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 .
Election/Restrictions
Applicant's election with traverse of Group I, Claims 1-8 and 11-17 in the reply filed on 1/15/26 is acknowledged. The traversal is on the ground(s) that does not disclose or suggest the claimed approach of using a pre-formed, low-molecular-weight polyadipate as a separate additive phase at the claimed 1-20 wt.% range to achieve the specific film/film slip and mechanical property balance. This is not found persuasive because Kannan et al (US 2011/0071235 A1) would have rendered obvious to one of ordinary skill in the art at the time of invention the plastic film of claim 1, i.e., the same or corresponding special technical feature linking the groups of claims.
The Applicant is directed to reasoning in the 35 USC § 103 section below.
The requirement is still deemed proper and is therefore made FINAL.
Claims 18, 19, and 21-23 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 1/15/26.
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.
Claim 16 is 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.
Claim 16 would have been unclear to one of ordinary skill in the art at the time of invention because it refers to “the layer,” but provides no other direction as to which layer its referring, e.g., the layer of claim 1 or an additional layer provided by the film being multi-layered.
For examination purposes, the Examiner will assume “the layer” refers to an additional layer provided by the film being multi-layered.
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.
Claims 1-4, 11, and 13-17 are rejected under 35 U.S.C. 103 as being unpatentable over Kannan et al (US 2011/0071235 A1).
Regarding claims 1 and 3, Kannan teaches a film comprising an aliphatic-aromatic copolyester and another polymer (e.g., aliphatic polyester) such as poly(butylene adipate) (para 2, 8, 56, 84-85). It was known in the art at the time of invention or well established that poly(butylene adipate) is a polyadipate consisting of a polyester of adipic acid with a C4 diol (i.e., 1,4, butanediol).
Regarding the limitations “between 1 and 20% weight” and “between 5 and 12%” Kannon teaches the amounts of the copolyesters and the additives, for example a polymer can vary depending on the desired properties of the biodegradable composition (para 87); so , it would have been obvious to one of ordinary skill in the art at the time of invention to adjust the amount of poly(butylene adipate) in the biodegradable composition of Kannon to optimize its properties, and therein the properties of the final film. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05 II A).
Regarding claim 2, Kannan teaches an aliphatic aromatic copolyester having a number average molecular weight of at least 20,000 Daltons (i.e., 20,000 g/mol). This ranges substantially overlaps that of the instant claim. It has been held that overlapping ranges are sufficient to establish prima facie obviousness. Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have selected from the overlapping portion of the range taught by Kannan, because overlapping ranges have been held to establish prima facie obviousness (MPEP § 2144.05).
Regarding claim 4, the limitation of the instant claim is that of a property of the polyadipate in an intermediate state before the final product of the plastic film is formed, and does not appear to add any structure the final product of the plastic film; so, it would not need to be taught by Kannan. However, it would have been obvious to one of ordinary it would have been obvious to one of ordinary skill in the art at the time of invention to adjust the viscosity of the polyadipate used in the film forming process to optimize its ability to flow as well as its general processability.
Regarding claim 11, Kannan specifically gives examples wherein the aliphatic-aromatic copolyester is a poly(butylene terephthalate-co-adipate) (PBAT) (para 104, 125-127).
Regarding claim 12, this claim further limits that of an optional limitation and need not be taught by the prior art of Kannan.
Regarding claim 13, Kannan teaches the use of additives in its compositions, e.g., anti-oxidants, light stabilizers (i.e., UV light stabilizers), and/or colorants (para 88).
Regarding claim 14, it would have been obvious to one of ordinary skill in the art at the time of invention to adjust the thickness of the film of Kannan to optimize its physical and/or mechanical properties, e.g., strength, weight, flexibility, and/or stretchability.
Regarding claims 15 and 16, Kannan teaches that of a film which would have suggested or otherwise rendered obvious to one of ordinary skill in the art at the time of invention that of a single layer (para 91). However, it would have been obvious to one of ordinary skill in the art at the time of invention to duplicate the layer of film of Kannan, and therein its composition, since duplication of parts is prima facie obvious (MPEP § 2144.04 VI B). This duplication would come with the motivation of providing additional strength (e.g., tear, puncture, etc) to the film.
