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 .
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 1-19 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.
Regarding claims 1, 3, 10, and 18, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claims 2, 4-9, 11-17, and 19, are dependent claims which do not alleviate the issues above.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 1, 5-13, 16-19, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2003-002921 A to Kita et al. (hereinafter Kita).
Regarding claims 1, 5-13, 16-19, Kita teaches a polyhydroxycarboxylic acid based resin composition obtained by mixing a polyhydroxycarboxylic acid with a ester product derived from an unsaturated fatty acid and unsaturated alcohol (para 12), wherein the polyhydroxycarboxylic acid is produced in advance by an existing method as shown by formula 6:
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222
585
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, (para 36), such as a direct dehydrating (i.e. water removal/drying) and polycondensation reaction (para 37), wherein a known method is a dehydration esterification reaction at 180-200 deg C without a catalyst (para 45-46, Example 1 and comparative 1) or with a catalyst such as tetrabutyl zirconate catalyst (para 52). The above meets the claimed polymerization reaction, with or without a catalyst, and temperature range of claim 1. Kita also specifically teaches that 3-hydroxyoctanoic acid is used as the hydroxycarboxylic acid (i.e. HO-R1-COOH), in Example 40,
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362
794
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, (Table 4, para 56), which meets the claimed 8 carbon atom 3-hydroxy carboxylic acid of claim 1. If 3-hydroxyoctanoic acid is used as HO-R1-COOH for Formula 6, then the resulting
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34
152
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above meets 100 mol% 3-hydroxyoctanoic acid, with the n=1000-5000 correlating to a Mw of 160200-801000. Kita further teaches a mixture of lactic acid (3 carbons) and hydroxycarboxylic acids may be used (para 16), which meets claim 5. The above is used to form films and molded products. (para 41-42).
Thus, one skilled in the art would at once envisage the claimed arrangement combination because Kita specifically teaches the esterification/condensation reaction to obtain a polyhydroxycarboxylic acid from a hydroxycarboxylic acid in advance and specifically uses 3-hydroxyoctanoic acid as the hydroxycarboxylic acid which meets the claimed arrangement combination. (See MPEP 2131.02(III), "A reference disclosure can anticipate a claim when the reference describes the limitations but "'d[oes] not expressly spell out' the limitations as arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination").
Claim(s) 15-19, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hori et al., “Simultaneous syntheses of polyhydroxyalkanoates and rhamnolipids by Pseudomonas aeruginosa IFO3924 at various temperatures and from various fatty acids,” Biochemical Engineering Journal vol. 53, pp. 196-202 (2011), (hereinafter Hori).
Regarding claims 15-19, Hori teaches a medium chain length polyhydroxyalkanoate (MCL-PHA) obtained from rhammnolipids with the bacteria strain of P. aeruginosa IFO3924 and P. putida IFO14164 (See abstract), wherein the PHA produced has a monomer mixture/composition of 2 mol% of (C6, 3-hydroxyhexanoate), 12 mol% of (C8, 3-hydroxyoctanoate), 78 mol% of (C10, 3-hydroxydecanoate), 5 mol% of (C12, 3-hydroxydodecanoate, and (3 mol% of C12:1, 3-hydroxydodecenoate), (Table 3, page 200) which is then used in the field of thermoplastics. (page 196).
Claim(s) 16-19, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Urbina et al., “Application of cider by-products for medium chain length polyhydroxyalkanoate production by Pseudomonas putida KT2440,” European Polymer Journal, vol. 108, pp. 1-9, (2018), (hereinafter Urbina).
Regarding claims 16-19, Urbina teaches a medium chain length polyhydroxyalkanoate (MCL-PHA) obtained from apple residues with the bacteria strain of Pseudomonas putida KT2440 (See abstract), wherein the PHA produced has a monomer mixture/composition of 3.19mol% 3-hydroxyhexanoate (3HH, C6), 23.43mol% 3-hydroxyoctanoate (3HO, C8), 60.90mol % 3-hydroxydecanoate (3HD, C10), 6.94mol% 3-hydroxydodecanoate (3HDD, C12), 4.76mol% 3-hydroxydodecenoate (3HDD(=), C12=), and 0.77mol% 3-hydroxytetradecenoate (3HTD(=), C14=) (page 6-7), with a Mw of 47,000 (page 7), which is then used to produce a film. (page 8).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 1-3, 5-14, 16-19, is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 6675700 B1 in which US 2023/0076881 A1 to Kuroki is used as a US English equivalent below. (hereinafter Kuroki).
