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
Applicant’s election without traverse of Group II, claims 9-20, in the reply filed on February 2, 2026 is acknowledged.
Claims 1-8 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 February 2, 2026.
Claim Objections
Claims 11, 14, 17, and 20 are objected to because of the following informalities:
Regarding claims 11, 14, 17, and 20, please delete the heading of “Measurement method” within these claims. It is not needed.
Appropriate correction is required.
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.
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 9-14 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (US 2021/0380757) in view of Zhao et al. (US 2018/0215866).
Regarding claim 9, Kim et al. teaches a biodegradable polyester resin composition according to an embodiment comprises a diol component comprising 1,4-butanediol or a derivative thereof and a dicarboxylic acid component, wherein the dicarboxylic acid component comprises a first dicarboxylic acid and a second dicarboxylic acid different from the first dicarboxylic acid, the first dicarboxylic acid comprises one or more selected from the group consisting of terephthalic acid, dimethyl terephthalic acid, and derivatives thereof (aromatic dicarboxylic acid), and the second dicarboxylic acid comprises one or more selected from the group consisting of adipic acid, succinic acid, and derivatives thereof (aliphatic dicarboxylic) (¶44). The composition also comprises nanocellulose pretreated with a silane coupling agent (contains a silicon element) (¶46).
Kim et al. does not teach that the composition comprises a metal salt that comprises an iron element. However, Zhao et al. teaches a composition comprising a poly(butyleneadipate-co-terephthalate) resin (PBAT) and from 1 to 500 ppm of an iron element (¶7-10), wherein the iron element comes from an iron-containing compound such as iron nitrate (metal salt) (¶18). Kim et al. and Zhao et al. are analogous art because they are from the same field of endeavor as that of the instant invention, namely polyester resin compositions for molded articles. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to add from 1 to 500 ppm of an iron element through the use of iron nitrate, as taught by Zhao et al., to the composition, as taught by Kim et al., and would have been motivate to do so in order to produce a polyester resin with improved color stability in resistance to boiling water aging (¶31).
Regarding claims 10 and 12, Kim et al. teaches a polyester composition comprising 0.2% by weight of a nanocellulose pretreated with 5% by weight of a silane coupling agent (¶341, 342). This yields an amount of 100 ppm of silicon in the composition (calculated by Examiner)1. To get a mass ratio of the iron element to the silicon element of about 0.1 to about 0.7, the iron must be present in 10 to 70 ppm (calculated by Examiner; x/100 = 0.1 and x/100 = 0.7). The amount of 10 to 70 ppm overlaps with the amount of iron taught by Zhao et al. Therefore, this limitation is met by the references.
Regarding claim 11, Kim et al. and Zhao et al. do not teach that a hydrolysis degree after one week is about 35% to about 60%, or that a hydrolysis degree after about three weeks is about 85% or more. The Office realizes that all of the claimed effects or physical properties are not positively stated by the references. However, the references teach all of the claimed ingredients in the claimed amounts made by a substantially similar process. Moreover, the original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amounts. Therefore, the claimed effects and physical properties, i.e., a hydrolysis degree after one week of about 35% to about 60%, and a hydrolysis degree after about three weeks of about 85% or more, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding claim 13, Kim et al. teaches that the polyester composition comprises nanocellulose (Abstract). Kim et al. is concerned with producing a polyester composition with enhanced transparency and employs nanocellulose because it has excellent dispersibility and light transmittance (¶15, 17). It is a well-known process to treat nanocellulose with sulfuric acid to enhance its transparency. Therefore, there is a high probability that the nanocellulose of Kim et al. contains at least some sulfur. Additionally, it would have been obvious for one of ordinary skill in the art to treat the nanocellulose with sulfuric acid to enhance its transparency and this process will result in the nanocellulose comprising sulfur.
Regarding claim 14, Kim et al. and Zhao et al. do not teach that a wet hardness reduction rate is about 15% or less. The Office realizes that all of the claimed effects or physical properties are not positively stated by the references. However, the references teach all of the claimed ingredients in the claimed amounts made by a substantially similar process. Moreover, the original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amounts. Therefore, the claimed effects and physical properties, i.e., a wet hardness reduction rate of about 15% or less, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Claims 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (US 2021/0380757) in view of Zhao et al. (US 2018/0215866).
Regarding claim 15, Kim et al. teaches a molded article (¶296) prepared from a biodegradable polyester resin composition according to an embodiment comprises a diol component comprising 1,4-butanediol or a derivative thereof and a dicarboxylic acid component, wherein the dicarboxylic acid component comprises a first dicarboxylic acid and a second dicarboxylic acid different from the first dicarboxylic acid, the first dicarboxylic acid comprises one or more selected from the group consisting of terephthalic acid, dimethyl terephthalic acid, and derivatives thereof (aromatic dicarboxylic acid), and the second dicarboxylic acid comprises one or more selected from the group consisting of adipic acid, succinic acid, and derivatives thereof (aliphatic dicarboxylic) (¶44). The composition also comprises nanocellulose pretreated with a silane coupling agent (contains a silicon element) (¶46).
