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 .
Response to Arguments
Applicant's arguments filed 5/11/2026 have been fully considered but they are not persuasive in view of the combination of references presented.
The 112 4th rejection of claim 7 is withdrawn.
Applicant argues that Bloembergen does not teach the amended claim 1 which requires the presence of 4-hydroxybutyrate as part of the PHA resin.
The Examiner agrees that the specific monomer of 4-hydroxybutyrate is not explicitly taught but does state that different forms of hydroxybutyrate is shown in examples 4, 6, and others as well as listed as possible forms of the PLA in the cited references by the reference.
The rejections will be addressed in a new 103 rejection below that shows the use of 4-hydroxybutyrate as conventional in the same field.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-2, 4-8, and 12-16 are rejected under 35 U.S.C. 103 as being unpatentable over Bloembergen et al, USP 5,462,983 in view of Balogh et al, US Patent Publication 2014/0275351.
Regarding claim 1, Bloembergen teaches a molded article (see abstract) comprising a composition comprising pulp and a biodegradable resin (see abstract and columns 7-8 teach the use of wood fibers and PHB) wherein the biodegradable resin is PHA (column 7 line 46) and a Cobb test according to TAPPI T441 of 0.000167 g/cm*cm (which is less than 100 g/m*m - see Example 4).
Bloembergen is silent on the use of 4-hydroxybutyrate as a repeat unit in the PHA.
In the same field of endeavor of making a product with pulp and a PHA polymer, Balogh teaches that the composite lignocellulose products (see abstract) is made up of a copolymer of 3- hydroxybutyrate and 4- hydroxybutyrate repeating units [0116] and that the product is formed through a hot pressing step at 166 degrees C for 4 minutes (comparable to the 170C for 2 minutes as claimed)
The claims are not directed to a method of making and therefore only the physical properties of the final product is taken into consideration. As the same materials are utilized and the Cobb values read on the claims so all the required limitations are directly met.
It would have been obvious to one of ordinary skill in the art at the time of the invention to utilize the conventional PHA material with 3- hydroxybutyrate and 4- hydroxybutyrate as copolymer repeating units as taught by Balogh in the Bloembergen method as it would have been a simple substitution of one known element (a specific repeating unit of PHA) for another to arrive at the same predictable end result.
Regarding claims 2-7 and 12-15, Bloembergen remains as applied above and further teaches the poly Beta hydroxybutyrate repeat units (see columns 5-6) or PLA (column 5 line 28), in ratios to the starch of 80/20 or 50/50 weight ratios (see table 1 and claim 8), also the known use hydroxybutyrate blends as taught by Balogh.
Regarding claims 8 and 16, Bloembergen remains as applied above and teaches all of the claimed material limitations but is silent on the tear strength of the final product. It is understood that the average artisan would expect the same physical outcome to be produced by a product that is made with the same materials in the same manner. See In re Best.
In the alternative, with respect to the values of the Tear strength, it is elementary that a mere recitation of newly discovered function or property, inherently possessed by the things in the prior art, does not cause a claim drawn to those things to distinguish over the prior art (In re Swinehart et al, 169 USPQ 226 at 229). It would have been obvious that the same materials producing eh same final product would have similar physical properties to find the claimed range of the undescribed property to be obvious.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB T MINSKEY whose telephone number is (571)270-7003. The examiner can normally be reached M-F 8-6 PM.
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, Abbas Rashid can be reached at 5712707475. 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.
JACOB T. MINSKEY
Examiner
Art Unit 1741
/JACOB T MINSKEY/Primary Examiner, Art Unit 1748
Prosecution Insights