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 .
Claims 1-27, 51-71 are pending and being examined.
Election/Restriction
Applicant's election with traverse of the species of the polyester reaction product that does contain the cyclic ester, which encompass Claims 1, 3-11, 13-27, 51, and 52, in the reply filed on 06/22/2026 is acknowledged. The traversal is on the ground(s) that the amended claims does not require a species differentiation because the claims are properly contained in one application. This is not found persuasive because, as cited in the restriction requirement file dated 04/20/2026, the polyester reaction product that does contain cyclic precursors, i.e. does not contain a cyclic ester, and the polyester reaction product that does contain a cyclic ester, are two entirely different and distinct polyester reaction products and would require a differentiation because the species encompass numerous different embodiments of polyesters and the sheer number of different combinations produced from the above species would be overwhelming and would entail a long and burdensome search of each and every different possible embodiment.
The requirement is still deemed proper and is therefore made FINAL.
Claims 2, 12, and 53-71, are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 06/22/2026.
For the withdrawn claims, the examiner would like note that the terms “cyclic ester,” and “without…cyclic precursors,” in claim 2 causes confusion and indefinite issues because a “cyclic ester” also considered a “cyclic precursor” and it is unclear if it is a requirement.
Furthermore, claims 12 and 60 are substantial duplicate claims that also would be objected to.
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.
Claim 1, 3-11, 13-17, 27, 51 and 52, are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-14 of copending Application No. 18/886,673. (App. No. 18/886,673).
Although the claims at issue are not identical, they are not patentably distinct from each other because App. No. 18/886,673 teaches each and every component and reads upon the claims in an anticipatory manner.
Regarding claims 1, 3-11, 13-17, 27, 51 and 52, App. No. 18/886,673 teaches a composition comprising a solid crosslinked polyester having a crosslinked matrix that is degradable in less than about 180 days formed by self-catalyzed self-esterification reaction of a mixture of 5-85% one or more multi-hydroxy alcohols, 10-90% one or more hydroxy acids, 5-85% one or more multi-carboxylic acids, without catalyst, and optionally a cyclic ester, (claims 1-3), the polyester has a hardness score of at least 80, (claim 5), wherein the multi-hydroxy alcohol is pentaerythritol (claim 7), the multi-carboxylic acid is citric acid (claim 8), and hydroxy acids is lactic acid (claim 8), further contains polyol additives (claim 11), fillers such as silica or sand (claim 12-13).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 3-11, 13-17, 27, 51 and 52, arerejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 12,122,870 B2.
Although the claims at issue are not identical, they are not patentably distinct from each other because US Pat. No. 12,122,870 B2 teaches each and every component and reads upon the claims in an anticipatory manner.
Regarding claims 1, 3-11, 13-17, 27, 51 and 52, US Pat. No. 12,122,870 B2 teaches a composition comprising a solid crosslinked polyester having a crosslinked matrix that is degradable in less than about 180 days formed by self-catalyzed self-esterification reaction of a mixture of 5-85% one or more multi-hydroxy alcohols, 10-90% one or more hydroxy acids, 5-85% one or more multi-carboxylic acids, without a catalyst, and optionally a cyclic ester, (claims 1-3), the polyester has a hardness score of at least 80, (claim 5), wherein the multi-hydroxy alcohol is pentaerythritol (claim 7), the multi-carboxylic acid is citric acid (claim 8), and hydroxy acids is lactic acid (claim 8), further contains polyol additives (claim 11), fillers such as silica or sand (claim 12-13).
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.
Claims 1, 3-11, 13-27, 51, and 52, are 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 1 recites the polyester contains “hydroxy acids” and “multi-carboxylic acid compounds.” However, the term “hydroxy acid” is unclear because a carboxylic acid is essentially contains an acid hydroxyl group. It appears that the claim should be a hydroxy carboxylic acid, which contains a hydroxyl group and a carboxylic acid group. This is further indefinite as in claim 9 list citric acid as a “multi-carboxylic acid,” but it contains both a hydroxy group and three carboxylic acid groups, and list alginic acid as a “multi-hydroxylic alcohol, but it also contains both hydroxyl and carboxylic acid groups.
Claims 6 recites the limitation "the temperature" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claims 9-11 lists the components of cellulose, cellulose-ether derivatives, starch, dextran, alginic acid, hyaluronic acid, chitosan, trimesic acid, and salicyclic acid. However, the listed compounds all have cyclic groups in them and claim 1 recites “without…cyclic precursors…” Since the listed compounds all have cyclic groups, it is unclear whether they qualify as “cyclic precursors” and if they are cyclic precursors, would they only be optionally included when the polyester does not contain the catalyst.
