DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objections
2. Claims 2, 4 and 8-9 are objected to because of the following informalities:
As to Claim 2: The applicants are advised to replace the claimed “resin composition” with “composition” to use consistent language.
As to Claim 4: The applicants are advised to delete the claimed term “or” before the claimed phrase “succinic acid, sebacic acid, glutaric acid”.
As to Claim 8: The applicants are advised to replace the claimed “is” with “are”.
As to Claim 9: The applicants are advised to replace the claimed “biomass” with the new phrase “biomass fillers” to use consistent language.
Appropriate correction is required.
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.
3. Claims 1-17 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.
As to Claim 1: This cited claim recites a term of preference (“such as”), followed by narrower ranges and/or limitations (Emphasis added). By virtue of using this term, this claim raises indefiniteness as to whether the scope of this claim is properly limited to the narrower ranges and/or limitations or the broader ranges and/or limitations. It is not clear if this claim requires the limitations following this term “such as”. See MPEP section 2173.05 (c) which states that “A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) is considered indefinite, since the resulting claim does not clearly set forth the metes and bounds of the patent protection desired.”
Claim 1 also recites “shortly after” and “certain strain” (Emphasis added). Absent any definition, explanation or much guidance from the present specification, it is not clear what is included by the claimed phrases “shortly after” and “certain strain”.
As to Claim 2: There is no proper antecedent basis for the claimed “the elastic region on the tensile stress-strain curve”, and thus, it is not clear what they are referring to (Emphasis added).
As to Claim 5: Claim 1, on which claim 5 depends from, do not provide proper antecedent basis for “the polyol” and “the organic acid”, and thus, it is not clear what they are referring to (Emphasis added).
As to Claim 13: As recited, it is not clear what is included by “the ingredients”, and thus it is not clear what “the ingredients” are referring to. It is also unclear what constitutes “the desired texture” absent any definition, explanation or guidance from the present specification.
As to Claim 14: Claim 1, on which claim 14 depends from, do not provide proper antecedent basis for “The method of producing” since claim 1 is directed to a product, i.e., biodegradable resin composition, and thus, it is not clear what the method is referring to. It is also unclear which ingredients are being mixed and melt-compounded, whether it is all the ingredients mentioned in claim 1, or some of it.
As to Claims 15 and 16: Claim 1, on which they depend from, do not provide any proper antecedent basis for “the bio-based carbon” and thus, it is not clear what it is referring to.
Clarification in the next response by applicants will be helpful to better ascertaining the scope of these claims.
It is further noted that since claims 3-4, 6-12, and 17 are dependent on claim 1, they are rejected along with claim 1 including those that are indefinite for the reasons set forth above.
Accordingly, the scope of these claims is deemed indefinite.
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.
Double Patenting I
4. Claims 1-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of co-pending U.S. Application No. 18/404,468 (hereinafter referred to as “US Appl. ‘468”; corresponding to US PG PUB 2025/0223435).
Th claims of US Appl. ‘468 and the present application are directed to biodegradable resin compositions comprise 10-99% (w/w) of one or more of biodegradable thermoplastic polymers selected from biodegradable thermoplastic polyesters including polylactic acid, polycaprolactone, and polybutylene succinate. The claims of US Appl. ‘468 also recite that the composition comprises 1-90% (w/w) of modified biodegradable polyester elastomers (which overlaps with the presently claimed 0.01-80% (w/w) of one or more biodegradable polyester elastomers) which is prepared from at least one polyol selected from sorbitol and at least one organic acid selected from succinic acid, and the molar ratio of polyol to organic acid is 0.3-1.3 (which is inclusive of the presently claimed molar ratio of 0.32-1.28), 0-30% (w/w) of one or more plasticizer (which overlaps with the presently claimed 0-40% w/w of one or more plasticizers) selected from one or more plant-based oils obtained from vegetables, soybean oil, glycerol, xylitol, and mannitol, 0-30% (w/w) of one or more biomass (which overlaps with the presently claimed 0-20% w/w of one or more biomass fillers) comprising distillers grains, vinasse, virgin starch, and hurd, and 0-30% (w/w) of one or more inorganic fillers (which overlaps with the presently claimed 0-20% w/w of inorganic fillers) selected from wollastonite, mica, or talc, and 0-10% (w/w) of one or more of additives selected from coupling agents, compatibilizers, pigments, and cross-linkers. The claims of US Appl. ‘468 and the present application further recite that the biodegradable polyester elastomer is produced by reacting the ingredients at a temperature ranging from 100-250°C, continuing the reaction until the desired texture of the elastomer is achieved, the mixing and melt-compounding is conducted in polymer processing equipment or apparatus selected from a batch mixer, a twin screw extruder or a single screw extruder, at elevated temperature for a time period of several seconds to several minutes, and the bio-based carbon content of the composition is up to 100% and the bio-based carbon content of the biodegradable polyester elastomer is up to 100%. Moreover, the claims of the present application and US Appl. ‘468 recite that the composition is for use in articles of any thickness and rigidity made by conventional polymer processing techniques comprising blow and cast film extrusion, compression molding and injection molding techniques.
