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 § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 11 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 11 recites that the composition comprises a bio-based carbon content of up to 100%. However, this is the maximum bio-based content that is possible, as the amount cannot exceed 100% by definition. As such, adding a maximum value of 100% does not further limit the amount of bio-based carbon content from the previous claims. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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.
Claims 1-9, 11, and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wang et al. (US 2008/0147034).
Considering Claims 1-4 and 11: Wang et al. teaches a biodegradable resin composition comprising 5 to 50 weight percent of a biodegradable thermoplastic polyester and 50 to 95 weight percent of a thermoplastic starch/biodegradable modified starch (¶0040), with an example comprising 30 weight percent of polybutylene adipate terephthalate and 70 weight percent of thermoplastic starch (Table 1).
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. Wang et al. further teaches the specific species used in Example 1 of the original specification, which has the claimed force recovery property. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the force reduction property, would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not 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. 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 the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Considering Claim 5: Wang et al. teaches a plasticizer that is preferably a sugar alcohol or glycol (¶0034).
Considering Claims 6 and 7: The claim can contain 0 percent of the filler or biomass. As such, further limiting the optional components does not provide patentability to the claim.
Considering Claims 8 and 9: The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. Wang et al. further teaches the specific species used in Example 1 of the original specification, which has the claimed degradation properties. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the disintegration property, would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not 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. 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 the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Considering Claim 12: Wang et al. teaches using the composition to prepare an article by blown film or cast film extrusion (¶0074).
Claims 1-9, 11, and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Moghaddam et al. (Journal of Polymers and the Environment (2018) 26:3202–3215).
Considering Claims 1-5 and 11: Moghaddam et al. teaches a composition comprising 40 to 70 weight percent of a mixture of polylactic acid and acetyl tributyl citrate in a ratio of 87.5:12.5, 30-60 weight percent of a thermoplastic starch, and 2-8 weight percent of a compatibilizing agent (Table 1, pg. 3205).
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. Moghaddam et al. further teaches the specific species used in Example 3 of the original specification, which has the claimed force recovery property. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the force reduction property, would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not 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. 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 the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Considering Claims 6 and 7: The claim can contain 0 percent of the filler or biomass. As such, further limiting the optional components does not provide patentability to the claim.
Considering Claims 8 and 9: The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. Moghaddam et al. further teaches the specific species used in Example 3 of the original specification, which has the claimed degradation properties. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the disintegration property, would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not 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. 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 the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Considering Claim 12: Claim 12 is a statement of intended use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020) (The court found that the preamble in one patent’s claim is limiting but is not in a related patent); Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999).
Claims 1-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dong et al. (US 2022/0275201).
Considering Claims 1, 2, 4, 7, and 11: Dong et al. teaches a biodegradable polymer composition comprising 55 weight percent of a biodegradable polyester, 30 weight percent of thermoplastic starch, 12.5 weight percent of dried vinasse fiber, and 2.5 weight percent of inorganic filler, having a bio-based carbon content of 62% (Table 3).
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the force reduction property, would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not 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. 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 the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Considering Claim 3: Dong et al. teaches the polyester as being polybutylene succinate, polylactic acid, polyhydroxyalkanoate, polybutylene adipate terephthalate, polybutylene succinate adipate, or polycaprolactone (Table 2).
Considering Claim 5: Moghaddam et al. teaches the plasticizer as being glycerin or vegetable oil (Table 2).
Considering Claim 6: Moghaddam et al. teaches the inorganic filler as being calcium carbonate, wollastonite, mica, talc, or aluminum silicate (Table 2).
Considering Claims 8 and 9: The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. Moghaddam et al. further teaches the specific species used in Example 3 of the original specification, which has the claimed degradation properties. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the disintegration property, would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not 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. 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 the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Considering Claim 10: Dong et al. teaches forming the mixture in a extruder at elevated temperature (¶0064), for several seconds (¶0231).
Considering Claim 12: Dong et al. teaches forming an article by injection molding, or compression molding (¶0044).
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.
Claim(s) 10 is rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (US 2008/0147034) as applied to claim 1 above.
Considering Claim 10: Wang et al. teaches the composition of claim 1 as shown above.
Wang et al. teaches mixing the components in a twin screw extruder at elevated temperature (¶0045). Wang et al. is silent towards the mixing time period. However, "where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP § 2144.05. It would have been obvious to a person of ordinary skill in the art to have optimized the mixing time through routine experimentation, and the motivation to do so would have been to provide a homogeneous mixture of the components of the blend.
Claim(s) 10 is rejected under 35 U.S.C. 103 as being unpatentable over Moghaddam et al. (Journal of Polymers and the Environment (2018) 26:3202–3215) as applied to claim 1 above.