Regarding claims 1-3, 5-14, 16-19, Kuroki teaches a multicomponent hydroxyalkanoic acid copolymer comprising a lactic acid repeating unit (A) and a other hydroxyalkanoic acid (B) (para 96), wherein specific examples of other hydroxyalkanoic acids include 3-hydroxyoctanoic acid (C8), or 3-hydroxydecanoic acid (C10) (para 97-99), the lactic acid fraction is 20-80 mol%, (para 104), which correlates to the other hydroxyalkanoic acids in a fraction of 20-80 mol% (para 104). The Mw of the copolymer is in a range of 50,000-300,000 (para 106 and 129), and may be obtained by chemical synthetic methods such as direct melt polymerization and/or direct condensation polymerization method of lactic acid with the other monomers of 3-hydroxyoctanoic acid (C8), or 3-hydroxydecanoic acid (C10) (para 128), the polycondensation comprising the step of blending and reacting lactic acid with the other monomer (para 75), in a dehydration condensation (i.e. water removal/drying), (para 89), at a temperature range of 180-230 deg C (para 72), or the polymerization is done with a microorganism obtained by culturing a mutant having an enzyme exhibiting a lactic acid polymerization activity in the coexistence with hydroxyalkanoic acid in biomass (para 109) at temps of 140-200 deg C (para 120) and filtered . The above is used to form films and molded products. (178-179). Kuroki further teaches the obtained resins may be melted, extruded and dried to remove water. (para 176).
Thus, the claimed invention would have been obvious to one ordinarily skilled in the art before the effective filing date of the claimed invention because, as cited above and incorporated herein, thus, one skilled in the art would envisage a polymer with at least one 3-hydroxy carboxylic acid of at least 8 carbon atoms because Kuroki specifically teaches examples of other hydroxyalkanoic acid monomers include 3-hydroxyoctanoic acid (C8), or 3-hydroxydecanoic acid (C10) (para 97-99 and 128). (See MPEP 2144.08)
Claim(s) 1-19, is/are rejected under 35 U.S.C. 103 as being unpatentable over by Hori et al., “Simultaneous syntheses of polyhydroxyalkanoates and rhamnolipids by Pseudomonas aeruginosa IFO3924 at various temperatures and from various fatty acids,” Biochemical Engineering Journal vol. 53, pp. 196-202 (2011), (hereinafter Hori) and in further view of Kita and/or Kuroki.
Regarding claims 1-19, as cited above and incorporated herein, Hori teaches the monomer mixture of claims 4 and 15. Hori further teaches the polyhydroxyalkanoate is used in the field of thermoplastics.
Hori does not explicitly teach the polymerization method of claims 1-14.
However, as cited above and incorporated herein, Kita and/or Kuroki teaches the same field of the Applicant’s invention of process of obtained polyesters from 3-hydroxy carboxylic acids. Kita teaches that polyhydroxycarboxylic acid may be obtained by conventional known methods such as a direct dehydrating (i.e. water removal/drying) and polycondensation reaction (para 37), wherein a known method is a dehydration esterification reaction at 180-200 deg C without a catalyst (para 45-46, Example 1 and comparative 1) or with a catalyst such as tetrabutyl zirconate catalyst (para 52), and that the above is used to form films and molded products. (para 41-42). Kuroki further teaches that multicomponent hydroxyalkanoic acid copolymers that are obtained with microorganisms by culturing a mutant having an enzyme (para 109), may also be obtained by known methods such as direct condensation polymerization methods with the other monomers of 3-hydroxyoctanoic acid (C8), or 3-hydroxydecanoic acid (C10) (para 128), the polycondensation comprising the step a dehydration condensation (i.e. water removal/drying), (para 89), at a temperature range of 180-230 deg C (para 72), and also the above is used to form films and molded products. (178-179).
It would have been obvious to one ordinarily skilled in the art before the effective date of the claimed invention to use the direct polycondensation polymerization techniques of both Kita and/or Kuroki because Kita teaches that polyhydroxycarboxylic acid may be obtained by conventional known methods such as a direct dehydrating (i.e. water removal/drying) and polycondensation reaction (para 37), wherein a known method is a dehydration esterification reaction at 180-200 deg C without a catalyst (para 45-46, Example 1 and comparative 1) or with a catalyst such as tetrabutyl zirconate catalyst (para 52), and Kuroki further teaches that multicomponent hydroxyalkanoic acid copolymers that are obtained with microorganisms by culturing a mutant having an enzyme (para 109), may also be obtained by known methods such as direct condensation polymerization methods (para 128), the polycondensation comprising the step a dehydration condensation (i.e. water removal/drying), (para 89), at a temperature range of 180-230 deg C (para 72), which demonstrates that the direct polymerization of the 3-hydroxy carboxylic acid monomers are known suitable polymerization processes to form polymers of 3-hydroxy carboxylic acid monomers. (“The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination.” See MPEP 2144.07).
Conclusion
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/HA S NGUYEN/Primary Examiner, Art Unit 1766
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