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 Objections
Claims 4-7 objected to because of the following informalities:
Claim 4 recites “60 wt. % to 98 wt. %” in line 2. Claims must be one sentence in length, so the presence of a period calls into question if the claim is one sentence or more. For the purpose of further examination, it is taken to read as “60 wt % to 98 wt %”.
Claim 5 recites “1 wt. % to 39 wt. %” in line 2. Claims must be one sentence in length, so the presence of a period calls into question if the claim is one sentence or more. For the purpose of further examination, it is taken to read as “1 wt % to 39 wt %”.
Claim 6 recites “1 wt. % to 39 wt. %” in line 2. Claims must be one sentence in length, so the presence of a period calls into question if the claim is one sentence or more. For the purpose of further examination, it is taken to read as “1 wt % to 39 wt %”.
Claim 7 recites “2 wt. % to 40 wt. %” in line 3. Claims must be one sentence in length, so the presence of a period calls into question if the claim is one sentence or more. For the purpose of further examination, it is taken to read as “2 wt % to 40 wt %”.
Appropriate correction is required.
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.
Claims 1, 3, 9-11, and 14 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Plimmer et al (US 2012/0259028 A1).
Regarding Claims 1 and 3: Plimmer teaches a composition comprising a polyhydroxyalkanoic acid such as polyglycolic acid (para. 0015), an ethylene terpolymer that is a copolymer of ethylene, glycidyl methacrylate, and n-butyl acrylate (para. 0074), and a zinc-containing ionomer (para. 0075).
Regarding Claim 9: Not disclosed is the melt viscosity of the composition. However, Plimmer teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. a melt viscosity of 200-10,000 Pa·s, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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 MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding Claim 10: Not disclosed is the melt flow index of the composition. However, Plimmer teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. a melt viscosity of 1-200 g/10 min, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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 MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding Claim 11: Plimmer teaches a film formed from the composition (para. 0046).
Regarding Claim 14: Not disclosed is the relative oxygen permeability compared to a film comprising only PGA or PGA and one of the copolymers. However, Plimmer teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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 MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
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.
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 4-8 and 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Plimmer et al (US 2012/0259028 A1).
Regarding Claims 4 and 7-8: Plimmer teaches the limitations of claim 1, as set forth above. Plimmer teaches 60-95wt% of polylactic acid and 5-40wt% of ethylene copolymers (para. 0027), wherein the ethylene copolymers are the combination of the ethylene terpolymer containing glycidyl methacrylate (para. 0024) and an ethylene copolymer having an organic acid group (para. 0025), reading on the zinc ionomer (para. 0075). Although Plimmer teaches 60-95wt% of PLA, rather than PGA, the usage of PLA is a preferred embodiment of the polyhydroxyalkanoic acid (para. 0016); one could easily envision substituting the PLA with 60-95wt% of a different disclosed polyhydroxyalkanoic acid such as polyglycolic acid and would find it obvious to do so because Plimmer teaches that they are functional equivalents. See MPEP 2144.06(II).
Regarding Claims 5-6: The sum of the ethylene terpolymer and the zinc ionomer is 5-40wt%, as set forth above (para. 0027). Plimmer teaches a specific embodiment comprising 12wt% of the zinc ionomer and 8wt% of the ethylene terpolymer (p.9, Table 1, Mix #50).
Regarding Claim 12: Plimmer teaches the limitations of claim 11, as set forth above. Plimmer further teaches a film having a thickness of 60µm (para. 0110). Although the film having a thickness of 60µm is formed from a composition containing PLA, rather than PGA, one could easily envision substituting the PLA with different disclosed polyhydroxyalkanoic acid such as polyglycolic acid and would find it obvious to do so because Plimmer teaches that they are functional equivalents. See MPEP 2144.06(II).
Regarding Claim 13: Not disclosed is the oxygen permeability of the composition. However, Plimmer teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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 MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Plimmer et al (US 2012/0259028 A1) in view of Maki et al (JP 2011/219588 A, using the machine translation for the citations below).
Plimmer teaches the limitations of claim 1, as set forth above. Plimmer further teaches that the zinc-containing ionomer is a copolymer of ethylene, methacrylic acid, and n-butyl acrylate, wherein a portion of the methacrylic acid has been neutralized with zinc, forming zinc methacrylate (para. 0075). Although this copolymer contain the repeat units set forth in instant claim 2, it is not a terpolymer due to the presence of n-butyl acrylate.
Maki teaches a PLA composition (para. 0001) containing an ionomer of an ethylene-unsaturated carboxylic acid copolymer, such as a partially neutralized zinc ionomer of ethylene and methacrylic acid, i.e. a terpolymer of ethylene, methacrylic acid, and zinc methacrylate (para. 0017, 0026), as well as copolymers containing ethylene, (meth)acrylic acid, and n-butyl acrylate, wherein the (meth)acrylic acid is partially neutralized with zinc (para. 0017), wherein the ionomer imparts the resin composition with higher melt tension (para. 0019). Plimmer also teaches that the zinc ionomer/organic acid-containing copolymer is used for the purpose of improving melt strength of the composition (para. 0032). Maki and Plimmer are analogous art because they are directed toward the same field of endeavor, namely polyhydroxyalkanoic acid compositions containing zinc ionomers of carboxylic acid-ethylene copolymers.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the n-butyl acrylate-containing zinc ionomer of Plimmer with the terpolymer of ethylene, methacrylic acid, and zinc methacrylate as taught by Maki, and they would have been motivated to do so because Maki teaches that they are equivalents known for the same purpose (improving melt strength in polyhydroxyalkanoic acid compositions). MPEP 2144.06.
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 1-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7, 9-13, and 15 of copending Application No. 19/024,359 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other.
Reference Claim 1 teaches a resin composition comprising a glycolic acid copolymer (PLGA), which reads on the polyglycolic acid of the instant application, a zinc-containing ionomer, and an ethylene terpolymer. This reads on instant claim 1.
The further limitations of reference Claims 2-7, 9-13, and 15 read on instant claims 2-14.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAITLIN N ILLING whose telephone number is (571)270-1940. The examiner can normally be reached Monday-Friday 8AM-4PM.
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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.
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/C.N.I./Examiner, Art Unit 1767
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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