Considering Claim 10: Moghaddam et al. teaches the composition of claim 1 as shown above.
Moghaddam et al. teaches mixing the components in a twin screw extruder at elevated temperature (pg. 3205). Moghaddam et al. is silent towards the mixing time period. However, "where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP § 2144.05. It would have been obvious to a person of ordinary skill in the art to have optimized the mixing time through routine experimentation, and the motivation to do so would have been to provide a homogeneous mixture of the components of the blend.
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 1-9, 11, and 12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 10-14, and 21 of U.S. Patent No. 12,291,636. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Considering Claims 1, 2, 4, 8, 9, and 11: Claim 1 of Patent ‘636 teaches a biodegradable composition comprising: (i) about 50-60% (w/w) of a polymer comprising one or more of biodegradable polyesters; (ii) about 5-15% (w/w) of starch; (iii) about 20-40% (w/w) of one or more of inorganic filler; and (iv) about 0.1-10% (w/w) of fiber comprising one or more of biomass, wherein the composition exhibits a 90% disintegration completion within about 180 to about 365 days in soil. Claim 11 of Patent ‘636 teaches the starch as being thermoplastic starch.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the force reduction property, would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not 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. 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 the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Considering Claim 3: Claim 10 of Patent ‘636 teaches the claimed polyesters.
Considering Claim 5: Claim 14 of Patent ‘636 teaches the claimed plasticizers.
Considering Claim 6: Claim 13 of Patent ‘636 teaches the claimed inorganic fillers.
Considering Claim 7: Claim 12 of Patent ‘636 teaches the claimed biomass.
Considering Claim 12: Claim 21 of Patent ‘636 teaches using the composition for making articles through compression molding or injection molding.
Claims 1-9, 11, and 12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 11 of application 18/468,261. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Considering Claims 1, 2, 4, 8, 9, and 11: Claim 1 of Application ‘261 teaches a biodegradable composition comprising: (i) about 10-95% (w/w) of a polymer comprising one or more of biodegradable polyesters; (ii) about 0.1 to 50% (w/w) of starch; (iii) about 0.1 to 50% (w/w) of one or more of inorganic filler; and (iv) about 0.1-50% (w/w) of fiber comprising one or more of biomass, wherein the composition exhibits a 90% disintegration completion within about 180 to about 365 days in soil. Claim 11 of Application ‘261 teaches the starch as being modified starch.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the force reduction property, would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not 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. 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 the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Considering Claim 3: Claim 10 of Application ‘261 teaches the claimed polyesters.
Considering Claim 5: Claim 14 of Application ‘261 teaches the claimed plasticizers.
Considering Claim 6: Claim 13 of Application ‘261 teaches the claimed inorganic fillers.
Considering Claim 7: Claim 12 of Application ‘261 teaches the claimed biomass.
Considering Claim 12: Claim 21 of Application ‘261 teaches using the composition for making articles through compression molding or injection molding.
Claims 1-12 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1- of copending Application No. 18/404,500 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Considering Claim 1: Claim 1 of Application ‘500 teaches a composition comprising about 10 to about 99.99 % (w/w) of one or more biodegradable thermoplastic polymers; about 0 to about 40 % (w/w) of one or more plasticizers; about 0 to about 80 % (w/w) of one or more biodegradable modified starches; about 0 to about 20 % (w/w) of one or more of inorganic fillers; about 0 to about 20 % (w/w) of one or more of biomass fillers; and about 0 to about 10 % (w/w) of one or more of additives such as coupling agents, processing aids, compatibilizing agents, chain extenders, initiators, peroxides, impact modifiers and pigments; wherein, the composition exhibits force recovery property shortly after being stretched to a certain strain and then returned to a lower strain and held for a period of time.
