CTNF 18/569,869 CTNF 84830 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia 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 § 103 07-20-aia AIA 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. 07-20-02-aia AIA 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. 07-21-aia AIA Claim s 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Matsumoto et al. (US PGPub 2005/0182201) in view of Sato et al. (US PGPub 2006/0247340) . Regarding claims 1 and 6 , Matsumoto teaches polymer compositions, suitable for forming plastic articles such as films, comprising a poly(lactic acid) polymer and a plasticizer having at least one poly(lactic acid) segment and a polyether segment (abstract; [0012] embodiment 1). Matsumoto teaches the poly(lactic acid) polymer is obtained from known lactide polymerization processes ([0020]). Matsumoto teaches the plasticizer having at least one poly(lactic acid) segment and a polyether segment, wherein the polyether segment is a poly(ethylene glycol) segment ([0025]; [0047]) having a molecular weight of 1000 or more ([0027]) and the poly(lactic acid) segment is an oligomer having a molecular weight of 1500 or more ([0033]; [0045]) (instant second nucleating agent). Matsumoto further teaches the composition may comprise an organic nucleating agent ([0043]) but is silent as to uracil or orotic acid (instant first nucleating agent). However, Sato teaches compounds of uracil or derivatives thereof are advantageous nucleating agents for polyester polymers (abstract; [0043]-[0045]), specifically polylactic acid based polymers ([0058]; examples; claims). Sato teaches the compounds remarkably facilitate crystallization to ensure excellent stiffness, moldability, heat resistance and durability of the polyester ([0045]). Sato and Matsumoto are analogous art and are combinable because they are concerned with the same field of endeavor, namely polylactic acid compositions comprising organic nucleating agents. At the time of filing a person having ordinary skill in the art would have found it obvious to select the uracil nucleating agents of Sato as the nucleating agents of Matsumoto and would have been motivated to do so as Matsumoto invites the inclusion of organic nucleating agents for the purpose of accelerating crystallization and further as Sato teaches uracil nucleating agents remarkably facilitate crystallization to ensure excellent stiffness, moldability, heat resistance and durability of polylactic acid polymers. Regarding claim 2 , Matsumoto in view of Sato renders obvious the polymer composition as set forth above. Matsumoto further teaches the weight-average molecular weight of the poly(lactic acid) polymer is from 50,000 to 300,000 ([0021]). Regarding claims 3-4 , Matsumoto in view of Sato renders obvious the polymer composition as set forth above. Matsumoto teaches additional components are present in effective amounts that do not deteriorate the composition ([0079]). Sato teaches the uracil nucleating agents are effective in amounts from 0.001 to 10 parts by weight per 100 parts polyester ([0117]; [0120]; Table 2, 0.001 wt% to 10 wt%). Regarding claim 5 , Matsumoto in view of Sato renders obvious the polymer composition as set forth above. Matsumoto further teaches the plasticizer has the block copolymer structure of PLA(A)-PEG(B)-PLA(A) ([0053]). Regarding claims 7-8 , Matsumoto in view of Sato renders obvious the polymer composition as set forth above. Matsumoto further teaches the weight percent of the plasticizer is an amount required to obtain the flexibility and strength desired ([0072]), preferably 5 wt% to 30 wt% ([0072]; Table 1, 4wt% and 20wt% exemplified). Double Patenting 08-33 AIA 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. A) Claims 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of copending Application No. 18/565864 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of both the instant and copending application are directed to substantially similar polylactide resin compositions comprising a polylactide resin, substantially the same first nucleating agent and substantially the same second nucleating agent present in substantially the same amounts and having the same molecular weights and/or structures. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. B) Claims 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 18/568775 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of both the instant and copending application are directed to substantially similar polylactide resin compositions comprising a polylactide resin, substantially the same first nucleating agent and substantially the same second nucleating agent present in substantially the same amounts and having the same molecular weights and/or structures. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. C) Claims 1-4 and 7-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of copending Application No. 18/568775 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of both the instant and copending application are directed to substantially similar polylactide resin compositions comprising a polylactide resin, substantially the same first nucleating agent and substantially the same second nucleating agent present in substantially the same amounts and having the same molecular weights. Regarding the glass transition and crystallinity of the copending application, it is noted that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (see In re Spada , 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990); see also In re Best , 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.”; MPEP 2112.01)). This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Correspondence Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANE L STANLEY whose telephone number is (571)270-3870. The examiner can normally be reached M-F 7:30 AM to 3:30 PM. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /JANE L STANLEY/ Primary Examiner, Art Unit 1767 Application/Control Number: 18/569,869 Page 2 Art Unit: 1767 Application/Control Number: 18/569,869 Page 3 Art Unit: 1767 Application/Control Number: 18/569,869 Page 4 Art Unit: 1767 Application/Control Number: 18/569,869 Page 5 Art Unit: 1767 Application/Control Number: 18/569,869 Page 6 Art Unit: 1767 Application/Control Number: 18/569,869 Page 7 Art Unit: 1767
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