dispersion into the PHA dispersion (para. 0119-0127). Pomestchenko further teaches that the PHA is produced in a bacterial fermentation broth (para. 0041). Although Pomestchenko does not explicitly teach the wall-breaking of the bacteria, Pomestchenko teaches that the process of Doi may be used. Doi teaches that the process of producing PHA includes a wall-breaking step of bacterial cells (col. 9, lines 24-32).
Claims 30-31, 34-35, 40-41, and 46 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Martinez-Sanz et al (Characterization of polyhydroxyalkanoates synthesized from microbial mixed cultures and of their nanobiocomposites with bacterial cellulose nanowhiskers, 25 June 2014, New Biotechnology, Vol. 31, p.364-376).
Regarding Claim 30: Martinez-Sanz teaches a method of modifying a polyhydroxyalkanoate (p.364, Abstract), comprising dispersing nanoparticles (bacterial cellulose nanowhiskers) into a liquid phase (chloroform) to form a nanoparticle liquid phase dispersion, and subsequently dispersing the polyhydroxyalkanoate into the nanoparticle liquid dispersion (p.366, Preparation of films).
Regarding Claim 31: Martinez-Sanz teaches the ratio of PHA to nanoparticle is from 33.3:1-99:1 (p.366, Preparation of films, 1wt% and 3wt% BCNW).
Regarding Claim 40: Martinez-Sanz teaches the dispersion is performed once (p.366, Preparation of films).
Regarding Claim 41: Martinez-Sanz teaches PHBV (p.366, col. 1, para. 3).
Regarding Claim 46: Martinez-Sanz teaches a modified PHA made by the above method (p.366, Preparation of films).
Regarding Claims 34-35: Because Martinez-Sanz teaches dispersing the PHA directly into the NP liquid phase, these claims are considered optional.
Claims 32-33 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Martinez-Sanz et al (Characterization of polyhydroxyalkanoates synthesized from microbial mixed cultures and of their nanobiocomposites with bacterial cellulose nanowhiskers, 25 June 2014, New Biotechnology, Vol. 31, p.364-376), as evidenced by PubChem (Compound: Chloroform, 16 Sep 2004).
Regarding Claim 32: Martinez-Sanz teaches a solids content of 5% w/v of PHA+nanoparticle in chloroform, wherein the nanoparticle is present at 1 and 3 wt% in the solids content (p.366, Preparation of films). Based on calculations, the nanoparticles are present at 0.05 and 0.15% w/v in chloroform. PubChem teaches that the density of chloroform is approximately 1.48 g/cm3 (Section 3.2.9). Based on this, the nanoparticles are present at 0.034 and 0.101 parts by mass, based on 100 parts by mass of the chloroform.
Regarding Claim 33: Martinez-Sanz teaches a solids content of 5% w/v of PHA+nanoparticle in chloroform, wherein the PHA is present at 97 and 99wt% in the solids content (p.366, Preparation of films, 1 and 3 wt% BCNW). Based on calculations, the PHA is present at 4.85 and 4.95% w/v in chloroform. PubChem teaches that the density of chloroform is approximately 1.48 g/cm3 (Section 3.2.9). Based on this, the PHA is present at about 3.3 parts by mass, based on 100 parts by mass of the NP liquid phase environment.
Claims 30, 40-41, 43, and 45-46 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Pomestchenko et al (US 2018/0208762 A1).
Regarding Claim 30: Pomestchenko teaches a modification method for polyhydroxyalkanoate (preparing electrically conductive composite), wherein the method comprises preparing a PHA liquid phase dispersion, preparing a nanoparticle/particulate nanoscopic filler liquid phase dispersion, and adding the NP dispersion into the PHA dispersion (para. 0119-0127).
Regarding Claim 31: Pomestchenko teaches 75-80wt% of the PHA polymer, 8-13wt% of an electrically conductive component such as a carbon nanofiber or graphene nanoplatelet, and 1-5wt% of a further nanoscopic particulate filler (para. 0114). Based on calculations, the ratio of the PHA to the nanoparticles is from 4.2:1-8.9:1. This is considered to teach the claimed range with sufficient specificity to constitute a case of anticipation. MPEP 2131.03(II).
Regarding Claim 40: Pomestchenko teaches the dispersion is performed once (para. 0119-0127).
Regarding Claim 41: Pomestchenko teaches PHB and PHBV (para. 0041).
Regarding Claims 43 and 45: Pomestchenko teaches adding an auxiliary agent such as a plasticizer and a thermal stabilizer (para. 0120).
Regarding Claim 46: Pomestchenko teaches a modified PHA obtained by the above method (para. 0119-0127).
Claim Rejections - 35 USC § 103
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 36-39 are rejected under 35 U.S.C. 103 as being unpatentable over Pomestchenko et al (US 2018/0208762 A1).
Regarding Claims 36-38: Pomestchenko teaches the limitations of claim 30, as set forth above. Pomestchenko further teaches 5-15wt% of nano non-oxides such as carbon nanofibers/nanotubes or graphene and 1-5wt% of at least one second nanoscopic filler (para. 0114) such as titanium dioxide (para. 0113), wherein the carbon nanotubes have an average diameter of 20-150nm and an average length of 3-100µm (para. 0050). Based on calculations, the length/diameter ratio of the carbon nanotubes is from 20:1-5,000:1. The ratio of the first nanoparticle to the second nanoparticle is from 1:1-15:1. This overlaps the claimed range. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05 (I). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use an overlapping ratio of the first and second nanoparticles, and they would have been motivated to do so to balance electrical and reinforcement properties.
Regarding Claim 39: Pomestchenko teaches that the at least one nanoscopic filler may further include calcium carbonate and/or boron nitride (para. 0071).
Claims 42 and 44 are rejected under 35 U.S.C. 103 as being unpatentable over Pomestchenko et al (US 2018/0208762 A1) in view of Nishiyama et al (US 2021/0054191 A1).
Regarding Claim 42: Pomestchenko teaches the limitations of claim 30. Pomestchenko further teaches that the liquid phase environment comprises acetone or ethanol (para. 0073). However, Pomestchenko is silent to the pH of the liquid phase environment.
Nishiyama teaches a PHA dispersion in an aqueous solvent such as acetone or ethanol, wherein the pH of the dispersion is 4.0-9.0, which allows for improved dispersibility of the PHA (para. 0040-0042). Nishiyama and Pomestchenko are analogous art because they are directed toward the same field of endeavor, namely PHA dispersions. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the pH of the liquid phase environment taught by Pomestchenko into the range of 4.0-9.0 in order to improve the dispersibility of the PHA.
Regarding Claim 44: Pomestchenko teaches the limitations of claim 43, as set forth above. Pomestchenko further teaches a dispersant (para. 0114. However, Pomestchenko is silent to the dispersant being an organic acid or an organic acid salt.
Nishiyama teaches a surfactant/dispersant that is an organic acid salt (sodium oleate), which is preferable in terms of price, amount needed, and addition effect (para. 0043). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add a sodium oleate dispersant to the dispersion of Pomestchenko because it is a cost-effective and highly effective dispersant.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAITLIN N ILLING whose telephone number is (571)270-1940. The examiner can normally be reached Monday-Friday 8AM-4PM.
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/C.N.I./Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767
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