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 .
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, 4-7 and 9-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-13 and 15-19 of copending Application No. 18/410,864 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 4-13 and 15-19 of copending Application No. 18/410,864 encompass the scope of instant claims 1, 4-7 and 9-21.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claim(s) 1, 4-7 and 9-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhao et al. (US 2004/0225269) in view of Yano et al. (US 2006/0276617), as evidenced by Miyamoto et al. (US 2008/0108742).
Regarding claim 1, Zhao discloses a biodegradable container comprising a moldable resin composition comprising a blend of a polyhydroxyalkanoate (PHA) resin and a thermoplastic (co)polymer [abstract, 0001, 0007]. Zhao teaches an example of the disclosed composition comprising 55 wt% of a PHA resin, 2 wt% of a polyhydroxybutyrate particles, 10 wt% of dimethyl sebacate, 2 wt% of TiO₂, 1 wt% of euracamide, and 30 wt% of polylactic acid (PLA) [0084, Example 4]. The PHA resin in the example composition is a poly(3-hydroxybutryate-co-3-hydroxhexanoate) resin comprising from 10 to 12 wt% of 3-hydroxyhexanoate [0084, Example 4].
The poly(3-hydroxybutryate-co-3-hydroxhexanoate) reads on the claimed polymer component and poly(hydroxyalkanoate) copolymer. The combination of dimethyl sebacate, PLA, euracamide, and polyhydroxybutyrate particles read on the claimed additional additives. The range of amounts of poly(3-hydroxybutryate-co-3- hydroxhexanoate) reads on the claimed range of polymer component and polyhydroxyalkanoate. The range of amounts of the combination of dimethyl sebacate,
PLA, TiO₂, euracamide, and polyhydroxybutyrate particles reads on the claimed range of amounts of additional additives.
Zhao is silent regarding the disclosed resin composition consisting essentially of
two melt strength enhancers comprising an organic peroxide and an oxazoline.
Yano discloses an aliphatic polyester resin composition which exhibits excellent heat resistance, moldability, and hydrolysis resistance [abstract, 0001]. The resin composition comprises a biodegradable polyester resin which is crosslinked with a crosslinking agent wherein some or all of the terminal carboxyl groups in the polyester resin are blocked with a terminal blocking agent [abstract, 0001, 0024, 0028]. Yano teaches that from about 0.1 to 10 parts by mass (pbm) of an organic peroxide (relative to 100 pbm of polyester resin) is added for increasing the degree of crosslinking [0026]. Yano also teaches that the terminal carboxyl groups of the polyester resin are blocked via a blocking agent which may be, inter alia, an oxazoline compound [0029, 0034]. The blocking agent is disclosed as being incorporated into the composition in a range of amounts of 0.1 to 20 pbm relative to 100 pbm of polyester resin [0038].
Zhao and Yano are both directed towards biodegradable polyester resin compositions comprising an aliphatic polyester resin.
It would have been obvious to one of ordinary skill in the art at the time the instant application was effectively filed to have modified the example composition of Zhao with the teachings of Yano by incorporating a crosslinking agent, 0.1 to 10 pbm of an organic peroxide, and 0.1 to 20 pbm of an oxazoline compound with the expectation of producing a biodegradable resin composition which exhibits excellent heat resistance, moldability, and hydrolysis resistance.
The organic peroxide and oxazoline compound that would have been present in
the resulting composition would have read on the claimed organic peroxide and
oxazoline. The combined ranges of amounts of the organic peroxide and oxazoline
compound in the resulting composition would have overlapped, and therefore rendered
obvious, the claimed range of amounts (see MPEP 2144.05).
While modified Zhao is silent regarding the organic peroxide and oxazoline compound being melt strength enhancers, it is noted that Yano teaches that the organic
peroxide contributes to the crosslinking of polyester resin composition [0026] which would intrinsically increase the molecular weight and therefore the melt strength of the
composition.
Regarding the terminal blocking agent, Miyamoto serves as objective evidence
that end-capping (i.e. terminal blocking) of polyester resins inhibits the lowering of the resin's molecular weight by blocking the terminal carboxyl group [0063]. 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 effectively enhances the
resin's melt strength. As such, the oxazoline compound taught by Yano reasonably reads on the melt strength enhancer as claimed.
Regarding claims 17 and 19-20, claims 17 and 19-20 recite method limitations such extrusion blow molding, blow molded, reheat stretch blow molding, extrusion blow molding and injections blow molding and have been given little to no patentable weight since the method by which a product is made is not germane to the patentability of a product in a product claim (MPEP 2113).