Claim 13, recites “one or more additives” such as “cyclic esters…metal-catalysts…and hydroxy acids…” It is unclear if the above are the same component requirements as cited in claim 1.
Claims 22-27 are all directed to a “composition,” but describe uses and/or limitations to the “solid thermoplastic polyester.” This is indefinite since they appear that they should be directed toward the “composition.” For instance, claim 22 recites the “solid thermoplastic polyester…added into molds to cure.” This is indefinite because it is unclear whether the solid thermoplastic polyester is to be added to a mold to cure before being in the composition. Furthermore, the above claims with properties appear to cause confusion as to whether it is the polyester or composition has the claimed properties.
It appears that the claim 22 should be amended to “wherein the composition is added into molds to cure.” Claim 23-27 should be amended to “wherein the composition…”
Claims 3-5, 7-8, 13-21, 51, and 52, are dependent claims which fail to alleviate the issues above.
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.
Claim(s) 1, 3-8, 11, 13-17, 22-27, and 52, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2008/0004369 A1 to Seppala et al. (hereinafter Seppala)
Regarding claims 1, 3-8, 11, 13-17, 22-27, and 52, Seppala teaches a crosslinkable polyester that is elastic and rubber and used in the field of composites, films, coatings, moldings, toys and containers, (See abstract and claim 22). Specifically, the polyester is obtained by polymerizing 437.5 g (87.5%) of L-lactic acid, 47.9 g (9.6%) of itaconic acid, and 14.5 g (2.9%) of pentaerythritol with a tin(II) octoate catalyst (para 65), and the polyester is mixed with a curing agent, compression molded, and cured to form a crosslinked polymer film (para 75). The above lactic acid meets the claimed hydroxy carboxylic acid, the above itaconic acid meets the claimed multi-carboxylic acid compound, and the above pentaerythritol meets the claimed multi-hydroxylic alcohol, and the above tin octoate meets the metal catalyst additive of claim 13. There is no cyclic precursors which meets the claimed “without added catalyst or cyclic precursors.” Seppala further teaches the polyester may contain the functionalizing agent (i.e. polyfunctional alcohol) in an amount of 80-1 mol% (para 42), correlates to a wt% that meets the claimed ranges. Seppala further teaches the crosslinked polymer is biodegradable, can be cured by radiation (para 57), is elastic/rubber like, (para 62), rigid (para 28), can contain fillers such as microsilica, or cellulose (para 55) to affect opaqueness (para 56).
In regards to all the claimed properties, one skilled in the art would have a reasonable expectation for the crosslinked polyester of Seppala to have the claimed properties of the claimed invention because Seppala teaches a substantially identical composition to the claimed invention such as the claimed hydroxy carboxylic acid, multi-carboxylic acid compound, and multi-hydroxylic alcohol, all in ranges similar to claimed ranges, and this is further evidenced by Seppala teaching that the crosslinked polyester is similarly biodegradable, rubber like, and rigid. See MPEP 2112.01. (Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)).
Claim(s) 1, 3-8, 10, 13-17, 22-27, and 51, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2013/0337712 A1 to Zhang et al. (hereinafter Zhang).
Regarding claims 1, 3-8, 10, 13-17, 22-27, and 51, Zhang teaches a polyester obtained from polymerizing 320 g (33%) of glycerol and 640 g (66%) of citric acid and tin catalyst, wherein the tin catalyst is removed by filtration afterwards. (para 73). The polyester is then applied as a binder upon paper fiber and cured to form a film (para 77), which meets the claimed solid polyester. The above citric acid meets both the multi-carboxylic acid and hydroxy acid, and the glycerol meets the claimed multi-hydroxyl alcohol. Zhang further teaches the catalyst is optional (para 23), the polyester may contain a polyvinyl alcohol, (para 30), which meets claim 13, the paper fiber meets claim 14-15.
In regards to all the claimed properties, one skilled in the art would have a reasonable expectation for the crosslinked polyester of Zhang to have the claimed properties of the claimed invention because Zhang teaches a substantially identical composition to the claimed invention such as the claimed hydroxy carboxylic acid, multi-carboxylic acid compound, and multi-hydroxylic alcohol, all in ranges similar to claimed ranges, and the Applicant cites that glycerol and citric acid produces a polyester with the claimed properties. (See Examples). See MPEP 2112.01. (Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977)).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HA S NGUYEN whose telephone number is (571)270-7395. The examiner can normally be reached Mon-Fri, Flex schedule 7:30am-4:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached at (571)272-1302. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HA S NGUYEN/ Primary Examiner, Art Unit 1766
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