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
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.
Claims 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (US 9,234,075) in view of Machine translated CN 101921468 (Dec. 22, 2010).
Lee et al. teach a method of preparing polylactic acid by combining lactide with a main catalyst such as Sn(Oct)2 and cocatalyst such as nanoparticles in abstract and examples 1-3.
The instant invention further recites a phosphinite-base cocatalyst over Lee et al.
CN teaches a method of obtaining a polylactic acid by utilizing a mixture of a phosphorus organic compound and in [0049-0054]. CN teaches that the phosphorus organic compound includes diphenylethoxyphosphine (i.e., ethyl diphenylphosphinite meeting Chemical Formula 1-1 of claim 6) in claim 9 of page 28.
Thus, it would have been obvious to one skilled in the art before the effective filing date of invention further to utilize the well-known catalyst such as diphenylethoxyphosphine (i.e., ethyl diphenylphosphinite meeting Chemical Formula 1-1 of claim 6) taught by CN in the examples 1-3 of Lee et al. since utilization of a mixture of catalysts is known as taught by Lee et al. and CN absent showing otherwise.
Selection of a known material based on its suitability for its intended use is prima facie obvious, see Sinclair & Carroll Co. v. Interchemical Corp., 325 US 327, 65 USPQ 297 (1945). MPEP 2144.07.
The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results. KSR Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). MPEP 2141.
Regarding claim 2, Lee et al teach Sn(Oct)2 in example 1.
Regarding claims 3-6, diphenylethoxyphosphine taught by CN would meet the recited Chemical Formula 1-1 of claim 6 as well as claims 3-5.
Regarding claim 7, Lee et al. teach utilization of an amount of Sn(Oct)2 lower or higher than the cocatalyst in the examples 1-3 and thus a modification to amounts of the catalyst and cocatalyst would have been obvious. When patentability is predicated upon a change in a condition of a prior art composition, such as a change in concentration or in temperature, or both, the burden is on Applicant to establish with objective evidence that the change is critical, i.e., it leads to a new unexpected result. It is not inventive to discover the optimum or workable ranges by routine experimentation when the general conditions of a claim are disclosed in the prior art. See In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); In re Aller, 220 F.2d 454, 456 (CCPA 1955). MPEP 2144.05.
Regarding claim 8, Lee et al. teach utilization of 165 ppm of Sn(Oct)2 in the examples 1-3 and 10 to 800 ppm in lines 60-61 of col. 5 which would meet claim 8 or make claim 8 obvious.
Regarding claim 9, Lee et al. teach utilization of 50 ppm, 100 ppm and 300 ppm of ppm of the cocatalyst in the examples 1-3 and 10 to 500 ppm in lines 61-64 of col. 4 which would meet claim 9 or make claim 9 obvious.
Regarding claim 10, Lee et al. teach a reaction temperature of 120oC to 200oC and a reaction time of 0.5 hour to 1.5 hours in lines 46-55 of col. 6. Lee et al. teach a polymerization may be performed in a reducing atmosphere in line 63-64 of col. 6. The recited 0.5 would be equal to about 0.49 atm and thus the reduced atmosphere would make claim 10 obvious. See above cited In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990); In re Aller, 220 F.2d 454, 456 (CCPA 1955). MPEP 2144.05.
Regarding claim 11, Lee et al. teach a weight average molecular weight of 235,000 to 324,000 in table 1 and 100,000 to 500,000 in lines 43-44 of col. 8.
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/TAE H YOON/Primary Examiner, Art Unit 1762
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