Considering Claims 2-12: Claims 2, 3, 6-12, 14, 15, and 17 of Application ‘500 correspond to instant claims 1-12.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2, 3, 5-7, 9, 14, 16, and 18 of copending Application No. 18/404,476 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Considering Claims 1, 2, and 4: Claim 2 of Application ‘476 teaches a biodegradable resin composition comprising: a. about 10 to about 99 % (w/w) of a polymer comprising one or more biodegradable thermoplastic polymers; c. about 0.01 to about 30 % (w/w) of at least one compatibilizing agent selected from the group of hydrolyzed compostable compatibilizer or at least one organic acid or a combination thereof, wherein the organic acid is selected from the group consisting of lactic acid, formic acid, stearic acid, tannic acid, malic acid, citric acid, aspartic acid, ascorbic acid, acetic acid, tartaric acid, or a combination thereof; d. about 0 to about 30 % (w/w) of one or more plasticizers; e. about 0 to about 30 % (w/w) of one or more inorganic fillers; f. about 0 to about 30 % of fiber comprising one or more of biomass; and g. about 0 to about 10 % (w/w) of one or more of additives selected from the groups consisting of coupling agents, compatibilizers, processing aids, chain extenders, peroxides, initiators, pigments, and cross-linkers or a combination thereof. Claim 7 of Application ‘476 teaches the biomass as being thermoplastic starch.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the force reduction property, would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not 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. 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 the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Considering Claims 3 and 5-12: Claims 3, 5-7, 9, 14, 16, and 18 of Application ‘476 correspond to instant claims 3 and 5-12.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3-7, 10, 12, 17, 20, and 21 of copending Application No. 18/404,468 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Considering Claims 1, 2, and 4: Claim 3 of Application ‘468 teaches a biodegradable resin composition comprising: about 10 to about 99 % (w/w) of a polymer comprising one or more of biodegradable thermoplastic polymers; about 0 to about 30 % (w/w) of one or more of plasticizers; about 0 to about 30 % (w/w) of one or more of inorganic fillers; about 0 to about 30 % of fiber comprising one or more of biomass. about 0 to about 10 % (w/w) of one or more of additives selected from the group consisting of coupling agents, compatibilizers, chain extenders, processing aids, peroxides, initiators, pigments, and cross-linkers or a combination thereof. Claim 7 of Application ‘468 teaches the biomass as being thermoplastic starch.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the force reduction property, would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not 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. 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 the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Considering Claims 3 and 5-12: Claims 4-7, 10, 12, 17, 20, and 21 of Application ‘468 correspond to instant claims 3 and 5-12.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-6 and 8-12 of copending Application No. 18/404,507 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Considering Claims 1, and 4: Claim 1 of Application ‘507 teaches a biodegradable resin composition comprising: i. about 10 to about 99.99% (w/w) of one or more biodegradable thermoplastic polymers; ii. about 0.01 to about 40% (w/w) of one or more plasticizers; iii. about 0 to about 20% (w/w) of one or more of inorganic fillers; iv. about 0 to about 20% (w/w) of one or more of biomass fillers; v. about 0 to about 10% (w/w) of one or more of additives such as coupling agents, processing aids, compatibilizing agents, chain extenders, initiators, peroxides, impact modifiers and pigments, wherein, the composition exhibits a force recovery property shortly after being stretched to a certain strain and then returned to a lower strain and held for a period of time. Claim 6 of Application ‘507 teaches the biomass as being thermoplastic starch.
Considering Claims 2, 3, and 5-12: Claims 2-6 and 8-12 of Application ‘507 correspond to instant claims 2, 3, and 5-12.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, and 12 of copending Application No. 19/278,504 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Considering Claims 1, 2, 4, and 11: Claim 2 of Application ‘504 teaches a composition comprising 5 to 90 weight percent of a biodegradable thermoplastic polyester and 5 to 95 weight percent of a modified thermoplastic starch component.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the force reduction property, would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not 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. 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 the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Considering Claim 3: Claim 12 of Application 504 teaches the claimed polyesters.
Considering Claims 5-7: The claim can contain 0 percent of the plasticizer, filler or biomass. As such, further limiting the optional components does not provide patentability to the claim.
Considering Claims 8 and 9: The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients, in the claimed amounts, and teaches the composition as being made by a substantially similar process. Moghaddam et al. further teaches the specific species used in Example 3 of the original specification, which has the claimed degradation properties. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. Therefore, the claimed effects and physical properties, i.e. the disintegration property, would necessarily arise from a composition with all the claimed ingredients in the claimed amounts. "Products of identical chemical composition can not 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. 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 the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Considering Claim 12: Claim 12 is a statement of intended use. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Shoes by Firebug LLC v. Stride Rite Children’s Grp., LLC, 962 F.3d 1362, 2020 USPQ2d 10701 (Fed. Cir. 2020) (The court found that the preamble in one patent’s claim is limiting but is not in a related patent); Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Lim et al. (AU 2010200315) teaches a blend comprising 40 to 80 weight percent of polybutylene adipate terephthalate, 8 to 40 weight percent of polylactic acid and 10 to 40 weight percent of thermoplastic starch (Abstract).
Kimura et al. (WO 2016/158331) teaches a blend of a biodegradable thermoplastic polyester and an oxidized starch (¶0007-08).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM J HEINCER whose telephone number is (571)270-3297. The examiner can normally be reached M-F 7:30-5:00.
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/LIAM J HEINCER/Primary Examiner, Art Unit 1767
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