DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1, 4-12, in the reply filed on 1/26/2026 is acknowledged.
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.
Claim 5 is 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, regards as the invention.
Claim 5 recites “a terpolymer made up from…monomer residues of 3-hydroxybutyrate…3-hydroxyhexanoate…and monomer residues of a third 3-hydroxyalkanoate selected from the group consisting of poly(hydroxyhexanoate), poly(hydroxyoctanoate), poly(hydroxydecanoate), and mixtures thereof”, which renders the claim indefinite. This claim is rendered indefinite because no monomer residues are recited in the third selected group since all of poly(hydroxyhexanoate), poly(hydroxyoctanoate), and poly(hydroxydecanoate) recited are polymers. Thus, it is unclear what monomer residues are claimed as a third 3-hydroxyalkanoate. For purposes of examination, claim 5 is being interpreted as monomers of the third 3-hydroxyalkanoate.
Appropriate clarification and correction are required.
Claim Rejections - 35 USC § 103
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 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.
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) 1, 4-12 are rejected under 35 U.S.C. 103 as being unpatentable over Krishnaswamy (US 2012/0041109; “Krishnaswamy”) in view of Yano et al. (US 2006/0276617; “Yano”) and Miyamoto et al. (US 2008/0108742; “Miyamoto”).
Regarding claim 1, Krishnaswamy teaches a container closure (para [0152, [0192], the biodegradable polymeric composition of Krishnaswamy is suitable for making container closures) comprising:
- from about 50 to 97% weight percent of a poly(hydroxyalkanoate) copolymer (para [0013] [0016], [0017], Krishnaswamy teaches a biodegradable polymer composition blend suitable for forming container closures comprising a polyhydroxyalkanoate (PHA) polymer/copolymer; In particular, Krishnaswamy teaches a polymeric blend includes poly(hydroxyalkanoate) copolymer resins and calcium carbonate, wherein the calcium carbonate may be present at about 3 wt% to about 50 wt% of the composition see para. [0016], thereby the calculated weight percent of poly(hydroxyalkanoate) copolymer is 50 to 97 wt%), which range overlaps with the instantly claimed range of 40 to about 99 weight percent,
– of which the poly(hydroxyalkanoate) copolymer are derived from random monomeric repeating units having a structure of wherein R1 is selected from the group consisting of CH3 and a C3 to C19 alkyl group (para [0017], [0018], Krishnaswamy teaches that the polyhydroxyalkanoate may be a copolymer such as poly(3-hydroxybutyrate-co-3-hydroxyhexanoate) (P3HB-co-3HHx), which copolymer is derived from random monomeric repeating units having structures meeting the claimed limitations;
- wherein the copolymer comprises 85 to 97% mol% monomeric units having R1 being CH3 and the balance of monomeric units having R1 being selected from C3 to C19 alkyl groups (para [0015]-[0018], [0023], [0063]-[0065], Krishnaswamy teaches that the poly(3-hydroxybutyrate-co-3-hydroxyhexanoate) copolymer includes about 3% to about 15% 3-hydroxyhexanoate units, see para. [0017], and thus comprises from 85 to 97% 3-hydroxybutyrate, because 3-hydroxybutyrate corresponds to the claimed monomeric unit having R¹=CH₃, the disclosed poly(3-hydroxybutyrate-co-3-hydroxyhexanoate) copolymer meets the claimed requirement that 75–99 mol% of the monomeric units have R¹=CH₃, with the balance being other C3–C19 alkyl hydroxyalkanoate units, meeting the claimed limitations), which range overlaps with the instantly claimed range of 75-99 mol% of claim 1;
- wherein the poly(hydroxyalkanoate) copolymer comprises poly-3-hydroxybutyrate-co-3-hydroxyhexanoate (P3HB-co-P3HHx) (para [0017], [0018], Krishnaswamy teaches that the polyhydroxyalkanoate may be a copolymer such as poly(3-hydroxybutyrate-co-3-hydroxyhexanoate) (P3HB-co-3HHx); and
- from about 3 to about 50 wt.% additional additives (para [0016], the inclusion various of additives as desired including calcium carbonate in amount of about 3 to about 50 wt%), which range overlaps with the instantly claimed range of 1 to about 60 wt.% additional additives;
- wherein the additional additives comprise from 0.1 to 20 wt% of at least one nucleating agent (para [0159], [0162]), which range overlaps with the instantly claimed range of about 0.1 to about 10 weight percent of at least one nucleating agent.
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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05.
Krishnaswamy further teaches branching the PHA resin in order to improve melt strength (para [0136]). Krishnaswamy teaches inducing branching via the addition of from 0.05 to 2 wt% of an organic peroxide (para [0147], [0148]).