However, the claims of US Appl. ‘468 do not mention “0 to 80% (w/w) of one or more biodegradable modified starches” as recited in claims of the present application.
Nevertheless, the claims of US Appl. ‘468 do not recite any presence of one or more biodegradable modified starches, which meets the presently claimed 0 to 80% (w/w) of one or more biodegradable modified starches (interpreted to be inclusive of zero amount of starches), for the purposes of preparing a biodegradable resin composition. Thus, it would have been obvious to one of ordinary skill in the art to use zero amount of the presently claimed biodegradable modified starches for the purposes of preparing a biodegradable resin composition.
As to the properties recited in present claims 1-2 and 10-12, these presently claimed properties would have naturally follow from the suggestion of the claims of US Appl. ‘468 since the claims of US Appl. ‘468 would have suggested the presently claimed biodegradable resin composition for the reasons set forth above. See MPEP section 2145, II (“The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious”). See also MPEP section 2113.01 “Products of identical chemical composition cannot have mutually exclusive properties. 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.”
This is a provisional nonstatutory double patenting rejection.
Double Patenting II
5. Claims 1-2, 10-12, and 14-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 and 11-14 co-pending U.S. Application No. 19/064,219 (hereinafter referred to as “US Appl. ‘219”; corresponding to US PG PUB 2025/0277101) in view of Liu et al. (US 9,714,341).
The claims of the present application and US Appl. ‘219 recite a biodegradable resin composition comprising one or more biodegradable polylactic polyester (biodegradable thermoplastic resin), plasticizers, inorganic filler, and 0-10% (w/w) of one or more additives selected from coupling agents, chain extenders and peroxides. The claims of US Appl. ‘219 also recite that 50-99.99% (w/w) of one or more biodegradable polylactic polyester (which overlaps with the presently claimed 10-99.99% w/w of one or more biodegradable thermoplastic polymers), 0.001-40-% (w/w) of one or more plasticizers (which is inclusive of the presently claimed 0-40% w/w of one or more plasticizers), and 0-40% (w/w) of one or more inorganic fillers (which overlaps with the presently claimed 0-20% w/w of one or more of inorganic fillers). The claims of the present application and US Appl. ‘219 also recite that the mixing and melt-compounding is conducted in polymer processing equipment or apparatus selected from a batch mixer, a twin screw extruder or a single screw extruder, at elevated temperature for a time period of several seconds to several minutes, and the bio-based carbon content of the composition is up to 100%. The claims of the present application and US Appl. ‘219 further recite that the composition is for use in articles of any thickness and rigidity made by conventional polymer processing techniques comprising blow and cast film extrusion, compression molding and injection molding techniques.
However, the claims of US Appl. ‘219 do not specifically mention about 0.01-80% (w/w) of one or more biodegradable polyester elastomers as required by the claims of the present application.
Nevertheless, Liu et al. disclose employing 10-50 % w/w of at least one biodegradable polyester elastomer, e.g., poly(butylene adipate-co-terephthalate) (PBAT), to prepare blends having better impact strength and tensile properties suitable for preparing films (Col. 1, line 35-Col. 4, line 67 and Col. 7, lines 30-50).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to use the presently claimed amount of biodegradable polyester elastomer taught by Liu et al. the composition of US Appl. ‘219, with a reasonable expectation of successfully obtaining better impact strength and tensile properties for preparing films.
As to the properties recited in present claims 1-2 and 10-12, these presently claimed properties would have naturally follow from the suggestion of the claims of US Appl. ‘219 and Liu et al. since the claims of US Appl. ‘219 and Liu et al. would have suggested the presently claimed biodegradable resin composition for the reasons set forth above. See MPEP section 2145, II (“The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious”). See also MPEP section 2113.01 “Products of identical chemical composition cannot have mutually exclusive properties. 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.”
This is a provisional nonstatutory double patenting rejection.
Double Patenting III
6. Claims 1-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-7, 9, 11-12, and 15-18 of co-pending U.S. Application No. 18/404,476 (hereinafter referred to as “US Appl. ‘476”; corresponding to US PG PUB 2025/0223425).
