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 Objections
Claim 4 is objected to because “fatty acid methyl esters” is listed twice (line 4-5 and penultimate line).
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.
Claims 1-12 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
With respect to claim 1, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
With respect to claims 1, 2, and 7-9, the term “about” is indefinite because it is unclear how the term “about” extends the scope of the endpoints in the ranges.
With respect to claim 4, the plasticizer “isoboride-type plasticizers” is indefinite. The addition of the word “type” to an otherwise definite expression extends the scope of the expression so as to render it indefinite. Ex parte Copenhaver, 109 USPQ 118 (Bd. App. 1955).
With respect to claim 11, the term “the bio-based content” lacks antecedent basis. It is unclear what is limited by the term “bio-based.”
With respect to claims 3, 5, 6, 10, and 12, they are rejected for failing to cure the deficiency of the claim from which they depend.
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.
(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.
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 of this title, 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.
Claims 1-9, 11, and 12 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Nemoto (US 2008/0119584).
With respect to claims 1-4, Nemoto discloses a biodegradable wrap film comprising a polylactic acid (i.e., biodegradable thermoplastic polymer) having resiliency (abstract). Example 1 includes polylactic acid and 10 wt % adipic acid ester (i.e., plasticizer) (paragraph 0158). Reference Example 1 includes polylactic acid and 30 wt % triethyl citrate as plasticizer (paragraph 0155). Nemoto discloses that the film has resiliency which is characterized by storage modulus (paragraph 0032 and 0038) and that recovery behavior against deformation of the film is characterized by peak value of loss tangent which should be between 0.1-0.8 (paragraphs 0047-0048). Table 1 shows that Reference Example 1 and Example 1 meet the peak value.
While Nemoto does not explicitly disclose a force recovery property shortly after being stretch and then returned to a lower strain, such a property evidently dependent upon the nature of the composition used. Case law holds that a material and its properties are inseparable. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Alternatively, it would have been obvious to one of ordinary skill in the art to obtain a biodegradable resin composition having a force recovery property like claimed given that Nemoto discloses that the biodegradable composition is used to prepare a thermoplastic film having resiliency and recovery properties.
With respect to claims 5 and 6, the inorganic filler and biomass are optional.
With respect to claims 7-9, Nemoto teaches that the biodegradable wrap film has the biodegradability originally possessed by the polylactic acid (paragraph 0015) and that the plasticizer is selected in view of compatibility with polylactic acid and biodegradability (paragraph 0101).
While Nemoto does not explicitly disclose the number of days until 90% disintegration, such a property evidently dependent upon the nature of the composition used. Case law holds that a material and its properties are inseparable. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Alternatively, it would have been obvious to one of ordinary skill in the art to obtain a biodegradable resin composition having a disintegration completion time like claimed given that Nemoto anticipate the claimed composition ingredients and that the polylactic acid and plasticizer are biodegradable.
With respect to claim 11, Nemoto teaches that the composition comprises bio-derived materials such as polylactic acid. Therefore, it inherently has up to 100% bio-based carbon content.
With respect to claim 12, the examples of Nemoto are formed by extruding and casting (paragraph 0158).
Claim Rejections - 35 USC § 103
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Nemoto (US 2008/0119584).
The discussion with respect to Nemoto in paragraph 4 above is incorporated here by reference.
The examples of Nemoto include a step of extruding the composition with a twin screw extruder at a temperature of 190-200°C (paragraph 0158) but fails to disclose how long the composition is in melt compound and processed.
Even so, it is the examiner’s position that extrusion time is a result effective variable because changing it will clearly affect the type of product obtained. See MPEP § 2144.05 (B). Case law holds that “discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.” See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Specifically, one of ordinary skill in the art would recognize that too short of an extrusion time does not result in sufficient time to mix and too long of an extrusion time increases premature degradation or scorching due to prolonged heat.
In view of this, it would have been obvious to one of ordinary skill in the art to utilize appropriate extrusion times, including those within the scope of the present claims, so as to produce desired end results.
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 1-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 7-12, 14, 15, and 17 of copending Application No. 18/404,500 (published as US 2025/0223436). Although the claims at issue are not identical, they are not patentably distinct from each other because of the reasons given below.
With respect to instant claim 1, US appl ‘500 (claim 1) claims a biodegradable resin composition comprising 10-99.99 wt % biodegradable thermoplastic polymers, 0-40 wt % of one or more plasticizers, 0-20 wt % of one or more of inorganic fillers; 0-20 wt % of one or more of biomass fillers; and about 0-10 wt % of one or more additives—wherein the composition has 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 comprising
Given that US appl ‘500 claims a biodegradable resin composition including claimed ingredients in overlapping amounts, it would have been obvious to one of ordinary skill in the art to obtain the presently claimed invention from the claims of US appl ‘500.
With respect to instant claims 2-12, see claims 2-4, 7-12, 14, 15, and 17 of US appl ‘500, respectively.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-5 and 7-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 5-12 of copending Application No. 18/404,492 (published as US 2025/0223434). Although the claims at issue are not identical, they are not patentably distinct from each other because of the reasons given below.
With respect to instant claim 1, US appl ‘492 (claim 1) claims a biodegradable resin composition comprising 10-99.99 wt % biodegradable thermoplastic polymers, 0-40 wt % of one or more plasticizers, 0-20 wt % of one or more of inorganic fillers; 0-20 wt % of one or more of biomass fillers; and 0-10 wt % of one or more additives—wherein the composition has 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 comprising
Given that US appl ‘492 claims a biodegradable resin composition including claimed ingredients in overlapping amounts, it would have been obvious to one of ordinary skill in the art to obtain the presently claimed invention from the claims of US appl ‘492.
With respect to instant claims 2-5 and 7-12, see claims 2, 3, 5-12 of US appl ‘492, respectively.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/Vickey Nerangis/
Primary Examiner, Art Unit 1763
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