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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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.
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 1-8 and 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Nawaby et al (US 20120223459 A1) in view of Yoshioka (JP 2015000963A, using the machine translation for the citations below).
Regarding Claims 1-4: Nawaby teaches a foam sheet (abstract) comprising a polylactic acid (PLA) resin (para 10) that has an about 2 mol% D-Lactic acid/ 98 mol% L-lactic acid content (para 15, table 1) wherein the foam contains 98% PLA by weight (para 15). Nawaby further teaches PLA foam sheets with a density from about 0.032-0.08 g/cm3 (para 26). However, Nawaby is silent on a surface roughness Sq of 6 µm and Svk of 8 µm.
Yoshioka teaches a polylactic acid foam sheet with a surface roughness of 0.5-10 µm (para 38). Nawaby and Yoshioka are analogous art because they are directed towards the same field of endeavor, namely PLA foam sheets. It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify the PLA foam sheet of Nawaby with the surface roughness of the foam sheet of Yoshioka. Yoshioka discloses that when the surface roughness is in the range of 0.5 μm to 20 μm, for example, when used in a printing application, it has an effect such as excellent print sharpness. One of ordinary skill in the art would be motivated to modify the surface roughness within the range of 0.5-6 µm to obtain a preferred surface morphology.
Regarding Claims 5-6: Modified Nawaby teaches all of the limitations of claim 1, as set forth above. Nawaby further teaches the foam sheet further comprising of an epoxy-based chain extender (para 31)
Regarding Claim 7: Modified Nawaby teaches all of the limitations of claim 1, as set forth above. Nawaby further teaches the foam sheet further comprising of inorganic nucleating agents/particles (para 28)
Regarding Claim 8: Modified Nawaby teaches all of the limitations of claim 1, as set forth above. Nawaby further teaches a foam sheet that has cells/pores (Table 2). Nawaby teaches a foam sheet prepared from a foam precursor mixture comprising a blowing agent comprising carbon dioxide (para 31).
Regarding Claims 10-11: Modified Nawaby teaches all of the limitations of claim 1, as set forth above. Nawaby further teaches thermoformed PLA articles including cutlery and food packaging articles.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Nawaby et al (US 20120223459 A1) in view of Yoshioka (JP 2015000963 A) in further view of Peter et al (Improving the heat deflection temperature of poly(lactic acid) foams by annealing, Polymer Degradation and Stability, Volume 190, August 2021, 109646).
Regarding Claim 9: Modified Nawaby teaches all of the limitations of claim 1, as set forth above. However, Nawaby is silent on a foam sheet that has cold crystallization enthalpy of 20 J/g or greater.
Peter teaches a PLA foam sheet that has cold crystallization enthalpy of 23.7 J/g (Table 3). Nawaby and Peter are analogous art because they are directed towards the same field of endeavor, namely PLA foam sheets.
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify the PLA foam sheet of Nawaby with the cold crystallization enthalpy of Peter. The cold crystallization enthalpy effects that crystallinity of the PLA. Peter discloses that A higher degree of crystallinity generally improves mechanical properties and increases the heat deflection temperature (pg.1 para 2 line 7-9). One of ordinary skill in the art would have been motivated to modify the cold crystallization enthalpy in order to obtain the desired mechanical properties for a PLA foam sheet.
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 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.
Claims 1-4 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12403717 B2 in view of Yoshioka (JP 2015000963A, using the machine translation for the citations below).
Claim 1 of the reference patent teaches a foam sheet comprising a polylactic acid composition wherein the polylactic acid includes D-Lactic Acid or L-Lactic Acid in an amount of 98 mol% or greater and the amount of PLA is 98% or greater by mass of the total organic matter in the foam sheet. Claim 1 of the reference patent further teaches that the bulk density of the foam sheet is 0.063 to 0.125 g/cm3. However, claim 1 of the reference patent does not teach the surface roughness Sq of 6µm or less or the surface roughness Svk of 8µm or less.
Yoshioka teaches a polylactic acid foam sheet with a surface roughness of 0.5-10 µm (para 38). The reference patent and Yoshioka are analogous art because they are directed towards the same field of endeavor, namely PLA foam sheets. It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify the PLA foam sheet the reference patent with the surface roughness of the foam sheet of Yoshioka. Yoshioka discloses that when the surface roughness is in the range of 0.5 μm to 20 μm, for example, when used in a printing application, it has an effect such as excellent print sharpness. One of ordinary skill in the art would be motivated to modify the surface roughness within the range of 0.5-6 µm to obtain a preferred surface morphology.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Yokozuka et al (JP 2108048320) teaches a polystyrene food packaging container with a surface roughness Sq of 0.01 to 0.5 µm.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS J BELUNIS whose telephone number is (571)270-3186. The examiner can normally be reached Monday-Friday 8am-4pm.
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.
/Andrew J. Oyer/Primary Examiner, Art Unit 1767
/T.J.B./Examiner, Art Unit 1767
Prosecution Insights