However, Krishnaswamy does not specifically teach the inclusion of a melt strength enhancer consisting essentially of a mixture of an organic peroxide and an oxazoline in the amount as instantly claimed (i.e., from about 0.05 to about 3 weight percent) in claim 1.
Regarding transitional phrase "consisting essentially of", the transitional phrase "consisting essentially of" of claim 1 limits the scope of a claim to the specified materials or steps "and those that do not materially affect the basic and novel characteristic(s)" of the claimed invention. For the purposes of searching for and applying prior art under 35 U.S.C 102 and 103, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are "consisting essentially of" will be construed as equivalent to "comprising". MPEP 2111.03 (III). Thus, In the present case, the Examiner treated the "consisting essentially of" language as an equivalent to "comprising" and rejected the claims under 35 U.S.C 102. If an applicant contends that additional steps or materials in the prior art are excluded by the recitation of 'consisting essentially of, applicant has the burden of showing that the introduction of additional steps or components would materially change the characteristics of Applicant's invention.
In the same field of biodegradable polyester resin composition and molded articles made thereof, Yano teaches an aliphatic polyester resin composition which exhibits excellent heat resistance, moldability, and hydrolysis resistance (para [0001]). Yano teaches its resin composition comprises a biodegradable polyester resin wherein the some or all of the terminal carboxyl groups in the polyester resin are blocked with a terminal blocking agent (the blocking agent C, para [0008], [0027, [0028]). Yano also teaches that the terminal carboxyl groups of the polyester resin are blocked via a blocking agent of oxazoline compound (para [0029, 0034]). Yano teaches suitable amount of the blocking agent is in a range of amounts of 0.1 to 20 pbm relative to 100 pbm of polyester resin (para [0038]). Yano teaches that the disclosed range of blocking agent provides hydrolysis resistance (para [0038]).
In the present case, it is noted Yano is silent regarding the oxazoline compound being a melt strength enhancer. Miyamoto is cited as objective evidence for its teaching that end-capping (i.e. terminal blocking) of polyester resins inhibits/prevents the lowering of the resin’s molecular weight by blocking the terminal carboxyl group (para [0063] of Miyamoto). Since the melt strength of a resin is directly related to the resin’s molecular, by inhibiting the lowering of a polyester resin’s molecular weight, a terminal blocking agent (i.e. terminal blocking agent) effectively enhances the resin’s melt strength. Miyamoto teaches the known end-capping agent includes oxazoline compound (para [0064]).
As such, the oxazoline compound taught by Yano reasonably reads on the melt strength enhancer as claimed.
Krishnaswamy and Yano are both directed towards biodegradable polyester resin composition comprising an aliphatic polyester resin. It would have been obvious to one of ordinary skill in the art to modify the container closure of Krishnaswamy in view the teachings of Yano, to include in the biodegradable polymer composition of Krishnaswamy (i.e., which includes 0.05 to 2 wt% of an organic peroxide as discussed above) with the suitable amount of 0.1 to 20 pbm of an oxazoline compound as taught by Yano, with the expectation of producing a biodegradable resin composition which exhibits hydrolysis resistance as taught by Yano (para [0029] [0034] [0038]), which would have predictably arrived at a satisfactory container closure that is the same as instantly claimed. The combination of the organic peroxide and oxazoline compound in the composition taught by modified Krishnaswamy would have read on the claimed melt strength enhancer. The combined ranges of amounts of the organic peroxide and oxazoline compound in the composition taught by modified Krishnaswamy would have overlapped, and therefore rendered obvious, the range of amounts of melt strength enhancer recited in claim 1 (see MPEP 2144.07).
Regarding the recitations the container closure is “biodegradable” of claim 1, Krishnaswamy is silent as to the container closure is being biodegradable. However, because the container closure of modified Krishnaswamy and the instantly claimed container closure are identical or substantially identical in composition, and also because the ranges taught by modified Krishnaswamy substantially overlap those claimed, one would expect that the container closure of modified Krishnaswamy would possess the same or similar properties as the instantly claimed container closure and is capable of performing in the same or similar manner as the instantly claimed container closure, i.e., being biodegradable. "Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. See MPEP 2112. 01.
Regarding claim 4, Krishnaswamy teaches as in one of its embodiments the polymer composition for its biodegradable container closure further containing suitable poly(hydroxyalkanoate)s in amount of 5 to 95% (para [0080] [0087]), which range overlaps with the instantly claimed range of 1.0 to about 15.0 wt%. Krishnaswamy teaches wherein the suitable poly(hydroxyalkanoate)s includes poly (3- hydroxybutyrate-co-3-hydroxyhexanoate) (P3HB-co-P3HHx) (para [0017] [0019]), and the composition of the P3HB-co-P3HHx copolymer taught by Krishnaswamy is comprised of 5 to 50 wt% 3-hydroxyhexanoate relative to the overall polymer weight (para [0019]), which overlaps or encompasses the range recited in instant claim 4, and therefore renders obvious the claimed range of the at least one poly(hydroxyalkanoate) in claim 4. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05.