Zhao also discloses wherein the resin the body of the biodegradable container further comprises from about 1.0 to about 15.0 weight percent of at least one poly(hydroxyalkanoate) comprising from about 25 to about 50 mole percent of a poly(hydroxyalkanoate) selected from the group consisting of poly(hydroxyhexanoate), poly(hydroxyoctanoate), poly(hydroxydecanoate), and mixtures thereof, wherein the
resin the body of the biodegradable container further comprises a poly(hydroxyalkanoate)s terpolymer made up from about 75 to about 99.9 mole percent monomer residues of 3-hydroxybutyrate, from about 0.1 to about 25 mole percent monomer residues of 3-hydroxyhexanoate, and from about 0.1 to about 25 mole percent monomer residues of a third 3-hydoxyalkanoate selected from the group consisting of 3-hydroxyoctanoate, 3-hydroxydecanoate poly(hydroxyhexanoate), poly(hydroxyoctanoate). poly(hydroxydecanoate). and mixtures thereof, wherein the
poly(hydroxyalkanoate) copolymer polymer has a weight average molecular weight ranging from about 50 thousand Daltons to about 2.5 million Daltons, wherein the
resin further comprises from about 0.1 weight percent to about 10 weight percent of at least one nucleating agent is selected from the group consisting of crythritols, pentacrythritol, dipentaerythritols, artificial sweeteners, stearates, sorbitols, mannitols, inositols, polyester waxes, nanoclays, polyhydroxybutyrate, boron nitride, and mixtures thereof (paragraphs [0001]. [0013-0021], [0025], [0031-0033], [0047-0049], [0052-0059], [0084]).
Zhao also discloses wherein the body of the biodegradable container resin- further comprises from about 1 weight percent to about 60 weight percent of polymers selected from the group consisting of poly(lactic acid), poly(caprolactone), poly(ethylene sebacate sebicate), poly(butylene succinate), and poly(butylene succinate-co-adipate), and copolymers and blends thereof, wherein the additional additives further comprise resin further comprises from about 0.1 weight percent to about 5 weight percent of a reheat agent selected from the group consisting of carbon black, infrared absorbing pigments, and mixtures thereof, wherein the additional additives further comprise resin further comprises from about 0.1 weight percent to about 20 weight percent of a filler selected from the group consisting of calcium carbonate, talc, starch, zinc oxide, neutral alumina, and mixtures thereof (paragraphs [0001]. [0013-0021], [0025], [0031-0033], [0047-0049], [0052-0059], [0084]).
Zhao also discloses wherein the body of the biodegradable container resin further comprises from about 0.1 weight percent to about 5 weight percent polymer fibers for structural support (since cellulose fibers are disclosed), wherein the additional additives further comprise resin further comprises from about 0.1 weight percent to about 3 weight percent of a fatty acid amide slip agent (since euracamide is disclosed), wherein the additional additives further comprise resin further comprises from about 15 weight percent of a plasticizer selected from the group consisting of sebacates; citrates; fatty esters of adipic acid, succinic acid, and glucaric acid; lactates; alkyl diesters; alkyl methyl esters; dibenzoates; propylene carbonate; caprolactone diols having a number average molecular weight from about 200 to about 10,000 g/mol; poly(ethylene) glycols having a number average molecular weight of about 400 to about 10,000 g/mol; esters of vegetable oils; long chain alkyl acids; adipates; glycerols; isosorbide derivatives or mixtures thereof; poly(hydroxyalkanoate) copolymers comprising at least 18 mole percent monomer residues of hydroxyalkanoates other than hydroxybutyrate; and mixtures thereof (paragraphs [0001]. [0013-0021], [0025], [0031-0033], [0047-0049], [0052-0059], [0084]).
With regard to claims 15-16 and 18, modified Zhao does not specifically disclose applicant’s recited properties of degradation, moisture vapor transmission rate and shelf-life. However, applicant’s recited properties are necessarily present in modified Zhao since modified Zhao discloses applicant’s recited structure and materials, see above. It would have been obvious to have provided applicant’s recited properties in order to provide improved biodegradability, gas barrier properties and/or durability.
With regards to claim 21, modified Zhao does not disclose wherein the biodegradable container has a volume ranging from about 5 mL to about 25 L. However, it has been found that a change in size or shape is obvious and well within the level of one of ordinary skill in the art (MPEP 2144.04 (IV)). It would have been obvious to have provided wherein the biodegradable container has a volume ranging from about 5 mL to about 25 L in order to provide improved container capacity or lower costs via the use of less materials (through the use of less materials) and/or space saving via the production of a smaller container.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL C MIGGINS whose telephone number is (571)272-1494. The examiner can normally be reached Monday-Friday, 1-9 pm EST.
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/MICHAEL C MIGGINS/Primary Examiner, Art Unit 1782
MCM
January 27, 2026