DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims Status
Claims 1, 4-12 and 15-24 are pending. Claim 1 is amended. New claims 15-24 are added.
Response to Amendments/Arguments
Applicant's amendments and arguments filed 6/16/2026 have been fully considered. Applicant's arguments with regard to the rejection of present claim(s) 1 and 4-12 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”) have been fully considered, but they are not persuasive for at least the following reasons.
Applicant contents that (1) Krishnaswamy, Yano and Miyamoto in combination does not teach the instantly claimed container closure that includes “…a melt strength enhancer consisting of a mixture of an organic peroxide and an oxazoline, and wherein the melt strength enhancer acts as a cross-linking agent to increase the melt strength of the poly(hydroxyalkanoate) copolymer” of instant claim 1 (remarks, page 9, first para), and (2) there is no motivation to combine the cited references, Krishnaswamy, Yano and Miyamoto, in that to combine an organic peroxide and oxazoline (remarks, page 8).
In response to contention (1), Applicant's amendments and arguments have been carefully studied and fully considered, but they are not persuasive for at least the following reasons. The examiner disagrees with applicant’s characteristic of Krishnaswamy. It is noted that the primary reference Krishnaswamy teaches a container closure comprising from about 50 to 97% weight percent of a poly(hydroxyalkanoate) copolymer (para [0152], [0013] [0016], [0017]). Krishnaswamy further teaches branching the PHA resin in order to improve melt strength (para [0136]). Krishnaswamy teaches that polyhydroxyalkanoate polymers are branched using a cross-linking agent, and that these cross-linking agents modify the melt strength properties of the polymer, i.e., the cross-linking agent is thus being melt strength enhancer (para [0137]), meeting the claimed limitations. Krishnaswamy expressly teaches suitable crosslinking agent includes peroxides (para [0137] [0147] [0148]). Krishnaswamy teaches the melt strength enhancer acts as a cross-linking agent to increase the melt strength of the poly(hydroxyalkanoate) copolymer (para [0137]).
In response to contention (2), in response to applicant's argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
In this case, as discussed above, the primary reference Krishnaswamy teaches a container closure comprising a poly(hydroxyalkanoate) copolymer, with the addition of a melt strength enhancer that includes an organic peroxide, and Krishnaswamy teaches the melt strength enhancer acts as a cross-linking agent to increase the melt strength of the poly(hydroxyalkanoate) copolymer (para [0137]).
Krishnaswamy does not specifically teaches the melt strength enhancer is a mixture consisting of organic peroxide and an oxazoline as instantly claimed in claim 1.
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).
The rejections below are updated to address the present claims. Any rejections and/or objections, made in the previous Office Action, and not repeated in the present Office Action, are hereby withdrawn.
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(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.
Claims 1, 4-12 and 15-24 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, regards as the invention.
Claim 1 recites “…from about 0.05 to about 3 weight percent of a melt strength enhancer …”, which renders the claim indefinite because claim 1 does not specify what the % range is based upon. In this connection, newly added claim 19 and claim 24 each recites “…wherein the melt strength enhancer is present in an amount of from about 0.05 to about 0.2 weight percent of a total weight of the biodegradable container closure”. As such, it is not clear if the recited weight percent of instant claim 1 is the weight percent of a total weight of the biodegradable container closure, or it is intended to be different and is based on other base weight, such as total weight of the entire additives. For purposes of examination, claim 1 is being interpreted as weight percent of a total weight of the biodegradable container closure. Newly added claim 22 contains the same issue. Claims 4-12 and 15-24 are rejected due to their dependency of claim 1. Appropriate clarification and correction are required.
Claim 23 is rejected under 35 U.S.C. 112(d) 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 23 recites “the melt strength enhancer acts as a cross-linking agent that increases the melt strength of the poly(hydroxyalkanoate) copolymer”, which is already recited in claim 1. Claim 23 does not further limit claim 1. 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 § 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 and 15-24 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 claims 1, 16 and 24, 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 that polyhydroxyalkanoate polymers are branched using a cross-linking agent, and that these cross-linking agents modify the melt strength properties of the polymer, i.e., the cross-linking agent is thus being melt strength enhancer (para [0137]), meeting the claimed limitations. Krishnaswamy expressly teaches suitable crosslinking agent includes organic peroxides (para [0137] [0147]), such as di-t-butyl peroxide (para [0148]), meeting the claimed material limitations of claim 16 and claim 24.
