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 .
Response to Amendments and Arguments
Applicant’s amendments and arguments, filed October 16, 2025, with respect to the rejection(s) under 35 U.S.C. 103 in view of Krishnaswamy (US 2012/0041109, hereinafter referred to as “Krishnaswamy”) in view of Garcia et al. (US 2020/0002487, hereinafter referred to as “Garcia”) have been fully considered and are persuasive. Applicant has amended the claims to change the scope of the claims outside the scope of the previous prior art. Specifically, Applicant’s amendment requires wherein the biodegradable label is printed with an ink and wherein the label is affixed to a bottle or package with an adhesive. Krishnaswamy and Garcia are silent towards wherein the biodegradable label is printed with an ink and wherein the label is affixed to a bottle or package with an adhesive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of (US 2012/0041109, hereinafter referred to as “Krishnaswamy”) in view of Garcia et al. (US 2020/0002487, hereinafter referred to as “Garcia”) and Mitchell et al. (US 2017/0009108, hereinafter referred to as “Mitchell”).
Applicant’s arguments and amendments are considered fully responded to above and within the new grounds of rejection below.
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.
Claims 1, 2, 4-8, 10-16 are rejected under 35 U.S.C. 103 as being unpatentable over Krishnaswamy (US 2012/0041109, hereinafter referred to as “Krishnaswamy”) in view of Garcia et al. (US 2020/0002487, hereinafter referred to as “Garcia”) and further in view of Mitchell et al. (US 2017/0009108, hereinafter referred to as “Mitchell”).
As to Claim 1: Krishnaswamy teaches a polyhydroxyalkanoate (PHA) polymer film article which is biodegradable (Abstract and [0002]), which reads on the claimed biodegradable label according to the instant specification para. [00047] (i.e., wherein the claimed biodegradable label is a film). Krishnaswamy further teaches various exemplary compositions for producing films comprising, e.g., 76 wt% of PHA (Table 11, Formulation 1-5), which anticipates the claimed range. Krishnaswamy also teaches wherein the PHA may be a copolymer derived from units comprising 3-hydroxybutyrate (3HB) wherein 3HB may comprise at least 85% by weight of the total monomers ([0065]), which is within the claimed range. Krishnaswamy further teaches wherein the PHA may comprise poly(3-hydroxybutyrate-co-3-hydroxyhexanoate) (P3HB-co-P3HHx), wherein the 3-hydroxyhexanoate content ranges from 5 to 50 wt% of the copolymer ([0019]). It is noted that the structure of (P3HB-co-P3HHx) is derived from the structure of poly(hydroxyalkanoate) wherein R1 = CH3 (P3HB) and R1 = C3 alkyl (P3HHx), which reads on the structure recited in claim 1. Krishnaswamy further teaches exemplary compositions for producing films comprising 24 wt% of additional additives to a PHA blend (Table 11, Formulation 1-5), which is within the claimed range. Krishnaswamy also teaches wherein the film may include at least one nucleating agent ([0015]) in an amount of 0.1 to 20 wt% ([0162]), and further comprises at least one additive to increase melt strength ([0125] and [0136]) wherein said additive is included in an amount of 0.05 to 2% by weight ([0147]), which overlap with the claimed ranges. In the case where 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). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Krishnaswamy suggests, that the overlapping portion is a useable range for additional additives including at least one nucleating agent, and a melt strength enhancer for PHA copolymer films.
Krishnaswamy teaches that the film comprises at least one additive to increase melt strength ([0125]) which may be a peroxide, but is silent towards an oxazoline.
Garcia teaches a film comprising a composition comprising PHA ([0008]), and 0.1 wt% to 3 wt% of at least one crosslinking agent and/or chain extender (considered analogous to the branching agent taught by Krishnaswamy to increase melt strength, see [0136]) such as peroxide and oxazoline ([0088]). Krishnaswamy and Garcia are considered analogous art because they are directed towards the same field of endeavor, namely, films comprising PHA compositions. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to include a peroxide and an oxazoline within the composition of Krishnaswamy because Krishnaswamy teaches a peroxide melt strength enhancing additive and Garcia teaches that mixtures of peroxide and oxazoline is known within the art to be useful for the same purpose. In re Linder 457 F,2d 506,509, 173 USPQ 356, 359 (CCPA 1972).
