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 Objections
Claim 13 is objected to because of the following informalities:
Claim 13 recites the phrase “thepoly(butylene adipate-co-succinate)” in line 1. This is believed to be a typographical error and should include a space after the word “the”.
Appropriate correction is required.
Election/Restrictions
Applicant’s election without traverse of group I, claims 1-29 in the reply filed on 11 August 2026 is acknowledged.
Claims 30-34 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention there being no allowable generic or linking claim.
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 4-5, 7-8, and 11-25 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.
Claims 4, 7-8, and 11-25 recite a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) which may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For purposes of examination, claims 4, 7-8, and 11-25 are interpreted such that they only recite the broadest range.
Claim 16 recites the phrase "in particular" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). For purposes of examination, claim 16 is interpreted such that the limitation following the phrase “in particular” is optional.
Claim 5 is also rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, since these claims depend from the claims rejected above and do not remedy the aforementioned deficiencies.
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 1-15 and 17-29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7, 9, and 15-27 of U.S. Patent No. US 11952489 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because:
The instant claim 1 is taught by the reference claim 1.
The instant claim 2 is taught by the reference claim 2.
The instant claim 3 is taught by the reference claim 3.
The instant claim 4 is taught by the reference claim 4.
The instant claim 5 is taught by the reference claim 5.
The instant claim 6 is taught by the reference claim 6.
The instant claim 7 is taught by the reference claim 7.
The instant claim 8-10 are taught by the reference claim 9.
The instant claim 11-15 are taught by the reference claim 1.
The instant claim 17 is taught by the reference claim 15.
The instant claim 18 is taught by the reference claim 16.
The instant claim 19 is taught by the reference claim 17.
The instant claim 20 is taught by the reference claim 18.
The instant claim 21 is taught by the reference claim 19.
The instant claim 22 is taught by the reference claim 20.
The instant claim 23 is taught by the reference claim 21.
The instant claim 24 is taught by the reference claim 22.
The instant claim 25 is taught by the reference claim 23.
The instant claim 26 is taught by the reference claim 24.
The instant claim 27 is taught by the reference claim 25.
The instant claim 28 is taught by the reference claim 26.
The instant claim 29 is taught by the reference claim 27.
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 1-6, 8-12, 16-29 are rejected under 35 U.S.C. 103 as being unpatentable over Bond et al. (US 20030108701 A1) as evidenced by Polycaprolactone (Polycaprolactone, 2026, Chemical Book, Pages 1-2).
Regarding claim 1, Bond teaches a film comprising a component B (polyhydroxyalkanoate (PHA)) in an amount of 50-80 wt.% (Bond, Abstract, Par. 0002, 0016-0018, 0021, 0035-0038, and 0068). Bond teaches the component B is a poly(3-hydroxybutyrate-co-3-hexanoate), which is the same as the instant invention per the instant claim 10 and therefore satisfies the limitation of a thermoplastic aliphatic copolyester (Bond, Par. 0020-0031 and 0096-0097). Bond teaches a component A that is polycaprolactone (PCL) in an amount of 1-20 wt.% (Bond, Par. 0062-0063). PCL has a glass transition temperature of -60°C as evidenced by Polycaprolactone (Polycaprolactone, Pages 1-2), which lies within the claimed range of lower than -30°C and therefore satisfies the claimed range, see MPEP 2131.03. Furthermore, PCL is the same material as the instant invention per the instant claim 6 and thus would inherently be obtainable by ring-opening polymerization, see MPEP 2112.01. Bond teaches the film has a thickness of 0.005-0.254 mm (5-254 µm), which overlaps the claimed range of 1-200 µm and therefore establishes a prima facie case of obviousness over the claimed range, see MPEP 2144.05, I. Further, the component amounts result in an amount of component A of ~1.2-28 wt.% and an amount of component B of ~71-98 wt.% based on total weight of the components A and B, which overlap the claimed ranges of 10-50 wt.% and 50-90 wt.% respectfully and therefore establish a prima facie case of obviousness over the claimed range, see MPEP 2144.05, I.
Regarding claims 2-3 and 20-26, 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). Bond teaches a film comprising a poly(3-hydroxybutyrate-co-3-hexanoate) and a polycaprolactone in an amount that is the same as the instant invention as stated above for claim 1. Bond thus teaches a film that is identical or substantially identical to the claimed film. Therefore, absent objective evidence to the contrary, Bond would have inherently exhibited the claimed properties.
Regarding claims 4-6, Bond teaches the component A is polycaprolactone (Bond, Par. 0062-0063) which has a glass transition temperature of -60°C as evidenced by Polycaprolactone (Polycaprolactone, Pages 1-2), which lies within the claimed range of lower than -40°C and therefore satisfies the claimed range, see MPEP 2131.03.
Regarding claims 8-10, Bond teaches the component B is poly(3-hydroxybutyrate-co-3-hexanoate) (Bond, Par. 0020-0031 and 0096-0097).
Regarding claims 11-12, Bond teaches the aliphatic copolyester according to component B, which is a poly(3-hydroxybutyrate-co-e-hexanoate) has a number-average molecular weight of less than 150,000 g/mol (Bond, Par. 0020-0031 and 0096-0097), which overlaps the claim 11 range of 70,000 to 1,500,000 g/mol and the claim 12 range of 100,000-1,500,000 g/mol and therefore establishes a prima facie case of obviousness over the claimed ranges, see MPEP 2144.05, I.
