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 § 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-6, 8, 9, 11-14, 18-22, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 5,770,683 A to Yoshida et al. (hereinafter Yoshida).
Regarding claims 1-6, 8, 9, 11-14, 18-22, Yoshida teaches polymerizing 75 g (0.83 mol) of lactic acid in a solvent with tin powder to form a polymer with a Mw of 50,000 while heated to 130-150 deg C, (Example 31-32, col 21, ln 64 to col 22, ln 31) and further mixing/reacting with 0.75 g (0.0054 mol) of o-hydroxybenzoic acid (i.e. salicylic acid) to form a polymer having a Mw of 210,000, (See Example 32, col 22, ln 22-32), which meets the claimed method, the poly(lactic acid), and the salicylic acid as the aromatic ester in an amount of 0.64 mol% in the copolymer. Yoshida further teaches the catalyst may include tin octoate (col 8, ln 67 to col 9, ln 1), which meets claim 6.
Claim(s) 1, 3-5, 7, 11-13, 18-22, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wang et al., “Poly(butylene succinate-co-salicylic acid) copolymers and their effect on promoting plant growth,” Royal Society Open Science, vol. 6:190504, pp. 1-11 (2019). (hereinafter Wang).
Regarding claims 1, 3-5, 7, 11-13, 18-22, Wang teaches a random copolymer obtained by melt polycondensation by first mixing and reacting succinic acid, 1,4-butanediol, and salicylic acid with tetrabutyl titanate with heat to form a PBS polymer, (meets the polyester), and in which salicylic acid is then further added to the polymer chain with heat during the polycondensation reaction (page 2-3), (meets the aromatic ester) to form a P(BS-co-SA) copolymer with 0.5 mol% of salicylic acid, and with a Mw of 80kDa (80,000 g/mol).
Claim(s) 1, 3-6, 8, 9, 12, 13, 19-22, is/are rejected under 35 U.S.C. 102(a)(1) and/or 102(a)(2) as being anticipated by WO2021/207394 A1 in which US 2023/0159690 A1 to Ellison et al. is used as the US equivalent (hereinafter Ellison).
Regarding claims 1, 3-6, 8, 9, 12, 13, 19-22, Ellison teaches a copolymer comprising a block of poly(pentadecyl caprolactone) (PPDCL), (para 12-15), in an ABA triblock specifically having the formula
PNG
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163
350
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, (para 19), wherein PSG or PSMG is poly(salicylic glycolid) (PSG), and poly(salicylic methyl glycolide) (PSMG), (para 20), wherein each m is an integer (para 41). The above is obtained by reacting the PPDCL macro-initiator with one or more additional monomers (para 36), and Sn(Oct)2 (i.e. stannous octoate), and a toluene solvent with heat (para 65).
Claim(s) 1-6, 9, 11-14, 18-22, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN 101100505 A to Ren et al. (hereinafter Ren).
Regarding claims 1-6, 9, 11-14, 18-22, Ren teaches a poly-lactic-acid-polyester-carbonate (See abstract). Specifically, in Example 2, L-lactic acid, ortho-hydroxybenzoic acid (i.e. salicylic acid), and adipic acid, are reacted/polymerized in a melt with a stannous catalyst to form a lactic acid prepolymer (See Example 2), and this meets the claimed aromatic ester. Ren further teaches the above lactic acid prepolymer is mixed and reacted with a polycarbonate 1,6-hexane diol ester with a stannous catalyst and heat, and polymerized to form a polymer product, wherein the ortho-hydroxybenzoic acid is calculated to be in an amount of about 4.9 mol% of the polymer product. (See Example 2), and further teaches the stannous catalyst may also specifically be stannous octanoate (Example 1), which meets the claimed method polyester combined with the aromatic ester compound and transesterification.
Claim(s) 1-5, 8, 9, 11-14, 18-22, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN 112852129 A to Yang et al. (hereinafter Yang).
Regarding claims 1-5, 8, 9, 11-14, 18-22, Yang teaches a modified polylactic acid composite material (See abstract), obtained by mixing, heating and reacting salicylic acid with boron trifluoride (i.e. catalyst) and then further reacting with polylactic acid, salicylic acid and ammonium persulfate to form a modified polylactic acid (See Examples 1-2), wherein the main chain is integrated with benzene rings to improve mechanical properties.
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) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yoshida, Wang, Ellison, Ren, and/or Yang, as applied to claims 1 and 9 above, and further in view of US 2013/0158209 A1 to Takahashi et al. (hereinafter Takahashi).
Regarding claim 10, as cited above and incorporated herein, Yoshida, Wang, Ellison, Ren, and/or Yang, teaches claim 9, but they do not explicit teach mixing in a twin screw microcompounder.
However, Takahashi teaches a method of producing a polylactic acid block copolymer (See abstract), which is in the same field of polyester methods of the Applicant’s invention. Takahashi teaches that the polyester may be made by a polymerizing the monomers with or without solvent (para 47), or by melt mixing (para 68), with a catalyst such as a stannous octoate (para 30, 54 and 57), and examples of melt mixing is performed by twin-extruders which are preferred for enabling uniform and sufficient kneading. (para 70).
It would have been obvious to one ordinarily skilled in the art before the effective date of the claimed invention to use the twin-screw extruder of Takahashi to mix the reaction of Yoshida, Wang, Ellison, Ren, and/or Yang, because Takahashi teaches the same field of polyester methods of the Applicant’s invention and further teaches twin-extruders are preferred for enabling uniform and sufficient kneading. (para 70).
Allowable Subject Matter
Claims 15-17 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
The closest prior art is Yoshida, Wang, Ellison, Ren, and/or Yang, as cited above and incorporated herein. Yoshida, Wang, Ellison, Ren, and/or Yang, do not teach the Mw range of 10,000-200,000 kg/mol of claim 15, and/or the formulas cited in claims 16-17.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HA S NGUYEN whose telephone number is (571)270-7395. The examiner can normally be reached Mon-Fri, Flex schedule 7:30am-4:00pm.
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/HA S NGUYEN/Primary Examiner, Art Unit 1766
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