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 .
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 1-5 and 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Alidedeoglu et al. US 2013/0018131 A1.
Regarding claims 1-5, Alidedeoglu teaches biodegradable aliphatic-aromatic copolyesters (title). Alidedeoglu discloses Example 2 (paras [0096]-[0097], Table 2), polybutylene terephthalate -co-adipate (PBAT) which is synthesized by utilizing 1,4-butanediol and 0.25 moles of (41.5g/166.13 gmol-1 =0.25) terephthalic acid and 0.25 moles of (36.5g/146.14 gmol-1 =0.25) adipic acid, which would generate soft and hard segment ratio of 0.25 each, and the second ratio of the diol bonded between aromatic and aliphatic dicarboxylic acid of 0.5. The resulting copolyester has a Mn of 38000 g/mol, Tm of 123 oC and Tg of -27 oC, which meets the required melting point and glass transition temperature respectively. The ratio of hard segments to the soft segments would be 0.25/0.25 =1, which is close to the required ratio. The case law holds that, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
Alidedeoglu is silent on the crystallization temperature of the polybutylene terephthalate -co-adipate (PBAT), however owing to the closeness of the disclosed amounts of the required monomers and the thermal properties Tm and Tg, it would necessarily follow that the PBAT provided by Alidedeoglu would possess the required crystallization temperature.
Regarding claims 8-9, the instant specification (page 64, lines 20-21; page 65, line 1) recommends a number average molecular weight of 30,000 in order to achieve the desired physical properties. As discussed, when addressing claims 1-5, Alidedeoglu’s PBAT as taught by Example 2, has a number average molecular weight Mn of 38,000 g/mol, which satisfies the recommended molecular weight and therefore would be reasonably expected to meet the desired modulus and elongation values.
Additionally, since the prior art compositions are being utilized for similar end products as the instant specification (page 82, line 10), such as molded films or sheets for packaging (Alidedeoglu para [0076]), it would have been obvious to one of ordinary skilled in the art before the effective filing date of the invention to optimize the polyester compositions such that they exhibit similar level of modulus and elongation.
Response to Arguments
Applicant’s arguments filed on 06/16/2026 with respect to rejection of claim(s) 1-9 under 35 U.S.C. 102 (a)(1) as being anticipated by Rychter, have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Surbhi M Du whose telephone number is (571)272-9960. The examiner can normally be reached M-F 9:00 am to 5:00pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Heidi (Riviere) Kelley can be reached at 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/S.M.D./
Examiner
Art Unit 1765
/JOHN M COONEY/Primary Examiner, Art Unit 1765
Prosecution Insights