Th claims of US Appl. ‘476 and the present application are directed to biodegradable resin compositions comprise 10-99% (w/w) of one or more of biodegradable thermoplastic polymers selected from biodegradable thermoplastic polyesters including polylactic acid, polycaprolactone, and polybutylene succinate and 0.01-80% (w/w) of biodegradable polyester elastomers that is prepared from at least one polyol selected from sorbitol and at least one organic acid selected from succinic acid, and the molar ratio of polyol to organic acid is 0.32-1.28). The claims of US Appl. ‘476 also recite 0-30% (w/w) of one or more plasticizer (which overlaps with the presently claimed 0-40% w/w of one or more plasticizers) selected from one or more plant-based oils obtained from vegetables, soybean oil, glycerol, xylitol, and mannitol, 0-30% (w/w) of one or more biomass (which overlaps with the presently claimed 0-20% w/w of one or more biomass fillers) comprising distillers grains, vinasse, virgin starch, and hurd, and 0-30% (w/w) of one or more inorganic fillers (which overlaps with the presently claimed 0-20% w/w of inorganic fillers) selected from wollastonite, mica, or talc, and 0-10% (w/w) of one or more of additives selected from coupling agents, compatibilizers, pigments, and cross-linkers. The claims of the US Appl. ‘476 and the present application further recite that the biodegradable polyester elastomer is produced by reacting the ingredients at a temperature ranging from 100-250°C, continuing the reaction until the desired texture of the elastomer is achieved, the mixing and melt-compounding is conducted in polymer processing equipment or apparatus selected from a batch mixer, a twin screw extruder or a single screw extruder, at elevated temperature for a time period of several seconds to several minutes, and the bio-based carbon content of the composition is up to 100% and the bio-based carbon content of the biodegradable polyester elastomer is up to 100%. Moreover, the claims of the present application and US Appl. ‘476 recite that the composition is for use in articles of any thickness and rigidity made by conventional polymer processing techniques comprising blow and cast film extrusion, compression molding and injection molding techniques.
However, the claims of US Appl. ‘476 do not mention “0 to 80% (w/w) of one or more biodegradable modified starches” as recited in claims of the present application.
Nevertheless, the claims of US Appl. ‘476 do not recite any presence of one or more biodegradable modified starches, which meets the presently claimed 0 to 80% (w/w) of one or more biodegradable modified starches (interpreted to be inclusive of zero amount of starches), for the purposes of preparing a biodegradable resin composition. Thus, it would have been obvious to one of ordinary skill in the art to use zero amount of the presently claimed biodegradable modified starches for the purposes of preparing a biodegradable resin composition.
As to the properties recited in present claims 1-2 and 10-12, these presently claimed properties would have naturally follow from the suggestion of the claims of US Appl. ‘476 since the claims of US Appl. ‘476 would have suggested the presently claimed biodegradable resin composition for the reasons set forth above. See MPEP section 2145, II (“The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious”). See also MPEP section 2113.01 “Products of identical chemical composition cannot have mutually exclusive properties. 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.”
This is a provisional nonstatutory double patenting rejection.
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.
7. Claims 1-3 and 7-17 are rejected under 35 U.S.C. 103 as being unpatentable over English Translation of CN 1129614741 (hereinafter referred to as “CN ‘474”) in view of Liu et al. (US 9,714,341).
As to Claims 1, 3, 7 and 14-16, : CN ‘474 discloses a bio-based composite material that has excellent renewability and biodegradability (corresponding to the claimed biodegradable resin composition) useful for preparing films comprising a polylactic acid (PLA) as one of the thermoplastic bio-based and biodegradable polymer (corresponding to the claimed biodegradable thermoplastic polymer), epoxy vegetable oil selected from soybean oil (which according to present claim 7 corresponds to the claimed plasticizers) in an amount of 25-45% (w/w) (encompassed by the claimed 0-40% w/w of one or more plasticizers), and an organic peroxide (which according to present claim 1 corresponds to the claimed additive, i.e., peroxide) in an amount of 0.2-5% (w/w) (which is encompassed by the claimed 0-10% w/w of one or more additives) (Paragraphs [0001], [0003], [0005], [0012]-[0013], [0018]-[0019], and [0024]). CN ‘474 also discloses that the above ingredients are mixed and melt blended (melt compounded) in a screw extruder at a reaction temperature of 150-180 °C for a particular time period (Paragraph [0011]). Moreover, since CN ‘474 does not mention any presence of bio-based carbon content (see, for example, Paragraph [0010]), CN ‘474 meets the claimed up to 100% of bio-based carbon content since “up to” includes zero amount of bio-based carbon content.