Regarding claim 17, the limitations of the instant claim is a product by process limitation and does not determine the patentability of the product, unless the process results in a product that is structurally distinct from the prior art. The process of forming the product is not germane to the issue of patentability of the product itself, unless Applicant presents evidence from which the Examiner could reasonably conclude that the claim product differs in kind from those of the prior art (MPEP § 2113). No difference can be discerned between the product that results from the process steps recited in claim 17 and the product of Kannan. However, Kannan teaches its films may be made by extrusion, giving blow extrusion as a specific example of one known film forming extrusion technique (para 91, 164).
Claims 5-8 are rejected under 35 U.S.C. 103 as being unpatentable over Kannon as applied to claim 1 above, and further in view of Fujita et al (JP 2005023091 A).
Kannon teaches the plastic film of claim 1.
Kannon fails to suggest the limitations of claims 5-8.
Fujita teaches biodegradable polyester resin composition used for forming films; wherein the polyester is an aliphatic-aromatic copolyester; wherein the compositions further comprises a plasticizer comprising polyester made from adipic acid and 1,4-butylene glycol (i.e., 1,4-butanediol) (i.e., poly(butylene adipate)), 1,2-propylene glycol (i.e., 1-2-propanediol) (i.e., poly(1,2 propanediol adipate)), and/or 1,3-butylene glycol (i.e., 1,3-butanediol) (i.e., poly(1,3-butanediol adipate)); and 2-ethylhexanol (i.e., 2-ethyl-1-hexanol) as a terminal terminator (abstract, para 1, 3, 81-82, 111-13, 116-117, 140).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to substitute the poly(1,2 propanediol adipate) with the 2-ethylhexanol terminal terminator and the poly(1,3-butanediol adipate) 2-ethylhexanol terminal terminator of Fujita for the poly(butylene adipate) (i.e., additional polymer) of Kannon; since substituting known equivalents for the same purpose as recognized in prior art is prima facie obvious (MPEP § 2144.06 II); and, since it is prima facie obvious to select a known material based on its suitability for its intended use (MPEP § 2144.07). Furthermore, it would have been obvious to use a mixture of the poly(1,2 propanediol adipate) with the 2-ethylhexanol terminal terminator and the poly(1,3-butanediol adipate) 2-ethylhexanol terminal terminator of Fujita, since It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose (MPEP § 2144.06 I). This substitution and combination comes with the additional effects of using plasticizers wherein the amounts of the plasticizers could be adjusted to optimize the properties of the biodegradable compositions and therein the final properties of the film
Fujita teaches the preferred average molecular weight (i.e., molar mass) of its plasticizers should be between 300 and 300 g/mol (para 129-130) which lies within the range of the instant claims.
Regarding the values for slip force, Young’s modulus, an elongation at break in the extrusion direction of the instant claims, it is noted that these values come from a specific embodiment, e.g., composition D from the instant specification which comprises PBAT copolyester and polyadipate that comprises a mixture of adipic acid with 1,3- butanediol, 1,2-propanediol and 2-ethyl-1-hexanol (tables 1-3 of the instant specification). Kannan specifically gives examples wherein the aliphatic-aromatic copolyester is a poly(butylene terephthalate-co-adipate) (PBAT) (para 104, 125-127); and Fujita teaches the plasticizer comprising adipic acid and 2-propylene glycol (i.e., 1-2-propanediol) and/or 1,3-butylene glycol (i.e., 1,3-butanediol) with 2-ethylhexanol (i.e., 2-ethyl-1-hexanol) as a terminal terminator (para 111-13, 116-117).
Therefore, Kannan and Fujita would have rendered obvious to one of ordinary skill in the art at the time of invention the composition required to achieve a film with the instant properties; and it would have been obvious to one of ordinary skill in the art at the time of invention adjust the amount of the constituents in the combination of Kannan and Fujita to optimize the properties of the final film. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP § 2144.05 II A).
Furthermore, since Kannan and Fujita would have rendered obvious to one of ordinary skill in the art at the time of invention the composition required to achieve a film with the instant properties, it is deemed to inherent possess said properties. 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). “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). (MPEP § 2112.01 I).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Polyester Diols (2017) gives industrial examples of poly(butylene adipates) with associated molecular weights (molar masses) and viscosities.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATHAN L VAN SELL whose telephone number is (571)270-5152. The examiner can normally be reached Mon-Thur, Generally 7am-6pm.
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NATHAN VAN SELL
Primary Examiner
Art Unit 1783
/NATHAN L VAN SELL/Primary Examiner, Art Unit 1783