Krishnaswamy teaches the inclusion of a melt strength enhancer/cross-linking agents includes an organic peroxide (para [0137] [0147]), and Krishnaswamy also teaches the suitable amount of the melt strength enhancer/cross-linking agents is from 0.05 to 2 wt% (para [0147], [0148]), which range overlaps with the instantly claimed range of about 0.05 to about 3 weight percent of melt strength enhancer of claim 1. See 35 U.S.C. 112(b) rejection of claim 1 made of record in this Office Action. 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 melt strength enhancer acts as a cross-linking agent to increase the melt strength of the poly(hydroxyalkanoate) copolymer (para [0137]), meeting the claimed limitations of claim 1.
However, Krishnaswamy does not specifically teach the inclusion of a melt strength enhancer consisting of a mixture of an organic peroxide and an oxazoline as instantly claimed in claim 1.
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, 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 embodiments 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.
Regarding claim 15, Krishnaswamy teaches suitable poly-3- hydroxybutyrate-co-3-hydroxyhexanoate (P3HB-co-P3HHx) include those poly-3- hydroxybutyrate-co-3-hydroxyhexanoate (P3HB-co-P3HHx) having from about 2 to about 6 mole percent repeat units of 3-hydroxyhexanoate (para [0065]).
Regarding claim 17, Krishnaswamy teaches suitable poly(hydroxyalkanoate) copolymer include those having a melt temperature (Tm) of from about 80 °C to about 180 °C (para [0066]), which range overlaps with the instantly claimed range of 130 °C to about 160 °C. 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 18 and 20, Krishnaswamy teaches poly(hydroxyalkanoate) copolymer’s crystallinity is a result effective variable in that it is affected by the selection and loading of nucleating agent (para [0157] [0158]-[0163]).
Absent a showing of criticality with respect to degree of crystallinity of poly(hydroxyalkanoate) copolymer (a result effective variable), it would have been obvious to a person of ordinary skill in the art to adjust the selection and loading of nucleating agent to arrive at the desired degree of crystallinity of poly(hydroxyalkanoate) copolymer through routine experimentation in order to achieve the desired properties of the container once produced (i.e., mechanical strength, permeability, and/or dimensional stability, etc.) , which would have arrived at a workable degree of crystallinity that falls within the broad range as instantly claimed, i.e., a degree of crystallinity of from about 20% to about 70% as measured via x-ray diffraction as in claim 18, and a degree of crystallinity of from about 30% to about 60% as measured via x-ray diffraction as in claim 20. It has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). MPEP 2144.05.
Regarding claims 19 and 22, Krishnaswamy teaches the inclusion of a melt strength enhancer/cross-linking agents (para [0137] [0147]), and Krishnaswamy also teaches the suitable amount of the melt strength enhancer/cross-linking agents is from 0.05 to 2 wt% (para [0147], [0148]), which range overlaps with the instantly claimed range of about 0.05 to about 0.2 weight percent of melt strength enhancer of claim 19, and which range overlaps with the instantly claimed range of about 0.1 to about 0.5 weight percent of melt strength enhancer of claim 22. 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. See 35 U.S.C. 112(b) rejection of claims 19 and 22 made of record in this Office Action.
Regarding claim 21, Krishnaswamy teaches the inclusion of suitable additives including plasticizers such as sebacate (para [0156] [0178]), meeting the claimed material limitations. Krishnaswamy teaches as in one of its embodiments that the suitable amount of plasticizer is about 7.85% (Table 4, para [0213), which amount falls within and overlaps with the instantly claimed range of about 0.5 weight percent to about 15 weight percent of plasticizer. 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 23, Krishnaswamy teaches the melt strength enhancer acts as a cross-linking agent to increase the melt strength of the poly(hydroxyalkanoate) copolymer (para [0137]), meeting the claimed limitations.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YAN LAN whose telephone number is (571)270-3687. The examiner can normally be reached Monday - Friday 7AM-4PM.
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/YAN LAN/Primary Examiner, Art Unit 1782
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