Krishnaswamy and Garcia are silent towards wherein the biodegradable label is printed with an ink.
Mitchell teaches a label comprising a thermoplastic film or film derived from a thermoplastic polymer (FIG. 1, 101, 104, see [0084], [0152]) wherein said thermoplastic polymer may be a polyhydroxyalkanoate (PHA) ([0167]). Mitchell further teaches that said thermoplastic polymer may have a printable surface that is printed when preparing a label ([0085]-[0086]) which may be printed with an ink (e.g., UV ink) ([0267]). Krishnaswamy and Mitchell are considered analogous art because they are directed towards the same field of endeavor, namely, polymeric-derived films, articles, and applications thereof. It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to utilize the biodegradable PHA polymer film article of Krishnaswamy as a label that is printed with an ink and the motivation would have been that Mitchell teaches PHA films are recognized within the art as known polymeric materials suitable for an intended purpose of making labels printed with an ink ([0267] of Mitchell). The selection of a known material based on its suitability for its intended use is prima facie obvious (see MPEP 2144.07).
With regard to the limitation “wherein the label is affixed to a bottle or package with an adhesive,” a recitation of intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art is capable of performing the intended use, then it meets the claim. In the instant case, Krishnaswamy as modified by Garcia teaches a film which reads on the claimed biodegradable label and would therefore be capable of being affixed to a bottle or package with an adhesive.
As to Claim 2: Krishnaswamy and Garcia teach the label of claim 1 (supra).
Krishnaswamy further teaches various exemplary compositions for producing films comprising, e.g., 76 wt% of PHA (Table 11, Formulation 1-5), which anticipates the claimed range.
As to Claim 4: Krishnaswamy and Garcia teach the label of claim 1 (supra).
Krishnaswamy further teaches wherein the PHA may comprise poly(3-hydroxybutyrate-co-3-hydroxyhexanoate) (P3HB-co-P3HHx), wherein the 3-hydroxyhexanoate content ranges from 5 to 50 wt% of the copolymer ([0019]). This range overlaps with the claimed range. In the case where 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). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Krishnaswamy suggests, that the overlapping portion is a useable range for an amount of a comonomer including hydroxyhexanoate within a PHA copolymer with properties amenable for forming films ([0065]).
As to Claim 5: Krishnaswamy and Garcia teach the label of claim 1 (supra).
Krishnaswamy further teaches a PHA copolymer which may comprise three different monomer units (i.e., a terpolymer) ([0065]) and may comprise units 3HB (i.e., hydroxybutyrate), 3HH (i.e., hydroxyhexanoate) and 3HO (i.e., hydroxyoctanoate) ([0062] and [0065]). Krishnaswamy also teaches wherein the PHA may be a copolymer derived from units comprising 3HB wherein 3HB may comprise at least 70% by weight of the total monomers ([0065]), and wherein the mixture of 3HH and 3HO may be within the range of 3 to 12 wt%, which overlaps with the claimed ranges for a hydroxyhexanoate and a third 3-hydroxyalkanoate which may be 3-hydroxyoctanoate. In the case where 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). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Krishnaswamy suggests, that the overlapping portion is a useable range for a ratio of 3HB, 3HH, and 3HO monomers within a terpolymer which is known to control the material properties of films formed thereof ([0065]).
As to Claim 6: Krishnaswamy and Garcia teach the label of claim 1 (supra).
Krishnaswamy further teaches that the molecular weight of the PHA may be within the range of 50,000 Da to 2,000,000 Da ([0109]), which is within the claimed range.
As to Claim 7: Krishnaswamy and Garcia teach the label of claim 1 (supra).
Krishnaswamy teaches wherein said nucleating agent can be polyhydroxybutyrate ([0160]).
As to Claim 8: Krishnaswamy and Garcia teach the label of claim 1 (supra).
