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
Applicant's election without traverse of Group 1, claims 1-8 in the reply filed on 05/06/2026 is acknowledged. Accordingly, claims 9-34 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Claims 1-8 are currently under examination on the merits.
Claim Objections
Claim 1 is objected to because of the following informalities: In formula I, R1 is hydrogen or methyl group, which is not capable of forming a double with another caron atom. Appropriate correction is required.
Claim 1 is objected to because of the following informalities: In formula I, R4 is alkyl or benzyl, which is not capable of being grafted to formula II. Appropriate correction is required.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-2 and 6-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over the claims 1-2 and 5-7 of copending Application No.18/553585. Although the claims at issue are not identical, they are not patentably distinct from each other because the thermoplastic graft copolymer of the conflicting claims reads upon the thermoplastic graft copolymer recited in the presently examined claim. Specifically, the thermoplastic polymer formula I as in conflicting claim 1 is a species of the thermoplastic polymer in the present claims and branched chain thermoplastic polymer of formula II reading upon presently claimed formula II.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-2 and 4-7 are rejected under 35 U.S.C. 103 as being unpatentable over Robertson et al (US 2019/0010326, of record, ‘326 hereafter).
Regarding claims 1-2 and 6-7, ‘326 discloses a composition comprising a polylactide (R7 is alkylene, X is O, and a, b, c are 0) or/and a graft copolymer of acrylated epoxidized soybean oil with polylactide reading upon present claimed formula I ([0008], [0013], [0017], Figure 1), and an acrylated epoxidized soybean oil which forms a branched thermoplastic polymer satisfying presently claimed formula II ([0012], [0031]-[0032], acrylate group forms a polymer at elevated temperature); the composition formed a graft copolymer as presently claimed ([0008]-[0013], [0040]-[0043], Table 1, blends of PLA/AESO and PLA/AESO/SYBO, PLA/AESO/SYBO/STAR, the blends being heated at elevated temperature forms a graft copolymer as presently claimed [0062]); wherein the number average degrees of the polymerization of formula I satisfies presently claimed range of 100 to 200,000 and number average molecular weight range as in claim 7 ([0034], n of PLA block can be 10 to 10,000). ‘326 does not specifically set forth the number average degrees of polymerization of formula II, however, ‘326 discloses that the size of dispersed phase (depending upon number average degrees of polymerization) of acrylated epoxidized soybean oil significantly affect the mechanic properties such as elongation at break and tensile toughness ([0032]), thus the number average degrees of polymerization of acrylated epoxidized soybean oil is an effective variable as to the mechanic properties of the graft copolymer. Case law holds that "discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art." See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). In view of this, it would have been obvious to one of ordinary skill in the art to adjust the number average degrees of polymerization of acrylated epoxidized soybean oil within the scope of the present claims so as to produce desired mechanical properties of the graft copolymer.
Regrading claims 4-5, ‘326 also disclose the polymer can be polybutadiene, polystyrene, polyamide or polymethacrylate ([0014]-[0015]).
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Hernandez et al (US 20190300637, ‘637 hereafter).
Regarding claims 1 and 6-7, ‘637 discloses a block copolymer comprising three blocks PA, PB and PC ([0009], [0013]-[0015], [0019]-[0022]), wherein the block A is a polylactic acid ([0023]) reads upon the presently claimed formula (I) with R3 being -O-R7-O- and R7 being a C2 alkylene; a, b, c being zero; and with a CTA end groups reading upon R4 being an carbonotrithioate group ([0037]-[0038], [0047]). The PC block can be polymerized from an acrylated epoxidized soybean oil ([0025], AESO, [0033]-[0034]), which has a chemical structure of formula (II) where R1 is a hydrogen. ‘637 discloses that the copolymer has a total number average degree up to 100,000 ([0009], [0019], [0047]), and PA block average molecular weight is in a preferred range of 10 to 30 KDa ([0022]), which satisfies number average degrees of polymerization of formula I and molecular weight as in present claim 7. ‘637 also discloses that the PC block has an average molecular weight in a preferred range of 5 to 500KDa, satisfying number average degree of polymerization of formula II.
Regarding claims 2-5, ‘637 discloses that the graft copolymer also included a block B ,which can be formed from polymerization of styrene, methyl methacrylate, butadiene, isoprene and mixture thereof ([0024]).
Regarding claim 8, ‘637 discloses the chain transfer agent having molecular structure -S-C(S)-S- can be used to initiate polymerization of AESO thus render the R4 as in presently claimed formula II having a carbonotrithioate group ([0049], [0051], [0086]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUIYUN ZHANG whose telephone number is (571)270-7934. The examiner can normally be reached on 8:00-5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arron Austin can be reached on 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RUIYUN ZHANG/Primary Examiner, Art Unit 1782
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