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
Applicant’s election without traverse of Group III, claims 46-52 in the reply filed on 05/25/2026 is acknowledged.
It is noted that non-elected claims 37-45 and 53-55 have been cancelled in the amendment filed 05/25/2026. Therefore, elected claims 46-52 as well as new claim 56 are pending and examined as set forth below.
Claim Objections
Claim 56 is objected to because of the following informalities:
Claim 56, line 2, “the composition of claim 46” should read “the composition”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 47-49 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 47 recites that “the PHA polymer comprises a PHA copolymer and the PHA polymer or the PHA copolymer comprises…” followed by a list of homopolymers and copolymers. The scope of the claim is confusing given that it is not clear if the claim requires a PHA homopolymer, a PHA copolymer, or both.
Claim 48 recites “the PHA polymer or the PHA copolymer comprises 8% to 30% 4HB and 92% to 70% 3HB”. Given that the PHA is made from 3HB and 4HB, it is a copolymer. Therefore, it is not clear why the claim recites PHA polymer or PHA copolymer. Additionally, the scope of the claim is confusing given that it is not clear if the percentages refer to wt%, mol%, etc.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 49 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 49, which depends on claim 48, recites “the PHA polymer comprises 3-hydroxybutyrate, 4-hydroxybutyrate, or combinations thereof” while claim 48 recites “the PHA polymer…comprises 8% to 30% 4HB and 92% to 70% 3HB”. Therefore, claim 49 is broader than the claim on which it depends given that claim 49 can encompass, for instance, a polymer made from just 3-hydroxybutyrate (3HB) or just 4-hydroxybutyrate (4HB) while claim 48 require the PHA polymer to be made from both 3HB and 4HB each in specific amounts.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 46-52 and 56 are rejected under 35 U.S.C. 103 as being unpatentable over Kikutani et al. (US 2019/0003082).
Regarding claims 46 and 56, Kikutani et al. disclose fiber made from composition comprising polyhydroxyalkanoate, a nucleating agent, and a lubricant (see paragraph 0018). The lubricant includes glycerin monobehenate or glycerin monolaurate (i.e. made from a combination of an ester of lauric acid or behenic acid and glycerin) (see paragraph 0058). The lubricant is present in an amount of 0.01-20 parts per 100 parts polyhydroxyalkanoate (see paragraph 0059) while the nucleating agent is present in an amount of 0.05-12 parts per 100 parts polyhydroxyalkanoate (see paragraph 0054). Therefore, it is calculated that the composition comprises 0.009 - 16.7 wt.% lubricant (0.01/(0.01+100+12) – 20/(20+100+0.05)) and 0.04 – 10.7wt.% nucleating agent (0.05/(0.05+20+100) – 12/(12+100+0.01)). Although the glycerin monobehenate or glycerin monolaurate is referred to as a lubricant and not a viscosity modifying agent as claimed, given that Kikutani et al. disclose glycerin monobehenate or glycerin monolaurate identical to that presently claimed, the glycerin monobehenate or glycerin monolaurate would necessarily function as a viscosity modifying agent.
In light of the overlap between the claimed composition and that disclosed by Kikutani et al., it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a composition that is both disclosed by Kikutani et al. and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
Regarding claims 47-49, Kikutani et al. disclose that the polyhydroxyalkanoate includes both homopolymers, i.e. poly(3-hydroxybutyrate), and copolymers, i.e. poly(3-hydroxybutyrate-co-4-hydroxybutyrate) (see paragraph 0044). The copolymer includes 80-99.5 mol% 3-hydroxybutyrate (3HB) and therefore, 0.5-80 mol% 4-hydroxybutyrate (4HB).
Regarding claim 50, while Kikutani et al. disclose the use of 0.04-10.7 wt.% nucleating agent, there is no disclosure of the amount of nucleating agent in vol.% as claimed. However, given the broad disclosure of nucleating agent in wt% disclosed by Kikutani et al., it is clear that the amount would overlap that presently claimed. Alternatively, Kikutani et al. disclose that the nucleating agent affects crystallization and viscosity (see paragraph 0054) as well as the tensile strength and spinnability of the resulting fibers (see paragraph 0050). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use amount of nucleating agent, including that presently claimed, in order to produce composition with desired crystallization and viscosity and fiber with desired tensile strength and spinnability.
Regarding claim 51, given that Kikutani et al. disclose composition as claimed including amounts that overlap that presently claimed, within the overlapping ranges, it is clear that the composition would necessarily inherently have identical non-tack coating time as presently claimed.
Regarding claim 52, Kikutani et al. disclose the composition comprises silica (see paragraph 0065) which would necessarily function as an anti-blocking agent.
Claims 46-49, 51-52, and 56 are rejected under 35 U.S.C. 103 as being unpatentable over Ishikawa (US 5,480,394).
