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 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.
Claim(s) 1-9 and 11-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tweed (US 2010/0056689 A1) in view of CN11375498 A, herein referred to as ‘498.
Regarding claim 1, Tweed discloses a method of making a blown film (abstract), the method comprising: melting a composition including dry pellets [0007] comprising to form a molten mass at a first viscosity form about 1400 P to about 1600P at a first temperature from about 340°F to about 350°F at an apparent shear rate of about 55 s-1 [0007], increasing the viscosity of the molten mass to a second viscosity [0007]; forming a bubble from the resulting molten mass within a climate-controlled enclosure [0007, step D, formed in a heated oven (figure 1) which reads on enclosure]; and collapsing the bubble to form a PHA blown film [0007, step E].
Tweed does not explicitly disclose the material comprises PHA. However, MPEP 2144.07 states the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. Analogous art, ‘498, discloses the degradation agent in the degradable and disintegrable PVC plastic is selected from one or a mixture of more of PCL, PLA, PGA, PHA, PHB, PE, PVA, PBS, PBAT, PPC, PET and EVA; and can be degraded and disintegrated under specific conditions, thereby reducing the pollution to the environment (pg. 2 paragraph 5 under background). Therefore, ‘498 discloses PHA is analogous to PLA and it would be within the skillset of one ordinary skilled in the art to swap PLA in Tweed for PHA since they are both degradable and reduce pollution to the environment.
Regarding claim 2, Tweed teaches wherein increasing the viscosity of the molten mass comprises cooling the molten mass [0007].
Regarding claim 3, Tweed does not explicitly teach extruding the molten mass prior to increasing the viscosity of the molten mass. However, Tweed does mention extruding the molten mass and increasing the viscosity [0045]. Further, MPEP Section 2144.04(IV)(C) of the Manual of Patent Examining Procedure describes legal precedents relating to “Changes in [the] Sequence of Adding Ingredients” and cites to In re Burhans for the proposition that “the selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results.” In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated extruding the molten mass prior to increasing the viscosity of the molten mass since rearranging method steps are within the skillset of one ordinary skilled in the art.
Regarding claim 4, Tweed discloses the dry pellets further comprise biopolystyrene selected from the group consisting of polylactic acid (PLA) (such as poly(L-lactic acid) (PLLA), poly(D-lactic acid) (PDLA), poly(D,L-lactic acid) (PDLLA) or PLA stereocomplex (scPLA)), polyglycolic acid (PGA), polycaprolactone (PCL),polybutylene succinate (PBS), polybutylene succinate adipate (PBSA), polybutylene adipate terephthalate (PBAT), and derivatives or combinations thereof [0019-0020].
Regarding claim 5, Tweed teaches wherein the biopolystyrene is present in the pellets in an amount no greater than 40% by weight [0022, 0027, 0030].
Regarding claim 6, Tweed teaches wherein the dry pellets further comprise a wax, an antiblock additive, a slip additive, a processing aid, or any combination thereof [0038, 0043].
Regarding claim 7, Tweed teaches wherein the slip additive is selected from the group consisting of oleamide, erucamide, stearamide, behenamide, oleyl palmitamide,stearyl erucamide, ethylene bis-oleamide, N,N'-Ethylene Bis(Stearamide) (EBS), and any combination thereof [0043].
Regarding claim 8, Tweed teaches wherein the antiblock additive comprises silica [0038].
Regarding claim 9, Tweed teaches wherein the processing aid comprises a viscosity enhancer [0037].
Regarding claim 11, Tweed teaches wherein the wax comprises EBS (ethylene-bis staramide) synthetic wax [0043].
Regarding claim 12, Tweed teaches further comprising drying the composition [0054-0060].
Regarding claim 13, Tweed teaches wherein the composition has a moisture content of about 400 ppm or less [0056].
Regarding claim 14, Tweed teaches further comprising annealing the PHA film [0054, 0075].
Regarding claim 15, Tweed teaches wherein the annealing is performed at a temperature from about 1000 F to about 200° F (Tweed’s range is 120-285. MPEP 2144.04 states overlapping range is a prima facie evidence of obviousness [0075]).
Regarding claim 16, Tweed teaches wherein the PHA film is substantially free of plasticizer [0035].
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tweed (US 2010/0056689 A1) in view of CN11375498 A, herein referred to as ‘498 and further in view of Wang et al (US 2025/0263544 A1).
Regarding claim 10, Tweed does not explicitly disclose wherein the processing aid comprises polyethylene glycol. However blow film analogous art, Wang et al, discloses using polyethylene glycol as a processing aid for the benefit of reducing melt fracture, increase gloss and improving surface smoothness [0090]. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have incorporated polyethylene glycol as taught by Wang into the method taught by Tweed for the benefit of reducing melt fracture, increase gloss and improving surface smoothness.
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 1-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 and 15-16 of copending Application No. 18/414,380 (reference application) in view of CN11375498 A. Although the claims at issue are not identical, they are not patentably distinct from each other. 380 discloses melting a bulk polymer material to form a molten mass having a first viscosity; increasing the viscosity of the molten mass to a second viscosity; forming a bubble from the molten mass within the climate-controlled enclosure; and collapsing the bubble to form a film within the climate-controlled enclosure. ‘380 discloses does not explicitly disclose the material comprises PHA. However, MPEP 2144.07 states the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination. Analogous art, ‘498, discloses melting a bulk polymer material to form a molten mass having a first viscosity; increasing the viscosity of the molten mass to a second viscosity; applying one or more enzymes to the molten mass within a climate-controlled enclosure; forming a bubble from the molten mass within the climate-controlled enclosure; and collapsing the bubble to form a film within the climate-controlled enclosure. The degradation agent in the degradable and disintegrable PVC plastic is selected from one or a mixture of more of PCL, PLA, PGA, PHA, PHB, PE, PVA, PBS, PBAT, PPC, PET and EVA; and can be degraded and disintegrated under specific conditions, thereby reducing the pollution to the environment (pg. 2 paragraph 5 under background). Therefore, ‘498 discloses PHA is analogous to PLA and it would be within the skillset of one ordinary skilled in the art to swap PLA in Tweed for PHA since they are both degradable and reduce pollution to the environment.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 3-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 and 10-12 of copending Application No. 18/414,431 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other. Both applications disclose using includes PHA and one or more other biopolyesters, wherein the PHA blend base includes more PHA than the other biopolyesters; and a wax slip additive that reduces friction of the blown film and is selected from the group consisting of oleamide, erucamide, stearamide, behenamide, oleyl palmitamide, stearyl erucamide, ethylene bis-oleamide, NN'-Ethylene Bis(Stearamide) (EBS), and any combination thereof (claim 3 and 8 of ‘380).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FARAH N TAUFIQ whose telephone number is (571)272-6765. The examiner can normally be reached Monday-Friday: 8:00 am-4:30 pm.
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/FARAH TAUFIQ/ Primary Examiner, Art Unit 1754