However, CN ‘474 does not specify the amount of one or more biodegradable thermoplastic polymer as required by the claims of the present application. CN ‘474 also does not specifically mention the addition of one or more biodegradable polyester elastomers as required by the claims of the present application.
Nevertheless, Liu et al. disclose employing 50-90% w/w of at least one biodegradable polyester, e.g., polylactide, and 10-50 % w/w of at least one biodegradable polyester elastomer, e.g., poly(butylene adipate-co-terephthalate) (PBAT), to prepare blends having better impact strength and tensile properties suitable for preparing films (Col. 1, line 35-Col. 4, line 67 and Col. 7, lines 30-50).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to use the claimed amounts of biodegradable thermoplastic polymer and biodegradable polyester elastomer taught by Liu et al. in the composite material (composition) of CN ‘474, with a reasonable expectation of successfully obtaining better impact strength and tensile properties for preparing films.
As to the properties recited in present claims 1-2, 10-12, and 17: These presently claimed properties would have naturally follow from the suggestion of CN ‘474 and Liu et al.
since they would have collectively suggested the presently claimed biodegradable resin composition for the reasons set forth above. It follows that the composition suggested by CN ‘474 and Liu et al. would also be capable for use in articles of any thickness and rigidity made by conventional polymer processing techniques comprising blow and cast film extrusion, compression molding and injection molding techniques. See MPEP section 2145, II (“The fact that appellant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious”). See also MPEP section 2113.01 “Products of identical chemical composition cannot have mutually exclusive properties. 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.”
As to Claims 8 and 9: CN ‘474 does not specifically mention the addition of particular inorganic fillers and biomass fillers recited in claims 8 and 9, respectively. However, Liu et al. disclose the addition of fillers including calcium carbonate, talc, and virgin starch (corresponding to the claimed inorganic fillers and biomass fillers) for the purposes of providing desired impact strength and toughness to the polyester based blends (Col. 5, line 20-Col. 7, line 30). Thus, it would have been obvious to one of ordinary skill in the art to add the claimed particular inorganic fillers and biomass fillers taught by Liu et al. to the composite material (composition) of CN ‘474, with a reasonable expectation of successfully obtaining desired impact strength and toughness.
As to Claim 13: CN ‘474 does not specify producing the biodegradable polyester elastomer by reacting the ingredients at a particular temperature, continuing the reaction until desired texture is achieved as required by claim 13. However, Liu et al. disclose the use of biodegradable polyester elastomer by reacting the ingredients at the claimed elevated temperature, continuing the reaction until desired texture is obtained for the purposes of preparing a polyester based blends having better impact strength and tensile properties for films (Col. 1, lines 40-51 and Col. 5, line 55-Col. 6, line 20). Thus, it would have been obvious to one of ordinary skill in the art to employ the claimed biodegradable polyester elastomer by reacting the ingredients at a particular temperature, continuing the reaction until desired texture is achieved taught by Liu et al. in the composite material (composition) of CN ‘474, with a reasonable expectation of obtaining better impact strength and tensile properties suitable for films.
8. Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over English Translation of CN 112961474 (hereinafter referred to as “CN ‘474”) in view of Liu et al. (US 9,714,341) as applied to claims 1-3 and 7-17 above, and further in view of Kawamura et al. (US 2002/0061583).
The disclosures with respect to CN ‘474 and Liu et al. in paragraph 7 are incorporated here by reference. However, they do not specifically mention the addition of the biodegradable modified starch recited in claim 6.
Nevertheless, Kawamura et al. disclose the addition of a plasticized starch (corresponding to the claimed biodegradable modified starch) to obtain advantageous biodegradable resin composition with very good biodegradability for films (Paragraphs [0004], [0012] and [0026]).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to add the claimed biodegradable modified starch, i.e., plasticized starch, taught by Kawamura et al. to the composition suggested by CN ‘474 and Liu et al., with a reasonable expectation of successfully obtaining very good biodegradability for films.
9. For record purposes, it is noted that there are no prior art rejections of present claims 4 and 5 at this time.
Correspondence
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to HANNAH J PAK whose telephone number is (571)270-5456. The examiner can normally be reached 8-5 PM; M-F.
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, Arrie Lanee Reuther, can be reached at (571)-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HANNAH J PAK/Primary Examiner, Art Unit 1764
1 Cited in the IDS submitted by applicants on 07/30/2025.
Prosecution Insights