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 .
DETAILED ACTION
Election/Restrictions
The applicant has elected Species IA (claims 1-12 and 14-19) without traverse and Ia with traverse. The examiner asserts the requirement of election of subspecies between Ia and Ib is proper, because the claimed amorphous and semi-crystalline polyesters are structurally distinctive.
This restriction is made FINAL. See previous action for the reasons of applying restriction.
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 of this title, 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) 1-12 and 14-19 is (are) rejected under 35 U.S.C. 103(a) as being unpatentable over Bastioli et al. (US 20110071238 listed on IDS) in view of Hayakawa et al. (US 20210016484) and evidenced by Robinson et al. (US 10934384).
As to claims 1-12 and 14-19, Bastioli (abs., claims, examples, figures, tables) discloses a biodegradable (1) polyester (16-17) for producing films (36) having a crystallinity >10% (overlapping with the range of instant claim 12) and Mn of 20k-100k (falling within the range of instant claim 14) comprising (Ex.2) comprising polymerizing dimethylfurandicarboxylate from renewable origin (vegetable crops, biobased, 7, claim 1), sebacic acid from renewable origin (vegetable crops, biobased, 7, claim 6), and 1,4-butanediol via an esterification phase (forming diester). The content of dimethylfurandicarboxylate is 5-90 mol% of the total dicarboxylic acid (12, claim 2).
In Bastioli’s Ex.2, the mol% are calculated as it follows:
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The molar ratio diol to acidic component is about 1.4. Since the content of dimethylfurandicarboxylate is 5-90 mol% of the total dicarboxylic acid (12, claim 2), Bastioli teaches ranges of 1,4-butanediol, sebacic acid, and dimethylfurandicarboxylate as 37-38% (falling within the range of claim 1), 6-58% (overlapping with the range of claim 1), and 3-57 wt% (overlapping with the range of claims 1 and 11), respectively, based on the following calculation:
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Bastioli is silent on the claimed long chain dicarboxylic acid.
In the same area of endeavor of producing films (1, 5) of biodegradable polyester comprising dimethylfurandicarboxylate, 1,4-butanediol, and sebacic acid or octadecanedioic acid (40-47), Hayakawa (abs., claims, examples, figures, tables) discloses sebacic acid and octadecanedioic acid (C18) are functionally equivalent (46) dicarboxylic acid for producing biodegradable polyester having excellent mechanical properties (22, 40). As evidence by Robinson, octadecanedioic acid can be derived from renewable sources (6:65-65).
Therefore, it would have been obvious to one of ordinary skill in the art to have replaced sebacic acid of Bastioli with octadecanedioic acid of Hayakawa because of their equivalent functionality as dicarboxylic acids for producing biodegradable polyester having excellent mechanical properties. These conditions appear to equally apply to both productions using similar dicarboxylic acids. In addition, octadecanedioic acid is derived from renewable sources (biobased) and is more environmentally friendly. This adaptation would have obviously yielded instantly claimed invention. Moreover, it has been found that where claimed ranges overlap ranges disclosed by the prior art, a prima facie case of obviousness exists - see MPEP 2144.05 I. 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). Therefore, it would have been obvious to one skilled in the art to have created/selected the claimed compositional elements from the composition disclosed in the Bastioli since it discloses all applicants' components, values and methods of making.
The references are silent on the claimed properties (crystallinity, melt temperature, tensile modulus, and tensile elongation and strength at break, of claim 12 and 15-19. Accordingly, the examiner recognizes that not all of the claimed effects or physical properties are positively stated by the references. However, the references teach a composition containing the claimed components in the claimed amounts prepared by substantially similar components (monomers, wt%, Mn) and method (esterification). Therefore, one of ordinary skill would have a reasonable expectation that the claimed effects and physical properties, i.e. crystallinity, melt temperature, tensile modulus, and tensile elongation and strength at break, would necessarily flow from a composition containing all of the claimed components in the claimed amounts prepared by a substantially similar process. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. See In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977); In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990); see also MPEP § 2112.01(I)-(II). If it is the applicant’s position that this would not be the case: (1) applicant must provide evidence to support the applicant’s position, and (2) it would be the examiner’s position that the application contains inadequate disclosure on how to obtain the claimed effects or properties with only the claimed components in the claimed amounts by the disclosed or claimed process.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHANE FANG whose telephone number is (571)270-7378. The examiner can normally be reached on Mon-Thurs. 8am-6pm. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached on 571.572.1302. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SHANE FANG/Primary Examiner, Art Unit 1766
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