Regarding claim 5, See 35 U.S.C. 112(b) rejection of claim 5 made of record in this Office Action. Krishnaswamy teaches as in one of its embodiments a polymer composition for its biodegradable container closure further containing poly(hydroxyalkanoatc)s, wherein the poly(hydroxyalkanoate)s comprise poly(3- hydroxybutyrate-co-3-hydroxyhexancate) (P3HB-co-P3HHx) [0019]. The composition of the P3HB-co-P3HHx copolymer taught by Krishnaswamy is comprised of 5 to 50 wt% 3- - hydroxyhexanoate relative to the overall polymer weight [0019], which is considered as to read on the composition of claim 5 wherein the poly(hydroxyalkanoate) comprises a terpolymer made up from about 75 to 99.9 mole percent residues of 3-hydroxybutyrate, from about 0.1 to 25 mole percent monomer residues of 3-hydroxyhexanoate, and from about 0.1 to 25 mole percent monomer residues of a third 3-hydroxyalkanoate, wherein the third 3-hydroxyalkanoate is 3-hydroxyhexanoate.
Regarding claim 6, Krishnaswamy teaches the suitable poly(hydroxyalkanoate) copolymer are those having the molecular weight ranges from 400,000 to 1,500,000 Daltons (para [0109]), which range overlaps with the instantly claimed range of from about 50 thousand Daltons to about 2.5 million Daltons. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05.
Regarding claim 7, Krishnaswamy teaches the additional additives comprise from 0.1 to 20 wt% of at least one nucleating agent (para [0159], [0162]), which range overlaps with the instantly claimed range of about 0.1 to about 3 weight percent of at least one nucleating agent. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05
Krishnaswamy teaches the nucleating agent may be polyhydroxybutyrate (para [0162]).
Regarding claim 8, Krishnaswamy teaches that the composition may comprise suitable fillers, such as talc, mineral filler (para [0037]), and Krishnaswamy teaches examples composition wherein the talc is present in an amount of about 9.8 wt% (para [0281], Table 17, Examples 1-5]), which amount falls within and overlaps with the instantly claimed range of about 1 weight percent to about 40 weight percent of a filler. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05
Regarding claim 9, Krishnaswamy teaches that the composition may additionally comprise 5 to 95 wt% of a non-polyhydroxyalkanaote polymer such as poly(butylene succinate) (para [0121], meeting the claimed material limitations), which amount range overlaps with the instantly claimed range of about 1 weight percent to about 50 weight percent. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05
Regarding claim 10, Krishnaswamy teaches the inclusion of suitable additives including slip agent, erucamide, fatty acid amide agent (para [0120] [0168] [0213]), which reads on the instantly claimed slip agent. Krishnaswamy teaches as in one of its embodiment wherein the slip-antiblock masterbatch contains erucamide (which is a fatty acid amide) in amount of 3% by weight (see Table 4, para [0213]), which amount falls within and overlaps with the instantly claimed range of about 0.1 weight percent to about 3.0 weight percent of a fatty acid amide slip agent. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05
Regarding claims 11 and 12, modified Krishnaswamy is silent regarding the moisture vapor transmission rate and degradation properties of the disclosed example composition. However, because the container closure of modified Krishnaswamy and the instantly claimed container closure are identical or substantially identical in composition, and also because the ranges taught by modified Krishnaswamy substantially overlap those claimed, one would expect that the container closure of modified Krishnaswamy would possess the same or similar properties as the instantly claimed container closure and is capable of performing in the same or similar manner as the instantly claimed container closure, i.e., having a moisture vapor transmission rate of about 20 g/m2 /day or less as measured under ASTM E96 as in claim 11, and capable of undergoing degradation according to ASTM D5511 (anaerobic and aerobic environments), ASTM 5988 (soil environments), ASTM D5271 (freshwater environments), ASTM D6691 (marine environments), ASTM D6868, or ASTM D6400 for industrial and home compostability (in soil) as in claim 12. "Products of identical chemical composition cannot have mutually exclusive properties." A chemical composition and its properties are inseparable. See MPEP 2112. 01. Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning tending to show inherency, the burden shifts to the applicant to show an unobvious difference. See MPEP 2112.
Conclusion
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/YAN LAN/Primary Examiner, Art Unit 1782