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 .
Status of Application
Claims 1-4, 6 and 7 are pending and presented for examination.
Response to Arguments
Initially, it is noted that Applicant’s amendments have overcome one of the double patenting rejections and the 35 U.S.C. 112(b) rejections.
Applicant's arguments filed 8/24/2026, with respect to the prior art rejections, have been fully considered but they are not persuasive. The Applicant argues that it would not have been obvious to modify Oguni by substituting Yan’s polyester. Applicant contends that Yan teaches away from the use of external reinforcing fillers and that the proposed modification would incorporate a large amount of reinforcing fibers into Yan’s fiber-free self-reinforced blend. Applicant contends that Yan teaches away from this modification.
However, the Examiner disagrees and notes that Oguni’s composition is being modified by Yan rather than incorporating Oguni’s fibers into Yan’s fiber-free system. In fact, one would consider modifying Oguni’s composition by incorporating Yan’s polyester to potentially allow for a lower loading of cellulose fibers in Oguni’s system. Further, Yan does not teach that the polyester elastomer can’t be combined with an additional reinforcing material. Therefore, the Examiner maintains it would have been obvious to incorporate Yan’s polyester into Oguni’s composition to both allow for a lower loading of cellulose and improved toughness based on the polyester providing further reinforcement.
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.
1. Claims 1-3 and 6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5 and 6 of copending Application No. 18/544541 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 5 and 6 of Application No. 18/544541 anticipate claims 1-3 and 6.
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
2. Claim(s) 1-3, 6 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Oguni (JP 2008150492, reference is made to the previously provided English translation) in view of Yan et al. (CN 114015214, reference is made to the previously provided English translation).
Regarding claims 1-3, 6 and 7, Oguni teaches a molding material (abstract) comprising: polylactic acid (abstract, a highly polar polyester) and cellulose fibers (abstract) with a length of 10 microns-100 mm (see (B) Cellulose fiber section, and note that this overlaps with Applicant’s claimed range and overlapping ranges are prima facie evidence of obviousness). Oguni also teaches that the polylactic acid component can be present in an amount less than the total content of cellulose fibers (abstract, and note that overlapping ranges are prima facie evidence of obviousness). Oguni fails to teach the inclusion of a polyester-based elastomer in an amount as claimed with respect to the polylactic acid.
However, Yan teaches providing a blend of polylactic acid and an elastomeric polyester (abstract), wherein the elastomeric polyester is derived from butylene glycol (an alkylene diol having an alkylene group with four carbon atoms, see abstract) and succinic acid (an alkyl dicarboxylic acid with an alkylene group with two carbon atoms, see abstract). Yan teaches the elastomeric polyester present in an amount with respect to the polylactic acid (the highly polar polyester) in a range overlapping the range claimed in claims 1 and 2 (abstract). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Oguni’s material by substituting a blend of polylactic acid and an elastomeric polyester for Oguni’s single polylactic acid. One would have been motivated to make this modification as Yan teaches that the incorporation of the polyester into polylactic acid has a good toughening effect (abstract).
3. Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Oguni in view of Yan as applied to claim 3 above, and further in view of Zhao et al. (“Modulating the Mechanical Properties of Poly(diol citrates) via the Incorporation of a Second Type of Crosslink Network”).
Regarding claim 4, Oguni in view of Yan make obvious claim 3 (see above), but fail to teach the polyester-based elastomer derived from an additional monomer as claimed. However, Zhao teaches incorporating glycerol 1,3-diglycerolate diacrylate (an acrylate ester) into a polyester derived from a diol and a carboxylic acid (see abstract and Figure 1). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Oguni in view of Yan’s material by deriving the elastomeric polyester from a monomer mixture including an acrylate ester as disclosed by Zhao. One would have been motivated to make this modification as Zhao teaches that the incorporation of the unsaturated monomer provides improved mechanical properties in the crosslinked elastomeric network (abstract).
Conclusion
Claims 1-4, 6 and 7 are pending.
Claims 1-4, 6 and 7 are rejected.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT S WALTERS JR whose telephone number is (571)270-5351. The examiner can normally be reached Monday-Friday 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dah-Wei Yuan can be reached at 571-272-1295. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT S WALTERS JR/
September 7, 2026Primary Examiner, Art Unit 1717
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