Regarding claim 46, Ishikawa discloses composition comprising polyhydroxyalkanoate, 0.01-60 wt.% lipid compound, and an additional resin (see col.3, lines 20-26). The lipid compound includes glycerin monopalmitate, glycerin monolaurate, or glycerin monomyristate (i.e. made from a combination of an ester of lauric acid, behenic acid, or myristic acid and glycerin) (col.10, lines 30-32). Although the glycerin monopalmitate, glycerin monolaurate, or glycerin monomyristate is referred to as a lipid and not a viscosity modifying agent as claimed, given that Ishikawa disclose glycerin monopalmitate, glycerin monolaurate, or glycerin monomyristate identical to that presently claimed, the glycerin monopalmitate, glycerin monolaurate, or glycerin monomyristate would necessarily function as a viscosity modifying agent.
In light of the overlap between the claimed composition and that disclosed by Ishikawa, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a composition that is both disclosed by Ishikawa and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
Regarding claims 47-49, Ishikawa discloses that the polyhydroxyalkanoate includes both homopolymers, i.e. poly(3-hydroxybutyrate), and copolymer, i.e. 3-hydroxybutyrate-co-4-hydroxybutyrate copolymer (see col.3, line 52-col.4, line 17) including 3-hydroxybutyrate-co-4-hydroxybutyrate copolymer made from 20 mol% 4-hydroxybutyrate (4HB) (see col.7, lines 5-6) and therefore, 80 mol% 3-hydroxybutyrate (3HB).
Regarding claim 51, given that Ishikawa discloses composition as claimed including amount that overlaps that presently claimed, within the overlapping range, it is clear that the composition would necessarily inherently have identical non-tack coating time as presently claimed.
Regarding claim 52, Ishikawa discloses the additional polymer includes polyvinyl alcohol (see col.11, line 42) which would necessarily function as a stabilizer.
Regarding claim 56, Ishikawa discloses the composition is used to make a suture or thread-like product, i.e. fiber (see col.13, lines 26-32) and is used as a coating (see col.13, lines 52-53).
Claims 46-47, 50-52, and 56 are rejected under 35 U.S.C. 103 as being unpatentable over Asrar et al. (US 6,127,512).
Regarding claim 46, Asrar et al. disclose composition comprising 100 parts polyhydroxyalkanoate (col.1, lines 10-14) and up to 40 parts of one or plasticizers (col.2, lines 65-67 and col.7, lines 43-51). The plasticizers include pentaerythritol and palmitate (i.e. made from a combination of an ester of palmitic acid and pentaerythritol) (col.9, lines 6 and 31). The composition also includes a nucleating agent present in an amount of 0.01-5 parts per 100 parts polyhydroxyalkanoate (see col.11, lines 60-67 and col.13, lines 51-55). Therefore, it is calculated that the composition comprises 0 – 28.6 wt.% lubricant (40/(40+100+0.01)) and 0.007 – 4.8 wt.% nucleating agent (0.01/(0.01+40+100) – 5/(5+100+0)). Although the pentaerythritol and palmitate are referred to as plasticizers and not a viscosity modifying agent as claimed, given that Asrar et al. disclose pentaerythritol and palmitate identical to that presently claimed, pentaerythritol and palmitate would necessarily function as a viscosity modifying agent.
In light of the overlap between the claimed composition and that disclosed by Asrar et al., it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a composition that is both disclosed by Asrar et al. and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
Regarding claim 47, Asrar et al. disclose that the polyhydroxyalkanoate is made from hydroxyalkanoate monomers of the formula:
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where a=0-6, b=0-15, and Y includes H and methyl where the monomers can be homopolymerized or copolymerized (col.4, lines 11-22 and col.5, lines 13-17). When a=1, b=0, and Y is methyl, the monomer is 3-hydroxybutyrate, and when a=3, b=0, and Y is H, the monomer is 4-hydroxybutyrate.
Regarding claim 50, while Asrar et al. disclose the use of 0.007 – 4.8 wt.% nucleating agent, there is no disclosure of the amount of nucleating agent in vol.% as claimed. However, given the broad disclosure of nucleating agent in wt% disclosed by Asrar et al., it is clear that the amount would overlap that presently claimed.
Regarding claim 51, given that Asrar et al. disclose composition as claimed including amounts that overlap that presently claimed, within the overlapping ranges, it is clear that the composition would necessarily inherently have identical non-tack coating time as presently claimed.
Regarding claim 52, Asrar et al. disclose the composition includes magnesium stearate (see col.13, line 5) which would necessarily function as an ultraviolet light inhibitor.
Regarding claim 56, Asrar et al. disclose the composition is used to coat paper (col.15, lines 62-63).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Yang et al. (US 2015/0307671) disclose composition comprising polyhydroxyalkanoate, palmitate, nucleating agent, and additives.
Serpelloni et al. (US 2011/0237710) disclose composition comprising polyhydroxyalkanoate and glycerol.
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/CALLIE E SHOSHO/Supervisory Patent Examiner, Art Unit 1787
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