Regarding claim 16, Bond teaches the film comprises starch in an amount of 1-75 wt.% (Bond, Abstract, Par. 0014-0015 and 0045-0046), which overlaps the claimed range of 0.1-20 wt.% and therefore establishes a prima facie case of obviousness over the claimed range, see MPEP 2144.05, I.
Regarding claim 17, Bond teaches the film has a thickness of 0.005-0.254 mm (5-254 µm), which overlaps the claimed range of 5-200 µm and therefore establishes a prima facie case of obviousness over the claimed range, see MPEP 2144.05, I.
Regarding claims 18-19, Bond teaches the film comprises component B in an amount of 50-80 wt.% (Bond, Abstract, Par. 0002, 0016-0018, 0021, 0035-0038, and 0068). Bond teaches the component A is in an amount of 1-20 wt.% (Bond, Par. 0062-0063). This results in an amount of component A of ~1.2-28 wt.% and an amount of component B of ~71-98 wt.% based on total weight of the components A and B, which overlap the claimed ranges of 20-40 wt.% and 60-80 wt.% respectfully and therefore establish a prima facie case of obviousness over the claimed range, see MPEP 2144.05, I.
Regarding claims 27-28, Bond teaches a transport bag that is a carrier bag comprising the film (Bond, Par. 0069).
Regarding claim 29, the total weight of the transport bag can be obtained by scaling of the entire transport bag which would not perform differently than a transport bag with a weight in the claimed range and therefore is rendered obvious by Bond, see MPEP 2144.04, IV, A.
Claims 7 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Bond et al. as evidenced by Polycaprolactone as applied to claims 1, 4, and 8-9 above, further in view of Nakata et al. (US 20020094444 A1).
Regarding claim 7, Bond teaches all of the elements of the claimed invention as stated above for claims 1 and 4. Bond is silent regarding component A having a number-average molecular weight of from 60,000 to 120,000 g/mol.
Nakata teaches a film comprising a polycaprolactone wherein the polycaprolactone has a number average molecular weight of 1,000 to 200,000 g/mol (Nakata, Abstract, Par. 0166-0172), which overlaps the claimed range of 60,000 to 120,000 g/mol and therefore establishes a prima facie case of obviousness over the claimed range, see MPEP 2144.05, I.
Bond and Nakata are analogous art as they both teach films comprising a polycaprolactone. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used a polycaprolactone with a number average molecular weight within the claimed range. This would allow for a capability of increasing mixing ratio and capability of well-balancing between heat resistance, mechanical properties, and biodegradability (Nakata, Par. 0168-0169).
Regarding claim 13, Bond teaches all of the elements of the claimed invention as stated above for claims 1 and 8-9. Bond further teaches the component B (PHA) has a number average molecular weight of less than 150,000 g/mol (Bond, Par. 0020-0031 and 0096-0097), which overlaps the claimed range of 50,000-500,000 g/mol and therefore establishes a prima facie case of obviousness over the claimed range, see MPEP 2144.05, I.
Bond is silent regarding the component B being a poly(butylene adipate-co-succinate).
Nakata teaches a film comprising an aliphatic polyester that is a PHA that is a poly(butylene adipate-co-succinate) (Nakata, Abstract and Par. 0332-0335). Nakata teaches the aliphatic polyester has a molecular weight of 1,000-500,000 (Nakata, Par. 0153), which overlaps the claimed range of 50,000-500,000 g/mol and therefore establishes a prima facie case of obviousness over the claimed range, see MPEP 2144.05, I.
Bond and Nakata are analogous art as they both teach films comprising an aliphatic polyester that is a PHA. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used poly(butylene adipate-co-succinate as the component B of Bond as it is an art recognized equivalent for the same purpose (i.e. being an aliphatic polyester (PHA) in a film), see MPEP 2144.06 & 2144.07. Furthermore, this would allow for a biodegradable resin (Nakata, Par. 0332-0335).
Claims 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Bond et al. as evidenced by Polycaprolactone as applied to claim 1 above, further in view of Yamamoto et al. (US 20160311203 A1).
Regarding claims 14-15, Bond teaches all of the elements of the claimed invention as stated above for claim 1. Bond further teaches the film may comprise additional PHA’s (Bond, Abstract, Par. 0014-0015, and 0029).
Bond is silent regarding the film comprising 0.1-30 wt.% of a poly(butylene adipate-co-terephthalate) as required by claim 14, or a poly(butylene sebacate-co-terephthalate) as required by claim 15.
Yamamoto teaches a film comprising a PHA in an amount of 10-45 wt.%, wherein the PHA is a poly(butylene sebacate-co-terephthalate) or a poly(butylene adipate-co-terephthalate) (Yamamoto, Abstract, Par. 0018-0029). Yamamoto’s content range overlaps the claimed range of 0.1-30 wt.% and therefore establishes a prima facie case of obviousness over the claimed range, see MPEP 2144.05, I.
Bond and Yamamoto are analogous art as they both teach films comprising a PHA. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used poly(butylene sebacate-co-terephthalate) or poly(butylene adipate-co-terephthalate) as the additional PHA of Bond. This would allow for a biodegradable material obtained from renewable raw materials (Yamamoto, Abstract and Par. 0028-0029).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS J KESSLER JR whose telephone number is (571)272-3075. The examiner can normally be reached 7:30-5:30 M-Th.
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/THOMAS J KESSLER/Examiner, Art Unit 1782
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