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 .
Election/Restrictions
Claims 10-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 7/2/2026.
Applicant’s election without traverse of Group I (claims 1-9 and 15-17) in the reply filed on 7/2/2026 is acknowledged.
Claim Rejections - 35 USC § 102/103
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.
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 of this title, 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 1-7, 15, and 17 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Hu (CN 111378105, machine translation).
With respect to claims 1-4, 7, and 15, Hu discloses a composite for use in film bags (paragraph 0023) comprising biodegradable poly(butylene adipate-co-terephthalate), i.e., derived from butanediol and adipic and terephthalic acids, which has a narrow molecular weight distribution (polydispersity index) and low terminal carboxylic group (abstract, paragraph 0004). Exemplified poly(butylene adipate-co-terephthalates) include 5 mol % terephthalic acid and 5 mol % adipic acid, i.e., equimolar (paragraph 0059). In the table of the Chinese-language document on page 5, exemplified poly(butylene adipate-co-terephthalates) have a PDI (polydispersity index) of less than 2, a molecular weight of at least 84,600 g/mol, and COOH terminal (paragraph 0031) of up to 32 mol/t.
Hu fails to disclose the weight reduction rate at 220°C of 1.3% or less, however, based on Applicant’s own data from the specification as originally filed, such a property is dependent on the composition of the polymer as well as the molecular weight and polydispersity. Therefore, Hu inherently meets the presently claimed weight reduction rate as such a property is evidently dependent upon the nature of the composition used. Case law holds that a material and its properties are inseparable. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Alternatively, Hu teaches that the poly(butylene adipate-co-terephthalate) is maintained at a temperature of 240-265°C for 60-240 mins in order to obtain a polymer melt to form granules (paragraph 0020), which strongly suggests that the poly(butylene adipate-co-terephthalate) is thermally stable at 220°C (and at 180°C and 240°C for claims 2 and 3).
Therefore, it would have been obvious to one of ordinary skill in the art to expect or prepare a poly(butylene adipate-co-terephthalate) having claimed weight reduction rate which is representative of thermal stability.
With respect to claims 5 and 6, Hu fails to disclose the particles size of the terephthalic acid and adipic acid. Even so, such limitations are part of an inherent process limitations in a product claim because when the terephthalic acid and adipic acid react to form the polyester, the particle sizes would no longer present in Hu’s polyester. Case law holds that “even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Alternatively, in the event any differences can be shown for the product of the product-by-process claims as opposed to the product taught by Hu, such differences would have been obvious to one of ordinary skill in the art as a routine modification of the product in the absence of a showing of unexpected results.
With respect to clam 17, in the examples, films are made directly from the thermoplastic poly(butylene adipate-co-terephthalate) (paragraphs 0058-0062). Therefore, the intrinsic viscosity of the poly(butylene adipate-co-terephthalate) is inherently the same as a film prepared from the poly(butylene adipate-co-terephthalate).
Claim Rejections - 35 USC § 103
Claims 8, 9, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Hu (CN 111378105, machine translation)
The discussion with respect to Hu in paragraph 4 above is incorporated here by reference.
With respect to claim 8, Hu fails to describe that the poly(butylene adipate-co-terephthalate) is a block copolymer or even an alternating copolymer.
Because Hu does not describe a specific repeating unit order such as an alternating order and teaches that the dicarboxylic acids are added in a mixture, it clearly suggests a random copolymer. A random copolymer is expected to have both duplicate repeat units that would provide for blocks as well as alternating comonomers.
Therefore, it would have been obvious to one of ordinary skill in the art to utilize a block polyester copolymer.
With respect to claim 9, while Hu fails to explicitly disclose the average particle size or particle size deviation, Hu teaches that a nanobiomass carrier derived from cellulosic materials such as bagasse, surgarcane, corn, and cotton has a particle size of 50-300 nm (paragraph 0014). Example 1 is prepared from crushed corn-cob powder having particle size of 60-240 nm (paragraph 0035). In a simplified model, the average particle size is approximated to be 150 nm (from the two endpoints 60 and 240 nm of Example 1), and the particle deviation is calculated from by dividing the endpoints of particle size range to the approximated average particle size by the approximated average particle size, i.e., 90/150 which is approximately 60%. While 60% is outside the claimed deviation range of 32% or less, the approximately of 60% is based on extreme endpoints.
Therefore, it would have been obvious to one of ordinary skill in the art to select a nanobiomass having claimed average particle size and particle size deviation—absent a showing of unexpected or surprising results.
With respect to claim 16, Hu teaches that a film made from the polyester which has a tensile strength of at least 30 MPa meets the mechanical requirements for bags are (paragraphs 0011 and 0023).
Hu fails to disclose he impact absorption energy of the bag (i.e., film material).
Even so, given that Hu teaches that mechanical requirements for films are met by a tensile strength of at least 30 MPa, it would have been obvious to one of ordinary skill in the art to prepare a film having other desirable mechanical properties including impact properties like claimed.
Conclusion
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/Vickey Nerangis/
Primary Examiner, Art Unit 1763
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