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
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-7, drawn to a polylactic acid composition, classified in CPC C08L 67/04.
II. Claims 8-10, drawn to a method of preparing, classified in CPC B29B 7/00.
Inventions I and II are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case the product of invention I can be produced by a materially different process such as solution mixing.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
the inventions have acquired a separate status in the art in view of their different classification.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
During a telephone conversation with Shu Tian on 6/24/2026 a provisional election was made without traverse to prosecute the invention of group I, claims 1-7. Affirmation of this election must be made by applicant in replying to this Office action. Claims 8-10 withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Specification
The disclosure is objected to because of the following informalities: the number of digits used in the paragraph numbers is inconsistent, for example, between paragraphs 99 and 100, the paragraphs are labeled as "[0099]" and "[00100]". Paragraph 100 should be labeled as "[0100]".
Appropriate correction is required.
Claim Objections
Claims 2 and 3 are objected to because of the following informalities:
Claim 2 recites a ratio of compound (A) to compound (B) as “6: (25-80)”. For clarity, this could be rearranged to say “6:25 to 6:80”.
Claim 3 uses closed group language regarding the substituents X1 to X3 as being "selected from H", this is taken to be an error since there are no alternative options to select from other than hydrogen (H) and it is interpreted to mean where X1 to X3 each independently are H.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhang (CN 114133585 A).
Regarding claims 1-5, Zhang discloses a polylactic acid (PLA) composite comprising the reaction product of hexachlorocyclotriphosphazene (HCCP) and pentanediamine (Application Comparative Example 2, paragraph [n0048]). HCCP is a compound of the claimed formula (A) and pentanediamine is a compound of the claimed formula (B):
PNG
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328
335
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Greyscale
Where Ra-f is chlorine and X1-3 is hydrogen and n is 3. The reaction product appears as the following formula (paragraph [0014]):
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229
286
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The molar ratio of HCCP, which is a compound of formula (A), and pentanediamine, which is a compound of formula (B), as represented in the figure above is 6:36. Zhang further discloses the amounts of the reactants mentioned above where 7.36 grams of pentanediamine (which is equivalent to 0.072 moles) was reacted with 30 mL of a 15% solution of HCCP in dioxane (which is equivalent to 0.0133 moles if HCCP). The molar ratio of HCCP to pentanediamine is 6:32.5. The molar amount of HCCP was calculated using the assumption that the dioxane used was 1,4-dioxane at a temperature of 25°C.
Zhang further discloses a composite comprising a mass ratio of PLA to the reaction product of 9:1, which is equivalent to 11.1 parts by mass of the reaction product for every 100 parts by mass of PLA. The polymeric material of the composite also comprises 100 wt.% PLA.
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 6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang (CN 114133585 A) in view of Akiba (US 20170152368 A1).
Regarding claims 6 and 7, Zhang applies as described above but does not teach composites comprising more than one polymeric material other than PLA, nor a rare earth oxide as claimed.
Akiba discloses compositions for flame retardant resins comprising cyclic phosphazene derivatives and polymeric material comprising both PLA and polycarbonate (PC) which the examiner notes is an acceptable polyester-based substance according to instant specification paragraph [0029] (abstract, Example 8). Akiba teaches that PC has ideal qualities for flame retardance and mechanical properties (paragraphs [0007] and [0008]). Akiba further discloses the inclusion of cerium oxide as a UV absorber in an amount between preferably 0.1 and at most 3 parts by weight to 100 parts by weight of the resin component (polymeric material) (paragraphs [0189] and [0199]). The examiner notes that the range of cerium oxide has substantial and significant overlap with the claimed range and is disclosed with sufficient specificity so as to anticipate the claimed range. See MPEP 2131.03.
A person having ordinary skill in the art as of the effective filing date of the instant application would have found it obvious to add the polycarbonate of Akiba to the PLA composite of Zhang for its fire retardant and mechanical properties and further cerium oxide as disclosed by Akiba as a useful UV absorber and the results would have been predictable.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Gopal (US 20210277203 A1) teaches cerium oxide as a heat stabilizer in resins including PLA.
Yamashita (US 20070112107 A1) teaches lanthanum oxide as a catalyst for use in fire retardant PLA.
Jang (WO 2022236340 A1) teaches HCCP for use in thermally stable polymers.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KOLTON JONES whose telephone number is (571)272-9802. The examiner can normally be reached Generally Monday-Friday 8:00 am - 5:00 pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached at (517)272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KOLTON JONES/Examiner, Art Unit 1763
/JOSEPH S DEL SOLE/Supervisory Patent Examiner, Art Unit 1763
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