Krishnaswamy teaches an embodiment of a PHA composition comprising a plasticizer, acetylcitrate tributyrate [0172], which reads on the claimed citrates. Furthermore, Krishnaswamy teaches an embodiment wherein acetylcitrate tributyrate comprises 7.85 wt% of a poly(hydroxyalkanoate) composition (Table 4), which is within the claimed range.
As to Claim 10: Krishnaswamy and Garcia teach the label of claim 1 (supra).
Krishnaswamy teaches poly(hydroxyalkanoate) compositions wherein “the polyhydroxyalkanoate polymer is blended with one or more polymers which are non-PHA polymers, for example…poly(lactic acid), poly(caprolactone), poly(butylene succinate)” ([0121-0122]). The percentages of poly(hydroxyalkanoate) to other polymers can be 5% to 95% by weight, which overlaps with the claimed range. In the case where 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). See MPEP § 2144.05(I). It would have been obvious to a person having ordinary skill in the art at the time of the invention to have used the overlapping portion of the claimed range, and the motivation to have done so would have been, as Krishnaswamy suggests, that the overlapping portion is a useable range for poly(lactic acid), poly(caprolactone), poly(butylene succinate) within a PHA film.
As to Claim 11: Krishnaswamy and Garcia teach the label of claim 1 (supra).
Krishnaswamy teaches the use of a slip-antiblock masterbatch ([0213]), which reads on the claimed slip agent. Krishnaswamy teaches an embodiment wherein said slip-antiblock masterbatch contains erucamide, which reads on the claimed fatty acid amide slip agent. Krishnaswamy also teaches an embodiment wherein a slip-antiblock masterbatch comprises 3% by weight of a PHA composition ([0213]).
As to Claim 12: Krishnaswamy and Garcia teach the label of claim 1 (supra).
Krishnaswamy is silent towards the Dyne level of the film.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference. However, Krishnaswamy as modified by Garcia teaches an article/film comprising all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. Dyne level, would naturally arise and be achieved by an article/film formed from a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. See MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
As to Claim 13: Krishnaswamy and Garcia teach the label of claim 1 (supra).
A recitation of intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art is capable of performing the intended use, then it meets the claim. In the instant case, Krishnaswamy as modified by Garcia teaches a film which reads on the claimed biodegradable label and would therefore be printable using the claimed printing methods.
As to Claim 14: Krishnaswamy and Garcia teach the label of claim 1 (supra).
Krishnaswamy and Garcia are silent towards wherein the biodegradable label is printed with an ink.
Mitchell teaches a label comprising a thermoplastic film or film derived from a thermoplastic polymer (FIG. 1, 101, 104, see [0084], [0152]) wherein said thermoplastic polymer may be a polyhydroxyalkanoate (PHA) ([0167]). Mitchell further teaches that said thermoplastic polymer may have a printable surface that is printed when preparing a label ([0085]-[0086]) which may be printed with an ink (e.g., UV ink) ([0267]). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to utilize the biodegradable PHA polymer film article of Krishnaswamy as a label that is printed with an ink and the motivation would have been that Mitchell teaches PHA films are recognized within the art as known polymeric materials suitable for an intended purpose of making labels printed with a UV ink ([0267] of Mitchell) and adhering said labels to surfaces ([0098]) including containers (e.g., bottles) ([0077]).
As to Claim 15: Krishnaswamy and Garcia teach the label of claim 1 (supra).
A recitation of intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art is capable of performing the intended use, then it meets the claim. In the instant case, Krishnaswamy as modified by Garcia teaches a film which reads on the claimed biodegradable label and would therefore be capable of being affixed to a bottle or package .
As to Claim 16: Krishnaswamy and Garcia teach the label of claim 1 (supra).
A recitation of intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art is capable of performing the intended use, then it meets the claim. In the instant case, Krishnaswamy as modified by Garcia teaches a film which reads on the claimed biodegradable label and would therefore be applicable to a container using commercial labeling equipment.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CULLEN L. G. DAVIDSON IV whose telephone number is (703)756-1073. The examiner can normally be reached M-F 9:30-6:00.
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/C.L.G.D./ Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767