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 .
Requirement for a Clean Claim Set
The amendment contains extensive insertions and deletions that make the pending claims difficult to review. Applicant is requested to submit a clean version of the pending claims to facilitate examination and to ensure that the claim language is accurately reflected in the record.
Claim Interpretation
Claim 1 is interpreted according to its broadest reasonable interpretation consistent with the specification. This rejection is based on the language of the claim and does not rely on example or preferred embodiments that are not recited in the claim. See MPEP § 2111.
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) 1-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP2012505271 See abstract, page 2 lines 24-44; page 3 lines 1-49; in view of USPub 20050049360A1 See paragraphs [0010], [0032], [0033],[0034], [0037], and [0053].
Claim 1 is directed to a biodegradable resin composition, comprising: a polyester resin; and a nitrogen compound of formula (I), optionally as a salt R, R', and R" independently being H or a monovalent organic group optionally comprising a substituent, no substituent(s) forming a ring structure with each other, and excluding (RS)-1- methyl-2-nitro-3-[(3-tetrahydrofuryl)methyl]guanidine, phenylalanine, and compounds of formula NH2-CHR-COOH (with R being H or a monovalent aliphatic hydrocarbon group) wherein the polyester resin is a resin having dicarboxylic acid unit and a diol unit, wherein the content of the nitrogen compound of formula (I) is in a range of from 0.1% to 70 wt%, wherein a nitrogen atom concentration in the nitrogen compound of formula (I) is 6 wt.% or more, and wherein the nitrogen compound of formula (I) has a molecular weight of less than 10000.
JP2012505271 disclose a biodegradable resin composition comprising a biodegradable resin and one or more water soluble organic nitrogen compounds. The reference further discloses that the nitrogen compounds help with growth of microorganisms and accelerate biodegradation of the biodegradable resin compounds. The reference discloses examples of nitrogen compounds. Including urea, guanidine and hexamethylenetetramine, glycine and alanine. See abstract, page 2 lines 24-44; page 3 lines 1-49.
JP2012505271 does not disclose the particular biodegradable polyester composition recited in claim 1.
USPub20050049360 discloses biodegradable polyester resin compositions comprising biodegradable polyesters, including PBS, PBSA and related biodegradable polyester resins. The reference teaches the incorporation of additives into the biodegradable polyester resin compositions. See paragraphs [0010], [0032], [0033],[0034], [0037], and [0053].
In view of the above, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use the biodegradable polyester resin compositions taught by USPub20050049360 in the biodegradable resin composition of JP2012505271 in order to obtain the known benefit of promoting microbial growth and enhancing biodegradation in a biodegradable polyester resin.
Claim 2 is directed to a biodegradable resin composition, comprising: a polyester resin; and a nitrogen compound of formula (II), optionally as a salt:(II. R, R', and R" independently being H or a monovalent organic group optionally comprising a substituent, no substituent(s) forming a ring structure with each other, and salts thereof (excluding (RS)-1-methyl-2-nitro-3-[(3-tetrahydrofury)methyl]guanidine),wherein the polyester resin is a resin having a dicarboxylic acid unit and a diol unit, wherein the content of the nitrogen compound of formula (I) is in a range of from0.1%- to 70 wt%, wherein a nitrogen atom concentration in the nitrogen compound of formula (I)is 6 wt.% or more, and wherein the nitrogen compound of formula (I) has a molecular weight in a range of from 90 to less than 10000. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention since, in addition to the discussion in claim 1, the claimed molecular weight range would have been an obvious selection absent a showing of criticality. It is well-established that merely selecting proportions and ranges is not patentable absent a showing of criticality. In re Becket, 33 U.S.P.Q. 33 (C.C.P.A. 1937). In re Russell, 439 F.2d 1228, 169 U.S.P.Q. 426 (C.C.P.A. 1971).
Claim 3 is directed to the composition of claim, wherein a concentration of nitrogen atoms derived from the nitrogen compound in the biodegradable resin composition is 50 ppm by weight or more. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention since the optimization of the concentration of nitrogen atoms to obtain the desired biodegradation would have been obvious to the skilled artisan. One would have been motivated to employ particular amounts and/or parameters as known in the art, since, the primary reference discusses the generally use of such and generally, it is prima facie obvious to determine workable or optimal values within a prior art disclosure through the application of routine experimentation. See In re Aller, 105 USPQ 233, 235 (CCPA 1955); In re Boesch, 205 USPQ 215 (CCPA 1980); and In re Peterson, 315 F.3d 1325 (CA Fed 2003).
Claim 4 is directed to the composition of claim 1 wherein the monovalent organic group of R, R', and R" is a monovalent chain aliphatic organic group optionally comprising a substituent group having 1 to 20 carbon atoms, wherein the main chain of the organic group optionally comprises an element of Groups 15 to 17, and wherein the monovalent organic group optionally comprises a nitrogen atom, a sulfur atom, and/or phosphorus atom. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention since the selection of monovalent organic group as recited would have been an obvious modification of the known nitrogen containing compounds.
Claim 5 is directed to the composition of claim, wherein the monovalent aliphatic organic group of R, R', and R" is a monovalent chain aliphatic organic group optionally comprising a substituent group having 1 to 20 carbon atoms, wherein the main chain of the aliphatic organic group optionally comprises ab element of Groups 15 to 17, and wherein the aliphatic organic group optionally comprises a nitrogen atom, a sulfur atom, and/o a phosphorus atom. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention since the selection of an aliphatic organic group having the claimed characteristics would have been an obvious variation of the nitrogen containing compounds taught by the prior art.
