DETAILED ACTION
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.
Claims 1, 2, and 4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2014/0295169 to Kang et al. (hereinafter Kang).
Regarding Claim 1. Kang teaches a foamed polylactic acid sheet comprising a polylactic acid resin [0040].
Kang is silent regarding the concentration of oligomers and monomers having molecular weights of 3,000 or less in the foamed polylactic acid sheet. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Kang teaches a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. According to the original specification, supplying the polylactic acid resin to an extruder and kneading at a temperature of 150°C or lower is indicated to provide a polylactic resin composition comprising oligomers and monomers having molecular weights of 3,000 or less in a total of amount of 1,000 ppm or less (see [0041] of the instant specification). Kang expressly teaches supplying the polylactic acid resin to an extruder and kneading at a temperature of 150°C or lower, i.e. 130°C, in the inventive example described in [0050]. Therefore, the claimed effects and physical properties, i.e. a concentration of oligomers and monomers having molecular weights of 3,000 or less in a total of amount of 1,000 ppm or less, would implicitly be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is 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 as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
Regarding Claim 2. Kang teaches the foamed polylactic acid sheet of Claim 1 comprising t-butyl-2-ethylmonohexylperoxycarbonate and triallyl isocyanurate as crosslinking agents [0050].
Regarding Claim 4. Kang teaches the foamed polylactic acid sheet of Claim 1 but is silent regarding a difference between endothermic and exothermic rates as determined by heat-flux differential scanning calorimetry. Consequently, the Office recognizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Kang teaches a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. Therefore, the claimed effects and physical properties, i.e. a difference between endothermic and exothermic rates at a heating rate of 5°C/min as determined by heat-flux differential scanning calorimetry of 1 to 15 J/g, would implicitly be achieved in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process. See In Re Spada, 911, F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and MPEP 2111.01 (I)(II). If it is 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 as to how to obtain the claimed properties in a product prepared from all of the claimed ingredients in the claimed amounts by a substantially similar process.
Claim Rejections - 35 USC § 103
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.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over US 2014/0295169 to Kang et al. (hereinafter Kang), as applied to Claims 1 and 2 above.
Regarding Claim 3. Kang teaches the foamed polylactic acid sheet according to Claim 2. Using the amounts of ingredients provided in the inventive example described in [0050], the crosslinking agents can be calculated to be provided in an amount of roughly 0.2 weight percent of the foamed polylactic acid sheet.
The Office recognizes that this amount of crosslinking agent lies outside the instantly claimed range of 0.5 to 2.5% by mass based on the foamed polylactic acid sheet. However, the experimental modification of this prior art in order to ascertain optimum operating conditions fails to render applicants' claims patentable in the absence of unexpected results. In re Aller, 220 F.2d 454, 105, 105 USPQ 233 (CCPA 1955) (MPEP 2144.05) Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to optimize the amount of crosslinking agent provided in the inventive example of Kang. The motivation would have been that Kang teaches in the general disclosure that amounts of crosslinking agent anywhere in the range of 0.001 to 10 parts by weight per 100 parts by weight of polylactic acid are suitable and further suggests the amount of crosslinking agent must be selected to provide a balance between functionality and thermosetting properties [0027].
Claims 5 – 7 are rejected under 35 U.S.C. 103 as being unpatentable over US 2014/0295169 to Kang et al. (hereinafter Kang), as applied to Claim 1 above, and further in view of US 2021/0163714 to Nemoto.
Regarding Claims 5 – 7. Kang teaches the foamed polylactic acid sheet of Claim 1 but does not expressly teach inorganic particles are provided in the claimed amount in the inventive example described in [0050]. However, Nemoto teaches the concept of providing inorganic particles in an aliphatic polyester resin composition, wherein the aliphatic polyester resin may be polylactic acid. The ratio of aliphatic polyester resin to inorganic particles is preferably 99/1 to 90/10 [0066]. The inorganic particles have a number average diameter of more preferably 0.02 to 0.10 microns (20 to 100 nm) [0057]. Silica is cited as a preferred type of inorganic particle [0055]. Kang and Nemoto are analogous art as they are from the same field of endeavor, namely aliphatic polyester resin compositions for foamed materials. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to provide inorganic particles as taught by Nemoto in the foamed polylactic acid sheet of the inventive example of Kang. The motivation would have been that Nemoto teaches the particles having the disclosed features and in the disclosed amount impart improved strength and heat resistance to the aliphatic polyester resin ([0051], [0055], [0057], and [0066]).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over US 2014/0295169 to Kang et al. (hereinafter Kang).
Regarding Claim 8. Kang teaches a method of producing a foamed polylactic acid sheet comprising a polylactic acid resin comprising:
supplying the polylactic acid resin to an extruder; and
kneading the polylactic acid resin a temperature of 130°C [0050].
Kang does not expressly teach the step of kneading occurs in an extruder from the which the polylactic acid resin composition is extruded to foam this composition. Kang instead manufactures the foam sheet with a double roll set in this embodiment. However, in the general disclosure, Kang teaches double roll sets and extruders are both suitable apparatuses for preparing the foamed polylactic acid sheet [0043]. Before the effective filing date of the instantly claimed invention, it would have been obvious to a person of ordinary skill in the art to performing the kneading step in the inventive example of Kang with an extruder. The motivation would have been that it is obvious to substitute equivalents known for the same purpose. (MPEP 2144.06) Kang teaches double roll sets and extruders are both suitable apparatuses for preparing the foamed polylactic acid sheet [0043], thus providing evidence of substituting one for the other in the disclosed method.
Notice of References Cited (PTO-892)
The art made of record and not relied upon is considered pertinent to applicant's disclosure. The cited references also pertain to foamed polylactic acid sheets and methods for making such sheets.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MELISSA RIOJA whose telephone number is (571)270-3305. The examiner can normally be reached Monday - Friday 10:00 am - 6:30 pm EST.
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/MELISSA A RIOJA/Primary Examiner, Art Unit 1764
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