Kim et al. does not teach that the composition comprises a metal salt that comprises an iron element. However, Zhao et al. teaches a composition comprising a poly(butyleneadipate-co-terephthalate) resin (PBAT) and from 1 to 500 ppm of an iron element (¶7-10), wherein the iron element comes from an iron-containing compound such as iron nitrate (metal salt) (¶18). Kim et al. and Zhao et al. are analogous art because they are from the same field of endeavor as that of the instant invention, namely polyester resin compositions for molded articles. At the time of the filing of the instant invention, a person of ordinary skill in the art would have found it obvious to add from 1 to 500 ppm of an iron element through the use of iron nitrate, as taught by Zhao et al., to the composition, as taught by Kim et al., and would have been motivate to do so in order to produce a polyester resin with improved color stability in resistance to boiling water aging (¶31).
Regarding claims 16 and 18, Kim et al. teaches a polyester composition comprising 0.2% by weight of a nanocellulose pretreated with 5% by weight of a silane coupling agent (¶341, 342). This yields an amount of 100 ppm of silicon in the composition (calculated by Examiner)2. To get a mass ratio of the iron element to the silicon element of about 0.1 to about 0.7, the iron must be present in 10 to 70 ppm (calculated by Examiner; x/100 = 0.1 and x/100 = 0.7). The amount of 10 to 70 ppm overlaps with the amount of iron taught by Zhao et al. Therefore, this limitation is met by the references.
Regarding claim 17, Kim et al. and Zhao et al. do not teach that a hydrolysis degree after one week is about 35% to about 60%, or that a hydrolysis degree after about three weeks is about 85% or more. The Office realizes that all of the claimed effects or physical properties are not positively stated by the references. However, the references teach all of the claimed ingredients in the claimed amounts made by a substantially similar process. Moreover, the original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amounts. Therefore, the claimed effects and physical properties, i.e., a hydrolysis degree after one week of about 35% to about 60%, and a hydrolysis degree after about three weeks of about 85% or more, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding claim 19, Kim et al. teaches that the polyester composition comprises nanocellulose (Abstract). Kim et al. is concerned with producing a polyester composition with enhanced transparency and employs nanocellulose because it has excellent dispersibility and light transmittance (¶15, 17). It is a well-known process to treat nanocellulose with sulfuric acid to enhance its transparency. Therefore, there is a high probability that the nanocellulose of Kim et al. contains at least some sulfur. Additionally, it would have been obvious for one of ordinary skill in the art to treat the nanocellulose with sulfuric acid to enhance its transparency and this process will result in the nanocellulose comprising sulfur.
Regarding claim 20, Kim et al. and Zhao et al. do not teach that a wet hardness reduction rate is about 15% or less. The Office realizes that all of the claimed effects or physical properties are not positively stated by the references. However, the references teach all of the claimed ingredients in the claimed amounts made by a substantially similar process. Moreover, the original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amounts. Therefore, the claimed effects and physical properties, i.e., a wet hardness reduction rate of about 15% or less, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 9, 10, 15, and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 and 12 of U.S. Patent No. 11,898,004 (“the ‘004 patent”). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claims 9 and 10, claims 4 and 12 of the ‘004 patent teach a biodegradable polyester resin composition, comprising a polyester resin comprising a diol, an aromatic dicarboxylic acid and an aliphatic dicarboxylic acid; and a metal salt and a silicon element, wherein a mass ratio of a metal element contained in the metal salt to the silicon element ranges from 0.1 to 0.7. The ‘004 patent teaches that the metal in the metal salt is iron (Col. 15, lines 4-8). The MPEP states in Section 804 that those portions of the specification which provide support for the reference claims may also be examined and considered when addressing the issue of whether a claim in the application defines an obvious variation of an invention claimed in the reference patent or application (as distinguished from an obvious variation of the subject matter disclosed in the reference patent or application). In re Vogel, 422 F.2d 438, 441-42, 164 USPQ 619, 622 (CCPA 1970).
Regarding claims 15, and 16, claims 1-3 of the ‘004 patent teach a biodegradable molded article comprising a polyester resin comprising a diol, an aromatic dicarboxylic acid and an aliphatic dicarboxylic acid; a metal wherein the metal comprises a metal salt; and a silicon element, wherein a mass ratio of a metal element contained in the metal salt to the silicon element ranges from 0.1 to 0.7. The ‘004 patent teaches that the metal in the metal salt is iron (Col. 15, lines 4-8). The MPEP states in Section 804 that those portions of the specification which provide support for the reference claims may also be examined and considered when addressing the issue of whether a claim in the application defines an obvious variation of an invention claimed in the reference patent or application (as distinguished from an obvious variation of the subject matter disclosed in the reference patent or application). In re Vogel, 422 F.2d 438, 441-42, 164 USPQ 619, 622 (CCPA 1970).
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANGELA C SCOTT whose telephone number is (571)270-3303. The examiner can normally be reached Monday-Friday, 8:30-5:00, EST.
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/ANGELA C SCOTT/Primary Examiner, Art Unit 1767
1 (0.002*0.05)*100 (to go back to percent) = 0.01% of the silane; 0.01%*10,000 = 100 ppm
2 (0.002*0.05)*100 (to go back to percent) = 0.01% of the silane; 0.01%*10,000 = 100 ppm
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