Claim 6 is directed to the composition of claim 1, wherein the nitrogen compound of formula (I) is at least one selected from the group consisting of an aliphatic monoamine, an aliphatic diamine, and an amino acid. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention since JP2012505271 teaches aliphatic nitrogen containing compounds including amino acids. See page 2 line 43.
Claim 8 is directed to the composition of claim 1, wherein an acid value of the polyester resin is in a range of from 19 to 250 eq/t. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention since the selection of an acid value within the claimed range would have been an obvious matter of routine optimization.
Claim 9 is directed to the composition of claim 1 wherein the polyester resin has three or more types of structural units. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention since JP2012505271 teaches biodegradable polyester resins comprising multiple structural units and providing a polyester resin having three or more types of structural units would have been obvious in view of the combined teachings of the references.
Claim 10 is directed to the composition of claim 1, wherein the polyester resin is an aliphatic polyester resin. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention since USPub20050049360 discloses biodegradable polyester resin compositions comprising biodegradable polyesters and teaches a aliphatic polyester resins suitable for making those compositions and thus would have been obvious to the skilled artisan. See paragraphs [0010], [0032], [0033],[0034], [0037], and [0053].
Claim 11 is directed to the composition of claim 1, wherein the diol unit of the polyester resin comprises. in polymerized form, 1 ,4-butanediol, 1,3-propanediol, and/or ethylene glycols. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention USPub20050049360 discloses biodegradable polyester resin compositions comprising biodegradable polyesters from components including 1,4 butanediol, 1,3 propanediol and ethylene glycol. See paragraphs [0010], [0032], [0033],[0034], [0037], and [0053].
Claim 12 is directed to the composition of claim 1, wherein the polyester resin has 2 to 24 carbon dicarboxylic acids as dicarboxylic acid units. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention since USPub20050049360 discloses biodegradable polyester resin compositions comprising biodegradable polyesters comprising dicarboxylic acid units as claimed. See paragraphs [0010], [0032], [0033],[0034], [0037], and [0053].
Claim 13 is directed to the composition of claim 1, wherein the polyester resin comprises, in polymerized form, -a succinic acid. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention since USPub20050049360 discloses biodegradable polyester resin compositions comprising biodegradable polyesters having succinic acid units. See paragraphs [0010], [0032], [0033],[0034], [0037], and [0053].
Claim 14 is directed to the - composition of claim 1, wherein the polyester resin is at least one selected from the group consisting of polybutylene succinate adipate(PRS-A), polybutylene succinate sebacate, polybutylene succinate(P-RS) and polybutylene sebacate terephthalate. It would have been obvious to one ha USPub20050049360 discloses biodegradable polyester resin compositions comprising biodegradable polyesters having PBSA and related polyester resins. See paragraphs [0010], [0032], [0033],[0034], [0037], and [0053].
Claim 15 is directed to a molded article, comprising; the biodegradable resin composition of claim 1. Note discussion for claim 1 above.
Claim 16 is directed to a polyester resin biodegradation method, comprising: biodegrading a polyester resin having a glass transition temperature of 40C or lower, in seawater in the presence of one or more nitrogen compounds of formula (I), optionally as R, R', and R" independently being H or a monovalent organic group optionally comprising a substituent, no substituent(s) forming a ring structure with each other, and having a molecular weight of less than 10000. Note discussion for claim 1 above.
Claim 17 is directed to the composition of claim 1, wherein the polyester resin is an aliphatic-aromatic polyester resin. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention since USPub20050049360 discloses biodegradable polyester resin compositions comprising aliphatic aromatic polyester resins. See paragraphs [0010], [0032], [0033],[0034], [0037], and [0053].
Claim 18 is directed to the composition of claim 1, wherein the polyester resin comprises, in polymerized form, sebacic acid. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention since USPub20050049360 discloses biodegradable polyester resin compositions comprising sebacic acid units.
Claim 19 is directed to the composition of claim 1, wherein the polyester resin comprises, in polymerized form, succinic acid and sebacic acid. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention since USPub20050049360 discloses biodegradable polyester resin compositions comprising succinic acid and sebacic acid units.
In conclusion, in view of the above, there appears to be no significant difference between the reference(s) and that which is claimed by applicant(s). Any differences not specifically mentioned appear to be conventional. Consequently, the claimed invention cannot be deemed as unobvious and accordingly is unpatentable.
Claim Objections
Claim 7 is objected to as being dependent upon a rejected base claim, but may be
allowable if:
1) after a further search,
2) rewritten in independent form including all of the limitations of the base claim
and any intervening claims and
3) having corrected all 112 issues as set forth above.
Note also that:
Claim 7 is directed to the composition of claim 1, wherein the nitrogen compound of formula (II) is one or more selected from the group consisting of spermine, tetramethylenediamine, arginine, asparagine, and/or serine, optionally as a hydrochloride. The cited references do not appear to disclose the specifically recited compounds as a group. If rewritten in independent form , this claim may be allowable unless additional prior art is found after an updated search.
Information Disclosure Statement
Note that any future and/or present information disclosure statements must comply with 37 CFR § 1.98(b), which requires a list of the publications to include: the author (if any), title, relevant pages of the publication, date and place of publication to be submitted for consideration by the Office.
Improper Claim Dependency
Prior to allowance, any dependent claims should be rechecked for proper dependency if independent claims are cancelled.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TERRESSA M BOYKIN whose telephone number is (571)272-1069. The examiner can normally be reached M-F 7-5:30.
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/Terressa Boykin/Primary Examiner, Art Unit 1765
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